Rejection of patent claims under 35 U.S.C. § 101 without addressing each limitation separately and as an ordered combination, lack of substantial evidence, and prejudice to petitioners

Questions Presented The present case is directed to a rejection under Title 35 U.S.C. § 101 from the United States Patent and Trademark Office (USPTO) under the Alice/Mayo test. In conducting this § 101 rejection, the present record shows that USPTO failed to address each and every limitation of the claims separately and as a whole, ordered combination as is required by the Alice/Mayo test. The present record also shows that, during appeal before the Patent Trial and Appeal Board (PTAB), the PTAB cited new “evidence” on rehearing and then denied Petitioners an opportunity to address the ersatz nature of such “evidence.” Petitioners were unquestionably prejudiced. The present record further shows that the USPTO failed to provide substantial evidence to support the proposition that a single claim limitation is well-understood, routine and conventional. In fact, it was the express holding of the PTAB that five separate claim limitations were not found or remotely suggested in any reference of record. In view of the above issues, Petitioners ask the following questions: Is the Administrative Procedure Act (APA) (Title 5 U.S.C. § 706) somehow nonrelevant under Alice/Mayo, or does the Federal Circuit’s refusal to address unlawful abuses by the USPTO when reviewing claim rejections under Alice/Mayo an abuse of discretion? ii Is it remotely plausible under any noncapricious administration of the Alice/Mayo test that five separate claim limitations can be completely unknown and nonobvious under Titles 35 U.S.C. §§ 102/103, yet at the same time be well-understood, routine, and conventional individually and as an ordered combination under an Alice/Mayo § 101 analysis? In addition, Petitioners ask the following question: Does a requirement of “invention” and “improvement” under the Alice/Mayo framework violate the statutory language of Title 35 U.S.C. § 101, legislative intent, and the Supreme Court’s repeated edict of Alice Corp. v. CLS' Bank International, 573 U.S. 208 (2014), Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), Bilski v. Kappos, 561 U.S. 593 (2010), Diamond v. Diehr, 450 U.S. 175 (1981), Parker v. Flook, 437 U.S. 584 (1978), and Gottschalk v. Benson, 409 U.S. 63 (1972), that preemption, not invention or improvement, is the sole criteria for determining exceptions to patent eligibility?