Calling in a §101 expert from the USPTO during prosecution

It would be helpful if the USPTO would publish guidance on how a §101 expert from the USPTO could be called in to assist an examiner during prosecution of a patent application. I was listening to the oral argument of BYTEMARK, INC. v. MASABI LTD., No. 2019-1628 (Fed. Cir. Feb. 10, 2020) yesterday and was interested to hear that the examiner had called in James Trammell as a section 101 expert during prosecution. The consultation between the examiner and Mr. Trammell resulted in allowance of the patent. It appears that the consultation with Mr. Trammell was initiated by the examiner and not the Applicant; but, one could easily imagine applicants requesting such conferences. It would certainly streamline prosecution in many instances.

In the Notice of Allowance, the Examiner noted the conference, stating:

You can read Bytemark’s brief discussing the conference here:

You can review the CAFC’s Rule 36 Judgment [here].

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