In patent prosecution, one has limited chances to make amendments or enter evidence into the record. One controlling factor is whether an Office action is made "final" or "non-final,' where final rejections restrict available options. See a previous post discussing improper final rejections here.
Because a final rejection has significant consequences, there are detailed governing rules the Office must follow. One rule specifies that a rejection cannot be made final if the Examiner enters a new ground of rejection that was not necessitated by an Applicant's amendment. In other words, if the Applicant made an amendment that forced the Examiner to change the rejection, then a final rejection can be proper under the rules.
As Section 101 ("Alice") rejections have increased significantly over the last several years, one issue that can arise is whether a narrowing amendment added for prior art purposes can trigger a new ground of rejection under Section 101/Alice.
One would think that any Alice problem would have been present in the broader claim if it is present in an entirely narrower version of that claim, especially because the step 1 and 2 parts of the Alice framework often look to abstractions and generalizations of claim language. One could argue that a corollary of the Alice framework is that narrowing amendments, per se, can not introduce an Alice problem that was not there previously. If correct, this would preclude the addition of a new Section 101 Alice rejection based on narrowing amendments, where the previous rejection had no Alice rejection.
At least one example petition decision seems to be in line with this reasoning. See the prosecution history for 13/908,604, owned by Honda, available on PAIR. The application relates to a method for customizing diagnostic assistance of a vehicle. The amendment to the claims is shown here. The petition decision is here. The Applicant provided succinct reasoning as follows:
Consider another hypothetical situation where a narrowing amendment adds a mathematical equation to the claim. An examiner may argue that due to the new features in the claim, it now recites an abstract idea. While one could respond that the unamended claim scope necessarily still covered the use of that equation, because of the flexible nature of the Alice framework, it may be difficult to convince the Office of Petitions that the new ground was not necessitated by the amendment.
In any event, it may be possible to successfully challenge final rejections with a new Section 101/Alice rejection responsive to a narrowing amendment as premature.