As the U.S. Patent & Trademark Office continues to reject applications as being directed to ineligible subject matter in the wake of Alice Corp. v. CLS Bank Int'l, 573 U.S. __, 134 S. Ct. 2347 (2014), the agency has again offered guidance to the Patent Examining Corps requiring more specificity in rejecting claims under Section 101 of the Patent Act.1 This memorandum, which supplements the USPTO's 2014 and 2015 guidelines,2 is designed to provide applicants with more thorough, coherent, and systematic explanations of subject matter eligibility than they may have received in the past.
Analyzing subject matter eligibility is a two-step process. In the first step of the analysis, the examiner must first determine whether the claim is directed to a judicial exception, such as an abstract idea, law of nature, or natural phenomenon. Then, if the examiner finds that it is, he or she must determine whether the claim contains additional elements that, taken either singly or in combination, make the claim as a whole significantly more than the judicial exception. The USPTO is instructing its examiners to more clearly and thoroughly articulate their reasons and support during each step of this analysis.
The USPTO is instructing examiners to formulate a Section 101 rejection by clearly identifying the specific claim limitation(s) at issue and the particular abstract idea, law of nature, or natural phenomenon that it allegedly describes. In addition, this latest guidance emphasizes that examiners should also explain why the identified limitation(s) corresponds to one of the judicial exceptions and should cite an appropriate court decision that supports this conclusion. In other words, the examiners may no longer issue a rejection that relies solely on a conclusion that is based on a high-level characterization of the claims as directed to a particular judicial exception.
In the second step of the analysis, the examiner is instructed to identify any additional claim limitations that go beyond the judicial exception, and to explain why these other claim limitations do not cause the claim as a whole to amount to significantly more than that judicial exception. This will require analyzing the additional claim limitations both individually and in combination, because even known or used limitations may become patent eligible if arranged in a new combination. A rejection is appropriate only if the additional elements in the claim or any new limitations that may have been added by the applicant do not amount to claiming significantly more than the judicial exception itself. This guidance puts more emphasis on the "significantly more" analysis, as it requires the examiners to consider whether limitations in the claim are meaningful beyond the alleged judicial exception.
Examiners must employ a similar analysis in evaluating the applicant's response. In the event the examiner maintains the rejection, the examiner should directly and substantively rebut the applicant's response. This rebuttal may involve citing case law that supports a finding that the claim recites an abstract idea or law of nature; providing rebuttal evidence to show that the claim limitations at issue are well-known, routine, or conventional; or explaining why any proposed new limitations, e.g., computers or computer components, are only generic.
Although these guidelines do not constitute substantive rulemaking and do not have the full force and effect of law, patent practitioners should hold examiners to these new standards, and ensure that the record on appeal will be clear and complete in the event these standards are not being met. The USPTO and patent practitioners are hoping that this guidance will allow a more direct path to identifying patent-eligible subject matter.
The USPTO is also inviting public comments on subject matter eligibility on an ongoing basis. Please contact one of the authors or your representative at Dentons if you are interested in submitting a comment.
 Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection, Memorandum to Patent Examining Corps from Robert W. Bahr, Deputy Commissioner for Patent Examination Policy, May 4, 2016, attached to May 2016 Subject Matter Eligibility Update, U.S. Patent and Trademark Office, Docket No. PTO-P-2016-0003, 81 Fed. Reg. 27381 (May 6, 2016); May 2016 Update: Subject Matter Eligibility Examples: Life Sciences (available at http://www.uspto.gov/sites/default/files/documents/ieg-may-2016-ex.pdf); May 2016 Update: Index of Eligibility Examples (available at http://www.uspto.gov/sites/default/files/documents/ieg-may-2016-ex_index.pdf); May 2016 Update: Subject Matter Eligibility Court Decisions (Formerly Appendix 3) (available at http://www.uspto.gov/sites/default/files/documents/ieg-may-2016-sme_crt_dec_0.pdf).
 2014 Interim Guidance on Patent Subject Matter Eligibility (Interim Eligibility Guidance) and July 2015 Update: Subject Matter Eligibility (July 2015 Update).
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