Further Tales from Wonderland – November 2016 Memorandum on 35 U.S.C. § 101

On November 2, 2016, the USPTO issued a new Memorandum relating to rejections under § 101. Entitled “Recent Subject Matter Eligibility Decisions,” the Memo generally follows the format of previous guidance, discussing the recently-decided McRO, Inc. v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016) and BASCOM Global Internet Services v. AT&T Mobility LLC, 827 F .3d 1341 (Fed. Cir. 2016). The memo also briefly addresses preemption and use of non-precedential decisions in Office Actions. While nothing in the memo is particularly groundbreaking, the fact that the PTO is taking the time explain current precedent to examiners gives applicants a leg up in arguing eligibility.

On McRO, the PTO addresses one of the complaints it has certainly received in recent months – that examiners should not overgeneralize claims in order to make a rejection. In this vein, the memo also reminds examiners that improvements in computer-related technology need not improve the computer per se. Rather, if the claims recite “rules” or “mathematical relationships [] that improve computer-related technology by allowing computer performance of a function not previously performable by a computer,” the claims can be found eligible under § 101. An indication that the claim is directed to such an improvement can be found in the specification as well as in the claims – something that the Federal Circuit discussed just one day prior in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., No. 2015-1180 (Fed. Cir. Nov. 1, 2016).

With respect to BASCOM, the PTO emphasizes that examiners should consider elements in combination, not just in isolation.  The “non-conventional and non-generic arrangement of known, conventional elements” can yield a patent-eligible claim.

On preemption, the PTO promises further discussion in an upcoming memo. For the time being, the PTO reminds examiners that “some recent decisions discuss the absence of preemption” as a confirmation that a claim is either not directed to a judicial exception (step one of the Mayo/Alice framework) or confirming that a claim includes an inventive step (step two).  The PTO reinforces that examiners should use the Mayo/Alice framework in order to resolves questions of preemption.

The PTO warns examiners not to cite non-precedential decisions for the first step of Mayo/Alice, such as SmartGene and Cyberfone, unless the application “uniquely match[es] the facts at issue” in the decision. These cases are frequently cited in Office Actions coming from certain art units; this Memo may be useful in overcoming rejections of claims only tenuously similar to those cases.

Finally, just as with previous guidance, the expectation is that the examining corps will receive training in the coming weeks and months.