In a memorandum to patent examiners dated November 2, 2016, the US Patent and Trademark Office (PTO) addressed recent subject matter eligibility decisions. The memorandum was spurred by two precedential US Court of Appeals for the Federal Circuit decisions: McRO, Inc. v. Bandai Namco Games America, Inc. (IP Update, Vol. 19, No. 10) and BASCOM Global Internet Servs. v. AT&T Mobility LLC (IP Update, Vol. 19, No. 8).

The memorandum noted that McRO and BASCOM do not change the PTO’s basic subject matter eligibility (SME) guidelines. According to the memorandum, McRO and BASCOM highlight several factors that examiners should consider when determining whether an application claims eligible subject matter. For example, the memo reminded examiners that they “should consider the claim as a whole under Step 2A of the SME guidance, and should not overgeneralize the claim or simplify it into its ‘gist’ or core principles, when identifying a concept as a judicial exception.”

The memorandum further explained that improvements in computer-related technology were not limited to improvements in computer operation, but could also be a set of “rules” (mathematical relationships) that allow the computer to perform functions not previously performable by a computer. The memorandum encouraged examiners to look to the specification for teaching about how, if at all, the invention improves a computer or other technology, and to determine whether a particular solution to a problem or a particular way of achieving a desired outcome is defined by the claims.  

In view of BASCOM, in which the Federal Circuit found patent eligibility even though the individual elements of the claimed system were generic computer, network and internet components, the memo reminded examiners to consider whether the claimed elements in combination result in a non-generic, non-conventional arrangement of elements.

The PTO indicated that it would address the issue of preemption in a forthcoming update to its SME guidance. However, “[i]f an applicant argues that a claim does not preempt all applications of the exception, an examiner should reconsider in Step 2A of the eligibility analysis whether the claim is directed to . . . a specific way of achieving a desired outcome or end result.” The update also will discuss the eligibility decision in Amdocs (Israel) Ltd. v. Openet Telecom, Inc.(IP Update, Vol. 19, No. 12, forthcoming), which the Federal Circuit issued just one day before the PTO released its memorandum.

Finally, in view of the increasing number of precedential SME decisions, the PTO instructed examiners to avoid relying upon or citing non-precedential decisions unless the facts of the application “uniquely match the facts at issue in the non-precedential decision.”

Practice Note: Practitioners should review the SME updates when drafting claims that are likely to be subject to § 101 scrutiny or when traversing § 101 rejections, as the PTO instructions seem to present opportunities to avoid or overcome § 101 rejections.