On November 2, 2016, the U.S. Patent & Trademark Office (USPTO) issued a Memorandum providing additional guidance on the examination of claims with respect to subject matter eligibility under 35 U.S.C. § 101.
Following the U.S. Supreme Court decision in Alice Corp. v. CLS Bank International, the USPTO issued a two-step analysis to be used by examiners to determine whether a claim is patent-eligible. In Step 1, the examiner must determine whether a claim is directed to a statutory category – i.e., a process, machine, manufacture, or composition of matter. If the claim is not, it is to be rejected as not being patent-eligible. However, if the claim is directed to one of these statutory categories, the examiner must move to Step 2. In Step 2, the examiner must first determine if the claim is also directed to a judicially recognized exception – i.e., a law of nature, natural phenomenon, or abstract idea. If it is not, the claim is to be deemed patent eligible. Yet, if the claim is directed to one of these exceptions, the examiner must then determine whether the claim recites additional elements that amount to significantly more than the judicially recognized exception itself.
The November 2, 2016 Memorandum provides additional guidance for examiners regarding the two-step analysis, in view of two recent Federal Circuit decisions, McRO v. Bandai Namco Games America, No. 15-1080, 2016 WL 4896481 (Fed. Cir. 2016), and BASCOM Global Internet Services v. AT&T Mobility, 827 F.3d 1341 (Fed. Cir. 2016), both of which found the challenged claims to be patent-eligible.
In McRO, the Federal Circuit held that the claimed methods of automatic lip synchronization and facial expression animation using computer-implemented rules are not directed to an abstract idea, thus rendering the claims patent-eligible. Specifically, the Federal Circuit held that the claimed methods are directed to an improvement in computer-related technology, and that they do not recite a concept similar to previously identified abstract ideas. In coming to this conclusion, the Federal Circuit relied on the specification's explanation of how the claimed rules enabled the automation of specific animation tasks that previously could not be automated. The Federal Circuit stated that, unlike Alice, where the computer was merely a tool to perform an existing process, the claimed rules "improved [the] existing technological process" in computer animation.
In view of McRO, the USPTO stated that, when identifying a concept as a judicially recognized exception, the examiner "should not overgeneralize the claim or simplify it into its 'gist' or core principles." The USPTO further stated "[a]n 'improvement in computer-related technology' is not limited to improvements in the operation of a computer or a computer network per se, but may also be claimed as a set of 'rules' (basically mathematical relationships) that improve computer-related technology by allowing computer performance of a function not previously performable by a computer."
To provide clarification for examiners, the USPTO stated that a claim directed to an improvement in computer-related technology may include (1) a teaching in the specification about how the claimed invention improves a computer or other technology (e.g., the McRO court relied on the specification's explanation of how the claimed rules enabled the automation of specific animation tasks that previously were not possible); or (2) a particular solution to a problem or a particular way to achieve a desired outcome defined by the claimed invention, as opposed to merely claiming the idea of a solution or outcome (e.g., McRO's claims defined a specific way, namely use of particular rules to set morph weights and transitions through phonemes, to solve the problem of producing accurate and realistic lip synchronization and facial expressions in animated characters, and thus were not directed to an abstract idea).
In Bascom, the Federal Circuit held that the claimed system for filtering content retrieved from an Internet computer network amounted to significantly more than an abstract idea itself, thus rendering the claims patent-eligible. Specifically, the Federal Circuit acknowledged that the additional elements were a generic computer and network and internet components that did not individually amount to significantly more than the abstract idea itself. However, the Federal Circuit held that "an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces."
In view of Bascom, the USPTO stated that examiners should consider the additional elements in combination, as well as individually, when determining whether a claim as a whole amounts to significantly more. The USPTO, specifically, noted that the additional elements may provide a non-conventional and non-generic arrangement of known, conventional elements, which results in patent-eligible claims.
With this guidance, the USPTO has given examiners additional direction on how to identify computer-related claims that are patent-eligible under the post-Alice analysis. Furthermore, the USPTO has provided applicants with additional guidance on pursuing patent-eligible subject matter.