On October 17, 2019, the U.S. Patent and Trademark Office (“USPTO”) published updated guidance (the “October Update”) to its January 2019 Patent Eligibility Guidance (the “January Guidance”). The October Update was published in response to public comments to the January Guidance.
The January Guidance, as we addressed in a prior alert, was intended to provide guidance to examiners and other USPTO personnel concerning the evaluation of subject matter eligibility under 35 U.S.C. § 101. 84 Fed. Reg. 50. The January Guidance modified the USPTO’s application of the Alice/Mayo framework by more carefully defining categories of abstract ideas and by requiring consideration of whether a claim involves a “practical application” of a judicial exception as a basis for patent eligibility.
The USPTO supported its January Guidance, which deviates in some respects from the Federal Circuit’s case law applying the Alice/Mayo framework, by referencing foundational concepts of subject matter eligibility found in Supreme Court case law. Although the guidance may result in fewer Section 101 rejections for inventions involving computer-related processes, the actual impact will depend on how the examining corps applies the guidance and whether the revised approach ultimately is accepted by the courts.
In the October Update, the USPTO covers five major themes from comments received in response to the January Guidance, including:
- Evaluating whether a claim recites a judicial exception;
- The groupings of abstract ideas enumerated in the January Guidance;
- Evaluating whether a judicial exception is integrated into a practical application;
- The prima facie case and the role of evidence with respect to eligibility rejections; and
- The application of the January Guidance in the patent examining corps.
Each of these themes is addressed below.
Evaluating Whether a Claim Recites a Judicial Exception
The October Update first digs into the meaning of “recites,” and clarifies that the January Guidance did not change the meaning of “recites” from how this term is used in the Manual of Patent Examining Procedure. In particular, a claim recites a judicial exception when the judicial exception is “set forth” or “described” in the claim.
There are two examples cited in the October Update meant to clarify the ways in which an exception can be recited in a claim. In the case of Diamond v. Diehr, the claims clearly stated a mathematical equation that “set forth” an identifiable judicial exception. In Alice Corp. v. CLS Bank, the claims “described” the concept of intermediated settlement without ever explicitly using the words “intermediated” or “settlement.” It is important, therefore, for examiners to evaluate a claim and determine whether it sets forth or describes a judicial exception.
Guidance was also provided on how claims reciting multiple judicial exceptions are to be treated. A distinction was drawn between claims in which multiple exceptions are distinct from each other, and those that recite multiple abstract ideas. In the case of the former, the October Update directs examiners to continue to follow existing guidance in MPEP 2106.05(II) when analyzing the claims for eligibility. With respect to the latter, examiners are advised to not “parse” the claim, but rather, if possible, to consider the limitations together to be an abstract idea.
The Groupings of Abstract Ideas Enumerated in the 2019 PEG
As described in the January Guidance, the USPTO has shifted from a case-comparison approach in determining whether a claim recites an abstract idea to one that uses enumerated groupings of abstract ideas. The October Update clarifies that the enumerated groupings approach is “firmly rooted” in Supreme Court precedent and Federal Circuit decisions.
The October Update addresses three groupings of abstract ideas enumerated in the January Guidance: mathematical concepts, methods of organizing human activities, and mental processes.
- Mathematical Concepts. In the October Update, the USPTO explains that certain commenters requested clarification on the types of math recited in claims when making an eligibility determination. The update states that the current “mathematical concepts” grouping will be retained because it is consistent with the case law. The USPTO went on to explain that, when determining whether a claim recites a mathematical concept, the examiner should consider whether the claim recites a mathematical concept or merely includes limitations that are based on or involve a mathematical concept. A claim does not recite a mathematical concept if it is only based on or involves a mathematical concept.
- Methods of Organizing Human Activity. In response to requests for clarification, the USPTO addresses the scope of the “certain methods of organizing human activity” grouping. The USPTO indicates that "not all methods of organizing human activity are abstract ideas (e.g., a defined set of steps for combining particular ingredients to create a drug formulation is not a certain method of organizing human activity)." According to the update, this grouping includes activity that falls within certain enumerated sub-groupings, namely: (i) fundamental economic principles or practices, (ii) commercial or legal interactions, (iii) managing personal behavior, and (iv) relationships or interactions between people. The update provides examples of these subgroupings.
- Mental Processes. Pursuant to the January Guidance, the “mental processes” grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions. To provide examiners with further guidance on how to determine whether a claim recites a mental process, the USPTO urges examiners to keep in mind the following points when performing an evaluation:
- A claim with limitation(s) that cannot practically be performed in the human mind does not recite a mental process;
- A claim that requires a computer may still recite a mental process; and
- A claim that encompasses a human performing the step(s) mentally with the aid of a pen and paper recites a mental process.
Evaluating Whether a Judicial Exception is Integrated into a Practical Application
As set forth in January Guidance, the question of whether a claim is “directed to” a judicial exception is to be evaluated using a two-prong inquiry. Prong one addresses whether the claim “recites” an abstract idea, law of nature, or natural phenomenon. Under that prong, the mere inclusion of a judicial exception such as a mathematical formula in a claim means that the claim “recites” a judicial exception.
The October Update makes clear that the mere recitation of a judicial exception does not mean that the claim is “directed to” that judicial exception. Instead, a claim that recites a judicial exception is not directed to that judicial exception if the claim as a whole “integrates the recited judicial exception into a practical application of that exception.”
Requirements of a Prima Facie Case
In response to requests that the USPTO emphasize the examiner’s burden of establishing a prima facie case when making a subject matter eligibility rejection, the October Update reiterates the requirements of a prima facie case as explained in the January Guidance.
- First, the rejection should identify the judicial exception by referring to what is recited in the claim and explaining why it is considered to be an exception. For example, for abstract ideas, the rejection should explain why a specific limitation recited in the claim falls within one of the enumerated groupings of abstract ideas. Alternatively, a justification should be provided for why a specific limitation recited in a claim is being treated as an abstract idea if it does not fall within the enumerated groupings of abstract ideas in accordance with the “tentative abstract idea” procedure outlined in the January Guidance.
- Second, the rejection should identify any additional elements recited in the claim beyond the judicial exception and evaluate the integration of the judicial exception into a practical application through an explanation that either (i) there are no additional elements in the claim or (ii) the claim as a whole, does not integrate the judicial exception into a practical application.
- Third, a rejection should explain why the additional elements, taken individually and in combination, do not result in the claim, as a whole, amounting to significantly more than the exception. By way of example, when the examiner concludes that certain claim elements recite well-understood, routine activity, the examiner must expressly support such a rejection in accordance with the procedures specified in the Berkheimer
Application of the 2019 PEG in the Patent Examining Corps
The October Update concludes with an explanation of the ways in which the USPTO is helping examiners understand the revised §101 eligibility guidelines. Its guidance has involved publishing examples, training, and directives that examiners are expected to follow the January Guidance.