USPTO Publishes Latest Revision to MPEP, including Subject Matter Eligibility

Today the U.S. Patent and Trademark Office issued a bulletin that last week, on January 25th, the ninth edition (Revision 08.2017) of the Manual of Patent Examining Procedure (MPEP) was made available on their website. (See further discussion of this topic by me at IP Watchdog)

The bulletin states:

The revision includes changes to chapters 200, 700-1000, 1200, 1400, 1500, 1800, 2000-2300, 2500, and 2700. Each section that has been substantively revised in this revision (published January 2018) has a revision indicator of [R-08.2017], meaning that the section has been updated as of August 2017. Appendices L and R were revised to include the laws and rules current as of Aug. 31, 2017, and Appendices T and AI were revised to reflect the PCT Articles, Rules, and Administrative Instructions that were in force effective July 1, 2017.

A listing of changes can be found at the Change Summary for the Ninth Edition, Revision 08.2017. One of the most important chapters is Chapter 2100 which:

…was revised to reflect recent case law and guidance relating to patent subject matter eligibility; to add an overview of “Markush” claims and update the discussion of when a Markush grouping may be indefinite under 35 U.S.C. 112(b); to reflect recent case law regarding the requirements for a patent to be usable as prior art under pre-AIA 35 U.S.C. 102(e) as of a relied upon provisional application’s filing date; and to reflect recent case law pertaining to “reasonable diligence,” the determination of obviousness, and written description.

And one of the most heavily edited sections is Section 2106 Patent Subject Matter Eligibility [R-08.2017] which of course focuses on Alice/Mayo framework. Some “interesting” parts follow:

2106.04 Eligibility Step 2: Whether a Claim is Directed to a Judicial Exception [R-08.2017], II. ELIGIBILITY STEP 2A: WHETHER A CLAIM IS DIRECTED TO A JUDICIAL EXCEPTION

  • Step 2A asks: Is the claim directed to a law of nature, a natural phenomenon (product of nature) or an abstract idea? A claim is directed to a judicial exception when a law of nature, a natural phenomenon, or an abstract idea is recited (i.e.,set forth or described) in the claim. While the terms “set forth” and “describe” are thus both equated with “recite”, their different language is intended to indicate that there are different ways in which an exception can be recited in a claim. For instance, the claims in Diehr set forth a mathematical equation in the repetitively calculating step, the claims inMayo set forth laws of nature in the wherein clause, meaning that the claims in those cases contained discrete claim language that was identifiable as a judicial exception. The claims in Alice Corp., however, described the concept of intermediated settlement without ever explicitly using the words “intermediated” or “settlement”…
  • A claim directed to a judicial exception requires closer scrutiny for eligibility because of the risk that it will tie up the excluded subject matter and prevent others from using the law of nature, natural phenomenon, or abstract idea. However, the courts have carefully construed this “exclusionary principle lest it swallow all of patent law” because “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomenon, or abstract ideas.” Alice Corp., 134 S. Ct. at 2354, 110 USPQ2d at 1980 (citing Mayo, 566 US at 71, 101 USPQ2d at 1965). See also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335, 118 USPQ2d 1684, 1688 (Fed. Cir. 2016) (“The ‘directed to’ inquiry, therefore, cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon”). Examiners should accordingly be careful to distinguish claims that recite an exception (which require further eligibility analysis) and claims that merely involve an exception (which are eligible and do not require further eligibility analysis). Further, examiners should consider the claim as a whole when performing the Step 2A analysis…
  • Unless it is clear that the claim recites distinct exceptions, such as a law of nature and an abstract idea, care should be taken not to parse a recited exception into multiple exceptions, particularly in claims involving abstract ideas. For example, steps in a claim that recite the manipulation of information through a series of mental steps would be considered a single abstract idea for purposes of analysis rather than a plurality of separate abstract ideas to be analyzed individually. However, a claim reciting multiple exceptions is directed to at least one judicial exception (Step 2A: YES) regardless of whether the multiple exceptions are distinct from each other, and thus must be further analyzed in Step 2B. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326-27, 122 USPQ2d 1377, 1379-80 (Fed. Cir. 2017) (claim reciting multiple abstract ideas, i.e., the manipulation of information through a series of mental steps and a mathematical calculation, was held directed to an abstract idea and thus subjected to further analysis in part two of the Alice/Mayo test)…

2106.04(a) Abstract Ideas [R-08.2017]

  • … Examiners should determine whether a claim recites an abstract idea by (1) identifying the claimed concept (the specific claim limitation(s) in the claim under examination that the examiner believes may be an abstract idea), and (2) comparing the claimed concept to the concepts previously identified as abstract ideas by the courts to determine if it is similar.
    • If a claimed concept is similar to one or more concepts that were previously identified as abstract ideas by the courts, it is reasonable to conclude that the concept is an abstract idea and find that the claim is directed to an abstract idea exception (Step 2A: YES). The claim then requires further analysis in Step 2B to determine whether any additional elements in the claim add significantly more to the exception.
    • If the claimed concept(s) is not similar to a concept that was previously identified as an abstract idea by the courts and there is no basis for concluding that the concept is an abstract idea, it is reasonable to find that the claim is not directed to an abstract idea exception. The claim is eligible (Step 2A: NO) at Pathway B unless the claim recites another exception (such as a law of nature or natural phenomenon).

2106.05 Eligibility Step 2B: Whether a Claim Amounts to Significantly More [R-08.2017]

  • Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself. Because this approach considers all claim elements, the Supreme Court has noted that “it is consistent with the general rule that patent claims ‘must be considered as a whole.’” Alice Corp., 134 S. Ct. at 2355, 110 USPQ2d at 1981 (quoting Diamond v. Diehr, 450 U.S. 175, 188, 209 USPQ 1, 8-9 (1981)). Consideration of the elements in combination is particularly important, because even if an additional element does not amount to significantly more on its own, it can still amount to significantly more when considered in combination with the other elements of the claim. See, e.g., Rapid Litig. Mgmt. v. CellzDirect, 827 F.3d 1042, 1051, 119 USPQ2d 1370, 1375 (Fed. Cir. 2016) (process reciting combination of individually well-known freezing and thawing steps was “far from routine and conventional” and thus eligible); BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) (inventive concept may be found in the non-conventional and non-generic arrangement of components that are individually well-known and conventional)…
  • II. ELIGIBILITY STEP 2B: WHETHER THE ADDITIONAL ELEMENTS CONTRIBUTE AN “INVENTIVE CONCEPT”
  • As described in MPEP § 2106, subsection III, Step 2B of the Office’s eligibility analysis is the second part of the Alice/Mayo test, i.e., the Supreme Court’s “framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. _, 134 S. Ct. 2347, 2355, 110 USPQ2d 1976, 1981 (2014) (citing Mayo, 566 U.S. 66, 101 USPQ2d 1961 (2012)). Like the other steps in the eligibility analysis, evaluation of this step should be made after determining what applicant has invented by reviewing the entire application disclosure and construing the claims in accordance with their broadest reasonable interpretation. See MPEP § 2106, subsection II for more information about the importance of understanding what the applicant has invented, and MPEP § 2111 for more information about the broadest reasonable interpretation…
  • Examiners should examine each claim for eligibility separately, based on the particular elements recited therein. Claims should not be judged to automatically stand or fall with similar claims in an application. For instance, one claim may be ineligible because it is directed to a judicial exception without amounting to significantly more, but another claim dependent on the first may be eligible because it recites additional elements that do amount to significantly more.

2106.07 Formulating and Supporting Rejections For Lack Of Subject Matter Eligibility [R-08.2017]

  • When evaluating a claimed invention for compliance with the substantive law on eligibility, examiners should review the record as a whole (e.g., the specification, claims, the prosecution history, and any relevant case law precedent or prior art) before reaching a conclusion with regard to whether the claimed invention sets forth patent eligible subject matter…
  • If the evaluation of the claimed invention results in a conclusion that it is more likely than not that the claim as a whole does not satisfy both criteria for eligibility (Step 1: NO and/or Step 2B: NO), then examiners should formulate an appropriate rejection of that claim under Step 1 and/or Step 2B. The rejection should set forth a prima facie case of ineligibility under the substantive law. The concept of the prima facie case is a procedural tool of patent examination, which allocates the burdens going forward between the examiner and applicant. In particular, the initial burden is on the examiner to explain why a claim or claims are ineligible for patenting clearly and specifically, so that applicant has sufficient notice and is able to effectively respond.

2106.07(a) Formulating a Rejection For Lack of Subject Matter Eligibility

  • A subject matter eligibility rejection under Step 2 should provide an explanation for each part of the Step 2 analysis:
    • For Step 2A, the rejection should identify the judicial exception by referring to what is recited (i.e., set forth or described) in the claim and explain why it is considered an exception. For example, if the claim is directed to an abstract idea, the rejection should identify the abstract idea as it is recited (i.e., set forth or described) in the claim and explain why it corresponds to a concept that the courts have identified as an abstract idea. Similarly, if the claim is directed to a law of nature or a natural phenomenon, the rejection should identify the law of nature or natural phenomenon as it is recited (i.e., set forth or described) in the claim and explain using a reasoned rationale why it is considered a law of nature or natural phenomenon.
    • For Step 2B, the rejection should identify any additional elements (specifically point to claim features/limitations/steps) recited in the claim beyond the identified judicial exception; and explain the reason(s) that the additional elements taken individually, and also taken as a combination, do not result in the claim as a whole amounting to significantly more than the judicial exception identified in Step 2A. For instance, when the examiner has concluded that certain claim elements recite well understood, routine, conventional activities in the relevant field of art, the rejection should explain why the courts have recognized, or those in the field would recognize, the additional elements when taken both individually and as a combination to be well-understood, routine, conventional activities…
  • When the examiner has determined the claim recites an abstract idea, the rejection should identify the abstract idea as it is recited (i.e., set forth or described) in the claim, and explain why it corresponds to a concept that the courts have identified as an abstract idea. See, for example, the concepts identified in MPEP § 2106.04(a)(2). Citing to an appropriate court decision that supports the identification of the subject matter recited in the claim language as an abstract idea is a best practice that will advance prosecution. Examiners should be familiar with any cited decision relied upon in making or maintaining a rejection to ensure that the rejection is reasonably tied to the facts of the case and to avoid relying upon language taken out of context. Examiners should not go beyond those concepts that are similar to what the courts have identified as abstract ideas, and should avoid relying upon or citing non-precedential decisions unless the facts of the application under examination uniquely match the facts at issue in the non-precedential decisions. Examiners are reminded that a chart of court decisions is available on the USPTO’s Internet website (www.uspto.gov/patent/laws-and- regulations/examination-policy/subject- matter-eligibility)…
  • Sample explanation: The claim recites the steps of sorting information by X, which is an abstract idea similar to the concepts that have been identified as abstract by the courts, such as organizing information through mathematical correlations in Digitech or data recognition and storage in Content Extraction.

2106.07(b) Evaluating Applicant’s Response [R-08.2017]

  • In response to a rejection based on failure to claim patent-eligible subject matter, applicant may: (i) amend the claim, e.g., to add additional elements or modify existing elements so that the claim as a whole amounts to significantly more than the judicial exception, and/or (ii) present persuasive arguments or evidence based on a good faith belief as to why the rejection is in error. When evaluating a response, examiners must carefully consider all of applicant’s arguments and evidence rebutting the subject matter eligibility rejection. If applicant has amended the claim, examiners should determine the amended claim’s broadest reasonable interpretation and again perform the subject matter eligibility analysis…
  • (1) If applicant challenges the identification of an abstract idea that was based on a court case and the challenge is not persuasive, an appropriate response would be an explanation as to why the abstract idea identified in the claim is similar to the concept in the cited case. If the original rejection did not identify a Supreme Court or Federal Circuit decision in which a similar abstract idea was found and applicant challenges identification of the abstract idea, the examiner would need to point to a case in which a similar abstract idea was identified and explain why the abstract idea recited in the claim corresponds to the abstract idea identified in the case to maintain the rejection. Citation to a case that supports the original rationale would not be considered a new ground of rejection, unless there is a change to the basic thrust of the rejection. See MPEP § 706.07(a) for a discussion of new grounds of rejection…
  • (4) If applicant argues that the claim is specific and does not preempt all applications of the exception, the examiner should reconsider Step 2A of the eligibility analysis, e.g., to determine whether the claim is directed to an improvement to the functioning of a computer or to any other technology or technical field. If an examiner still determines that the claim is directed to a judicial exception, the examiner should then reconsider in Step 2B whether the additional elements in combination (as well as individually) amount to an inventive concept, e.g., because they are more than the non-conventional and non-generic arrangement of known, conventional elements. Such reconsideration is appropriate because, although preemption is not a standalone test for eligibility, it remains the underlying concern that drives the two-part framework from Alice Corp. and Mayo (Steps 2A and 2B).

Clearly some interesting information in here that might be helpful in prosecution patent applications claiming subject matter that potentially touches on the Alice issues. Of course, while the MPEP is not necessarily binding law, the examining corps must follow it, so citation can be used to demonstrate failure to follow proper procedure when reviewing the claims of an application.

Also worth noting is that the Subject Matter Eligibility Guidance portal still is relevant, especially as the publishing of the January 2018: Eligibility Quick Reference Sheet and the spreadsheet (Chart of subject matter eligibility court decisions) was only a few weeks earlier.

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