Since the Supreme Court decided Alice v. CLS Bank in June 2014, the USPTO regularly issues new memoranda explaining its implementation of the § 101 framework. This includes some of the more notable memos for prosecutors: the memo on Enfish v. Microsoft from May 2016, the memo on McRO and BASCOM from November 2016, and dozens of eligibility examples. The USPTO also maintains a quick reference sheet on decisions holding claims eligible and identifying abstract ideas, and a chart of subject matter eligibility court decisions.
In late January, the USPTO incorporated each of its earlier memoranda into the MPEP. The USPTO's page on post-Alice guidance now indicates that its guidance is incorporated into various sections of Chapter 2100 of the MPEP. The USPTO notes that "no changes have been made to current examination practice," and that the incorporation into the MPEP "does not affect pending eligibility rejections or create new grounds of rejection." That being said, some of the USPTO's changes make clear how to argue rejections under § 101.
The sections that the USPTO amended to include its Mayo/Alice guidance are in chapter 2100.
For example, the USPTO revised section 2105 to focus on the decisions that have relied on Diamond v. Chakrabarty, calling it "'central' to the eligibility inquiry with respect to nature-based products." For example, this section now highlights the Supreme Court's decision in Association for Molecular Pathology v. Myriad Genetics, Inc. and the Federal Circuit's decision in In re Roslin Institute (Edinburgh). This section may be useful for citing to Examiners in that the Chakrabarty decision expanded the eligibility of living subject matter under § 101.
The USPTO rewrote most of section 2106 to focus on recent case law. While earlier versions focused on per se exclusions discussed in older case law (e.g., computer programs, printed matter, and transitory signals) the new cases and examples follow from the Mayo/Alice line of cases. One notable inclusion is Thales Visionix Inc. v. United States, 850 F.3d. 1343, 1349, 121 USPQ2d 1898, 1902 (Fed. Cir. 2017) (discussed here). The USPTO specifically calls out Thales as an example of claims that were found eligible despite including a mathematical equation. This section (and the Thales case) may be helpful in arguing that claims that recite abstract concepts such as mathematics are not necessarily directed to abstract ideas.
The remaining amended sections – 2106.03 through 2106.07(c) – were newly added with the January amendments. Of note, 2106.04 (which covers the "judicial exception" prong of the test) repeats the guidance from the Enfish memo: that "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)." Highlighting this language may assist in overcoming a spurious rejection. Other language that may be helpful in overcoming rejections includes 2106.04(a)(I), which states that "examiners should keep in mind that some inventions pertaining to improvements in computer functionality or to improvements in other technologies are not abstract when appropriately claimed, and thus may be eligible at Step 2A," citing Enfish, 822 F.3d at 1327, 118 USPQ2d 1684 (Fed. Cir. 2016), McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 120 USPQ2d 1091 (Fed. Cir. 2016), and Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 123 USPQ2d 1712 (Fed. Cir. 2017). And 2106.04(a)(1) and (2) include helpful examples of claims that courts found as directed to or not directed to abstract ideas.
Section 2106.05 seems to indicate what the USPTO is looking for to demonstrate the "significantly more" prong of the test. Focusing on McRO, 2106.05(a) states that an argument that the claims improve upon "conventional" technology or function requires that the application itself "provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement." So, in drafting new applications going forward, it would be wise to highlight numerous improvements over the "conventional" way of doing things. Section 2106.05(b) highlights what constitutes a "particular machine" for purposes of the "significantly more" prong.
Section 2106.06 relates to the "streamlined analysis" that the USPTO indicates can be used by examiners, if the "claim clearly improves a technology of computer functionality." Interestingly, the USPTO cites Enfish and McRO as examples of such cases: "it would be reasonable for an examiner to have found these claims eligible at Pathway A based on the clear improvement." The USPTO had not previously cited these cases as examples of claims that were appropriate for the streamlined analysis, so it may be helpful to highlight these.
Finally, section 2106.07 explains how examiners are supposed to formulate a rejection under § 101. Much of this section repeats the requirements that were in previous memos.
Examiners may be more likely to listen to arguments sourced from the MPEP; with these incorporations in to the MPEP, the USPTO provides some hints as to what will be most persuasive in overcoming and avoiding rejections under § 101. Thus, it may be advantageous to consider the USPTO's recent guidance in the MPEP.
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