Addressing Patentable Subject Matter Rejections in an Ever-Changing Legal Landscape

By: Aly Dossa


Over the last several months there has been a steady stream of decisions from the Court of Appeal for the Federal Circuit (CAFC) related to 35 USC § 101.  The notable decisions include BASCOM Global Internet Services v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016), and Amdocs (Israel) Ltd. v. Openet Telecom, Inc., No. 2015-1180 (Fed. Cir. Nov. 1, 2016).   Each of these decisions has provided valuable guidance for drafting new patent applications and for prosecuting pending cases.  Overall, these new cases provide additional avenues for claims to be deemed patent-eligible.

For example, in BASCOM the CAFC reiterated that a claim may be patent-eligible if “an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”  BASCOM, 827 F.3d 1341, 1350.   Accordingly, Applicants now have additional case law support to argue that combination of limitations (and not just the individual limitations) in the claim make the claim patent-eligible.

Further, McRO extended the concept of “improvement in computer-related technology”, originally introduced in Enfish, LLC, v. Microsoft Corp., 822 F.3d 1327 (Fed Cir. 2016), as a means to establish patent-eligibility to include improvements that are not directly tied to improved computer processing.  Specifically, the CAFC stated a claim may be patent-eligible if the claims are directed to “a specific means or method that improves the relevant technology” McRO, 120 U.S.P.Q.2D 1091, 1101.  Applicants now have some additional flexibility to persuasively argue that the claims are directed to an improvement in a technology that is facilitated by computers.

Finally, in Amdocs the CAFC, instead of providing a bright-line test for what is an “abstract idea”, adopted a common-law approach to determining patent-eligibility of claims.  This approach “examine[s] earlier cases in which a similar or parallel descriptive nature can be seen—what prior cases were about, and which way they were decided.” Amdocs, 2016 U.S. App. LEXIS 19593, 11-12. Like BASCOM, the Amdocs case provides Applicants with additional case law support to assert that a given claim is patent-eligible because it is  similar to a claim that a court has found to be patent-eligible.  In addition, the holding in Amdocs also allows Applicants to effectively rebut an Examiner’s attempt to assert a claim is not patent-eligible by differentiating the claim from claims that courts have previously held to be not patent-eligible.

In view of these new cases, the USPTO issued a Memorandum on November 2, 2016 (“Memorandum”), which provides an updated framework that the Examiners are to use to analyze pending patent applications.  Specifically, the Memorandum provides additional guidance with respect to applying the holdings of BASCOM and McRO but, unfortunately, does not provide specific guidance with respect to Amdocs.

The Memorandum also mentions that a number of recent decisions address the issue of preemption.  However, the Memorandum indicates that the USPTO shall issue additional guidance on this issue in due course. See Memorandum, pp. 3-4.

Finally, the Memorandum acknowledges that due to the large number of precedential decisions being issued by the CAFC, the Examiners should not rely on non-precedential decisions unless the application being examined uniquely matches the facts of a non-precedential decision. See Memorandum, p. 4.

In summary, patent practitioners should consider one or more of the following strategies for addressing patent-eligibility rejections.

Strategy 1:  Conduct Examiner Interviews to discuss rejections under 35 USC § 101. During the Examiner Interview, Applicants will continue to have the best opportunity to meaningfully discuss the rejections and determine the best course of action for responding.  In addition, the Examiner Interviews provide an opportunity to determine how an Examiner is applying the various examination guidelines.  For example, during a number of recent Examiner Interviews, Applicants discussed the Memorandum and whether the guidance provided in the Memorandum would change the Examiner’s opinion about patent-eligibility of the claims.  In response to this inquiry many Examiners indicated that they are awaiting formal training on the Memorandum prior to rendering any opinion on how it may apply to claims currently rejected under 35 USC § 101.  In scenarios in which Applicants are responding to a 35 USC § 101 rejection in a final office action, Applicants should consider using AFCP 2.0 or P3 to obtain an after-final Examiner Interview. (For additional details on AFCP 2.0 and P3 see, How Is The Newest USPTO Hybrid Pilot Program Any Different From The Other After-Final Options?)

Strategy 2: Identify precedential cases where the claims were found to be patent-eligible, where such claims are substantially similar to the claims that have been rejected by the Examiner.  If such a case can be found, then the Applicant may, based on the framework set forth in Amdocs, present arguments that the rejected claims are in-fact patent-eligible.

Strategy 3: Request that the Examiner withdraw the current rejection under 35 USC § 101 and re-evaluate the pending claims in view of the Memorandum.  This strategy has been particularly successful when the rejection under 35 USC § 101 is based on a non-precedential opinion (e.g., SmartGene, Cyberfone) and this issue has been discussed with the Examiner during an Examiner Interview.

While Applicants have been successful in overcoming rejections under 35 USC § 101 using the above strategies, these strategies may need to evolve as the law changes, precedential decisions are rendered, and as the USPTO continuously modifies its examination guidelines to keep up with the ever-changing landscape of patentable subject matter.