USPTO Updates: Changes to Examination Procedures for Subject Matter Eligibility

By James Carlson


On October 17, 2019, the USPTO issued an update regarding the 2019 Revised Patent Subject Matter Eligibility Guidance published this past January.  In particular, the USPTO considered feedback in response to the January guidance and prepared a follow-up that clarifies the USPTO’s examination procedures accordingly.  In particular, this new update consists of the following: (1) an October 2019 Patent Eligibility Guidance Update (hereinafter “Guidance Update”) that addresses various questions and comments from the feedback[1]; (2) new Subject Matter Eligibility Life Sciences & Data Processing Examples[2]; (3) a complete index of USPTO’s examples regarding subject matter eligibility[3]; and (4) an updated chart of subject matter eligibility court decisions[4].

Regarding the Guidance Update, the USPTO clarifies several issues relating to revisions under Step 2A of the USPTO’s subject matter eligibility test.  First, the USPTO clarified how examiners should handle multiple judicial exceptions within a patent claim.  In particular, the Guidance Update address situations where judicial exceptions are located in the same or different enumerated groupings of abstract ideas.  Second, the USPTO clarified the analysis for determining whether a recited concept falls into one of the enumerated groups.  For example, the Guidance Update describes various considerations specific to the mathematical concepts grouping and the grouping for certain methods of organizing human activity.

Furthermore, the Guidance Update provides several important considerations for examiners when determining whether a claim recites a mental process, such as whether a claim limitation cannot be practically performed in a human mind.  Based on feedback to January’s guidance, the USPTO refused to adopt the suggestion that a mental process is recited only when the claim is performed “entirely in the human mind.”  As such, the USPTO noted that merely requiring a generic computer or nominally reciting a generic computer may still recite a mental process under the USPTO’s examination procedures.  Likewise, the Guidance Update instructs examiners to review the specification to determine whether a concept is performed 1) on a generic computer, 2) in a computer environment, or 3) merely using a computer as a tool to perform the claimed concept.  The USPTO also reiterated a popular test among examiners in regard to whether a claim limitation can be performed with the aid of a pen and paper. Here, the USPTO noted that the use of a physical aid to perform a mental step does not negate the recitation of a mental process in a patent claim.

Finally, the USPTO offers several important considerations to remember for patent attorneys and patent agents when prosecuting patent applications with patent eligibility issues:

  1. Evidence of an improvement to the functioning of a computer or to another technology may be submitted in an affidavit under 37 C.F.R. § 1.132. For example, in response to a rejection under 35 U.S.C. § 101, a patent applicant could submit a declaration under § 1.132 that provides testimony on how one of ordinary skill in the art would interpret the disclosed invention as improving technology and the underlying factual basis for that conclusion.


  1. For means-plus-function limitations interpreted under 35 U.S.C. § 112(f), the USPTO further clarified important aspects of the analysis in regard to patent eligibility. A means-plus-function limitation is limited to the structure, material or acts (and equivalents thereof) disclosed and clearly linked in the specification.  Accordingly, structure in the specification that is clearly linked to a means-plus-function limitation may serve as the basis for finding a claim is patent eligible under Step 2B of the USPTO’s subject matter eligibility test.  While a claimed structure may be known, “mere knowledge of this type of [claimed structure in a relevant field] does not make its use . . . routine or conventional.”  Therefore, the USPTO confirms that a means-plus-function limitation may provide the basis for patent eligibility where the limitation encompasses both unconventional structure and structure that is well-understood, routine, and conventional.


  1. The USPTO strongly notes that “all USPTO personnel are expected to follow the [USPTO’s] guidance.” In particular, the USPTO confirms that patent applicants may rely upon the Guidance Update and previous guidance in support of arguments that a rejection under § 101 is erroneous in an appeal to the Patent Trial and Appeal Board.


  1. For Step 2A of a proper rejection under § 101, an examiner need only identify a judicial exception by referring to what is recited in the claim and explain why the recited limitation is considered to be an exception. The USPTO confirms that no further support is required by the examiner for issuing the rejection, such as publications or declarations under 37 C.F.R. 1.104(d)(2). However, under Step 2B of the § 101 rejection, an examiner must expressly support a rejection in that any additional elements in the claim recite well-understood, routine, or conventional activity in the relevant field.


  1. The USPTO further notes various special considerations regarding whether a patent claim applies or uses a recited judicial exception to effect a particular treatment or prophylaxis for a medical condition. In particular, the USPTO takes the position that a treatment or prophylaxis limitation must be specifically identified such that it does not encompass all medical applications of the judicial exception.  Another consideration is that a treatment or prophylaxis limitation must have more than a nominal or insignificant relationship to the recited exception.  Finally, the treatment or prophylaxis limitation cannot merely be extra-solution activity or a field-of-use limitation.

Regarding the new index of USPTO’s examples, the USPTO has wonderfully classified current and past USPTO examples within the index based on judicial exception types, and different types of subject matter analysis. The index further classifies the USPTO’s examples based on which considerations were discussed with respect to a given example, e.g., which prongs of Step 2A and which types of analysis under Step 2B were discussed.  The index also provides the title of each USPTO example making for easy technology identification. The index also includes useful explanatory notes regarding recent case law developments that may affect the applicability of any USPTO examples.  For instance, some explanatory notes identify Federal Circuit decisions that have distinguished patent claims from a closely related USPTO example.

For patent applicants, the Guidance Update is another important step for protecting inventors’ rights.  For example, the Guidance Update illustrates the current trend by the USPTO of providing better information for applicants prosecuting applications before the USPTO.  Depending on the type of invention, patent applicants now have a wide variety of options for overcoming 101 rejections, such as affidavits and comparisons to the USPTO examples. On the other hand, concrete examination procedures should assist applicants in verifying whether a given examiner properly analyzed a claimed invention for patent eligibility.

Beyond patent prosecution, the USPTO’s strong affirmation of the current eligibility guidance may also assist patent owners.  For example, the current eligibility guidance should prove a valuable tool in arguing for patent eligibility in post grant review and covered business method review proceedings at the USPTO.