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TAKEAWAY: The USPTO recently released guidance to its examining corps that moderates its prior guidance on patent-eligibility rejections under Section 101 in the wake of Alice v. CLS Bank. Specifically, USPTO clarified that Section 101 rejections must be made within the bounds of existing court decisions, and with sufficient written rationale to provide patent applicants with adequate notice and opportunity to respond to those rejections.

Last week, the USPTO issued another Memorandum providing the examining corps with updated guidance on patent eligibility in the wake of the Supreme Court’s decision in Alice v. CLS Bank. Briefly, the memo provides more clarity on (i) how examiners should formulate a subject matter eligibility rejection under Section 101, and (ii) how examiners should evaluate an applicant’s response to such a rejection. Regarding the formulation of a Section 101 rejection, the memo advises that Office actions must explicitly:

  • 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;
  • 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 (emphasis in original memo).

The memo explains that, “the Office action must provide an explanation as to why each claim is unpatentable, which must be sufficiently clear and specific to provide applicant sufficient notice of the reasons for ineligibility and enable the applicant to effectively respond.”

The overall tone of the memo suggests that the USPTO should apply Section 101 rejections judiciously, and within the specific examples of already-decided court cases. For example, the memo explains that prosecution is advanced by the best practice of “[c]iting to an appropriate court decision that supports the identification of the subject matter recited in the claim language as an abstract idea [and that] Examiners should not go beyond those concepts that are similar to what the courts have identified as abstract ideas.”

Regarding computer-related inventions, the USPTO clarified its July 2015 update, stating that its listing of “well-understood, routine, conventional” computer functions “is not meant to imply that all computer functions are well-understood, routine, conventional functions, or that a claim reciting a generic computer component performing a generic computer function is necessarily ineligible.” The memo clarifies that “Examiners should keep in mind that the courts have held computer-implemented processes to be significantly more than an abstract idea (and thus eligible), where generic computer components are able in combination to perform functions that are not merely generic (DDR).”