U.S. Patent and Trademark Office announces revised guidance for determining subject matter eligibility

The USPTO announced revised guidance for subject matter eligibility under 35 U.S.C. § 101. The USPTO also announced guidance on the application of 35 U.S.C. § 112 to computer-implemented inventions.

The “2019 Revised Patent Subject Matter Eligibility Guidance” makes two primary changes applying the first step of the Alice/Mayo test, judicial exception.

• First, the revised guidance extracts and synthesizes key concepts identified by the courts as abstract ideas to explain that the abstract idea exception includes certain groupings of subject matter: mathematical concepts, certain methods of organizing human activity, and mental processes.
   

• Second, the guidance provides a two-prong inquiry for whether a claim is “directed to” a judicial exception. In the first prong, examiners will evaluate whether the claim recites a judicial exception and if so, proceed to the second prong. In the second prong, examiners evaluate whether the claim recites additional elements that integrate the identified judicial exception into a practical application. If a claim both recites a judicial exception and fails to integrate that exception into a practical application, then the claim is “directed to” a judicial exception. In such a case, further analysis pursuant to the second step of the Alice/Mayo test is required.

  The “Examining Computer-Implemented Functional Claim Limitations for Compliance with 35 U.S.C. § 112” guidance emphasizes various issues with regard to § 112 analysis, specifically as it relates to computer-implemented inventions. The guidance describes proper application of means-plus-function principles under § 112(f), definiteness under § 112(b), and written description and enablement under § 112(a).