Additional Guidance for Post-Alice Prosecution


The Latest Memorandum from USPTO on Subject Matter Eligibility Provides Additional Guidance for Post-Alice Prosecution


On November 2, 2016, the United States Patent and Trademark Office ("USPTO") issued a memorandum to Examiners ("Memorandum") updating the USPTO's May 2016 subject matter eligibility ("SME") guidance in light of recent decisions issued by the United States Court of Appeals for the Federal Circuit ("Federal Circuit").  

Recent SME Cases

The Memorandum provides a discussion and guidance in response to two recent Federal Circuit decisions that identify eligible subject matter, McRO, Inc. v. Bandai Namco Games America and BASCOM Global Internet Services v. AT&T Mobility.  The Federal Circuit's decision in Amdocs (Israel) Ltd. v. Openet Telecom was issued on November 1st, just one day prior to the release of the Memorandum, and therefore is not discussed in the Memorandum.  However, because the Amdocs decision also identifies eligible subject matter, the USPTO will likely issue a further update addressing that decision.

In McRO, the Federal Circuit held that the claimed methods of automatic lip synchronization and facial expression animation using computer-implemented rules was patent eligible subject matter as being directed to

an improvement in computer-related technology (allowing computers to produce "accurate and realistic lip synchronization and facial expressions in animated characters" that previously could only be produced by human animators), and thus did not recite a concept similar to previously identified abstract ideas.

In reaching its determination, the Federal Circuit relied on the specification's explanation of how the claimed rules enabled the automation of specific animation tasks that previously could not be automated.  The Federal Court stated that it was the incorporation of the particular rules that "improved the existing technological process." 

The Federal Circuit, in McRO, cautioned that courts "must be careful to avoid oversimplifying the claims" by looking at them generally and failing to account for the specific requirements for the claim.  The Federal Circuit further noted that the claims at issue described a specific way (use of particular rules) to solve a particular problem (producing accurate and realistic lip synchronization and facial expressions in animated characters), rather than merely claiming the idea of a solution or outcome, and were thus not directed to an abstract idea. 

In view of McRO, the Memorandum provides the following guidance to USPTO examiners:

  • Examiners should consider a claim as a whole, and should not simplify it into its "gist" or core principles, when identifying a concept as a judicial exception.

  • An "improvement in computer-related technology" is not limited to improvements in the operation of a computer or a computer network per se, but may also be claimed as a set of "rules" (basically mathematical relationships) that improve computer-related technology by allowing computer performance of a function not previously performable by a computer. 

  • An indication that a claim is directed to an improvement in computer-related technology may include:

    • A teaching in the specification about how the claimed invention improves a computer or other technology (e.g., in McRO the specification's explanation of how the claimed rules enabled the automation of the specific animation tasks that previously could not be automated); and,  
    • A particular solution to a problem or a particular way to achieve a desired outcome defined by the claimed invention, as opposed to merely claiming the idea of a solution or outcome technology (e.g., in McRO the claims defined a specific way, namely use of particular rules, to solve the problem of accurate and realistic lip synchronization and facial expressions in animated characters).


With regard to the BASCOM case, the Federal Circuit agreed that the additional elements were generic computer, network, and Internet components that did not amount to significantly more when considered individually, but explained that when combined, an inventive concept may be found in the non-conventional and non-generic arrangement of the additional elements.  

In light of the decision in BASCOM, the Memorandum provides that examiners "should consider the additional elements in combination, as well as individually, when determining whether a claim as a whole amounts to significantly more, as this may be found in the nonconventional and non-generic arrangement of known, conventional elements." 

Beyond the Cases: Preemption 
The Memorandum further provides comments on the subject of preemption.  It notes that some recent decisions discuss the absence of preemption as confirming the analysis that the claimed invention is not directed to a judicial exception or includes an inventive step, while other recent decisions do not consider the absence of preemption as conferring patent eligibility.  The Memorandum advises that examiners should continue to use the Mayo/Alice framework to resolve questions of preemption if an applicant argues that a claim does not preempt all applications of the exception.  The Memorandum further notes that the USPTO will address preemption in more detail in its forthcoming update to its SME guidance.

Finally, the Memorandum advises examiners that they should avoid relying upon or citing non-precedential decisions unless the facts of the application under examination uniquely match the facts at issue in the non-precedential decision. 

Conclusion
The Memorandum provides examiners with additional clarifying guidance when providing subject matter eligibility analysis.  It will be interesting to see the USPTO's update to its SME guidance based on the Amdocs opinion, in which the Federal Circuit majority found subject matter eligibility where the claims rely on generic components, but when the limitations are considered individually and as an ordered combination, they provide an inventive concept.  This guidance, and presumably any updated USPTO guidance based on Amdocs, will certainly have a positive impact on finding subject matter eligibility in software inventions.  Thus, there may be cause for innovators and practitioners in the software space to have increased optimism that their claims will be recognized as subject matter eligible.

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