The United States Patent and Trademark Office (USPTO) issued a memorandum on August 4, 2025, to provide reminders to Examiners in software-related arts, including artificial intelligence (AI) and machine learning, regarding subject matter eligibility. This memorandum provides guidance on four topics that arise when examiners assess Step 2A of the USPTO’s subject matter eligibility analysis.
The first two topics addressed by the memorandum are directed to Step 2A Prong One of subject matter eligibility analysis, which is a determination of whether a claim recites a judicial exception.
As the first topic and regarding the mental processes as one grouping of the “abstract idea” type judicial exceptions, the memorandum reminds the Examiners that “a claim does not recite a mental process when it contains limitation(s) that cannot practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitation(s).” More specifically, the memorandum clarifies that “Claim limitations that encompass AI in a way that cannot be practically performed in the human mind do not fall within this grouping.”
As the second topic, the memorandum reminds the Examiners that “Examiners should be careful to distinguish claims that recite an exception (which require further eligibility analysis) from claims that merely involve an exception (which are eligible and do not require further eligibility analysis).” The memorandum discusses USPTO example 39 (claim limitations that merely involve an abstract idea) and example 47 (claim limitations that recite an abstract idea.)
The next two topics addressed by the memorandum are directed to Step 2A Prong Two of subject matter eligibility analysis, which is an evaluation of whether the claim as a whole integrates the recited judicial exception into a practical application of the exception.
As the third topic, the memorandum reminds the Examiners that the Step 2A Prong Two “analysis should take into consideration all the claim limitations and how these limitations interact and impact each other when evaluating whether the exception is integrated into a practical application.” In other words, the Step 2A Prong Two analysis considers the claim as a whole.
As the fourth topic, the memorandum reminds the Examiners that they can find that claims are “eligible in Step 2A Prong Two by finding that a claim reflects an improvement to the functioning of a computer or to another technology or technical field.” The memorandum reminds the Examiners to consider the “apply it” consideration but cautions the Examiners not to oversimplify claim features and expand the application of the “apply it” consideration.
Finally, the memorandum reminds the Examiners that “if it is a ‘close call’ as to whether a claim is eligible, they should only make a rejection when it is more likely than not (i.e., more than 50%) that the claim is ineligible under 35 U.S.C. 101.”
Takeaways:
- These reminders have not changed the subject matter eligibility analysis, but illustrate the USPTO’s continued work on fine tuning the analysis for AI and machine learning inventions.
- Inventions for AI and machine learning still have chances to pass the subject matter eligibility analysis when these inventions cannot practically be performed in the human mind and/or when these inventions include an improvement to the functioning of a computer or to another technology or technical field.
