On August 4, the USPTO issued a Memorandum to examiners in Technology Centers 2100, 2600, and 3600, providing reminders and clarifications on evaluating subject matter eligibility under 35 U.S.C. § 101. This guidance is particularly relevant to software-related inventions, including those involving artificial intelligence (AI) and machine learning (ML), and aims to reinforce consistent application of the USPTO’s eligibility framework as outlined in the Manual of Patent Examining Procedure (MPEP).
The memo emphasizes the importance of properly applying Step 2A of the USPTO’s eligibility analysis in determining whether a claim recites a judicial exception and, if so, whether it is integrated into a practical application. The guidance draws from MPEP Section 2106, previously issued guidance (including the 2024 AI Subject Matter Eligibility Update) and USPTO subject matter eligibility examples, including those focused on AI technologies.
Below outlines many of the aspects addressed in the memo.
Mental Process Grouping: Examiners are reminded that claims reciting limitations that cannot be practically performed in the human mind, including those involving specific AI implementations, should not be categorized as mental processes, while further reminding examiners that limitations practically performed in the human mind, such as evaluations, judgments, or opinions, can fall under the mental process grouping of abstract ideas. This distinction is crucial to avoid overgeneralizing claims and improperly rejecting them.
Reciting vs. Involving Judicial Exceptions: The memo attempts to provide some clarification of the difference between claims that “recite” a judicial exception and those that merely “involve” one. Only the former requires further eligibility analysis. For example, a claim that references mathematical algorithms may recite an abstract idea, whereas a claim that describes training a neural network without specifying mathematical relationships may not.
Claim as a Whole Analysis: The memo continues to remind examiners, relative to Step 2A Prong Two, that an evaluation must consider whether the claim as a whole integrates the judicial exception into a practical application. This includes considering how additional elements interact with the exception. The analysis should take into consideration all the claim limitations, as well as how these limitations interact when determining whether the exception is integrated into a practical application.
Improvements and “Apply It” Considerations: Examiners are further reminded that claims that improve the functioning of a computer or another technology or technical field may be deemed eligible. The examination should look for technological solutions to technological problems, and to assess whether the claim reflects a particular solution rather than a general idea. The memo cautions Examiners not to oversimplify limitations and expand the application of the “apply it” consideration, while reminding examiners that the “apply it” consideration often overlaps with the improvements analysis.
Threshold for Rejection: The USPTO reiterates that examiners should only issue a rejection under § 101 when it is more likely than not that the claim is ineligible. Uncertainty alone is not a sufficient basis for rejection. All rejections must be supported by a preponderance of the evidence, and compact prosecution principles require that all statutory bases for unpatentability be addressed in the first Office action.
This guidance underscores the USPTO’s ongoing effort to provide clarity and consistency in examining AI and software-related inventions. Applicants should carefully consider how claims are framed, particularly when describing AI functionality, to ensure they align with the USPTO’s eligibility framework and recent clarifications. A well-crafted application that clearly integrates technological solutions into a practical application may stand a better chance of avoiding unnecessary eligibility rejections.
