On November 2, 2016, the United States Patent and Trademark Office’s (USPTO) Deputy Commissioner, Robert W. Bahr, issued a memorandum in regard to “Recent Subject Matter Eligibility Decisions” from the U.S. Court of Appeals for the Federal Circuit (CAFC). Although the decisions do not change the basic subject matter eligibility framework, they will provide additional information regarding eligibility for software claims.
The decisions come from two recent court cases, McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016) and BASCOM Global Internet Services v. AT&T Mobility LLC, 827 F .3d 1341 (Fed. Cir. 2016).
In McRO, the CAFC held the “claimed methods of automatic lip synchronization and facial expression animation using computer-implemented rules patent eligible under 35 U.S.C. § 101, because they were not directed to an abstract idea.” (emphasis in original)
With respect to McRO, Bahr instructed examiners to “consider the claim as a whole under Step 2A of the USPTO’s SME guidance” and they “should not overgeneralize the claim or simplify it into its ‘gist’ or core principles, when identifying a concept as a judicial exception.” Bahr also stated “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—
(1) a teaching in the specification about how the claimed invention improves a computer or other technology…
(2) 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…
In BASCOM, the CAFC “vacated a judgement of ineligibility because the district court failed to properly perform the second step of the Mayo/Alice framework (Step 2B of the USPTO’s SME guidance) when analyzing a claimed system for filtering content retrieved from an Internet computer network.”
With respect to BASCOM, Bahr stated “In Step 2B of the USPTO’s SME guidance, 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…” (emphasis in original).
Bahr also mentioned preemption, which has been discussed in several recent decisions. Bahr stated that this issue will be addressed in a forthcoming update to the subject matter eligibility (SME) guidance, but instructed examiners to “continue to use the Mayo/Alice framework… to resolve questions of preemption. If applicant argues that a claim does not preempt all applications of the exception, an examiner should reconsider in Step 2A of the eligibility analysis whether the claim is directed to an improvement in computer-related technology or a specific way of achieving a desired outcome or end result. [Also] [i]f an examiner still determines that the claim is directed to a judicial exception, the examiner should then reconsider in Step 2B of the eligibility analysis whether the additional elements in combination (as well as individually) are more than the non-conventional and non-generic arrangement of known, conventional elements.” (emphasis in original).
In closing, Bahr addressed the large number of precedential decisions and instructed examiners “to 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.”
Click on the link below to read the full memorandum.
https://www.uspto.gov/sites/default/files/documents/McRo-Bascom-Memo.pdf