The PTO released their highly anticipated revised guidance on subject matter eligibility that take effect on January 7, 2019. Below, we discuss the changes to the subject matter eligibility analysis made by the revised guidance and how Applicants may address these changes in practice.
Summary of Revised Guidance
The revised guidance maintains the two step Alice/Mayo Test but revises the procedure for determining whether a claim is directed to a judicial exception (e.g., an abstract idea) under Step 2A. Previously, the PTO guidelines (wrongly) equated a claim merely “reciting” an abstract idea with a claim being “directed to” the abstract idea under Step 2A. The PTO has replaced this approach with a new two prong analysis.
In the first prong of Step 2A, Examiners evaluate whether a claim recites an abstract idea. The first prong is similar to the previous approach with one important change. Previously, Examiners were to describe the subject matter claimed and identify whether the subject matter had previously been found to be directed to an abstract idea by the courts. The PTO found this approach impractical due to the ever-increasing number of court decisions and rightly noted that it has been difficult for Examiners to apply this approach in a predictable manner, especially between different technology centers.
Instead of this case law specific approach, the PTO newly identified three groups of abstract ideas: mathematical concepts, certain methods of organizing human activity, and mental processes. Examiners must now a) identify specific limitations in the claims believed to be an abstract idea, and b) determine whether the identified limitations fall within any of the three newly identified groups. If the identified limitations fall within the three groups of abstract ideas, the analysis proceeds to the second prong of Step 2A.
In the second prong of Step 2A, Examiners evaluate whether the claim as a whole integrates the abstract idea into a practical application. The million-dollar question then becomes what is a practical application? The PTO broadly answers this question by stating “[a] claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception.” The PTO also gives several examples based on case law that indicate an additional element or combination of elements may have integrated an exception into a practical application, such as: improving the functioning of a computer or a technical field, effecting a treatment for a medical condition, using the judicial exception with a particular machine, or transforming or reducing a particular article to a different state or thing.
The PTO acknowledges that these examples and the second prong of step 2A overlap considerations that the courts and the PTO’s guidance consider under Step 2B but feels that this new approach will increase certainty and reliability. For clarity, the PTO reiterated that merely using a computer as a tool to perform the abstract idea, adding insignificant extra-solution activity, or generally linking the abstract idea to a technical field will still not be enough to establish a practical application and patent eligibility. If the claim does not integrate the abstract idea into a practical application, then the claim is directed to an abstract idea under Step 2A and the analysis proceeds to Step 2B.
Step 2B has not been changed under the revised guidance and Examiners are still to evaluate whether the claims provide an inventive concept by reciting significantly more than the abstract idea. However, the incorporation of several Step 2B considerations into the second prong of Step 2A limits how much additional analysis the Examiner needs to apply in Step 2B. Importantly, whether the additional elements are well-understood, routine, conventional activity is not evaluated under the second prong of Step 2A and is unrelated to whether the claim integrates the abstract idea into a practical application. This evaluation is still done in Step 2B pursuant to the Berkheimer memo to determine whether the additional element or combination of elements adds limitations that are not well-understood, routine, conventional activity in the field which is indicative that an inventive concept may be present.
The new two prong approach to Step 2A should make it easier to work with Examiners, especially during interviews, to overcome 101 rejections. Under the prior guidance, Examiners would often dismiss any Step 2A arguments because their guidelines simply said a claim was directed to an abstract idea if any part of the claim recited an abstract idea. This made it very easy for Examiners to establish the claims were directed to an abstract idea without much analysis. The revised guidelines will make it much more difficult for the Examiner to simply dismiss an Applicant’s Step 2A arguments.
Equally as frustrating was Examiners misapplying case law when attempting to identify a decision that found subject matter, similar to the claims, to be directed to an abstract idea. Applicants should be able to avoid the necessity of debating case law cited by Examiners (which was rarely an effective manner of overcoming a 101 rejection anyway) because the Examiners are not required to cite specific decisions in their rejections anymore and merely must identify one of the three newly defined groups of abstract ideas.
Instead, Applicants can now focus on the newly articulated “practical application” consideration in the second prong of Step 2A. While the examples of practical applications given in the revised guidelines are nothing new and come straight from case law Applicants should have already been using to overcome 101 rejections, the examples were not always given much weight by the Examiners or simply dismissed nominally in Step 2B. The revised guidelines’ focus on the “practical application” consideration and the given examples may make it easier to use these examples to effectively overcome the 101 rejections (without necessarily having to argue the case law behind the examples).
Moreover, the PTO broadly describing the case law as establishing a “practical application” consideration gives Applicants more leeway than relying on specific court decisions as done in the past. For example, it may be easier to convince an Examiner on a technical level that claims “apply, rely on, or use the judicial exception” in a meaningful manner than to convince the Examiner that claims are similar to subject matter previously held by the courts to be directed to statutory subject matter. However, Applicants must be mindful that the goal is not simply to get patent applications allowed by satisfying the PTO’s revised guidelines, but to have claims that are statutory as supported by case law and that can withstand the 101 analysis performed by the courts.
Any noticeable change in examination will depend heavily on how Examiners are trained to implement the new guidance. Accordingly, it may be months before we fully realize how significant the changes will be to 101 rejections in practice.
 2019 Revised Patent Subject Matter Eligibility Guidance
 Revising 101 Eligibility Procedure in view of Berkheimer v. HP, Inc.
For a shorter summary of the above, visit here.