USPTO Issues July 2015 Updated Guidance on Subject Matter Eligibility Analysis

by Foley & Lardner LLP

On July 30, 2015, the United States Patent and Trademark Office (USPTO) issued updated guidance regarding subject matter eligibility analysis to address six major themes from comments received in response to the 2014 Interim Guidance on Subject Matter Eligibility and seven additional examples of applying the subject matter eligibility analysis to claims in the business method, user interface, software, and mechanical arts. The six major themes addressed concerns from the public about: (1) additional examples for claims directed to abstract ideas, (2) clarification of the “markedly different characteristics” (MDC) analysis, (3) additional information on how examiners identify abstract ideas, (4) clarification of how a prima facie case is established and the role of evidence, (5) elucidation on how the interim guidelines were applied in the examining corps, and (6) explanation of the role of preemption for the eligibility analysis. The additional examples provided several different claims involving processing across multiple technological arts to clarify the process and analysis to be done to determined subject matter eligibility.

Following the 2014 Interim Guidance on Subject Matter Eligibility (issued by the USPTO in December of 2014 found here), the USPTO received over sixty comments from the public that prompted the USPTO to issue updated guidance (found here) along with an appendix of additional examples related to the computer arts and other technological arts utilizing computers (found here), an appendix indexing the USPTO’s eligibility examples (found here), an appendix listing court decisions concerning subject matter eligibility (found here), and a quick reference sheet for the updated guidance (found here).

USPTO Response to Six Major Themes of Comments

The July 2015 Update on Subject Matter Eligibility identified six major themes from the comments received responsive to the 2014 Interim Guidance. The first major theme concerned the need for additional examples of subject matter eligible claims that include abstract ideas, particularly those in the business method, graphical user interface, and software arts. The additional examples also addressed another concern regarding how Step 2B from the 2014 Interim Guidance, regarding whether the claim recites additional elements that amount to significantly more than the judicial exception.

A second theme identified by the USPTO from the comments concerned the “Markedly Different Characteristics” (MDC) analysis and whether such analysis should be applied during Step 2A or Step 2B of the 2014 Interim Guidance test. After considering the comments, the USPTO concluded that the MDC analysis should be retained as part of Step 2A for three reasons: (1) applying the MDC analysis at Step 2A will result in earlier determinations of subject matter eligibility for claims that satisfy the MDC analysis, (2) applying the MDC analysis in Step 2A retains the additional pathway to eligibility of Step 2B for claims that fail the MDC analysis, and (3) maintaining the MDC analysis in Step 2A ensures all claims are consistently analyzed for eligibility, regardless of statutory category or type of exception.

A third theme concerned the need for further information on how the examining corps is to identify abstract ideas during the subject matter eligibility analysis. The July 2015 Update observed four particular categories of abstract ideas identified from Supreme Court and Federal Circuit decisions: (1) “fundamental economic practices,” (2) “certain methods of organizing human activity,” (3) “an idea ‘of itself,’” and (4) “mathematical relationships/formulas.”

  • The “fundamental economic practices” category includes “concepts relating to the economy and commerce, such as agreements between people in the form of contracts, legal obligations, and business relations.” The term “fundamental” was clarified as “being foundational or basic, and not in the sense of necessarily being ‘old’ or ‘well-known.’”
  • The “certain methods of organizing human activity” category includes those “concepts relating to interpersonal and intrapersonal activities, such as managing relationships or transactions between people, social activities, and human behavior; satisfying or avoiding a legal obligation; advertising, marketing, and sales activities or behaviors; and managing human mental activity.” The July 2015 Update further clarified that the term “certain” is used to indicate that not all method of organizing human activity are abstract ideas and the category is not meant to cover human operation of machines.
  • The “an idea ‘of itself’” category is to “describe an idea standing alone such as an instantiated concept, plan or scheme, as well as mental processes (thinking) that ‘can be performed in the human mind, or by a human using pen and paper.’” The July 2015 Update noted that some “ideas” can fall under other abstract idea categories.
  • The “mathematical relationships/formulas” category “describe[s] mathematical concepts such as mathematical algorithms, mathematical relationships, mathematical formulas, and calculations.”

A fourth theme addressed by the July 2015 Update concerned the requirements for establishing a prima facie case for subject matter ineligibility and the role of evidence in such a determination. The update stated that “the examiner’s burden is met by clearly articulating the reason(s) why the claimed invention is not eligible, for example by providing a reasoned rationale that identifies the judicial exception recited in the claim and why it is considered an exception, and that identifies the additional elements in the claim (if any) and explains why they do not amount to significantly more than the exception.” The July 2015 Update noted that the rationale may rely on generally available knowledge to those in the art, on case law precedent, on the applicant’s disclosure, or on evidence. However, the USPTO indicated that whether a claim is ineligible is a question of law and courts do not rely on evidence to establish that a claim is directed to a judicial exception.

Moreover, the July 2015 Update indicated that several court decisions relied solely on comparisons to concepts found to be exceptions in past decisions without additional evidence and that additional elements identified as well-understood, routine and conventional in the art did not rely on cited evidence. The USPTO further indicated that the computer functions of “performing repetitive calculations; receiving, processing, and storing data; electronically scanning or extracting data from a physical document; electronic recordkeeping; automating mental tasks; and receiving or transmitting data over a network, e.g., using the Internet to gather data” were found by courts to be understood, routine and conventional in the art without requiring evidence. However, the listing was not intended to imply that all computer functions are well-understood, routine and conventional.

The fifth theme concerned the application of the 2014 Interim Guidelines by the USPTO examining corps. The July 2015 Update indicated that examiners have received eligibility guidance and training to address the concerns and indicated that the comments likely reflected rejections made prior to the issuance of the 2014 Interim Guidelines and additional training.

The final theme addressed the role of preemption and the streamlined analysis. The USPTO remarked that although “[t]he Supreme Court has described the concern driving the judicial exceptions as preemption . . . the courts do not use preemption as a stand-alone test for eligibility.” Rather, questions of preemption are inherent in the two-part framework of the current subject matter eligibility test. Moreover, the July 2015 Update observed that “while a preemptive claim may be ineligible, the absence of complete preemption does not guarantee that a claim is eligible.” As to the streamlined analysis for claims that “clearly do not seek to tie up any judicial exception such that others cannot practice it,” the July 2015 Update indicated that such a test is not a preemption test and application of the full analysis would have the same eligibility result.

Seven Additional Examples Regarding Computer-implemented or Involving Processing

The July 2015 Update further included an appendix of seven illustrative examples of applying the subject matter eligibility analysis to claims in the business method, user interface, software, and mechanical arts. In particular, the examples included subject matter eligibility analysis of claims that would be ineligible as not reciting significantly more than the determined abstract idea, eligible as reciting significantly more than the determined abstract idea, eligible as not reciting a judicial exception, and self-evidently eligible using the streamlined analysis.

The illustrative examples included claims directed to the transmission of stock quote data (finding one claim ineligible and one claim eligible as reciting significantly more than the determined abstract idea), a graphical user interface for meal planning (finding the claim ineligible), a graphical user interface for relocating obscured textual information (finding one claim eligible as not reciting a judicial exception, two claims ineligible, and one claim eligible as reciting significantly more than the determined abstract idea), updating alarm limits (finding the claim ineligible), rubber manufacturing (finding both claims eligible as reciting significantly more than the determined abstract idea), an internal combustion engine (finding the claim eligible using the streamlined analysis), and system software – BIOS (finding the claim eligible using the streamlined analysis).


The July 2015 Update for subject matter eligibility provides the USPTO’s response and clarification to six different themes resulting from the comments to the 2014 Interim Guidance as well as refining the USPTO’s application of the subject matter eligibility analysis in light of subsequent court decisions. The update appears to provide much-needed additional guidance and clarification to both patent applicants and to the examining corps on the application of the two-part subject matter eligibility test. While it is unclear how or if the additional guidance will have an immediate impact on pending patent applications, the clarifications should assist patent applicants in addressing subject matter eligibility rejections at the USPTO.


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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