Patent examiners following the Alice two-step approach have easily “abstracted” patent claims and been able to draw from various inconsistent judicial decisions to support their rejection of such claims. The new 2019 Revised Guidance acknowledges the numerous conflicting judicial decisions that have found similar subject matter both eligible and ineligible and imposes a more granular two-prong approach to step 2A. Under the first prong, to find a claim directed to an abstract idea, examiners must now identify the specific limitations in the claim that fall within three specific categories: “mathematical concepts,” “certain methods of organizing human activity” or “concepts performed in the human mind.” If a claim does not fall within one of these categories, then it is likely directed to patentable subject matter.
If the claim does recite one of the new categories, then under the second prong, the examiner must determine whether additional elements are claimed that integrate the abstract idea into a practical application of the abstract idea. “A claim that integrates the 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, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Examples of additional claim elements provided by the guidance that integrate judicial exceptions into a practical application include elements that: improve to the functioning of a computer, affect a particular treatment for a medical condition or implement the judicial exception with a particular machine integral to the claim.
Raising the level of analysis needed for an rxaminer to reject a claim under step 2A may not eliminate the subjectivity of current §101 rejections, but it certainly sets a better trajectory and has improved the quality of examination of applications claiming software-based inventions. For more information about obtaining valuable patents in computer-implemented technologies, contact Roy Craig.