The United States Patent and Trademark Office recently issued a new memorandum to patent examiners on recent software patent eligibility decisions from the Federal Circuit. The memo sent to patent examiners provides discussion of McRo, Inc. v. Bandai Namco Games America and BASCOM Global Internet Services v. AT&T Mobility.
The PTO acknowledges in the memo that the Federal Circuit even more recently issued another precedential decision in Amdocs (Israel) Ltd. v. Openet Telecom, which will be discussed in forthcoming subject matter eligibility guidance. For more on that case, please see Software eligible because it recites technical solution to technical problem.
With respect to McRo, the PTO instructed examiners as follows:
Examiners should consider the claim as a whole under Step 2A of the USPTO’s SME guidance, and should not overgeneralize the claim or simplify it into its “gist” or core principles, when identifying a concept as a judicial exception…
An “improvement in computer-related technology” is not limited to improvement in the operation of a computer or 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…
With respect to BASCOM, the PTO instructed examiners as follows:
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 non-conventional and non-generic arrangement of known, conventional elements…
(emphasis in the original).
The PTO also addressed the issue of preemption, which has come up in several recent decisions, instructing examiners as follows:
Examiners should 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… If 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 the original).
Tags: patent, Patent eligibility, Patent Office, patents, USPTO
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