Over the past six years, the U.S. Supreme Court has issued a series of decisions—Bilski, Mayo, Myriad, and Alice—that have significantly impacted patent eligibility law, particularly in the areas of software and biotechnology. On November 2, 2016, the United States Patent and Trademark Office (USPTO) published a memorandum to patent examiners, discussing two recently-issued Federal Circuit decisions, namely McRO, Inc. v. Bandai Namco Games America Inc. and BASCOM Global Internet Services v. AT&T Mobility LLC. In these cases, software-related claims were deemed patent eligible—a seemingly rare occasion in view of the Supreme Court precedent (for discussion of the McRO and BASCOM decisions, please see details in our previous post). The November 2nd memorandum is the latest of three memoranda discussing various Federal Circuit decisions concerning subject matter eligibility since the USPTO last updated its official guidelines on May 4, 2016. As in previous memoranda, the USPTO reiterates that the Federal Circuit decisions do not alter the current eligibility framework, but provide additional tools for finding patent eligible subject matter in software claims. In addition to discussing the McRO and BASCOM decisions, the November 2nd memorandum identifies several notable points to be considered by patent examiners.
As discussed in the latest memorandum, the Federal Circuit in McRO held that the claims at issue are patent eligible under 35 USC § 101 because they are not directed to an abstract idea under the first prong of the two-part Alice test. Under Alice, all claims having an abstract idea are analyzed in two steps:
Part I: Determine whether the claim is directed to an abstract idea.
Part II: If an abstract idea is present in the claim, determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to “significantly more” than the abstract idea itself.
In McRO, representative claim 1 of the patent-in-suit recites:
1. A method for automatically animating lip synchronization and facial expression of three-dimensional characters comprising:
obtaining a first set of rules that define output morph weight set stream as a function of phoneme sequence and time of said phoneme sequence;
obtaining a timed data file of phonemes having a plurality of sub-sequences;
generating an intermediate stream of output morph weight sets and a plurality of transition parameters between two adjacent morph weight sets by evaluating said plurality of sub-sequences against said first set of rules;
generating a final stream of output morph weight sets at a desired frame rate from said intermediate stream of output morph weight sets and said plurality of transition parameters; and
applying said final stream of output morph weight sets to a sequence of animated characters to produce lip synchronization and facial expression control of said animated characters.
The claims were found not to be directed to a judicial exception (i.e., abstract idea) because they relate to improvements in computer-related technology, as thoroughly described in the specification. That is, the specification details how the claims improve computer animation and allow for automation of certain animation tasks by using rules—rather than human judgment—to set morph weights and transitions between phonemes. The court further indicated that the claims recite a specifically designed process to achieve an improved technological result.
Key Takeaways from McRO for Examiners
In light of the McRO decision, the USPTO memorandum identifies the following notable points for consideration by examiners:
- When determining whether a claimed concept is directed to a judicial exception (e.g., an abstract idea):
- Claims should be considered as a whole; and
- Claims should not be overgeneralized or simplified into a gist or core principles.
- “Improvements in computer-related technology”…
- Do not have to be related to the operation of a computer or computer network per se; and
- Can be claimed as a set of rules (i.e., mathematical relationships) that allow for the performance of a function not previously performable by a computer.
- An indication that a claim is directed to an improvement in computer technology may be found in:
- Teachings in the specification showing how the claimed invention improves a computer;
- Claiming a particular solution to a problem rather than an idea of a solution.
As further discussed in the memorandum and in our previous post, the Federal Circuit in BASCOM held that, even though the claims are directed to the abstract idea of filtering content, they are nonetheless patent eligible under the second part of the Alice test because the combination of the claim limitations describes an inventive concept. Representative claim 1 of the patent-in suit recites:
1. A content filtering system for filtering content retrieved from an Internet computer network by individual controlled access network accounts, said filtering system comprising:
a local client computer generating network access requests for said individual controlled access network accounts;
at least one filtering scheme;
a plurality of sets of logical filtering elements; and a remote ISP server coupled to said client computer and said Internet computer network, said ISP server associating each said network account to at least one filtering scheme and at least one set of filtering elements, said ISP server further receiving said network access requests from said client computer and executing said associated filtering scheme utilizing said associated set of logical filtering elements.
In support of its finding of eligibility, the court in BASCOM explained that although the claimed filtering of content on the Internet is known, and the additional generic computer, network and Internet components individually do not amount to “significantly more,” they recite an inventive concept when considered in combination. The court found that installing the filtering tool at remote ISP servers while allowing users to customize their respective filter criteria is an inventive concept because, unlike traditional local filtering systems, the claimed invention prevents user circumvention of the filters and eliminates the need for users to locally maintain content databases.
Key Takeaways from BASCOM for Examiners
In light of the BASCOM decision, the latest memorandum identifies the following notable points for consideration by examiners:
- Consider additional elements in a claim alone and in combination, to determine if the claim as a whole amounts to significantly more than a judicial exception.
- A claim can amount to significantly more than the judicial exception by arranging conventional elements in a non-conventional and non-generic manner.
The November 2nd memorandum thus further emphasizes various principles to keep in mind when drafting patent applications to prepare for potential subject matter eligibility issues. Applicants and practitioners should file patent applications that describe in detail, among other things, how the inventive concept improves then-existing systems and/or how it enables new functionality. They should also include descriptions of elements or features that on their own may appear to be generic or conventional, as these can result in an inventive concept when considered in combination. Claims of varying scope should continue to be filed with the application, keeping these principles in mind.
Conclusion and Future Updates to the Guidelines
Although the latest memorandum does not provide significant new guidance regarding subject matter eligibility, it does serve to remind examiners of the need to more closely review claims to identify patent eligible material. Fortunately for applicants and practitioners seeking more clarity, the USPTO announced in the memorandum that a further update to its subject matter eligibility guidelines is forthcoming. The updates to the guidelines will be based on at least the McRO and BASCOM decisions, as well as the Federal Circuit’s most recent finding of eligibility in Amdocs (Israel) Ltd. v. Openet Telecom, Inc.. Because these cases all deal with software-related patents, applicants and practitioners can likely anticipate that the next set of guideline updates will provide further instructions on how to protect software inventions that solve technological problems and improve the performance of systems.
 120 USPQ2d 1091 (Fed. Cir. 2016).
 827 F .3d 1341 (Fed. Cir. 2016).
 USPTO Memorandum: Recent Subject Matter Eligibility Decisions (Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. A. V Automotive, LLC), May 19, 2016; USPTO Memorandum: Recent Subject Matter Eligibility Rulings (Rapid Litigation Management v. CellzDirect and Sequenom v. Ariosa), July 14, 2016.
 Alice Corporation Pty. Ltd. v. CLS Bank International, 573 U.S. ___ (2014).
 No. 2015-1180 (Fed. Cir. Nov. 1, 2016).