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USPTO Issues Memorandum On Recent Subject Matter Eligibility Decision


November 9, 2016

On November 2nd, the USPTO issued new guidance to Patent Examiners regarding § 101 subject matter eligibility. The memorandum (USPTO-McRO-Bascom-Memo-1.pdf) provides guidance based on Federal Circuit decisions issued since the office’s most recent, May 2016, update. The memo includes guidance based on the Federal Circuit’s recent decisions in McRO, Inc. v. Bandai Namco Games and BASCOM Global Internet v. AT&T Mobility decisions.

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In McRO, the Federal Circuit held that a method of automatic lip synchronization and facial expression animation using computer-implemented rules is patent eligible under 35 U.S.C. § 101 as being directed to an improvement in computer-related technology. The improvement was routed in a set of specific rules to set morph weights and transition parameters between phonemes. The court indicated that it was the incorporation of these specific rules in computer animation that provided the necessary improvement to the existing technological process. The memo notes that these specific rules, as explained in the specification, are not used by human artists which instead rely on subjective determinations to set forth the morph weights and the manipulation of the animated face to match pronounced phenomes.

The memo suggests looking at (1) a teaching in the specification about how the claimed invention improves a computer or other technology or (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 as possible indicators that a claim is directed to an improvement in computer-related technology.

In BASCOM, the Federal Circuit held that a system that includes the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user is patent eligible under 35 U.S.C. § 101. The Court agreed that the additional elements including a generic computer, network, and Internet components did not amount to significantly more under step 2B of the USPTO’s Subject Matter Eligibility Test when considered individually. However, the Court explained that the inventive concept may be found in the non-conventional and non-generic arrangement of the additional elements, namely the placement of customized filtering components.

The memo suggests that examiners need to consider additional elements in combination, as well as individually when determining whether a claim as whole amounts to significantly more, as this requirement may be found in non-conventional and non-generic arrangement of known or conventional elements.

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