The 2019 Eligibility Guidance by Example

As my prior post on the 2019 Revised Patent Subject Matter Eligibility Guidance indicated, I initially anticipated only a modest uptick in allowability rates as a result of the new guidance. After analyzing the accompanying examples, however, I concluded that the effect would likely be markedly more profound. Subsequent conversations with examiners—many of whom have now agreed to drop their long-standing eligibility rejections—have only confirmed that belief.

The examples provide analyses of 10 claims as part of six new hypothetical inventions. Significantly, of the 10 claims analyzed, only three are held to be ineligible, and those three are notable for their conspicuous brevity and breadth (44 words / two elements; 71 words / two elements; and 81 words / three elements, respectively). Each of the inventions for which a claim is held ineligible—namely, Examples 37, 40 and 42—also includes an example of an eligible claim, thereby perhaps implying that most inventions should be able to be made eligible as long as the applicant is willing to claim them with sufficient specificity. If so, this would be in marked contrast to earlier post-Alice PTO practice, in which examiners—perhaps due to uncomfortable uncertainty about what was eligible and what was not and fear of being reprimanded for granting a patent on something that might subsequently be found ineligible, perhaps due to the ease of making rejections by broadly applying the holdings of particular Federal Circuit cases—were frequently committed to their § 101 rejections, maintaining the rejections despite all applicant attempts at claim amendments.

The analyses provided in the examples indicate that the PTO will become less aggressive in applying the various categories of “abstract ideas.” The focus of the new guidance and examples on evaluating claims with respect to the limited set of categories articulated by the guidance, rather than on (typically very broad) application of the holdings of the numerous Federal Circuit cases, seems to be making it less convenient for examiners to adopt an “I know it when I see it” approach to abstract ideas in which an examiner first forms a negative impression of claim and subsequently simply shoehorns it into one of the broad buckets articulated by the cases.

The examples also provide qualifications that constrain the applicability of the different categories of abstract ideas. For instance, they suggest that the PTO will no longer invoke the “mathematical relationships, formulas, or calculations” category unless math is explicitly recited in the claims. See, for instance, Example 38 (“Simulation of analog audio mixer”), Example 39 (“Training a neural network for face detection”), and Example 41 (“Cryptographic Communications”), all of which draw a sharp distinction between (i) limitations merely being based on mathematical concepts, and (ii) a “mathematical relationship, formula, or calculation” actually being recited in the claims themselves. In contrast, prior common practice of examiners would have been to assert that the simulation of Example 38, or neural network training of Example 39, was “just math” and hence an abstract idea.

Similarly, the PTO now appears to hold that in order to be classified as a “mental process,” the claimed subject must be practically—and not merely theoretically—capable of being performed in the human mind. Although this requirement had previously been articulated in Federal Circuit cases such as RTC, Bancorp, and McRO, many examiners had nonetheless continued to assert that theoretical performability in the mind was sufficient. See, for example, Example 38, which simply asserts that the steps of model initialization, generating a normally distributed value, and simulating a digital representation of a circuit cannot be performed in the human mind.

Examples 37 (claim 1), 40 (claim 1), 41, and 42 (claim 1) also illustrate how to satisfy new Prong 2 of Step 2A, which asks whether subject matter found to constitute an abstract idea or other judicial exception is nonetheless “integrated into a practical application of the exception” and thus patent-eligible. Specifically, the examples methodically employ the “specific manner, specific benefit” approach repeatedly articulated in various forms by the Federal Circuit in cases such as Enfish, Finjan, and Core Wireless. Although this approach already underlay the Federal Circuit’s reasoning in virtually all its pro-eligibility cases, its clear, repeated use in the examples will make it more evident and compelling to examiners. Further, the examples demonstrate that the degree of claim specificity, and of the benefit achieved, need not be large.

We will be reviewing PTO statistics in a few months for confirmation, but my current expectation—already partially confirmed by my informal examiner conversations—is that we’ll see a major reduction in § 101 ineligibility rejection rates.

*The perspectives expressed in the Bilski Blog, as well as in various sources cited therein from time to time, are those of the respective authors and do not necessarily represent the views of Fenwick & West LLP or its clients.