By Ryan Kobs and Zachary Pratt
Effective January 7, 2019, the United States Patent and Trademark Office (USPTO) will implement a revised set of guidelines (available here) for examiners and administrative law judges to follow when determining whether a patent claim recites patent-eligible subject matter under 35 U.S.C. § 101. Citing a need to increase the clarity and consistency with which claims are examined under 35 U.S.C. § 101 after Alice/Mayo, this guidance is a broadening of the prior process for determining whether a claim is directed to a judicial exception under the first and second steps of the Supreme Court’s Alice/Mayo test (i.e., steps 2A and 2B of the test previously outlined in the 2014 Interim Guidance on Patent Subject Matter Eligibility). Most of the changes are related to step 2A, for which the revised guidelines introduce a two-pronged analysis.
The first prong of the two-pronged analysis for Step 2A will generally remain the same as the current test. The key difference is that the USPTO has grouped concepts held to be abstract in prominent court cases to derive three categories of abstract ideas: mathematical concepts, certain methods of organizing human activity (i.e., fundamental economic principles, commercial or legal interactions, and managing personal behavior or relationships or interactions between people), and mental processes. The USPTO appears to take the position that these three categories of abstract ideas almost fully encompass the abstract ideas judicial exception. For example, an examiner must obtain approval from the Technology Center Director to reject a claim when the claim is being treated as reciting an abstract idea not falling within the three categories. The guidance states that a claim that does not recite matter that falls within these three categories of abstract ideas should not be treated as reciting an abstract idea (i.e., the claim is patent-eligible). If the claim is determined to be directed to an abstract idea in one of these three categories or an exception thereto, then the examiner must proceed to the second prong of the new analysis.
In the second prong of Step 2A, the examiner is required to determine whether there are additional elements in the claim “that integrate the exception into a practical application.” If the judicial exception is “integrated into a practical application,” then the claim is patent-eligible under 35 U.S.C. § 101. If the examiner finds that the claim recites a judicial exception and that the claim does not recite an integration of the judicial exception into a practical application, then the test for patent eligibility proceeds to step 2B of the Alice/Mayo test (i.e., whether the claim recites “significantly more” than the abstract idea).
The Federal Circuit has indicated that a “practical application” of an abstract idea can render a claim patent-eligible, as discussed in BASCOM and Alice. The guidance states that “[a] claim that integrates a judicial 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.” The examiner is further required to identify “whether there are any additional elements recited in the claim beyond the judicial exception(s)” and evaluate “those additional elements individually and in combination to determine whether they integrate the exception into a practical application.”
This USPTO guidance provides five examples of abstract ideas integrated into a practical application. Some of these examples include “an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field,” “an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition,” and “an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.” Conversely, examples showing a lack of integration into a practical application include “merely recit[ing] the words ‘apply it’ (or an equivalent) with the judicial exception,” “insignificant extra-solution activity,” and doing “no more than generally linking the use of a judicial exception to a particular technological environment or field of use.”
It should be noted that the analysis under the second prong of step 2A excludes consideration of whether the additional elements represent well-understood, routine, and conventional activity. Instead, this revised USPTO guidance states that “examiners should ensure that they give weight to all additional elements, whether or not they are conventional, when evaluating whether a judicial exception has been integrated into a practical application.” The practical application of an abstract idea can thus include conventional claim elements under the second prong of step 2A and still be considered patent-eligible.
Similar to previous guidance from the USPTO, it remains possible for a claim to include “significantly more” than the abstract idea without having the judicial exception be integrated into a practical application. For instance, this new guidance states that “an examiner might consider  data gathering steps to be insignificant extra-solution activity in revised Step 2A… [but] could determine that the combination of steps gather data in an unconventional way and therefore include an ‘inventive concept,’ rendering the claim eligible at Step 2B.” Therefore, a claim can still be considered patent-eligible when it recites significantly more than an abstract idea under step 2B, even if an examiner determines that the claim does not recite a “practical application” of the alleged abstract idea.
The revised guidance for examining subject matter eligibility under 35 U.S.C. § 101 appears to expand patent-eligible subject matter from previous guidance without narrowing eligibility in any way. Indeed, the USPTO states that “any claim considered patent eligible under prior guidance should be considered patent eligible under this guidance.” Since all USPTO personnel are “expected to follow the guidance,” this revised guidance should result in fewer claims being rejected under 35 U.S.C. § 101. Of course, Applicants and practitioners should remain knowledgeable of recent case law because guidance from the USPTO “does not constitute substantive rulemaking and does not have the force and effect of law.”
 2019 Revised Patent Subject Matter Eligibility Guidance dated January 4, 2019, p. 27.
 Id. at p. 16.
 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352 (Fed. Cir. 2016) (concluding that claims could be eligible if ordered combination of limitations “transform the abstract idea … into a particular, practical application of that abstract idea.”)
 CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1315 (Fed. Cir. 2013) (Moore, J., joined by Rader, C.J., and Linn and O’Malley, JJ., dissenting in part) (“The key question is thus whether a claim recites a sufficiently concrete and practical application of an abstract idea to qualify as patent-eligible.”)
 2019 Revised Patent Subject Matter Eligibility Guidance, pp. 13-14.
 Id. at p. 19.
 Id. at pp. 19-20.
 Emphasis added.
 2019 Revised Patent Subject Matter Eligibility Guidance at pp. 19-20.
 Id. at p. 7.