By: Bryan G. Dobbs
On August 4, 2025, Deputy Commissioner Kim issued a Memorandum “Reminders on evaluating subject matter eligibility of claims under 35 U.S.C. § 101” (memorandum) to Technology Centers 2100, 2600, and 3600. The memorandum provides valuable guidance to practitioners looking to avoid or overcome § 101 rejections in software-related arts, particularly Artificial Intelligence (AI) and Machine Learning (ML). Specifically, the memorandum provides guidance relating to Step 2A of the USPTO’s subject matter eligibility guidance.[1]
Step 2A, prong 1 of the USPTO’s subject matter eligibility guidance includes a determination of whether a claim recites a judicial exception. Previous guidance instructed examiners to limit the judicial exceptions to the three groupings of mathematical concepts, certain methods of organizing human activity, and mental processes.[2] The memorandum emphasizes that claims which cannot be practically performed in the human mind do not fall within the judicial exception of mental steps. Furthermore, the memorandum reminds examiners that claims merely involving an exception recite eligible subject matter and do not require further eligibility analysis. For example, even though the recitation of the “training the neural network” may involve or rely upon mathematical concepts, the USPTO’s guidance in example 39 concludes that the recitation merely involves an abstract idea and therefore recites eligible subject matter. In contrast, the USPTO’s guidance in example 47 concludes that “training, by the computer, the ANN based on the input data and a selected training algorithm to generate a trained ANN, wherein the selected training algorithm includes a backpropagation algorithm and a gradient descent algorithm,” in claim 2 recites a judicial exception and therefore requires further analysis.
Step 2A, prong 2 of the USPTO’s subject matter eligibility guidance includes a determination of whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. The memorandum reminds examiners to analyze the claims as a whole and to consider technical improvements. Moreover, the memorandum cautions examiners not to oversimplify claim limitations and to avoid expanding the application of the “apply it” consideration provided in MPEP § 2106.05(a).
Key Takeaways
Practitioners should closely review § 101 rejections that characterize claim elements as reciting mental steps in the Step 2A, prong one analysis, particularly when the claims are directed to AI/ML. Additionally, practitioners should ensure that the Step 2A, prong two analysis considers the claim as a whole and does not oversimplify the claims to assert that the claim limitations are mere instructions to “apply it.” The memorandum provides helpful guidance on how to address rejections that expand the application of the “apply it” consideration. Moreover, practitioners may want to draft claims, particularly claims involving AI and ML inventions, with a higher level of generality to try to avoid reciting an abstract idea.
By reinforcing requirements for § 101 rejections in software related-arts, particularly AI/ML, the memorandum may deter examiners from applying § 101 rejections. Further, the memorandum reminds examiners that a § 101 rejection should not be made simply because an examiner is uncertain as to the claim’s eligibility and instructs examiners to not make a § 101 rejection for a “close call.” As such, it may be helpful to reference the memorandum when conducting an examiner interview and when responding to an Office Action to overcome § 101 rejections without narrowing the claims.
[1] 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019). See also, the 2024 Guidance update and the July 2024 SME examples.
[2] See MPEP 2106.04(a).