By Michelle A. Bresler, Shumaker & Sieffert, P.A.

On May 19, 2016, shortly after the Court of Appeals for the Federal  Circuit issued two decisions regarding subject matter eligibility (Enfish, LLC v. Microsoft Corp. (discussed here) and TLI Communications v. A.V. Automotive, LLC), the United States Patent and Trademark Office (USPTO) published a memo[1] giving guidance to its patent examining corps regarding the application of the cases when determining whether software claims are directed to eligible subject matter under 25 U.S.C. § 101. 

The memo should serve as helpful guidance, for examiners and patent practitioners alike, in navigating patent eligibility for software-related inventions. In the memo, the USPTO indicated that the cases do not change the subject matter eligibility framework, but provide clarification regarding identification of whether a claim is directed to an abstract idea (Step 2A of the subject matter eligibility guidelines).


The Office notes four points regarding Enfish:

  • When determining whether a claim is directed to an abstract idea, it is appropriate to compare the claim to claims already found to be directed to an abstract idea in a previous court decision.
  • The “directed to” inquiry applies a filter to claims, when interpreted in view of the specification, based on whether their character as a whole is directed to a patent ineligible concept.
  • The Federal Circuit cautioned against describing a claim at a high level of abstraction untethered from the language of the claim when determining the focus of the claimed invention.
  • An invention’s ability to run on a general purpose computer does not automatically doom the claim.

The USPTO further described Enfish as stating that claims directed to software are not inherently abstract; that one should look to the teachings of the specification to determine whether the claims were directed to an improvement in existing computer technology; and that the improvement need not be defined by reference to “physical” components but, as in this case, may be defined by logical structures and processes.


Regarding TLI, the USPTO described that the claims at issue, in contrast to those in Enfish, were directed to generalized steps to be performed on a computer using conventional computer activity.  The memo summarized the case by stating that the court found the claims, describing steps of recording, administration and archiving of digital images, to be directed to the abstract idea of classifying and storing digital images in an organized manner (Step 2A) and that additional elements of performing these functions using a telephone unit and a server did not add significantly more to the abstract idea because they were well-understood, routine, conventional activities (Step 2B).


The Office summarized by stating that “when performing an analysis of whether a claim is directed to an abstract idea (Step 2A), examiners are to continue to determine if the claim recites (i.e., sets forth or describes) a concept that is similar to concepts previously found abstract by the courts [and t]he fact that a claim is directed to an improvement in computer-related technology can demonstrate that the claim does not recite a concept similar to previously identified abstract ideas.”

Adherence to the guidelines expressed in the USPTO memo will result in the issuance of fewer 101 rejections by examiners.  For those 101 rejections that remain, patent practitioners should invoke the memo to ensure that examiners properly evaluate specific improvements to computer-related technology under Step 2A of the USPTO’s Mayo-Alice framework.  Eliminating the need to address the “significantly more” requirement of Step 2B in many instances will simplify the eligibility analysis and reduce prosecution burden.  The memo’s direction to focus on actual claim language and avoid high levels of abstraction, per Enfish, should likewise filter out many inventions that would have been rejected for lack of subject matter eligibility in the past, and promote Examiner consistency. The overall result of the USPTO’s interpretation of Enfish should be more compact and predictable prosecution of issues relating to subject matter eligibility for computer-related inventions. 


[1] Bahr, Robert W., Deputy Commissioner for Patent Examining Policy Recent Subject Matter Eligibility Decisions (Enfish, LLC v. Microsoft Corp. and TL! Communications LLC v. A. V Automotive, LLC) [Memorandum], Alexandria, Virginia: United States Patent and Trademark Office.