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February 25, 2020 | By S&H
Posted in: S&H IP Blog | USPTO News

USPTO October 35 U.S.C. §101 2019 Update: Patent Subject Matter Eligibility Practical Tips

On October 17, 2019, the United States Patent and Trademark Office (”USPTO”) published an update to the USPTO 2019 Revised 35 U.S.C. § 101 (”§ 101”) Patent Subject Matter Eligibility Guidance published on January 7, 2019 (”2019 PEG”).


The 2019 PEG revised the procedures for determining whether a claim is directed to a judicial exception (Step 2A of the Alice/Mayo test as revised in the USPTO’s eligibility framework in the 2019 PEG). The October 2019 § 101Patent Eligibility Update (”October 2019 Update”) to the 2019 PEG provided further explanation on the following topics:

  1. Evaluating whether a claim recites a judicial exception


            A claim recites a judicial exception when the judicial exception is ”set forth” or ”described” in the claim. The October 2019 Update provided the following examples to clarify what constitutes a claim reciting a judicial exception.


  • ”set forth” ”“ in Diamond v. Diehr (Supreme Court 1981), the claims clearly stated a mathematical equation and thus, ”set forth” an identifiable judicial exception.
  • ”described” ”“ in Alice Corp. v. CLS Bank (Supreme Court 2014), the claims ”described” the concept of intermediated settlement without using the words ”intermediated” or ”settlement.”


  1. Groupings of abstract ideas in the 2019 PEG


Additionally, the October 2019 Update clarified conditions in which claims recite and do not recite abstract ideas: 

  • Mathematical concepts – a claim does not recite a mathematical concept, if it is only “based on” or “involves” a mathematical concept
  • Certain Methods of Organizing Human Activity – limited to the sub-groups of fundamental economic principles or practices; commercial or legal interactions; managing personal behavior; and relationships or interactions between people
  • Mental Processes –
    • Claims recite a mental process when they contain limitations that can practically be performed in the human mind. However, if the human mind is not equipped to practically perform the claim limitations, the claims do not recite a mental process. For example, a claim directed to a specific data encryption method for computer communication that involves manipulating data several times is not directed to a mental process.
    • Claims do recite a mental process when the claims contain limitations that can practically be performed in the human mind and applicant is merely claiming that concept performed: 1) on a generic computer, 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept

III. Evaluating whether judicial exception is integrated into a practical application


The October 2019 Update clarified the conditions in which a claim reciting a judicial exception integrates the judicial exception into a practical application through:

  • Improvement in functioning of computer or to other technology or technical field-
    • Application’s disclosure should provide details of improvement that would be apparent to one of ordinary skill in the art – simply stating there is an improvement is not enough.
    • Claims themselves must reflect the disclosed improvement.
    • Claims may integrate the judicial exception into a practical application by demonstrating improvement in relevant existing technology, although it may not be an improvement over well-understood, routine, conventional activity.
  • Extra-solution activity – well-understood, routine, conventional activity will only be considered if the analysis proceeds to Step 2B of the Alice/Mayo test.
  1. The prima facie case and the role of evidence with respect to § 101 eligibility rejections
  • Initial burden is on the examiner to clearly and specifically explain why claim(s) are ineligible for patenting under § 101.
    • Examiners must provide applicant with sufficient notice and ability to effectively respond.
    • Examiners must explain why a claim is considered to fall within one of the enumerated groups of abstract ideas set forth in the 2019 PEG.
  • Examiners must identify and explain why any additional elements recited in the claim, when taken individually or in combination, do not:
    • Integrate the judicial exception into a practical application; and
    • Render the claim, as a whole, as amounting to significantly more than the judicial exception.


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