1. Subject Matter Eligibility
2019 Revised Guidance on
Subject Matter Eligibility
Jon Hines
Associate
March 7, 2019
LAKC CLE

2. Overview Status of Subject Matter Eligibility Analysis
Three Major Changes in 2019 Revised Guidance
Identification of Abstract Ideas
Categorization of Abstract Ideas
Practical Application of Abstract Ideas
Implementation of the 2019 Revised Guidance by Examiners
The 2019 Revised Guidance is published in 84 Fed. Reg. 4, at
The 2019 Revised Guidance can be found at the following web addresses:

3. Goal of New Guidance
To provide a straight-forward and applicable test, the 2019 Revised Guidance changes the emphasis of the test without changing the underlying law.
Subject matter eligibility analysis had “become impractical.” Id. at 52.
“In addition, similar subject matter has been described both as abstract and not abstract in different cases. The growing body of precedent has become increasingly more difficult for examiners to apply in a predictable manner.” Id. at 52.
Broaden the allowable subject matter - “any claim considered patent eligible under prior guidance should be considered patent eligible under this guidance.” Id. at 51.

4. Summary of Changes
In general, the 2019 Revised Guidance provides three significant changes to the subject matter eligibility analysis.
First, alleged abstract ideas must be recited verbatim in the claims. No longer can abstract ideas be read into the claims by examiners through summarizing or generalization.
Second, the claim limitation identified as an abstract idea must be evaluated to determine whether the claim limitation is within three enumerated categories.
Third, if the claim limitation is within one of the categories, the additional elements (those claim limitations beyond the claim limitation identified as an alleged abstract idea) are identified to determine whether the additional elements integrate the abstract idea into a practical application.

5. 1st Change - Identification
Any abstract idea must be recited as such in the claim.
Unlike the old approach, in which the claim could be summarized into an alleged abstract idea, under the new guidance the abstract idea requires a verbatim expression in the claim.
An examiner must “[i]dentify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea.” Id. at 54.
Thus, there is no summarization of the claims allowed in identifying the abstract idea. Instead, verbatim claim limitations must be considered as either constituting an abstract idea or not.

6. Practice Tips for 1st Change
When drafting an original claim set, do not include a summarization of the claimed subject matter. For example, instead of claiming “a method of calculating a result” just recite “a method” and discuss the steps.
When amending claims, remove any unnecessary claim limitations that may be considered abstract ideas.
When preparing arguments to an examiner, emphasize that any alleged abstract idea must be verbatim recited in the claims.

7. 2nd Change - Categorization
Adds a two-prong test within Step 2A of the Alice/Mayo framework. Categorization is Prong 1 of Step 2A.
Once an alleged abstract idea has been identified as one or more verbatim claim limitations, the Examiner must “determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated in Section I.” Id. at 54.
The Section I categories are as follows (Id. at 52):
mathematical concepts,
certain methods of organizing human activity, and
mental processes.
If not within one of these categories, it is not treated as an abstract idea. Id. at 53.
While these abstract ideas were previously identified by the courts, their categorization is new to the 2019 Revised Guidance. The Section I Categories are used to ensure that examiners are not alleging abstract ideas beyond those already identified by the courts. Specifically, the 2019 Revised Guidance states that “[c]laims that do not recite matter that falls within these enumerated groupings of abstract ideas should not be treated as reciting abstract ideas.” Id. at 53.
An exception to this directive is allowed only in rare circumstances. If an alleged abstract idea is outside the Section I Categories, the rejection “must be approved by the Technology Center Director (which approval will be indicated in the file record of the application), and must provide a justification for why such claim limitation is being treated as reciting an abstract idea.” Id. at 57.

8. Practice Tips for 2nd Change
In drafting or amending claims, emphasize aspects of the invention that fall outside the categories.
In preparing arguments to an examiner, present arguments that any alleged abstract idea would not be in one of the categories, if applicable.
Emphasize that “certain methods of organizing human activity” is not as broad as it may appear at face value, but must be tied to one of the sub-categories that appear in the 2019 Revised Guidance. Id. at 52.
If your claims are directed to subject matter within one of the categories, admit such to the examiner while emphasizing a practical application as discussed below.
The certain methods of organizing human activity are -
fundamental economic principles or practices (including hedging, insurance, mitigating risk);
commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations);
Managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions);

9. 3rd Change – Application
Prong 2 of Step 2A is to determine if the abstract idea is integrated into a practical application.
Being “directed to” an abstract idea is more than mere recitation of the abstract idea. A claim is not “directed to” an abstract idea if it is integrated into a practical application.  
The 2019 Revised Guidance draws a distinction between a principle itself and the integration of that principle into a practical application.
Even if an abstract idea is recited verbatim in the claim, the claim is allowable if there are additional elements that integrate that abstract idea into a practical application.
Thus, the only claims that will fail to be eligible at Prong 2 of Step 2A are those in which no practical application is present.
This is another significant change over the old approach, as confirmed by the 2019 Revised Guidance: “Prong Two represents a change from prior guidance.” Id. at 54. “This analysis is performed at USPTO Step 2A, and incorporates certain considerations that have been applied by the courts at step one and at step two of the Alice/Mayo framework.” Id. at 53.
“The USPTO’s ultimate goal is to draw distinctions between claims to principles in the abstract and claims that integrate those principles into a practical application.” Id. at 51.
The analysis is done by identifying “additional elements recited in the claim beyond the” abstract idea and then “evaluating those additional elements individually and in combination”. Id. at
This consideration must be given for “all additional elements, whether or not they are conventional.” Id. at 55.
“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, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Id. at 54.
“If the recited exception is integrated into a practical application of the exception, then the claim is eligible at Prong Two of revised Step 2A. This concludes the eligibility analysis.” Id. at 54.
“Examiners should give careful consideration to both the element and how it is used or arranged in the claim as a whole.” Id. at 55.

10. Practice Tips for 3rd Change
When drafting original applications, consider including a section that verbatim discusses practical applications
When drafting a claim set, be sure to include a practical application for any claim limitations which may be considered abstract ideas
When amending claims, consider adding new subject matter that would be considered a practical application, if not already present
When presenting arguments, analogize to practical applications already identified.

11. General Practice Tips
Request that any subsequent Office Action be made non-final due to the substantial change to the analysis. It is too soon to know if the Office will grant such requests, but there is no penalty in asking.
Layout for the examiner everything that must be shown to sustain the pending 101 rejection. The forming of a subject matter eligibility rejection under the new guidance will require substantial work from the examiner.
First, if the Examiner intends to sustain the § 101 rejection, Applicant requests that the Examiner follow the new 2019 Revised Guidance and provide the following:
identify one or more claim limitations as an alleged abstract idea (as per Step 2A, Prong 1);
provide a reason that the claim limitation should be considered an abstract idea (as per Step 2A, Prong 1);
identify the Section I Category alleged for the alleged abstract idea (as per Step 2A, Prong 1);
provide a reason why the claim limitation fits within the Section I Category (as per Step 2A, Prong 1);
identify each of the additional elements not in the claim element identified as alleged abstract idea (as per Step 2A, Prong 2);
explain why each additional element does not integrate the alleged abstract idea into a practical application (as per Step 2A, Prong 2);
explain why all the additional elements as a whole do not integrate the alleged abstract idea into a practical application (as per Step 2A, Prong 2); and
explain why each additional element is well-understood, routine, or conventional (as per step 2B).
Second, Applicant requests that any subsequent Office Action be non-final as the 2019 Revised Guidance presented a substantial change to the subject matter eligibility analysis and the pending Office Action did not comply with the new guidance.

12. Conclusion
The 2019 Revised Guidance is a significant change to §101 eligibility analysis
Director Iancu is trying to get a handle on this problem and provide some clarity and predictability
How successful this attempt will be remains to be seen
What we have seen so far:
Many more allowances in the last months
Some find arguments on Prong 2 persuasive
Some say it’s the same test, no change
Questions?