The USPTO recently issued new guidance to Patent Examiners regarding the Subject Matter Eligibility.
Below are the Highlights of the guidance based on Federal Circuit (FC) Decisions:
The update provides discussion of two recent decisions indentifying the eligible subject matter, namely
- McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016)
- In this case, the FC held that the claimed methods of Automatic lip Synchronization and facial expression animation using computer-implemented rules Patent Eligible under 35 U.S.C. 101, because they were not directed to an abstract idea.
- BASCOM Global Internet Services v. AT&T Mobility LLC, 827 F .3d 1341 (Fed. Cir. 2016).
- In this case, the FC gave a judgment of ineligibility because the court failed to properly perform the second step of the Mayo/Alice Framework when analyzing a claimed system for filtering content retrieved from an internet computer network.
The overall update includes discussion of the concept of “preemption” & “Non- Precedential decisions” in a subject matter eligibility analysis.
DETAILED ANALYSIS OF THE MEMO