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Interim Examination Instructions for Evaluating Subject Matter Eligibility under 35 U.S.C. § 101

By: Michael A. Leonard II


On August 24, 2009, the USPTO provided interim guidelines, including a memorandum and flowchart, for how Examiners are to evaluate subject matter eligibility under 35 U.S.C. § 101 until the Supreme Court decides Bilski v. Kappos. This memorandum and flowchart effectively supersedes sections 2106(IV), 2106.01 and 2106.02 of the MPEP. In other words, these are the guidelines that Examiners should now be applying. The documents can be found below.

Memo to Directors

Interim Guidelines for Examiners

General Subject Matter Eligibility Flowchart

Method Claim Flowchart

Bilski Background

On October 30, 2008, the Court of Appeals for the Federal Circuit (CAFC) decided In re Bilski, which pertains to the eligibility of method claims as statutory subject matter under 35 U.S.C. § 101. In this decision, the CAFC held that a similar test to that originally put forth in Gottschalk v. Benson applies to all method claims. In re Bilski held that a “claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus or (2) it transforms a particular article into a different state or thing. See Benson, 409 U.S. at 70 (‘Transformation and reduction of an article ‘to a different state or thing’ is the clue to patentability of a process claim that does not include particular machines’)” (see Slip op. at 10 and 11 (Fed. Cir. 2008)). Some question still exists as to whether the apparatus itself must be physically different from the prior art to qualify as a particular machine or apparatus. For instance, it is not known whether the Federal Circuit believes that a "general purpose" computer qualifies.

In re Bilski elaborated on the requirements for meeting both prongs of the Benson test. First, the machine or transformation “must be central to the purpose of the claimed process” (see Id.). The CAFC held this means that the machine or transformation in question must “impose meaningful limits on the claim's scope” and not “be insignificant extra-solution activity” (Id.). With respect to the transformation prong, the CAFC held that the transformation only qualifies as patent-eligible subject matter if it transforms a certain type of “article.” “[T]he main aspect of the transformation test that requires clarification here is what sorts of things constitute ‘articles’ such that their transformation is sufficient to impart patent-eligibility under § 101” (Id. at 24–25).

The Interim Guidelines

While it is likely that the Supreme Court will modify or overturn Bilski, the interim guidelines appear to encourage Examiners to apply the "machine-or-transformation" test discussed above. We have yet to see the effects of the Examining corps applying the interim guidelines, but on a positive note, the interim guidelines should encourage Examiners to properly restrict the application of Bilski analysis to method claims. In our practices, we have seen Bilski applied to system claims, apparatus claims and software claims that include a processor and computer-readable medium (which MPEP § 2106.01(I) explicitly instructed Examiners to interpret as product claims), all of which should be exempt to consideration under Bilski. However, as a colleague and friend, Keith Mullervy, pointed out, practitioners may still see a few improper 35 U.S.C. § 101 rejections for apparatus and system claims based on misinterpretation of the following paragraph of the Guidelines:

A claim that includes terms that imply that the invention is directed to a product, for instance by reciting “a machine comprising…”, but fails to include tangible limitations in accordance with its broadest reasonable interpretation is not limited to a practical application, but rather wholly embraces or encompasses the concept upon which the invention is based. This is impermissible as such claim coverage would extend to every way of applying the abstract idea, law of nature or natural phenomenon.

(See section II(A), third paragraph on page 3 of the Interim Guidelines). This language is intended to be applied to abstract ideas, laws of nature and natural phenomena and should not be applied to instances where such things are not present in the claims.

Another interesting statement is the comment in the first paragraph that "Rejections will be based upon the substantive law, and it is these rejections that are appealable. Consequently, any perceived failure by Office personnel to follow these instructions is neither appealable nor petitionable." While it would be expected that an Examiner's failure to follow the interim guidelines is not an appealable issue, it is somewhat surprising to the authors that such a "perceived" failure (kinda condescending, huh?) is allegedly not petitionable. Perhaps the motivation for this statement is to avoid having petitions in the pipeline that would likely be rendered moot in the relatively near future by the Bilski decision.

Arguments will not be heard by the Supreme Court in Bilski v. Kappos until November 9, 2009 (to view the Supreme Court Docket for this case, click Here). Accordingly, an opinion will probably not issue until the first quarter of next year at the earliest, so practitioners in the non-chemical arts can expect to see rejections based on these interim guidelines for at least the next six months or so. Fortunately, whether you are for or against the Bilski decision, the interim guidelines appear at first blush to be a relatively fair codification thereof.