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UNITED STATES PATENT AND TRADEMARK OFFICE

Commissioner for Patents
United States Patent and Trademark Office
P.O. Box 1450
Alexandria, VA 22313-1450
www.uspto.gov
MEMORANDUM
DATE:

May 19, 2016

TO:~2,~~Corps

FROM:~l"'~~rt~Bahr

Deputy Commissioner
for Patent Examination Policy
SUBJECT:

Recent Subject Matter Eligibility Decisions (Enfish, LLC v. Microsoft Corp. andTL! Communications LLC v. A. V Automotive, LLC)On May 12, 2016, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) in Enfish,LLC v. Microsoft Corp. held that the claimed database software designed as a "self-referential"
table is patent eligible under 35 U.S.C. § 101 because it is not directed to an abstract idea. Whilethe decision does not change the subject matter eligibility framework, it provides additional
information and clarification on the inquiry for identifying abstract ideas (Step 2A of the subject
matter eligibility examination guidelines).
In reaching its conclusion, the Federal Circuit highlighted several important points regarding thesubject matter eligibility analysis, in particular regarding whether a claim is directed to anabstract idea (Step 2A). First, the court noted that 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. Second, the court emphasized that the "directed
to" inquiry applies a filter to claims, when interpreted in view of the specification, based onwhether their character as a whole is directed to a patent ineligible concept. Third, the Federal
Circuit cautioned against describing a claim at a high level of abstraction untethered from thelanguage of the claim when determining the focus of the claimed invention. Fourth, the court
stated that an invention's ability to run on a general purpose computer does not automaticallydoom the claim. The subject matter eligibility examination instructions, as set out in the 2014
Interim Eligibility Guidance, July 2015 Update, and May 4, 2016 memorandum to examiners,
are consistent with these points.
The Federal Circuit in Enfish stated that certain claims directed to improvements in computer­related technology, including claims directed to software, are not necessarily abstract (Step 2A).
The court specifically noted that some improvements in computer-related technology, such as
chip architecture or an LED display, when appropriately claimed, are undoubtedly not abstract.
Explaining that software can make non-abstract improvements to computer technology just as
hardware can, the court noted that claims directed to software, as opposed to hardware, also arenot inherently abstract. Therefore, an examiner may determine that a claim directed toimprovements in computer-related technology is not directed to an abstract idea under Step 2Aof the subject matter eligibility examination guidelines (and is thus patent eligible), without theneed to analyze the additional elements under Step 2B. In particular, a claim directed to animprovement to computer-related technology (e.g., computer functionality) is likely not similar
to claims that have previously been identified as abstract by the courts.
The claims of the patents at issue in this case describe the steps of configuring a computer
memory in accordance with a self-referential table, in both method claims and system claims thatinvoke 35 U.S.C. § 112(t). The court asked whether the focus of the claims is on the specificasserted improvement in computer capabilities (i.e., the self-referential table for a computer
database), or instead on a process that qualifies as an "abstract idea" for which computers are
invoked merely as a tool. To make the determination of whether these claims are directed to animprovement in existing computer technology, the court looked to the teachings of thespecification. Specifically, the court identified the specification's teachings that the claimed
invention achieves other benefits over conventional databases, such as increased flexibility,
faster search times, and smaller memory requirements. It was noted that the improvement does
not need to be defined by reference to "physical" components. Instead, the improvement here isdefined by logical structures and processes, rather than particular physical features. The Federal
Circuit stated that the Enfish claims were not ones in which general-purpose computercomponents are added after the fact to a fundamental economic practice or mathematicalequation, but were directed to a specific implementation of a solution to a problem in thesoftware arts, and concluded that the Enfish claims were thus not directed to an abstract idea
(under Step 2A).
Closely following Enfish, the Federal Circuit decided TL! Communications LLC v. A. V.
Automotive, LLC on May 17, 2016, which provides a contrast between non-abstract claims
directed to an improvement to computer functionality and abstract claims that are directed, forexample, to generalized steps to be performed on a computer using conventional computeractivity. Specifically, the court stated that the TLI claims describe steps of recording,administration and archiving of digital images, and found them to be directed to the abstract ideaof classifying and storing digital images in an organized manner (Step 2A). The court thenfound that the additional elements of performing these functions using a telephone unit and aserver did not add significantly more to the abstract idea because they were well-understood,
routine, conventional activities (Step 2B).
In summary, when performing an analysis of whether a claim is directed to an abstract idea (Step2A), examiners are to continue to determine ifthe claim recites (i.e., sets forth or describes) a
concept that is similar to concepts previously found abstract by the courts. The 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.

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