This section of the FEDERAL REGISTER

contains documents other than rules or

proposed rules that are applicable to the

public. Notices of hearings and investigations,

committee meetings, agency decisions and

rulings, delegations of authority, filing of

petitions and applications and agency

statements of organization and functions are

examples of documents appearing in this

section.

Notices Federal Register

50 

Vol. 84, No. 4 

Monday, January 7, 2019 

1Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 

208, 217–18 (2014) (citing Mayo Collaborative 

Servs. v. Prometheus Labs., Inc., 566 U.S. 66 

(2012)). 

2See, e.g., Interval Licensing LLC, v. AOL, Inc., 

896 F.3d 1335, 1348 (Fed. Cir. 2018) (Plager, J., 

concurring in part and dissenting in part); Smart 

Sys. Innovations, LLC v. Chicago Transit Auth., 873 

F.3d 1364, 1377 (Fed. Cir. 2017) (Linn, J., dissenting 

in part and concurring in part); Berkheimer v. HP 

Inc., 890 F.3d 1369, 1376 (Fed. Cir. 2018) (Lourie, 

J., joined by Newman, J., concurring in denial of 

rehearing en banc). 

3The first step of the Alice/Mayo test is to 

determine whether the claims are ‘‘directed to’’ a 

judicial exception. Alice, 573 U.S. at 217 (citing 

Mayo, 566 U.S. at 77). 

4All references to the MPEP in the 2019 Revised 

Patent Subject Matter Eligibility Guidance are to the 

Ninth Edition, Revision 08–2017 (rev. Jan. 2018), 

unless otherwise indicated. 

DEPARTMENT OF COMMERCE 

United States Patent and Trademark 

Office 

[Docket No. PTO–P–2018–0053] 

2019 Revised Patent Subject Matter 

Eligibility Guidance 

AGENCY: United States Patent and 

Trademark Office, Commerce. 

ACTION: Examination Guidance; Request 

for comments. 

SUMMARY: The United States Patent and 

Trademark Office (USPTO) has prepared 

revised guidance (2019 Revised Patent 

Subject Matter Eligibility Guidance) for 

use by USPTO personnel in evaluating 

subject matter eligibility. The 2019 

Revised Patent Subject Matter Eligibility 

Guidance revises the procedures for 

determining whether a patent claim or 

patent application claim is directed to a 

judicial exception (laws of nature, 

natural phenomena, and abstract ideas) 

under Step 2A of the USPTO’s Subject 

Matter Eligibility Guidance in two ways. 

First, the 2019 Revised Patent Subject 

Matter Eligibility Guidance explains 

that abstract ideas can be grouped as, 

e.g., mathematical concepts, certain 

methods of organizing human activity, 

and mental processes. Second, this 

guidance explains that a patent claim or 

patent application claim that recites a 

judicial exception is not ‘‘directed to’’ 

the judicial exception if the judicial 

exception is integrated into a practical 

application of the judicial exception. A 

claim that recites a judicial exception, 

but is not integrated into a practical 

application, is directed to the judicial 

exception under Step 2A and must then 

be evaluated under Step 2B (inventive 

concept) to determine the subject matter 

eligibility of the claim. The USPTO is 

seeking public comment on its subject 

matter eligibility guidance, and 

particularly the 2019 Revised Patent 

Subject Matter Eligibility Guidance. 

DATES: 

Applicable Date: The 2019 Revised 

Patent Subject Matter Eligibility 

Guidance is effective on January 7, 

2019. The 2019 Revised Patent Subject 

Matter Eligibility Guidance applies to 

all applications, and to all patents 

resulting from applications, filed before, 

on, or after January 7, 2019. 

Comment Deadline Date: Written 

comments must be received on or before 

March 8, 2019. 

ADDRESSES: Comments must be sent by 

electronic mail message over the 

internet addressed to: Eligibility2019@

uspto.gov. 

Electronic comments submitted in 

plain text are preferred, but also may be 

submitted in ADOBE® portable 

document format or MICROSOFT 

WORD® format. Comments not 

submitted electronically should be 

submitted on paper in a format that 

facilitates convenient digital scanning 

into ADOBE® portable document 

format. The comments will be available 

for viewing via the USPTO’s internet 

website (http://www.uspto.gov). Because 

comments will be made available for 

public inspection, information that the 

submitter does not desire to make 

public, such as an address or phone 

number, should not be included in the 

comments. 

FOR FURTHER INFORMATION CONTACT: June 

E. Cohan, Senior Legal Advisor, at 571– 

272–7744 or Carolyn Kosowski, Senior 

Legal Advisor, at 571–272–7688, both 

with the Office of Patent Legal 

Administration. 

SUPPLEMENTARY INFORMATION: Patent 

subject matter eligibility under 35 

U.S.C. 101 has been the subject of much 

attention over the past decade. Recently, 

much of that attention has focused on 

how to apply the U.S. Supreme Court’s 

framework for evaluating eligibility 

(often called the Alice/Mayo test).1

Properly applying the Alice/Mayo test in 

a consistent manner has proven to be 

difficult, and has caused uncertainty in 

this area of the law. Among other things, 

it has become difficult in some cases for 

inventors, businesses, and other patent 

stakeholders to reliably and predictably 

determine what subject matter is patenteligible. The legal uncertainty 

surrounding Section 101 poses unique 

challenges for the USPTO, which must 

ensure that its more than 8500 patent 

examiners and administrative patent 

judges apply the Alice/Mayo test in a 

manner that produces reasonably 

consistent and predictable results across 

applications, art units and technology 

fields. 

Since the Alice/Mayo test was 

announced and began to be extensively 

applied, the courts and the USPTO have 

tried to consistently distinguish 

between patent-eligible subject matter 

and subject matter falling within a 

judicial exception. Even so, patent 

stakeholders have expressed a need for 

more clarity and predictability in its 

application. In particular, stakeholders 

have expressed concern with the proper 

scope and application of the ‘‘abstract 

idea’’ exception. Some courts share 

these concerns, for example as 

demonstrated by several recent 

concurrences and dissents in the U.S. 

Court of Appeals for the Federal Circuit 

(‘‘Federal Circuit’’) calling for changes 

in the application of Section 101 

jurisprudence.2 Many stakeholders, 

judges, inventors, and practitioners 

across the spectrum have argued that 

something needs to be done to increase 

clarity and consistency in how Section 

101 is currently applied. 

To address these and other concerns, 

the USPTO is revising its examination 

procedure with respect to the first step 

of the Alice/Mayo test 3 (Step 2A of the 

USPTO’s Subject Matter Eligibility 

Guidance as incorporated into the 

Manual of Patent Examining Procedure 

(‘‘MPEP’’) 2106) 4 by: (1) Providing 

groupings of subject matter that is 

considered an abstract idea; and (2) 

clarifying that a claim is not ‘‘directed 

to’’ a judicial exception if the judicial 

exception is integrated into a practical 

application of that exception. 


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Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019 / Notices 51 

5 Mayo, 566 U.S. at 71 (‘‘Phenomena of nature, 

though just discovered, mental processes, and 

abstract intellectual concepts are not patentable, as 

they are the basic tools of scientific and 

technological work’’ (quoting Gottschalk v. Benson, 

409 U.S. 63, 67 (1972)). 

6USPTO Memorandum of April 19, 2018, 

‘‘Changes in Examination Procedure Pertaining to 

Subject Matter Eligibility, Recent Subject Matter 

Eligibility Decision (Berkheimer v. HP, Inc.)’’ (Apr. 

19, 2018), available at https://www.uspto.gov/sites/ 

default/files/documents/memo-berkheimer20180419.PDF [hereinafter ‘‘USPTO Berkheimer 

Memorandum’’]. 

7Alice Corp., 573 U.S. at 216 (internal citation 

and quotation marks omitted); Mayo, 566 U.S. at 71. 

8 Id. (internal citation and quotation marks 

omitted). 

9See Enfish, LLC v. Microsoft Corp., 822 F.3d 

1327, 1334 (Fed. Cir. 2016); see also Amdocs 

(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 

1294 (Fed. Cir. 2016) (‘‘[T]he decisional mechanism 

courts now apply [to identify an abstract idea] is to 

examine earlier cases in which a similar or parallel 

descriptive nature can be seen—what prior cases 

were about, and which way they were decided.’’). 

10See, e.g., 2014 Interim Guidance on Subject 

Matter Eligibility, 79 FR 74618, 74628–32 (Dec. 16, 

2014) (discussing concepts identified as abstract 

ideas); July 2015 Update: Subject Matter Eligibility 

(Jul. 30, 2015), at 3–5, available at https://

www.uspto.gov/sites/default/files/documents/iegjuly-2015-update.pdf (same); USPTO Memorandum 

of May 19, 2016, ‘‘Recent Subject Matter Eligibility 

Decisions (Enfish, LLC v. Microsoft Corp. and TLI 

Communications LLC v. A.V. Automotive, LLC),’’ at 

2 (May 19, 2016), available at https://

www.uspto.gov/sites/default/files/documents/iegmay-2016_enfish_memo.pdf [hereinafter, ‘‘USPTO 

Enfish Memorandum’’] (discussing the abstract idea 

in TLI Communications LLC v. A.V. Automotive, 

LLC, 823 F.3d 607 (Fed. Cir. 2016)); USPTO 

Memorandum of November 2, 2016, ‘‘Recent 

Subject Matter Eligibility Decisions,’’ at 2 (Nov. 2, 

2016), available at https://www.uspto.gov/sites/ 

default/files/documents/McRo-Bascom-Memo.pdf 

[hereinafter, ‘‘USPTO McRo Memorandum’’] 

(discussing how the claims in McRO, Inc. v. Bandai 

Namco Games America Inc., 837 F.3d 1299 (Fed. 

Cir. 2016), were directed to an improvement instead 

of an abstract idea); USPTO Memorandum of April 

2, 2018, ‘‘Recent Subject Matter Eligibility 

Decisions’’ (Apr. 2, 2018), available at https://

www.uspto.gov/sites/default/files/documents/ 

memo-recent-sme-ctdec-20180402.PDF [hereinafter 

Continued 

Section I of this 2019 Revised Patent 

Subject Matter Eligibility Guidance 

explains that the judicial exceptions are 

for subject matter that has been 

identified as the ‘‘basic tools of 

scientific and technological work,’’ 5

which includes ‘‘abstract ideas’’ such as 

mathematical concepts, certain methods 

of organizing human activity, and 

mental processes; as well as laws of 

nature and natural phenomena. Only 

when a claim recites a judicial 

exception does the claim require further 

analysis in order to determine its 

eligibility. The groupings of abstract 

ideas contained in this guidance enable 

USPTO personnel to more readily 

determine whether a claim recites 

subject matter that is an abstract idea. 

Section II explains that the USPTO 

has set forth a revised procedure, rooted 

in Supreme Court caselaw, to determine 

whether a claim is ‘‘directed to’’ a 

judicial exception under the first step of 

the Alice/Mayo test (USPTO Step 2A). 

Section III explains the revised 

procedure that will be applied by the 

USPTO. The procedure focuses on two 

aspects of Revised Step 2A: (1) Whether 

the claim recites a judicial exception; 

and (2) whether a recited judicial 

exception is integrated into a practical 

application. Only when a claim recites 

a judicial exception and fails to 

integrate the exception into a practical 

application, is the claim ‘‘directed to’’ a 

judicial exception, thereby triggering the 

need for further analysis pursuant to the 

second step of the Alice/Mayo test 

(USPTO Step 2B). Finally, if further 

analysis at Step 2B is needed (for 

example to determine whether the claim 

merely recites well-understood, routine, 

conventional activity), this 2019 

Revised Patent Subject Matter Eligibility 

Guidance explains that the examiner or 

administrative patent judge will proceed 

in accordance with existing USPTO 

guidance as modified in April 2018.6

The USPTO is seeking public 

comment on its subject matter eligibility 

guidance, and particularly the 2019 

Revised Patent Subject Matter Eligibility 

Guidance. The USPTO is determined to 

continue its mission to provide 

predictable and reliable patent rights in 

accordance with this rapidly evolving 

area of the law. 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. To that end, 

the USPTO may issue further guidance, 

or modify the current guidance, in the 

future based on its review of the 

comments received, further experience 

of the USPTO and its stakeholders, and 

additional judicial actions. 

Implementation of examination 

guidance on eligibility is an iterative 

process and may continue with periodic 

supplements. The USPTO invites the 

public to submit suggestions on 

eligibility-related topics to address in 

future guidance supplements as part of 

their comments on the USPTO’s subject 

matter eligibility guidance. 

Impact on Examination Procedure 

and Prior Examination Guidance: This 

2019 Revised Patent Subject Matter 

Eligibility Guidance supersedes MPEP 

2106.04(II) (Eligibility Step 2A: Whether 

a Claim Is Directed to a Judicial 

Exception) to the extent it equates 

claims ‘‘reciting’’ a judicial exception 

with claims ‘‘directed to’’ a judicial 

exception, along with any other portion 

of the MPEP that conflicts with this 

guidance. A chart identifying portions 

of the MPEP that are affected by this 

guidance will be available for viewing 

via the USPTO’s internet website 

(http://www.uspto.gov). This 2019 

Revised Patent Subject Matter Eligibility 

Guidance also supersedes all versions of 

the USPTO’s ‘‘Eligibility Quick 

Reference Sheet Identifying Abstract 

Ideas’’ (first issued in July 2015 and 

updated most recently in July 2018). 

Eligibility-related guidance issued prior 

to the Ninth Edition, R–08.2017, of the 

MPEP (published Jan. 2018) should not 

be relied upon. However, any claim 

considered patent eligible under prior 

guidance should be considered patent 

eligible under this guidance. 

This guidance does not constitute 

substantive rulemaking and does not 

have the force and effect of law. The 

guidance sets out agency policy with 

respect to the USPTO’s interpretation of 

the subject matter eligibility 

requirements of 35 U.S.C. 101 in view 

of decisions by the Supreme Court and 

the Federal Circuit. The guidance was 

developed as a tool for internal USPTO 

management and does not create any 

right or benefit, substantive or 

procedural, enforceable by any party 

against the USPTO. Rejections will 

continue to be based upon the 

substantive law, and it is those 

rejections that are appealable to the 

Patent Trial and Appeal Board (PTAB) 

and the courts. All USPTO personnel 

are, as a matter of internal agency 

management, expected to follow the 

guidance. Failure of USPTO personnel 

to follow the guidance, however, is not, 

in itself, a proper basis for either an 

appeal or a petition. 

I. Groupings of Abstract Ideas 

The Supreme Court has held that the 

patent eligibility statute, Section 101, 

contains an implicit exception for 

‘‘[l]aws of nature, natural phenomena, 

and abstract ideas,’’ which are ‘‘the 

basic tools of scientific and 

technological work.’’ 7 Yet, the Court 

has explained that ‘‘[a]t some level, all 

inventions embody, use, reflect, rest 

upon, or apply laws of nature, natural 

phenomena, or abstract ideas,’’ and has 

cautioned ‘‘to tread carefully in 

construing this exclusionary principle 

lest it swallow all of patent law.’’ 8

Since the Alice case, courts have been 

‘‘compare[ing] claims at issue to those 

claims already found to be directed to 

an abstract idea in previous cases.’’ 9

Likewise, the USPTO has issued 

guidance to the patent examining corps 

about Federal Circuit decisions applying 

the Alice/Mayo test, for instance 

describing the subject matter claimed in 

the patent in suit and noting whether or 

not certain subject matter has been 

identified as an abstract idea.10


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‘‘USPTO Finjan Memorandum’’] (discussing how 

the claims in Finjan Inc. v. Blue Coat Systems, Inc., 

879 F.3d 1299 (Fed. Cir. 2018), and Core Wireless 

Licensing, S.A.R.L. v. LG Electronics, Inc., 880 F.3d 

1356 (Fed. Cir. 2018), were directed to 

improvements instead of abstract ideas); USPTO 

Berkheimer Memorandum at 2 (discussing the 

abstract idea in Berkheimer); MPEP 2106.04(a) 

(reviewing cases that did and did not identify 

abstract ideas). 

11E.g., compare TLI Commc’ns, 823 F.3d at 611, 

with Enfish, 822 F.3d at 1335, and Visual Memory 

LLC v. NVIDIA Corp., 867 F.3d 1253, 1258 (Fed. Cir. 

2017). While computer operations such as ‘‘output 

of data analysis . . . can be abstract,’’ Credit 

Acceptance Corp. v. Westlake Servs., 859 F.3d 

1044, 1056 (Fed. Cir. 2017), ‘‘software-based 

innovations can [also] make ‘non-abstract 

improvements to computer technology’ and be 

deemed patent-eligible subject matter at step 1 [of 

the Mayo/Alice test],’’ Finjan, 879 F.3d at 1304 

(quoting Enfish, 822 F.3d at 1335). Indeed, the 

Federal Circuit has held that ‘‘improvements in 

computer-related technology’’ and ‘‘claims directed 

to software’’ are not ‘‘inherently abstract.’’ Enfish, 

822 F.3d at 1335; see also Visual Memory, 867 F.3d 

at 1258. These developments in the caselaw can 

create complications for the patent-examination 

process. For example, claims in one application 

could be deemed to be abstract, whereas slightly 

different claims directed to the same or similar 

subject matter could be determined to reflect a 

patent eligible ‘‘improvement.’’ Alternatively, 

claims in one application could be found to be 

abstract, whereas claims to the same or similar 

subject matter in another application, containing 

additional or different embodiments in the 

specification, could be deemed eligible as not 

directed to an abstract idea. In other words, the 

finding that the subject matter claimed in a prior 

patent was ‘‘abstract’’ as claimed may not determine 

whether similar subject matter in another 

application, claimed somewhat differently or 

supported by a different disclosure, is directed to 

an abstract idea and therefore patent ineligible. 

12Bilski v. Kappos, 561 U.S. 593, 611 (2010) 

(‘‘The concept of hedging . . . reduced to a 

mathematical formula . . . is an unpatentable 

abstract idea[.]’’); Diamond v. Diehr, 450 U.S. 175, 

191 (1981) (‘‘A mathematical formula as such is not 

accorded the protection of our patent laws’’) (citing 

Benson, 409 U.S. 63); Parker v. Flook, 437 U.S. 584, 

594 (1978) (‘‘[T]he discovery of [a mathematical 

formula] cannot support a patent unless there is 

some other inventive concept in its application.’’); 

Benson, 409 U.S. at 71–72 (concluding that 

permitting a patent on the claimed invention 

‘‘would wholly pre-empt the mathematical formula 

and in practical effect would be a patent on the 

algorithm itself’’); Mackay Radio & Telegraph Co. v. 

Radio Corp. of Am., 306 U.S. 86, 94 (1939) (‘‘[A] 

scientific truth, or the mathematical expression of 

it, is not patentable invention[.]’’); SAP America, 

Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 

2018) (holding that claims to a ‘‘series of 

mathematical calculations based on selected 

information’’ are directed to abstract ideas); 

Digitech Image Techs., LLC v. Elecs. for Imaging, 

Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (holding 

that claims to a ‘‘process of organizing information 

through mathematical correlations’’ are directed to 

an abstract idea); Bancorp Servs., LLC v. Sun Life 

Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1280 

(Fed. Cir. 2012) (identifying the concept of 

‘‘managing a stable value protected life insurance 

policy by performing calculations and manipulating 

the results’’ as an abstract idea). 

13Alice, 573 U.S. at 219–20 (concluding that use 

of a third party to mediate settlement risk is a 

‘‘fundamental economic practice’’ and thus an 

abstract idea); id. (describing the concept of risk 

hedging identified as an abstract idea in Bilski as 

‘‘a method of organizing human activity’’); Bilski, 

561 U.S. at 611–612 (concluding that hedging is a 

‘‘fundamental economic practice’’ and therefore an 

abstract idea); Bancorp, 687 F.3d at 1280 

(concluding that ‘‘managing a stable value protected 

life insurance policy by performing calculations 

and manipulating the results’’ is an abstract idea); 

Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 

876 F.3d 1372, 1378–79 (Fed. Cir. 2017) (holding 

that concept of ‘‘local processing of payments for 

remotely purchased goods’’ is a ‘‘fundamental 

economic practice, which Alice made clear is, 

without more, outside the patent system.’’); OIP 

Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 

1362–63 (Fed. Cir. 2015) (concluding that claimed 

concept of ‘‘offer-based price optimization’’ is an 

abstract idea ‘‘similar to other ‘fundamental 

economic concepts’ found to be abstract ideas by 

the Supreme Court and this court’’); buySAFE, Inc. 

v. Google, Inc., 765 F.3d. 1350, 1355 (Fed. Cir. 2014) 

(holding that concept of ‘‘creating a contractual 

relationship—a ‘transaction performance 

guaranty’ ’’ is an abstract idea); In re Comiskey, 554 

F.3d 967, 981 (Fed. Cir. 2009) (claims directed to 

‘‘resolving a legal dispute between two parties by 

the decision of a human arbitrator’’ are ineligible); 

Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 

(Fed Cir. 2014) (holding that claim ‘‘describe[ing] 

only the abstract idea of showing an advertisement 

before delivering free content’’ is patent ineligible); 

In re Ferguson, 558 F.3d 1359, 1364 (Fed Cir. 2009) 

(holding methods ‘‘directed to organizing business 

or legal relationships in the structuring of a sales 

force (or marketing company)’’ to be ineligible); 

Credit Acceptance, 859 F.3d 1044 at 1054 (‘‘The 

Board determined that the claims are directed to the 

abstract idea of ‘processing an application for 

financing a purchase.’ . . . We agree.’’); Interval 

Licensing, 896 F.3d at 1344–45 (concluding that 

‘‘[s]tanding alone, the act of providing someone an 

additional set of information without disrupting the 

ongoing provision of an initial set of information is 

an abstract idea,’’ observing that the district court 

‘‘pointed to the nontechnical human activity of 

passing a note to a person who is in the middle of 

a meeting or conversation as further illustrating the 

basic, longstanding practice that is the focus of the 

[patent ineligible] claimed invention.’’); Voter 

Verified, Inc. v. Election Systems & Software, LLC, 

887 F.3d 1376, 1385 (Fed. Cir. 2018) (finding the 

concept of ‘‘voting, verifying the vote, and 

submitting the vote for tabulation,’’ a ‘‘fundamental 

activity’’ that humans have performed for hundreds 

of years, to be an abstract idea); In re Smith, 815 

F.3d 816, 818 (Fed. Cir. 2016) (concluding that 

‘‘[a]pplicants’ claims, directed to rules for 

conducting a wagering game’’ are abstract). 14 If a claim, under its broadest reasonable 

interpretation, covers performance in the mind but 

for the recitation of generic computer components, 

then it is still in the mental processes category 

unless the claim cannot practically be performed in 

the mind. See Intellectual Ventures I LLC v. 

Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 

2016) (‘‘[W]ith the exception of generic computerimplemented steps, there is nothing in the claims 

themselves that foreclose them from being 

performed by a human, mentally or with pen and 

paper.’’); Mortg. Grader, Inc. v. First Choice Loan 

Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016) 

(holding that computer-implemented method for 

‘‘anonymous loan shopping’’ was an abstract idea 

because it could be ‘‘performed by humans without 

a computer’’); Versata Dev. Grp. v. SAP Am., Inc., 

793 F.3d 1306, 1335 (Fed. Cir. 2015) (‘‘Courts have 

examined claims that required the use of a 

computer and still found that the underlying, 

patent-ineligible invention could be performed via 

pen and paper or in a person’s mind.’’); 

CyberSource Corp. v. Retail Decisions, Inc., 654 

F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding that 

the incidental use of ‘‘computer’’ or ‘‘computer 

readable medium’’ does not make a claim otherwise 

directed to process that ‘‘can be performed in the 

human mind, or by a human using a pen and 

paper’’ patent eligible); id. at 1376 (distinguishing 

Research Corp. Techs. v. Microsoft Corp., 627 F.3d 

859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l 

Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010), as 

directed to inventions that ‘‘could not, as a practical 

matter, be performed entirely in a human’s mind’’). 

Likewise, performance of a claim limitation using 

generic computer components does not necessarily 

preclude the claim limitation from being in the 

mathematical concepts grouping, Benson, 409 U.S. 

at 67, or the certain methods of organizing human 

activity grouping, Alice, 573 U.S. at 219–20. 

15 Mayo, 566 U.S. at 71 (‘‘ ‘[M]ental processes[ ] 

and abstract intellectual concepts are not 

patentable, as they are the basic tools of scientific 

and technological work’ ’’ (quoting Benson, 409 U.S. 

at 67)); Flook, 437 U.S. at 589 (same); Benson, 409 

U.S. at 67, 65 (noting that the claimed ‘‘conversion 

of [binary-coded decimal] numerals to pure binary 

numerals can be done mentally,’’ i.e., ‘‘as a person 

While that approach was effective 

soon after Alice was decided, it has 

since become impractical. The Federal 

Circuit has now issued numerous 

decisions identifying subject matter as 

abstract or non-abstract in the context of 

specific cases, and that number is 

continuously growing. In addition, 

similar subject matter has been 

described both as abstract and not 

abstract in different cases.11 The 

growing body of precedent has become 

increasingly more difficult for 

examiners to apply in a predictable 

manner, and concerns have been raised 

that different examiners within and 

between technology centers may reach 

inconsistent results. 

The USPTO, therefore, aims to clarify 

the analysis. In accordance with judicial 

precedent and in an effort to improve 

consistency and predictability, the 2019 

Revised Patent Subject Matter Eligibility 

Guidance extracts and synthesizes key 

concepts identified by the courts as 

abstract ideas to explain that the 

abstract idea exception includes the 

following groupings of subject matter, 

when recited as such in a claim 

limitation(s) (that is, when recited on 

their own or per se): 

(a) Mathematical concepts— 

mathematical relationships, 

mathematical formulas or equations, 

mathematical calculations; 12

(b) Certain methods of organizing 

human activity—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); 13 and 

(c) Mental processes—concepts 

performed in the human mind 14

(including an observation, evaluation, 

judgment, opinion).15


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would do it by head and hand.’’); Synopsys, Inc. v. 

Mentor Graphics Corp., 839 F.3d 1138, 1139, (Fed. 

Cir. 2016) (holding that claims to the mental 

process of ‘‘translating a functional description of 

a logic circuit into a hardware component 

description of the logic circuit’’ are directed to an 

abstract idea, because the claims ‘‘read on an 

individual performing the claimed steps mentally 

or with pencil and paper’’); Mortg. Grader, 811 

F.3d. at 1324 (concluding that concept of 

‘‘anonymous loan shopping’’ is an abstract idea 

because it could be ‘‘performed by humans without 

a computer’’); In re BRCA1 & BRCA2-Based 

Hereditary Cancer Test Patent Litig., 774 F.3d 755, 

763 (Fed. Cir. 2014) (concluding that concept of 

‘‘comparing BRCA sequences and determining the 

existence of alterations’’ is an ‘‘abstract mental 

process’’); In re Brown, 645 F. App’x. 1014, 1017 

(Fed. Cir. 2016) (non-precedential) (claim 

limitations ‘‘encompass the mere idea of applying 

different known hair styles to balance one’s head. 

Identifying head shape and applying hair designs 

accordingly is an abstract idea capable, as the Board 

notes, of being performed entirely in one’s mind’’). 

16See, e.g., Alice, 573 U.S. at 217 (explaining that 

‘‘in applying the § 101 exception, we must 

distinguish between patents that claim the 

‘buildin[g] block[s]’ of human ingenuity and those 

that integrate the building blocks into something 

more’’ (quoting Mayo, 566 U.S. at 89) and stating 

that Mayo ‘‘set forth a framework for distinguishing 

patents that claim laws of nature, natural 

phenomena, and abstract ideas from those that 

claim patent-eligible applications of those 

concepts’’); Mayo, 566 U.S. at 80, 84 (noting that the 

Court in Diehr found ‘‘the overall process patent 

eligible because of the way the additional steps of 

the process integrated the equation into the process 

as a whole,’’ but the Court in Benson ‘‘held that 

simply implementing a mathematical principle on 

a physical machine, namely a computer, was not a 

patentable application of that principle’’); Bilski, 

561 U.S. at 611 (‘‘Diehr explained that while an 

abstract idea, law of nature, or mathematical 

formula could not be patented, ‘an application of 

a law of nature or mathematical formula to a known 

structure or process may well be deserving of patent 

protection.’ ’’ (quoting Diehr, 450 U.S. at 187) 

(emphasis in original)); Diehr, 450 U.S. at 187, 192 

n.14 (explaining that the process in Flook was 

ineligible not because it contained a mathematical 

formula, but because it did not provide an 

application of the formula); Mackay Radio, 306 U.S. 

at 94 (‘‘While a scientific truth, or the mathematical 

expression of it, is not patentable invention, a novel 

and useful structure created with the aid of 

knowledge of scientific truth may be.’’); Le Roy v. 

Tatham, 55 U.S. (14 How.) 156, 175 (1852) (‘‘The 

elements of the [natural phenomena] exist; the 

invention is not in discovering them, but in 

applying them to useful objects.’’). 

17See, e.g., MPEP 2106.06(b) (summarizing 

Enfish, McRO, and other cases that were eligible as 

improvements to technology or computer 

functionality instead of abstract ideas); USPTO 

Finjan Memorandum (discussing Finjan, and Core 

Wireless); USPTO Memorandum of June 7, 2018, 

‘‘Recent Subject Matter Eligibility Decision: Vanda 

Pharmaceuticals Inc. v. West-Ward 

Pharmaceuticals,’’ available at https://

www.uspto.gov/sites/default/files/documents/ 

memo-vanda-20180607.PDF [hereinafter ‘‘USPTO 

Vanda Memorandum’’]; BASCOM Glob. Internet 

Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 

1352 (Fed. Cir. 2016) (concluding that claims could 

be eligible if ordered combination of limitations 

‘‘transform the abstract idea . . . into a particular, 

practical application of that abstract idea.’’); 

Arrhythmia Research Tech., Inc. v. Corazonix 

Corp., 958 F.2d 1053, 1056–57 (Fed. Cir. 1992) (‘‘As 

the jurisprudence developed, inventions that were 

implemented by the mathematically-directed 

performance of computers were viewed in the 

context of the practical application to which the 

computer-generated data were put.’’); CLS Bank 

Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1315 

(Fed. Cir. 2013) (Moore, J., joined by Rader, C.J., and 

Linn and O’Malley, JJ., dissenting in part) (‘‘The key 

question is thus whether a claim recites a 

sufficiently concrete and practical application of an 

abstract idea to qualify as patent-eligible.’’), aff’d, 

573 U.S. 208 (2014). 

18See, e.g., McRO, 837 F.3d at 1316; Enfish, 822 

F.3d at 1336; Core Wireless, 880 F.3d at 1362. 

19See, e.g., Vanda Pharm. Inc. v. West-Ward 

Pharm. Int’l Ltd., 887 F.3d 1117, 1134 (Fed. Cir. 

2018) (‘‘If the claims are not directed to a patent 

ineligible concept at step one, we need not address 

step two of the inquiry.’’); Rapid Litig. Mgmt. Ltd. 

v. CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 

2016) (holding that claimed invention is patent 

eligible because it is not directed to a patentineligible concept under step one or is an inventive 

application of the patent-ineligible concept under 

step two); Enfish, 822 F.3d at 1339 (noting that 

eligibility determination can be reached either 

because claims not directed to an abstract idea 

under step one or recite a concrete improvement 

under step two); McRO, 837 F.3d at 1313 

(recognizing that the ‘‘court must look to the claims 

as an ordered combination’’ in determining 

patentability ‘‘[w]hether at step one or step two of 

the Alice test’’); Amdocs, 841 F.3d at 1294 

(observing that recent cases ‘‘suggest that there is 

considerable overlap between step one and step 

two, and in some situations [the inventive concept] 

analysis could be accomplished without going 

beyond step one’’). See also Ancora Techs. v. HTC 

Am., 908 F.3d 1343, 1349 (Fed. Cir. 2018) (noting, 

in accord with the ‘‘recognition of overlaps between 

some step one and step two considerations,’’ that 

its conclusion of eligibility at step one is ‘‘indirectly 

reinforced by some of [its] prior holdings under step 

two’’). 

Claims that do not recite matter that 

falls within these enumerated groupings 

of abstract ideas should not be treated 

as reciting abstract ideas, except as 

follows: In the rare circumstance in 

which a USPTO employee believes a 

claim limitation that does not fall 

within the enumerated groupings of 

abstract ideas should nonetheless be 

treated as reciting an abstract idea, the 

procedure described in Section III.C for 

analyzing the claim should be followed. 

II. ‘‘Directed To’’ a Judicial Exception 

The Supreme Court has long 

distinguished between principles 

themselves (which are not patent 

eligible) and the integration of those 

principles into practical applications 

(which are patent eligible).16 Similarly, 

in a growing body of decisions, the 

Federal Circuit has distinguished 

between claims that are ‘‘directed to’’ a 

judicial exception (which require 

further analysis to determine their 

eligibility) and those that are not (which 

are therefore patent eligible).17 For 

example, an improvement in the 

functioning of a computer or other 

technology or technological field may 

render a claim patent eligible at step one 

of the Alice/Mayo test even if it recites 

an abstract idea, law of nature, or 

natural phenomenon.18 Moreover, 

recent Federal Circuit jurisprudence has 

indicated that eligible subject matter can 

often be identified either at the first or 

the second step of the Alice/Mayo test.19

These revised patent examination 

procedures are designed to more 

accurately and consistently identify 

claims that recite a practical application 

of a judicial exception (and thus are not 

‘‘directed to’’ a judicial exception), 

thereby increasing predictability and 

consistency in the patent eligibility 

analysis. 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, 

given the recognized overlap in the 

steps depending on the facts of any 

given case. 

In accordance with judicial precedent, 

and to increase consistency in 

examination practice, the 2019 Revised 

Patent Subject Matter Eligibility 

Guidance sets forth a procedure to 

determine whether a claim is ‘‘directed 

to’’ a judicial exception under USPTO 

Step 2A. Under the procedure, if a claim 

recites a judicial exception (a law of 

nature, a natural phenomenon, or an 

abstract idea as grouped in Section I, 

above), it must then be analyzed to 

determine whether the recited judicial 

exception is integrated into a practical 

application of that exception. A claim is 

not ‘‘directed to’’ a judicial exception, 

and thus is patent eligible, if the claim 

as a whole integrates the recited judicial 

exception into a practical application of 

that exception. 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. 

III. Instructions for Applying Revised 

Step 2A During Examination 

Examiners should determine whether 

a claim satisfies the criteria for subject 

matter eligibility by evaluating the claim 

in accordance with the criteria 

discussed in MPEP 2106, i.e., whether 

the claim is to a statutory category (Step 

1) and the Alice/Mayo test for judicial 

exceptions (Steps 2A and 2B). The 

procedure set forth herein (referred to as 

‘‘revised Step 2A’’) changes how 

examiners should apply the first step of 

the Alice/Mayo test, which determines 

whether a claim is ‘‘directed to’’ a 

judicial exception. 

As before, Step 1 of the USPTO’s 

eligibility analysis entails considering 

whether the claimed subject matter falls 

within the four statutory categories of 


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20This notice does not change the type of claim 

limitations that are considered to recite a law of 

nature or natural phenomenon. For more 

information about laws of nature and natural 

phenomena, including products of nature, see 

MPEP 2106.04(b) and (c). 

21Even if a claim is determined to be patent 

eligible under section 101, this or any other step of 

the eligibility analysis does not end the inquiry. 

The claims must also satisfy the other conditions 

and requirements for patentability, for example, 

under section 102 (novelty), 103 (nonobviousness), 

or 112 (enablement, written description, 

definiteness). Bilski, 561 U.S. at 602. Examiners 

should take care not to confuse or intermingle 

patentability requirements of these separate 

sections with patent eligibility analysis under 

section 101. 

22See, e.g., Amdocs, 841 F.3d at 1300, 1303; 

BASCOM, 827 F.3d at 1349–52; DDR Holdings, LLC 

v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. 

Cir. 2014); USPTO Berkheimer Memorandum; see 

also Rapid Litig., 827 F.3d at 1050 (holding that 

claimed invention is patent eligible because it is not 

directed to a patent-ineligible concept under step 

one or is an inventive application of the patentineligible concept under step two). 23See MPEP 2106.04(b)–(c). 

patentable subject matter identified by 

35 U.S.C. 101: Process, machine, 

manufacture, or composition of matter. 

The 2019 Revised Patent Subject Matter 

Eligibility Guidance does not change 

Step 1 or the streamlined analysis, 

which are discussed in MPEP 2106.03 

and 2106.06, respectively. Examiners 

may continue to use a streamlined 

analysis (Pathway A) when the patent 

eligibility of a claim is self-evident. 

Step 2A of the 2019 Revised Patent 

Subject Matter Eligibility Guidance is a 

two-prong inquiry. In Prong One, 

examiners evaluate whether the claim 

recites a judicial exception.20 This 

prong is similar to procedures in prior 

guidance except that when determining 

if a claim recites an abstract idea, 

examiners now refer to the subject 

matter groupings of abstract ideas in 

Section I instead of comparing the 

claimed concept to the USPTO’s prior 

‘‘Eligibility Quick Reference Sheet 

Identifying Abstract Ideas.’’ 

• If the claim recites a judicial 

exception (i.e., an abstract idea 

enumerated in Section I of the 2019 

Revised Patent Subject Matter Eligibility 

Guidance, a law of nature, or a natural 

phenomenon), the claim requires further 

analysis in Prong Two. 

• If the claim does not recite a 

judicial exception (a law of nature, 

natural phenomenon, or subject matter 

within the enumerated groupings of 

abstract ideas in Section I), then the 

claim is eligible at Prong One of revised 

Step 2A. This concludes the eligibility 

analysis, except in the rare circumstance 

described below.21

• In the rare circumstance in which 

an examiner believes a claim limitation 

that does not fall within the enumerated 

groupings of abstract ideas should 

nonetheless be treated as reciting an 

abstract idea, the procedure described in 

Section III.C for analyzing the claim 

should be followed. 

In Prong Two, examiners evaluate 

whether the claim recites additional 

elements that integrate the exception 

into a practical application of that 

exception. This prong adds a more 

detailed eligibility analysis to step one 

of the Alice/Mayo test (USPTO Step 2A) 

than was required under prior guidance. 

• 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. 

• If, however, the additional elements 

do not integrate the exception into a 

practical application, then the claim is 

directed to the recited judicial 

exception, and requires further analysis 

under Step 2B (where it may still be 

eligible if it amounts to an ‘‘inventive 

concept’’).22

The following discussion provides 

additional detail on this revised 

procedure. 

A. Revised Step 2A 

1. Prong One: Evaluate Whether the 

Claim Recites a Judicial Exception 

In Prong One, examiners should 

evaluate whether the claim recites a 

judicial exception, i.e., an abstract idea, 

a law of nature, or a natural 

phenomenon. If the claim does not 

recite a judicial exception, it is not 

directed to a judicial exception (Step 

2A: NO) and is eligible. This concludes 

the eligibility analysis. If the claim does 

recite a judicial exception, then it 

requires further analysis in Prong Two 

of Revised Step 2A to determine 

whether it is directed to the recited 

exception, as explained in Section 

III.A.2 of the 2019 Revised Patent 

Subject Matter Eligibility Guidance. 

For abstract ideas, Prong One 

represents a change as compared to 

prior guidance. To determine whether a 

claim recites an abstract idea in Prong 

One, examiners are now to: (a) Identify 

the specific limitation(s) in the claim 

under examination (individually or in 

combination) that the examiner believes 

recites an abstract idea; and (b) 

determine whether the identified 

limitation(s) falls within the subject 

matter groupings of abstract ideas 

enumerated in Section I of the 2019 

Revised Patent Subject Matter Eligibility 

Guidance. If the identified limitation(s) 

falls within the subject matter groupings 

of abstract ideas enumerated in Section 

I, analysis should proceed to Prong Two 

in order to evaluate whether the claim 

integrates the abstract idea into a 

practical application. When evaluating 

Prong One, examiners are no longer to 

use the USPTO’s ‘‘Eligibility Quick 

Reference Sheet Identifying Abstract 

Ideas,’’ which has been superseded by 

this document. 

In the rare circumstance in which an 

examiner believes a claim limitation 

that does not fall within the enumerated 

groupings of abstract ideas should 

nonetheless be treated as reciting an 

abstract idea, the procedure described in 

Section III.C for analyzing the claim 

should be followed. 

For laws of nature and natural 

phenomena, Prong One does not 

represent a change. Examiners should 

continue to follow existing guidance to 

identify whether a claim recites one of 

these exceptions,23 and if it does, 

proceed to Prong Two of the 2019 

Revised Patent Subject Matter Eligibility 

Guidance in order to evaluate whether 

the claim integrates the law of nature or 

natural phenomenon into a practical 

application. 

2. Prong Two: If the Claim Recites a 

Judicial Exception, Evaluate Whether 

the Judicial Exception Is Integrated Into 

a Practical Application 

In Prong Two, examiners should 

evaluate whether the claim as a whole 

integrates the recited judicial exception 

into a practical application of the 

exception. 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. 

When the exception is so integrated, 

then the claim is not directed to a 

judicial exception (Step 2A: NO) and is 

eligible. This concludes the eligibility 

analysis. If the additional elements do 

not integrate the exception into a 

practical application, then the claim is 

directed to the judicial exception (Step 

2A: YES), and requires further analysis 

under Step 2B (where it may still be 

eligible if it amounts to an inventive 

concept), as explained in Section III.B of 

the 2019 Revised Patent Subject Matter 

Eligibility Guidance. 

Prong Two represents a change from 

prior guidance. The analysis under 

Prong Two is the same for all claims 

reciting a judicial exception, whether 

the exception is an abstract idea, a law 

of nature, or a natural phenomenon. 

Examiners evaluate integration into a 

practical application by: (a) Identifying 

whether there are any additional 

elements recited in the claim beyond 


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24USPTO guidance uses the term ‘‘additional 

elements’’ to refer to claim features, limitations, 

and/or steps that are recited in the claim beyond the 

identified judicial exception. Again, whether an 

additional element or combination of elements 

integrate the exception into a practical application 

should be evaluated on the claim as a whole. 

25For example, a modification of internet 

hyperlink protocol to dynamically produce a dualsource hybrid web page. See MPEP 2106.05(a) for 

more information concerning improvements in the 

functioning of a computer or to any other 

technology or technical field, including a 

discussion of the exemplar provided herein, which 

is based on DDR Holdings, 773 F.3d at 1258–59. See 

also USPTO Finjan Memorandum (discussing 

Finjan and Core Wireless). 

26For example, an immunization step that 

integrates an abstract idea into a specific process of 

immunizing that lowers the risk that immunized 

patients will later develop chronic immunemediated diseases. See, e.g., Classen 

Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 

1057, 1066–68 (Fed. Cir. 2011). See also Vanda 

Pharm. Inc. v. West-Ward Pharm. Int’l Ltd., 887 

F.3d 1117, 1135 (Fed. Cir. 2018) (holding claims to 

the practical application of the natural relationships 

between iloperidone, CYP2D6 metabolism, and QTc 

prolongation to treat schizophrenia, not merely the 

recognition of those relationships, to be patent 

eligible at Mayo/Alice step 1 (USPTO Step 2A)), and 

USPTO Vanda Memorandum (discussing Vanda). 

27For example, a Fourdrinier machine (which is 

understood in the art to have a specific structure 

comprising a headbox, a paper-making wire, and a 

series of rolls) that is arranged in a particular way 

that uses gravity to optimize the speed of the 

machine while maintaining quality of the formed 

paper web. See MPEP 2106.05(b) for more 

information concerning use of a judicial exception 

with, or in conjunction with, a particular machine 

or manufacture, including a discussion of the 

exemplar provided herein, which is based on Eibel 

Process Co. v. Minnesota & Ontario Paper Co., 261 

U.S. 45, 64–65 (1923). 

28For example, a process that transforms raw, 

uncured synthetic rubber into precision-molded 

synthetic rubber products by using a mathematical 

formula to control operation of the mold. See MPEP 

2106.05(c) for more information concerning 

transformation or reduction of a particular article to 

a different state or thing, including a discussion of 

the exemplar provided herein, which is based on 

Diehr, 450 U.S. at 184. 

29For example, a combination of steps including 

installing rubber in a press, closing the mold, 

constantly measuring the temperature in the mold, 

and automatically opening the press at the proper 

time, all of which together meaningfully limited the 

use of a mathematical equation to a practical 

application of molding rubber products. See MPEP 

2106.05(e) for more information on this 

consideration, including a discussion of the 

exemplar provided herein, which is based on Diehr, 

450 U.S. at 184, 187. See also USPTO Finjan 

Memorandum (discussing Finjan and Core 

Wireless). 

30For example, a limitation indicating that a 

particular function such as creating and 

maintaining electronic records is performed by a 

computer, without specifying how. See MPEP 

2106.05(f) for more information concerning mere 

instructions to apply a judicial exception, including 

a discussion of the exemplar provided herein, 

which is based on Alice, 573 U.S. at 222–26. See 

also Benson, 409 U.S. 63 (holding that merely 

implementing a mathematical principle on a 

general purpose computer is a patent ineligible 

abstract idea); Credit Acceptance Corp. v. Westlake 

Services, 859 F.3d 1044 (Fed. Cir. 2017) (using a 

computer as a tool to process an application for 

financing a purchase). 

31For example, a mere data gathering such as a 

step of obtaining information about credit card 

transactions so that the information can be analyzed 

in order to detect whether the transactions were 

fraudulent. See MPEP 2106.05(g) for more 

information concerning insignificant extra-solution 

activity, including a discussion of the exemplar 

provided herein, which is based on CyberSource, 

654 F.3d at 1375. See also Mayo, 566 U.S. at 79 

(concluding that additional element of measuring 

metabolites of a drug administered to a patient was 

insignificant extra-solution activity, which was 

insufficient to confer patent eligibility); Flook, 437 

U.S. at 590 (step of adjusting an alarm limit based 

on the output of a mathematical formula was ‘‘postsolution activity’’ and did not render method patent 

eligible). 

32For example, a claim describing how the 

abstract idea of hedging could be used in the 

commodities and energy markets, or a claim 

limiting the use of a mathematical formula to the 

petrochemical and oil-refining fields. See MPEP 

2106.05(h) concerning generally linking use of a 

judicial exception to a particular technological 

environment or field of use, including a discussion 

of the exemplars provided herein, which are based 

on Bilski, 561 U.S. at 612, and Flook, 437 U.S. at 

588–90. Thus, the mere application of an abstract 

method of organizing human activity in a particular 

field is not sufficient to integrate the judicial 

exception into a practical application. 

33Of course, such claims must also satisfy the 

other conditions and requirements of patentability, 

for example, under section 102 (novelty), 103 

(nonobviousness), and 112 (enablement, written 

description, definiteness). Bilski, 561 U.S. at 602. 

the judicial exception(s); and (b) 

evaluating those additional elements 

individually and in combination to 

determine whether they integrate the 

exception into a practical application, 

using one or more of the considerations 

laid out by the Supreme Court and the 

Federal Circuit, for example those listed 

below. While some of the considerations 

listed below were discussed in prior 

guidance in the context of Step 2B, 

evaluating them in revised Step 2A 

promotes early and efficient resolution 

of patent eligibility, and increases 

certainty and reliability. Examiners 

should note, however, that revised Step 

2A specifically excludes consideration 

of whether the additional elements 

represent well-understood, routine, 

conventional activity. Instead, analysis 

of well-understood, routine, 

conventional activity is done in Step 2B. 

Accordingly, in revised Step 2A 

examiners should ensure that they give 

weight to all additional elements, 

whether or not they are conventional, 

when evaluating whether a judicial 

exception has been integrated into a 

practical application. 

In the context of revised Step 2A, the 

following exemplary considerations are 

indicative that an additional element (or 

combination of elements) 24 may have 

integrated the exception into a practical 

application: 

• An additional element reflects an 

improvement in the functioning of a 

computer, or an improvement to other 

technology or technical field; 25

• an additional element that applies 

or uses a judicial exception to effect a 

particular treatment or prophylaxis for a 

disease or medical condition; 26

• an additional element implements a 

judicial exception with, or uses a 

judicial exception in conjunction with, 

a particular machine or manufacture 

that is integral to the claim; 27

• an additional element effects a 

transformation or reduction of a 

particular article to a different state or 

thing; 28 and 

• an additional element applies or 

uses the judicial exception in some 

other meaningful way beyond generally 

linking the use of the judicial exception 

to a particular technological 

environment, such that the claim as a 

whole is more than a drafting effort 

designed to monopolize the exception.29

This is not an exclusive list, and there 

may be other examples of integrating the 

exception into a practical application. 

The courts have also identified 

examples in which a judicial exception 

has not been integrated into a practical 

application: 

• An additional element merely 

recites the words ‘‘apply it’’ (or an 

equivalent) with the judicial exception, 

or merely includes instructions to 

implement an abstract idea on a 

computer, or merely uses a computer as 

a tool to perform an abstract idea; 30

• an additional element adds 

insignificant extra-solution activity to 

the judicial exception; 31 and 

• an additional element does no more 

than generally link the use of a judicial 

exception to a particular technological 

environment or field of use.32

It is critical that examiners consider 

the claim as a whole when evaluating 

whether the judicial exception is 

meaningfully limited by integration into 

a practical application of the exception. 

Some elements may be enough on their 

own to meaningfully limit an exception, 

but other times it is the combination of 

elements that provide the practical 

application. When evaluating whether 

an element (or combination of elements) 

integrates an exception into a practical 

application, examiners should give 

careful consideration to both the 

element and how it is used or arranged 

in the claim as a whole. Because revised 

Step 2A does not evaluate whether an 

additional element is well-understood, 

routine, conventional activity, 

examiners are reminded that a claim 

that includes conventional elements 

may still integrate an exception into a 

practical application, thereby satisfying 

the subject matter eligibility 

requirement of Section 101.33


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34See, e.g., Diehr, 450 U.S. at 187 (‘‘Our earlier 

opinions lend support to our present conclusion 

that a claim drawn to subject matter otherwise 

statutory does not become nonstatutory simply 

because it uses a mathematical formula, computer 

program, or digital computer.’’); id. at 185 (‘‘Our 

conclusion regarding respondents’ claims is not 

altered by the fact that in several steps of the 

process a mathematical equation and a programmed 

digital computer are used.’’). 

35See, e.g., Amdocs, 841 F.3d at 1300, 1303; 

BASCOM, 827 F.3d at 1349–52; DDR Holdings, 773 

F.3d at 1257–59. 

36 In accordance with existing guidance, an 

examiner’s conclusion that an additional element 

(or combination of elements) is well understood, 

routine, conventional activity must be supported 

with a factual determination. For more information 

concerning evaluation of well-understood, routine, 

conventional activity, see MPEP 2106.05(d), as 

modified by the USPTO Berkheimer Memorandum. 

37 Mayo, 566 U.S. at 82 (‘‘[S]imply appending 

conventional steps, specified at a high level of 

generality, to laws of nature, natural phenomena, 

and abstract ideas cannot make those laws, 

phenomena, and ideas patentable.’’); but see id. at 

85 (‘‘[T]he claimed process included not only a law 

of nature but also several unconventional steps 

(such as inserting the receptacle, applying heat to 

the receptacle externally, and blowing the air into 

the furnace) that confined the claims to a particular, 

useful application of the principle.’’ (discussing the 

old English case, Neilson v. Harford, Webster’s 

Patent Cases 295 (1841))). 

38See supra note 34; see also OIP Techs., 788 

F.3d at 1363 (finding that gathering statistics 

generated based on customer testing for input to a 

pricing calculation ‘‘fail[s] to ‘transform’ the 

claimed abstract idea into a patent-eligible 

invention’’). 

39Compare Flook, 437 U.S. at 585–86 (holding 

claimed method of updating alarm limits to be 

ineligible because: ‘‘In essence, the method consists 

of three steps: an initial step which merely 

measures the present value of the process variable 

(e.g., the temperature); an intermediate step which 

uses an algorithm to calculate an updated alarmlimit value; and a final step in which the actual 

alarm limit is adjusted to the updated value. The 

only difference between the conventional methods 

of changing alarm limits and that described in 

respondent’s application rests in the second step— 

the mathematical algorithm or formula.’’); with 

Exergen Corp. v. Kaz USA, Inc., 725 F. App’x 959, 

966 (Fed. Cir. 2018) (holding claimed body 

temperature detector to be eligible because: ‘‘Here, 

the patent is directed to the measurement of a 

natural phenomenon (core body temperature). Even 

if the concept of such measurement is directed to 

a natural phenomenon and is abstract at step one, 

the measurement method here was not 

conventional, routine, and well-understood. 

Following years and millions of dollars of testing 

and development, the inventor determined for the 

first time the coefficient representing the 

relationship between temporal-arterial temperature 

and core body temperature and incorporated that 

discovery into an unconventional method of 

temperature measurement.’’). 

40Compare Berkheimer, 881 F.3d at 1370 

(holding independent claim 1 to be ineligible at 

Alice step 2: ‘‘The[ ] conventional limitations of 

claim 1, combined with limitations of analyzing 

and comparing data and reconciling differences 

between the data, fail to transform the abstract idea 

into a patent-eligible invention. The limitations 

amount to no more than performing the abstract 

idea of parsing and comparing data with 

conventional computer components’’) (internal 

quotation marks and citation omitted); with id. 

(concluding that dependent claims 4–7 may be 

eligible: ‘‘Claims 4–7, in contrast, contain 

limitations directed to the arguably unconventional 

inventive concept described in the specification. 

Claim 4 recites ‘storing a reconciled object structure 

in the archive without substantial redundancy.’ The 

specification states that storing object structures in 

the archive without substantial redundancy 

improves system operating efficiency and reduces 

storage costs. It also states that known asset 

management systems did not archive documents in 

this manner. Claim 5 depends on claim 4 and 

further recites ‘selectively editing an object 

structure, linked to other structures to thereby effect 

a one-to-many change in a plurality of archived 

items.’ The specification states one-to-many editing 

substantially reduces effort needed to update files 

because a single edit can update every document in 

the archive linked to that object structure. This oneto-many functionality is more than ‘editing data in 

a straightforward copy-and-paste fashion,’ as 

characterized by the district court. According to the 

specification, conventional digital asset 

management systems cannot perform one-to-many 

editing because they store documents with 

numerous instances of redundant elements, rather 

than eliminate redundancies through the storage of 

linked object structures. Claims 6–7 depend from 

claim 5 and accordingly contain the same 

limitations. These claims recite a specific method 

of archiving that, according to the specification, 

provides benefits that improve computer 

functionality. . . . [T]here is at least a genuine 

issue of material fact in light of the specification 

regarding whether claims 4–7 archive documents in 

an inventive manner that improves these aspects of 

the disclosed archival system.’’) (internal quotation 

marks and citations omitted). 

B. Step 2B: If the Claim Is Directed to 

a Judicial Exception, Evaluate Whether 

the Claim Provides an Inventive 

Concept 

It is possible that a claim that does not 

‘‘integrate’’ a recited judicial exception 

is nonetheless patent eligible. For 

example the claim may recite additional 

elements that render the claim patent 

eligible even though a judicial exception 

is recited in a separate claim element.34

Along these lines, the Federal Circuit 

has held claims eligible at the second 

step of the Alice/Mayo test (USPTO Step 

2B) because the additional elements 

recited in the claims provided 

‘‘significantly more’’ than the recited 

judicial exception (e.g., because the 

additional elements were 

unconventional in combination).35

Therefore, if a claim has been 

determined to be directed to a judicial 

exception under revised Step 2A, 

examiners should then evaluate the 

additional elements individually and in 

combination under Step 2B to 

determine whether they provide an 

inventive concept (i.e., whether the 

additional elements amount to 

significantly more than the exception 

itself). If the examiner determines that 

the element (or combination of 

elements) amounts to significantly more 

than the exception itself (Step 2B: YES), 

the claim is eligible, thereby concluding 

the eligibility analysis. If the examiner 

determines that the element and 

combination of elements does not 

amount to significantly more than the 

exception itself, the claim is ineligible 

(Step 2B: NO) and the examiner should 

reject the claim for lack of subject matter 

eligibility. 

While many considerations in Step 

2A need not be reevaluated in Step 2B, 

examiners should continue to consider 

in Step 2B whether an additional 

element or combination of elements: 

• Adds a specific limitation or 

combination of limitations that are not 

well-understood, routine, conventional 

activity in the field, which is indicative 

that an inventive concept may be 

present; or 

• simply appends well-understood, 

routine, conventional activities 

previously known to the industry, 

specified at a high level of generality, to 

the judicial exception, which is 

indicative that an inventive concept 

may not be present.36

For this reason, if an examiner had 

previously concluded under revised 

Step 2A that, e.g., an additional element 

was insignificant extra-solution activity, 

they should reevaluate that conclusion 

in Step 2B. If such reevaluation 

indicates that the element is 

unconventional or otherwise more than 

what is well-understood, routine, 

conventional activity in the field, this 

finding may indicate that an inventive 

concept is present and that the claim is 

thus eligible.37 For example, when 

evaluating a claim reciting an abstract 

idea such as a mathematical equation 

and a series of data gathering steps that 

collect a necessary input for the 

equation, an examiner might consider 

the data gathering steps to be 

insignificant extra-solution activity in 

revised Step 2A, and therefore find that 

the judicial exception is not integrated 

into a practical application.38 However, 

when the examiner reconsiders the data 

gathering steps in Step 2B, the examiner 

could determine that the combination of 

steps gather data in an unconventional 

way and therefore include an ‘‘inventive 

concept,’’ rendering the claim eligible at 

Step 2B.39 Likewise, a claim that does 

not meaningfully integrate a judicial 

exception into a practical application of 

the exception sufficient to pass muster 

at Step 2A, may nonetheless include 

additional subject matter that is 

unconventional and thus an ‘‘inventive 

concept’’ at Step 2B.40

C. Treating a Claim Limitation That 

Does Not Fall Within the Enumerated 

Groupings of Abstract Ideas as Reciting 

an Abstract Idea 

In the rare circumstance in which an 

examiner believes a claim limitation 

that does not fall within the enumerated 

groupings of abstract ideas should 


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Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019 / Notices 57 

41Such justification may include, for example, an 

explanation of why the element contains subject 

matter that, per se, invokes eligibility concerns 

similar to those expressed by the Supreme Court 

with regard to the judicial exceptions. See supra 

note 5. 

42Similarly, in the rare circumstance in which a 

panel of administrative patent judges (or panel 

majority) believes that a claim reciting a tentative 

abstract idea should be treated as reciting an 

abstract idea, the matter should be brought to the 

attention of the PTAB leadership by a written 

request for clearance. 

43See MPEP 2103 et seq. and 2106(III). 

1Section 4 of the Leahy-Smith America Invents 

Act (AIA) designated pre-AIA 35 U.S.C. 112, ¶ ¶ 1 

through 6, as 35 U.S.C. 112(a) through (f), effective 

as to applications filed on or after September 16, 

2012. See Public Law 112–29, 4(c), 125 Stat. 284, 

296 (2011). AIA 35 U.S.C. 112(a) and pre-AIA 35 

U.S.C. 112, ¶ 1 are collectively referred to in this 

notice as 35 U.S.C. 112(a); AIA 35 U.S.C. 112(b) and 

pre-AIA 35 U.S.C. 112, ¶ 2 are collectively referred 

to in this notice as 35 U.S.C. 112(b); and AIA 35 

U.S.C. 112(f) and pre-AIA 35 U.S.C. 112, ¶ 6 are 

collectively referred to in this notice as 35 U.S.C. 

112(f). 

nonetheless be treated as reciting an 

abstract idea (‘‘tentative abstract idea’’), 

the examiner should evaluate whether 

the claim as a whole integrates the 

recited tentative abstract idea into a 

practical application as explained in 

Section III.A.2. If the claim as a whole 

integrates the recited tentative abstract 

idea into a practical application, the 

claim is not directed to a judicial 

exception (Step 2A: NO) and is eligible 

(thus concluding the eligibility 

analysis). If the claim as a whole does 

not integrate the recited tentative 

abstract idea into a practical 

application, then the examiner should 

evaluate the additional elements 

individually and in combination to 

determine whether they provide an 

inventive concept as explained in 

Section III.B. If an additional element or 

combination of additional elements 

provides an inventive concept as 

explained in Section III.B (Step 2B: 

YES), the claim is eligible (thus 

concluding the eligibility analysis). If 

the additional element or combination 

of additional elements does not provide 

an inventive concept as explained in 

Section III.B (Step 2B: NO), the 

examiner should bring the application 

to the attention of the Technology 

Center Director. Any rejection in which 

a claim limitation, which does not fall 

within the enumerated abstract ideas 

(tentative abstract idea), is nonetheless 

treated as reciting an abstract idea 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 41 for why such claim 

limitation is being treated as reciting an 

abstract idea.42

D. Compact Prosecution 

Regardless of whether a rejection 

under 35 U.S.C. 101 is made, a complete 

examination should be made for every 

claim under each of the other 

patentability requirements: 35 U.S.C. 

102, 103, 112, and 101 (utility, 

inventorship and double patenting) and 

non-statutory double patenting.43

Compact prosecution, however, does 

not mandate that the patentability 

requirements be analyzed in any 

particular order. 

Dated: December 20, 2018. 

Andrei Iancu, 

Under Secretary of Commerce for Intellectual 

Property and Director of the United States 

Patent and Trademark Office. 

[FR Doc. 2018–28282 Filed 1–4–19; 8:45 am] 

BILLING CODE 3510–16–P 

DEPARTMENT OF COMMERCE 

United States Patent and Trademark 

Office 

[Docket No. PTO–P–2018–0059] 

Examining Computer-Implemented 

Functional Claim Limitations for 

Compliance With 35 U.S.C. 112 

AGENCY: United States Patent and 

Trademark Office, Commerce. 

ACTION: Examination guidance; request 

for comments. 

SUMMARY: This guidance will assist 

United States Patent and Trademark 

Office (USPTO) personnel in the 

examination of claims in patent 

applications that contain functional 

language, particularly patent 

applications where functional language 

is used to claim computer-implemented 

inventions. Part I of this guidance 

addresses issues related to the 

examination of computer-implemented 

functional claims having means-plusfunction limitations. Part II of this 

guidance addresses written description 

and enablement issues related to the 

examination of computer-implemented 

functional claims that recite only the 

idea of a solution or outcome to a 

problem but fail to recite details of how 

the solution or outcome is 

accomplished. 

DATES:

Applicable Date: The ComputerImplemented Functional Claim 

Limitations Guidance is effective on 

January 7, 2019. The ComputerImplemented Functional Claim 

Limitations Guidance applies to all 

applications, and to all patents resulting 

from applications, filed before, on or 

after January 7, 2019. 

Comment Deadline Date: Written 

comments must be received on or before 

March 8, 2019. 

ADDRESSES: Comments must be sent by 

electronic mail message over the 

internet addressed to: 

112Guidance2019@uspto.gov. 

Electronic comments submitted in 

plain text are preferred, but also may be 

submitted in ADOBE® portable 

document format or MICROSOFT 

WORD® format. Comments not 

submitted electronically should be 

submitted on paper in a format that 

facilitates convenient digital scanning 

into ADOBE® portable document 

format. The comments will be available 

for viewing via the USPTO’s internet 

website (http://www.uspto.gov). Because 

comments will be made available for 

public inspection, information that the 

submitter does not desire to make 

public, such as an address or phone 

number, should not be included in the 

comments. 

FOR FURTHER INFORMATION CONTACT: 

Nicole D. Haines, Senior Legal Advisor, 

at 571–272–7717 or Jeffrey R. West, 

Senior Legal Advisor, at 571–272–2226, 

both with the Office of Patent Legal 

Administration. 

SUPPLEMENTARY INFORMATION: The patent 

examination process must ensure that: 

(1) The claims of an application have 

proper written description and 

enablement support under 35 U.S.C. 

112(a) 1 in the disclosure of the 

application, and (2) functional 

limitations (i.e., claim limitations that 

define an element in terms of the 

function it performs without reciting the 

structure, materials, or acts that perform 

the function) are properly treated as 

means (or step) plus function 

limitations under 35 U.S.C. 112(f), and 

are sufficiently definite under 35 U.S.C. 

112(b), as appropriate. These 

requirements are particularly relevant to 

computer-implemented functional 

claims. 

The U.S. Court of Appeals for the 

Federal Circuit (‘‘Federal Circuit’’) has 

recognized a problem with broad 

functional claiming without adequate 

structural support in the specification. 

Williamson v. Citrix Online, LLC, 792 

F.3d 1339, 1349 (Fed. Cir. 2015) (en 

banc) (overruling the Federal Circuit’s 

previous application of a ‘‘strong’’ 

presumption that claim limitations 

lacking the word ‘‘means’’ are not 

subject to § 112(f) to address the 

resulting ‘‘proliferation of functional 

claiming untethered to [§ 112(f)] and 

free of the strictures set forth in the 

statute’’); Function Media, LLC v. 

Google, Inc., 708 F.3d 1310, 1319 (Fed. 

Cir. 2013) (‘‘ ‘Section [112(f)] is intended 


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