Another USPTO Memo to Examining Corps – Enfish, TLI, and Section 101 Patent Subject Matter Eligibility


The USPTO has issued another memorandum dated May 19, 2016, regarding 35 U.S.C. § 101 subject matter eligibility for patents. The new memo discusses the recent Federal Circuit decisions Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. A.V. Automotive, LLC. 

This follows the USPTO’s May 4, 2016, memorandum focusing on best practices in formulating a Section 101 subject matter eligibility rejection, as discussed in my previous post.  Once again, the new memo tells examiners that they should constrain their abstract idea analyses to similar ideas found to be abstract by the courts. However, since courts have come to different conclusions on similar claims, this still seems to be a difficult task. 

The memo also discusses the Enfish holding, “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 is defined 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 computer components are added after the fact to a fundamental economic practice or mathematical equation, but were directed to a specific implementation of a solution to a problem in the software arts, and concluded that the Enfish claims were thus not directed to an abstract idea.” 

I think the Enfish case and the USPTO memos may be helpful to those of us prosecuting computer-based claims, and I appreciate the USPTO’s quick response to the decisions. However, from my experience, the actual prosecution of computer-based claims still has an apparent bias towards a finding of abstractness and subject matter ineligibility.





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