USPTO says its time to: Update! Refresh!

Blog Post
The USPTO has continued to develop and establish guidelines for both examiners and practitioners since Alice and Mayo shook 35 U.S.C. § 101 analysis in June of 2014. These guidelines did not always provide the clearest or most consistent applications of the Alice-Mayo framework. Thus, the USPTO urges Examiner’s to rely on examples from the courts, which it publishes periodically.

In September, the USPTO released Appendix 3 to the July 2015 Update. This appendix includes a useful table of U.S. Supreme Court and Federal Circuit cases dealing with 35 U.S.C. § 101 issues. This table provides a summary of cases, many of which are covered in the USPTO’s previous examples found here. Many examiners rely on these examples for 101 rejections. Likewise, partitions can over come rejections with these examples. The new table provides a helpful and quick reference for finding the example you need.

Additionally, the USPTO recently released slides from examiner refresher training. These slides cover step 1 of the December 2014 IEG flowchart. That is, they review how to determine whether claims are directed towards one of the four categories of statutory subject matter (i.e., a process, machine, manufacture, or composition of matter).


These categories are given the following definitions:

Process – “an act, or series of acts or steps”
Machine – “a concrete thing, consisting of parts, or of certain devices and combination of devices”
Manufacture – “an article produced from raw or prepared materials by giving these materials new forms, qualities, properties, or combinations, whether by hand labor or by machinery”
Composition of Matter – “all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids, for example”


While preambles are often overlooked, the refresher highlights the importance of the preamble. The preamble can set a claim up for a rejection based on non-statutory subject matter. Some examples of claims that the USPTO identifies as non-statutory are:

A paradigm for marketing software, comprising;

A device profile for describing properties of a device in a digital image reproduction system to capture, transform or render an image, said device profile comprising;

A signal with embedded supplemental data.

Computer readable media

On the topic of signals, the USPTO emphasized that computer readable media claims are per se ineligible unless defined otherwise in the applications. For instance, if the application defined computer readable storage media as hardware, and computer readable transmission media as a signal (e.g., a transitory signal), then a computer readable storage media claim would not be per se ineligible. Another option to avoid a claim being classified as per se ineligible would be to claim a “non-transitory computer readable media.”

Please view my previous posts on this topic. Join the discussion on the Business Advocate’s Intellectual Property Strategies blog or contact me if you want to discuss or would like additional information.

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