USPTO RELEASES NEW EXAMINATION GUIDELINES FOR SOFTWARE PATENTS: In light of Ex Parte Lundgren, the USPTO has released a 59-page Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility. The Guidelines are intended to officially state the USPTO's understanding and application of current caselaw. Interestingly, the Guidelines state that "[a]ny failure by USPTO personnel to follow the Guidelines is neither appealable or petitionable."

The Guidelines don't really contain anything earth-shattering, but they acknowledge the Lundgren decision (see p. 45), and state that "USPTO personnel should no longer rely on the 'technological arts' test to determine whether a claimed invention is directed to statutory subject matter. There is no other recognized exceptions to eligible subject matter other than laws of nature, natural phenomena, and abstract ideas."

The Guidelines state that, prior to evaluating the claimed invention under 35 U.S.C. § 101, USPTO personnel are expected to conduct a thorough search of the prior art tofurtherl contribute to USPTO personnel's understanding of the invention. Both claimed and unclaimed aspects of the invention described in the specification should be searched if there is a reasonable expectation that the unclaimed aspects may be later claimed.

The first step for Examiners is to determine whether claims falls within one of the four enumerated categories of patentable subject matter recited in 35 U.S.C. § 101 (process, machine, manufacture or composition of matter). Once this determination is made, the claims are further analyzed to see if they are directed to nothing more than (1) abstract ideas (such as mathematical algorithms), (2) natural phenomena, and (3) laws of nature. If so, the claims are not eligible and therefore are excluded from patent protection. However, if the claims recite a practical application of any of the 3 exceptions, then patentability may still be established.

To satisfy section 101 requirements, the claim must be for a practical application of the § 101 judicial exception, which can be identified in two ways:

• The claimed invention "transforms" an article or physical object to a
  different state or thing.
• The claimed invention otherwise produces a useful, concrete and
  tangible result.

The examiner should review the claim and determine if it provides "a transformation or reduction of an article to a different state or thing." If the examiner finds such a transformation or reduction, the examiner shall end the inquiry and find that the claim meets the statutory requirement of 35 U.S.C. § 101. If the examiner does not find such a transformation or reduction, the examiner must then ask whether the claims recite a practical application of an abstract idea, law of nature, or natural phenomena that produces a useful, concrete and tangible result.

In determining whether the claim is for a "practical application," the focus is on the final result achieved by the claimed invention. The steps taken to achieve a particular result are not as relevant. If the claim is directed to a practical application of the § 101 judicial exception producing a result tied to the physical world (that does not preempt the judicial exception), then the claim meets the statutory requirement of 35 U.S.C. § 101.

For an invention to be "useful" it must satisfy the utility requirement of section 101. The USPTO's official interpretation of the utility requirement provides that the utility of an invention has to be (i) specific, (ii) substantial and (iii) credible. If the specification discloses a practical application of a § 101 judicial exception, but the claim is broader than the disclosure such that it does not require a practical application, then the claim must be rejected.

The "tangible" requirement does not necessarily mean that a claim must either be tied to a particular machine or apparatus or must operate to change articles or materials to a different state or thing. However, the tangible requirement does require that the claim must recite more than a § 101 judicial exception, in that the process claim must set forth a practical application of that § 101 judicial exception to produce a real-world result.

To determine whether a "concrete" result is present, the process must have a result that can be substantially repeatable or the process must substantially produce the same result again. The opposite of "concrete" is unrepeatable or unpredictable. Resolving this question is dependent on the level of skill in the art.

The USPTO bears the initial burden of presenting a prima facie case of unpatentability. The examiner should review the totality of the evidence (e.g., the specification, claims, relevant prior art) before reaching a conclusion with regard to whether the claimed invention sets forth patent eligible subject matter. The examiner must weigh the determinations made above to reach a conclusion as to whether it is "more likely than not" that the claimed invention as a whole either falls outside of one of the enumerated statutory classes or within one of the exceptions to statutory subject matter.


See Guidelines here

Dennis Crouch's Patently-O also provides a great summary of the Guidelines.