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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:
`
`FROM:
`
`~2,~~Corps
`~l"'~~rt~Bahr
`Deputy Commissioner
`
`for Patent Examination Policy
`
`
`SUBJECT: Recent Subject Matter Eligibility Decisions (Enfish, LLC v. Microsoft Corp. and
`TL! 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. While
`the 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 the
`subject matter eligibility analysis, in particular regarding whether a claim is directed to an
`abstract 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 on
`whether 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 the
`language 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 automatically
`doom 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 computer­
`related 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
`
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`SUPERCELL OY
`EX. 1003
`
`

`

`not inherently abstract. Therefore, an examiner may determine that a claim directed to
`improvements in computer-related technology is not directed to an abstract idea under Step 2A
`of the subject matter eligibility examination guidelines (and is thus patent eligible), without the
`need to analyze the additional elements under Step 2B. In particular, a claim directed to an
`improvement 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 that
`invoke 35 U.S.C. § 112(t). The court asked whether the focus of the claims is on the specific
`asserted 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 an
`improvement in existing computer technology, the court looked to the teachings of the
`specification. 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 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
`(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, for
`example, to generalized steps to be performed on a computer using conventional computer
`activity. 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 idea
`of classifying and storing digital images in an organized manner (Step 2A). The court then
`found that the additional elements of performing these functions using a telephone unit and a
`server 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 (Step
`2A), 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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