In a memorandum to patent examiners dated November 2, 2016, the
US Patent and Trademark Office (PTO) addressed recent subject
matter eligibility decisions. The memorandum was spurred by two
precedential US Court of Appeals for the Federal Circuit decisions:
McRO, Inc. v. Bandai Namco Games America, Inc. (
IP Update, Vol. 19, No. 10) and BASCOM Global
Internet Servs. v. AT&T Mobility LLC (
IP Update, Vol. 19, No. 8).
The memorandum noted that McRO and BASCOM do
not change the PTO's basic subject matter eligibility (SME)
guidelines. According to the memorandum, McRO and
BASCOM highlight several factors that examiners should
consider when determining whether an application claims eligible
subject matter. For example, the memo reminded examiners that they
"should consider the claim as a whole under Step 2A of the SME
guidance, and should not overgeneralize the claim or simplify it
into its 'gist' or core principles, when identifying a
concept as a judicial exception."
