USPTO Update on Subject Matter Eligibility

A new USPTO memo addresses two recent subject matter eligibility decisions from the Federal Circuit that hold in favor of subject matter eligibility under §101. The memo also includes guidance on preemption.


In McRO, Inc. dba Planet Blue v. Bandai Namco Games America Inc., 120 USPQ2d 1091 (Fed. Cir. 2016), the patent at issue claims methods of automatic lip synchronization and facial expression animation using computer-implemented rules. The Federal Circuit relied on the specification's detailed explanation of how the claimed rules enabled the automation of specific animation tasks that previously could not be automated to uphold the lower court’s finding of eligible subject matter.

The memo states that an "improvement in computer-related technology" is not limited to improvements in the operation of a computer or a computer network per se, but may also be claimed as a set of "rules" (basically mathematical relationships) that improve computer-related technology by allowing computer performance of a function not previously performable by a computer. 

Practice Tip: In your specification, explicitly delineate and describe claimed functions made possible by the invention that weren’t previously performable by a computer. 


The patent at issue in BASCOM Global Internet Services v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) claims a system for filtering content retrieved from an Internet computer network. The Federal Circuit vacated the lower court’s holding that the claims recite ineligible subject matter, while acknowledging that the generic computer, network and Internet components did not amount to “significantly more” than an abstract idea when considered individually.  But the court held that when combined, an inventive concept may be found in the non-conventional and non-generic arrangement of the additional elements, such as the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user. In other words, eligible subject matter for software-related inventions may be found in non­conventional and non-generic arrangements of known, conventional elements.

Practice Tip: In your specification, explicitly show the non-conventional and non-generic features of combinations of known, conventional elements.


Although claims that preempt all applications of an abstract idea are ineligible, claims that are not preemptive do not automatically recite eligible subject matter. The claim still must be directed to an improvement in computer-related technology or a specific way of achieving a desired outcome or end result.

Practice Tip: In the specification, describe specific improvements wrought by the invention and details about the processes implemented by the invention to achieve them.    

Morris & Kamlay LLP

Aaron Kamlay