Patent Examiner Guidelines

On July 17, 2024, the USPTO Guidance and issued new examples 47-49 related to artificial intelligence, expanding its overall guidance on the topic.

• Summary of USPTO's Guidance including recent caselaw
• Summary

• Examples

This page is under construction

From MPEP 2106.04(a)(2):

• Fundamental economic principles or practices (including hedging, insurance, mitigating risk)
  1. Hedging or protecting against risk: Bilski v. Kappos, 561 U.S. 593, 609, 95 USPQ2d 1001, 1009 (2010) PB page Wikipedia Opinion
  2. Managing a stable value protected life insurance policy: Bancorp Servs., LLC v. Sun Life Assur. Co. of Canada (U.S.) ¹⁾
     • Harvard Law Rev.: The Federal Circuit noted that computer implementation may shift an abstract process from patent ineligibility to patent eligibility, but only when a computer is “integral to the claimed invention.” Though the court did not set out a clear rule for determining whether a computer is integral to a claimed invention, it did note that “the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.” 126 Harv. L. Rev. 810 (private cache).
  3. Mitigating settlement risk: Alice Corp. v. CLS Bank ²⁾
     1. Rules for conducting a wagering game: In re Smith ³⁾
  4. Financial instruments that are designed to protect against the risk of investing in financial instruments: In re Chorna, 656 Fed. App'x 1016, 1021 (Fed. Cir. 2016) (non-precedential);
  5. Offer-based price optimization: OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015);
  6. Local processing of payments for remotely purchased goods: Inventor Holdings, LLC v. Bed Bath Beyond, 876 F.3d 1372, 1378-79, 125 USPQ2d 1019, 1023 (Fed. Cir. 2017); This is a Rule 36 Affirmation of DDE's Opinion.
  7. Using a marking affixed to the outside of a mail object to communicate information about the mail object: Secured Mail Solutions LLC v. Universal Wilde, Inc., 873 F.3d 905, 911, 124 USPQ2d 1502, 1506 (Fed. Cir. 2017); and
  8. Placing an order based on displayed market information: Trading Technologies Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1092, 2019 USPQ2d 138290 (Fed. Cir. 2019).
• Commercial or legal interactions (including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations)
  1. Transaction performance guaranty: buySAFE, Inc. v. Google, Inc., 765 F.3d. 1350, 112 USPQ2d 1093 (Fed. Cir. 2014).
  2. Managing a stable value protected life insurance policy: Bancorp Servs., LLC v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1280, 103 USPQ2d 1425, 1434 (Fed. Cir. 2012). See Lexology Article.
     • Harvard Law Rev.: The Federal Circuit noted that computer implementation may shift an abstract process from patent ineligibility to patent eligibility, but only when a computer is “integral to the claimed invention.” Though the court did not set out a clear rule for determining whether a computer is integral to a claimed invention, it did note that “the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.” 126 Harv. L. Rev. 810 (private cache)..
  3. Processing insurance claims for a covered loss or insurance policy event: Accenture Global Services v. Guidewire Software, Inc., 728 F.3d 1336, 1338-39, 108 USPQ2d 1173, 1175-76 (Fed. Cir. 2013).
  4. Real estate portfolio deedshares agreement: Fort Properties, Inc. v. American Master Lease, LLC, 671 F.3d 1317, 101 USPQ2d 1785 (Fed Cir. 2012);
  5. Hedging: Bilski v. Kappos, 561 U.S. 593, 595, 95 USPQ2d 1001, 1004 (2010); PB page Wikipedia Opinion
  6. Mitigating settlement risk: Alice Corp. v. CLS Bank, 573 U.S. 208, 218, 110 USPQ2d 1976, 1979 (2014); and
  7. Arbitration: In re Comiskey, 554 F.3d 967, 981, 89 USPQ2d 1655, 1665 (Fed. Cir. 2009).
  8. Advertising for media access: Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15, 112 USPQ2d 1750, 1753-54 (Fed. Cir. 2014)
  9. Structuring a sales force or marketing company, which pertains to marketing or sales activities or behaviors: In re Ferguson, 558 F.3d 1359, 1364, 90 USPQ2d 1035, 1038 (Fed. Cir. 2009);
  10. Using an algorithm for determining the optimal number of visits by a business representative to a client: In re Maucorps, 609 F.2d 481, 485, 203 USPQ 812, 816 (CCPA 1979); and
  11. Offer-based price optimization, which pertains to marketing: OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63, 115 USPQ2d 1090, 1092 (Fed. Cir. 2015).
  12. Creating financing package for inventoried items: Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 123 USPQ2d 1100 (Fed. Cir. 2017)
  13. Clearing house for car dealer credit applications and funding sources: Dealertrack v. Huber, 674 F.3d 1315, 1331, 101 USPQ2d 1325, 1339 (Fed. Cir. 2012).
• Managing personal behavior or relationships or interactions between people, (including social activities, teaching, and following rules or instructions).
  1. Storing user-selected pre-set spending limits and notifying user that limit is exceeded: Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 115 USPQ2d 1636 (Fed. Cir. 2015)
  2. Filtering content: BASCOM Global Internet v. AT&T Mobility, LLC, 827 F.3d 1341, 1345-46, 119 USPQ2d 1236, 1239 (Fed. Cir. 2016) (finding that filtering content was an abstract idea under step 2A, but reversing an invalidity judgment of ineligibility due to an inadequate step 2B analysis);
  3. Considering historical usage information while inputting data: BSG Tech. LLC v. Buyseasons, Inc., 899 F.3d 1281, 1286, 127 USPQ2d 1688, 1691 (Fed. Cir. 2018); and
  4. Mental process that a neurologist should follow when testing a patient for nervous system malfunctions: In re Meyer, 688 F.2d 789, 791-93, 215 USPQ 193, 194-96 (CCPA 1982).
  5. Comparing ballot print-out with stored vote: Voter Verified, Inc. v. Election Systems & Software, LLC, 887 F.3d 1376, 126 USPQ2d 1498 (Fed. Cir. 2018)
  6. Controlling timing of the display of acquired content: Interval Licensing LLC, v. AOL, Inc., 896 F.3d 1335, 127 USPQ2d 1553 (Fed. Cir. 2018)
  7. Playing dice: In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1161, 129 USPQ2d 1008, 1011 (Fed. Cir. 2018)
  8. Assigning hair designs to balance head shape: In re Brown, 645 Fed. Appx. 1014, 1015-16 (Fed. Cir. 2016) (non-precedential); and
  9. A series of instructions of how to hedge risk: Bilski v. Kappos, 561 U.S. 593, 595, 95 USPQ2d 1001, 1004 (2010). PB pageWikipedia Opinion

• Mental process rule: CyberSource Corp. v. Retail Decisions, Inc., ⁴⁾ “methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the 'basic tools of scientific and technological work' that are open to all.”

A claim with features that cannot practically be performed in the human mind

• Research Corp. Techs. v. Microsoft Corp., ⁵⁾, directed to rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask, where the method required the manipulation of computer data structures (e.g., the pixels of a digital image and a two-dimensional array known as a mask) and the output of a modified computer data structure (a halftoned digital image). Distinguishes CyberSource.
• SiRF Tech., Inc. v. Int’l Trade Comm’n, ⁶⁾, directed to calculating an absolute position of a GPS receiver and an absolute time of reception of satellite signals, where the claimed GPS receiver calculated pseudoranges that estimated the distance from the GPS receiver to a plurality of satellites. Distinguishes CyberSource.
• SRI Int’l, Inc. v. Cisco Systems, Inc., ⁷⁾: Collection and analysis of network data is not abstract because “the human mind is not equipped to detect suspicious activity by using network monitors and analyzing network packets as recited by the claims.”
• LLC v. Intuit Inc., ⁸⁾, directed to a specific data encryption method for computer communication involving a several-step manipulation of data, Synopsys., 839 F.3d at 1148, 120 USPQ2d at 1481 (distinguishing the claims in TQP Development,