A Federal Register notice is scheduled to publish tomorrow (pre-publication PDF version is available here) updating the 2014 interim guidance on patent subject matter eligibility and the July 2015 update on subject matter eligibility. Yesterday, a related examiner memorandum published to provide updated examination instructions. Those instructions require examiners to articulate a reasoned rationale for any § 101 rejection under both steps of the Alice/Mayo test. They require an examiner to identify specific claim limitations in support of a rejection under both steps of the two-step analysis. Further, the instructions establish that it is a best practice for examiners to cite appropriate court decisions that support their position. The instructions also establish that if an applicant challenges a rejection but the examiner finds it appropriate to maintain the rejection, a rebuttal must be provided in the next office action. Hopefully, the requirements will lead to more consistent examination with respect to subject matter eligibility. Additionally, if followed these instructions should facilitate creation of a more complete record for appeal where an examiner maintains a subject matter eligibility rejection.
Along with the updated guidelines, the USPTO provided subject matter eligibility guidelines for life sciences claims. The Examiner Memorandum, however, clarified that the examples are intended to show exemplary analyses only and should not be used as a basis for subject matter eligibility rejection or relied upon in the same manner as a court decision. The USPTO also issued 2016 updates of its index of eligibility examples and index of subject matter eligibility court decisions.