Synopsis of USPTO’s Guidance Update for AI-related Innovations and Patent Subject Matter Eligibility

April 21, 2025 By Rebecca Reyes In General

In July 2024, the United States Patent and Trademark Office (“USPTO”) published the 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence (“Guidance Update”).[1] The Guidance Update provides three new examples[2] to assist USPTO employees and practitioners apply the guidance to subject matter eligibility claim rejections under 35 U.S.C. § 101.  In December, the USPTO supplemented the Guidance Update with a slide deck[3] further explaining the new AI-related subject matter eligibility examples, illustrating how the subject matter eligibility test is (step-by-step) applied to the claims in these examples. 

The Guidance Update focuses on the two-prong “step 2A” of the subject matter eligibility test in which it is determined: (1) whether the claim is directed to a judicial exception (e.g., the examiner identifies limitations in the claim that recite an abstract idea and determines whether the identified limitations fall within at least one grouping of abstract ideas enumerated in MPEP § 2106.04(a)(2) such as mental processes, mathematical concepts, certain methods of organizing human activity, etc.) and (2) whether the claim includes additional elements that integrate the claim into a practical application.  The subject matter eligibility test further includes “step 2B” in which additional limitations are evaluated to determine whether they are well-understood, routine, or conventional activity in the field.   

A key takeaway from the Guidance Update and supplementary slide deck is to carefully review the § 101 rejections to ensure that for each claim, the rejection: (1) identifies the broadest reasonable interpretation (“BRI”) of each limitation based on the specification (without overly broadening the limitation), (2) identifies claim limitations that recite “an abstract idea” and classifies the “abstract idea” into one of the enumerated categories from MPEP § 2106.04(a)(2), (3) identifies any additional elements in the claims and explains how they are insignificant, individually and in combination (proper analysis should consult applicant’s specification for improvements and determine how the improvements are reflected in the elements of the claims), and (4) explains how the additional elements are well-understood, routine, and conventional activity (as evidenced by court decision(s), publications, admitted prior art in the specification, and/or Official Notices).  A rejection that fails to include each of these requirements is incomplete. In short, it is no easy task to make a proper § 101 rejection and this provides an extra avenue for practitioners to check and challenge incomplete § 101 rejections.

For some recent PTAB reversals of § 101 rejections, check out the following:

By: Natalya Dvorson, Partner

[1] 89 Fed. Reg. 58128-38 (July 17, 2024); see also https://www.federalregister.gov/documents/2024/07/17/2024-15377/2024-guidance-update-on-patent-subject-matter-eligibility-including-on-artificial-intelligence (last accessed April 18, 2025).

[2] https://www.uspto.gov/sites/default/files/documents/2024-AI-SMEUpdateExamples47-49.pdf (last accessed April 18, 2025).

[3] https://www.uspto.gov/sites/default/files/documents/ai-sme-update-2024.pdf (last accessed April 18, 2025).

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Natalya Dvorson

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