Earlier today the United States Patent and Trademark Office issued a new memorandum to patent examiners on recent software patent eligibility decisions from the Federal Circuit. The memo sent to the patent examining corps from Robert Bahr, who is Deputy Commissioner for Patent Examination Policy, explains that this most recent memorandum provides examiners with discussion of McRo, Inc. v. Bandai Namco Games America and BASCOM Global Internet Services v. AT&T Mobility. 
Bahr acknowledges in the memo that the Federal Circuit yesterday issued another precedential decision in Amdocs (Israel) Ltd. v. Openet Telecom, which will be discussed in forthcoming subject matter eligibility guidance. 
With respect to McRo, Bahr instructed examiners as follows:
Examiners should consider the claim as a whole under Step 2A of the USPTO’s SME guidance, and should not overgeneralize the claim or simply it into its “gist” or core principles, when identifying a concept as a judicial exception…
An “improvement in computer-related technology” is not limited to improvement is operation of a computer or 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.
An indication that a claim is directed to an improvement in computer-related technology may include—
(1) a teaching in the specification about how the claimed invention improves a computer or other technology…
(2) a particular solution to a problem or a particular way to achieve a desired outcome defined by the claimed invention, as opposed to merely claiming the idea of a solution or outcome…
With respect to BASCOM, Bahr instructed examiners as follows:
In Step 2B of the USPTO’s SME guidance, examiners should consider the additional elements in combination, as well as individually, when determining whether a claim as a whole amounts to significantly more, as this may be found in the non-conventional and non-generic arrangement of known, conventional elements…
(emphasis in the original).
Bahr also goes beyond McRo and BASCOM to address the issue of preemption, which has come up in several recent decisions. Bahr explains that this issue will be further addressed in forthcoming guidance, but points out that while at times the lack of preemption has been used to confirm a patent eligibility finding, such as in Rapid Litigation Management v. CellzDirect, there are other decisions that did not consider the absence of preemption. Therefore, examiners have been instructed as follows:
Examiners should continue to use the Mayo/Alice framework… to resolve questions of preemption. If applicant argues that a claim does not preempt all applications of the exception, an examiner should reconsider in Step 2A of the eligibility analysis whether the claim is directed to an improvement in computer-related technology or a specific way of achieving a desired outcome or end result… If an examiner still determines that the claim is directed to a judicial exception, the examiner should then reconsider in Step 2B of the eligibility analysis whether the additional elements in combination (as well as individually) are more than the non-conventional and non-generic arrangement of known, conventional elements.
(emphasis in the original).
Finally, Bahr notices what so many of the rest of us in the industry have noticed, which is an increasing reliance on non-precedential dispositions by the Federal Circuit. He cautions patent examiners about relying on or even citing non-precedential decisions of the Federal Circuit “unless the facts of the application under examination uniquely match the facts at issue in the non-precedential decision.”
For those interested in this topic, I will be hosting a webinar on drafting patent applications to overcome Alice on Thursday, November 3, 2016 at 2pm ET. I will address this new Office memorandum, as well as all the latest Federal Circuit cases, including those issued over the summer as well as Amdocs, which issued yesterday. CLICK HERE to register.
 For my analysis of Mcro please see Federal Circuit says lip synchronization not abstract. For my analysis of BASCOM please see CAFC says software patent eligible again.
 For analysis of Amdocs please see Software claims patent-eligible because they recite a technological solution to a technological problem.