Publication

04 September 2025

USPTO Issues New Guidance on Section 101 Eligibility

The USPTO recently issued new guidance on evaluating subject matter eligibility under Section 101. Although it does not expressly change the Office’s prior guidance, it reinforces several important points.

  • The preponderance-of-the-evidence (i.e., >50%) standard for § 101 rejections.
  • A stronger admonition against treating AI complexities as mental processes simply because they are software-driven.

1. Limits on the “Mental Process” Abstract-Idea Category: The memo urges caution relative to claim features that cannot realistically be executed in the human mind—particularly AI/ML functions that require computational capabilities beyond what a human could perform (e.g., neural network operations, hardware-dependent processes)

2. “Recites” vs. “Involves” a Judicial Exception: The memo emphasizes the distinction between claims that recite an abstract idea (and thus require further eligibility analysis) versus those that merely involve one (which may proceed without a § 101 rejection).

    • Example 39: “Training a neural network using a training set” involves math but does not recite any specific mathematical relationship—thus, typically permissible without full Step 2A analysis.
    • Example 47: A claim reciting structured algorithms such as “backpropagation” and “gradient descent” explicitly recites a judicial exception and triggers deeper § 101 scrutiny.

This nuanced distinction presents a path to avoiding unnecessary rejections by avoiding overly specific algorithmic terms unless necessary—and by pointing out when a claim merely follows an abstract idea rather than embodying it.

3. Evaluate the Claim “As a Whole” (Step 2A Prong Two): The memo reminds Examiners to not isolate individual claim elements but, instead, to evaluate how all claim elements interact when determining if a claim transforms an abstract idea into a practical application.

4. “Improvement” vs. “Apply It”: The memo reiterates previous guidance – claims offering a technical improvement, such as enhancements to computer functionality, network performance, or data processing, can be eligible – and encourages Examiners to look to the specification for evidence (which does not need to be explicit) of these improvements.

5. “Close Call” Rejection Standard – More Likely Than Not: Maybe the most applicant-friendly reminder—§ 101 rejections are only warranted when it is more likely than not (i.e., over 50% likelihood) that a claim is ineligible. Uncertainty alone is an insufficient ground for rejection. This raises the bar for Examiners and provides a strong foothold when pushing back on eligibility rejections perceived as borderline.

Miller Johnson’s patent team continues to monitor developments at the USPTO. If you have any questions or concerns, we encourage you to consult with counsel.