USPTO Issues “Reminders” Supporting AI and Software Patenting and instructing Patent Examiners on the Limits of Section 101 Patent Eligibility 

PatentNext Summary: The USPTO issued “Reminders” for examiners in Tech Centers 2100/2600/3600 addressing §101 eligibility for software and Artificial Intelligence(AI) / Machine  Learning (ML)-related inventions; while not changing the MPEP, the guidance is meant to sharpen examination practice. It clarifies Step 2A, Prong One by limiting “mental process” to what can be practically performed in the human mind—stating that AI claim limitations not performable mentally are not “mental processes”—and by distinguishing claims that merely involve a judicial exception (e.g., Example 39) from those that recite one (e.g., Example 47). For Step 2A, Prong Two, examiners must evaluate the claim as a whole to identify a practical application, giving weight to meaningful additional limitations and to improvements in computer capabilities or a technical field, even if the improvement is only implicit in the specification. The Reminders caution against oversimplified “apply it” rejections, require a preponderance of evidence for “close call” §101 rejections, and reinforce compact prosecution that fully addresses §§102/103/112 for every claim in the first action.

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The United States Patent and Trademark Office (USPTO) recently published guidance (dubbed “Reminders”) for patent examiners examining inventions in the Software-related arts, including in the Artificial Intelligence (AI) and Machine Learning technical fields. See USPTO.gov, “Reminders on evaluating subject matter eligibility of claims under 35 U.S.C. 101” (Aug. 4, 2025) (the “Software-related Invention Reminders”). The Software-related Invention Reminders are specifically directed to patent examiners focusing in Technology Centers 2100, 2600, and 3600, which commonly receive Software-related inventions. 

While the Software-related Invention Reminders purportedly do not change current examination practice pursuant to the USPTO’s Manual of Patent Examination Procedure (MPEP), they do serve as an important guidance for examiners (and as a tool for practitioners) practicing in these fields. 

The following summarizes key highlights of the USPTO Software-related Invention Reminders. 

Considerations under Step 2A, Prong One (“Patent Eligibility Groupings”)

The Software-related Invention Reminders include a first section regarding so-called Step 2A, Prong One groupings, which refer to the three groupings of “abstract ideas” that Section 101 rejections must fall within. These groupings include: (1) mathematical concepts, (2) certain methods of organizing human activity, and (3) mental processes.

Mental Process Grouping and Software-related Invention Inventions

Examiners commonly recite the mental processing grouping when rejecting software-related inventions. The Software-related Invention Reminders reminds examiners that the mental process grouping is “not without limits,” and that examiners are not to expand this grouping in a manner when claim limitations “cannot practically be formed in the human mind.” Id at 2. 

In an important section, the Software-related Invention Reminders remind examiners that “a claim does not recite a mental process when it contains limitation(s) that cannot practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitation(s).”

With respect to AI-related inventions, the Software-related Invention Reminders forbid examiners from grouping an invention as a “mental process” when claim elements cannot be performed in the human mind: 

[Claim] limitations that encompass AI in a way that cannot be practically performed in the human mind do not fall within [the mental process]” grouping.

AI-Related Inventions: Distinguishing Claims that Recite a Judicial Exception from Claims that Merely Involve a Judicial Exception

The Software-related Invention Reminders also reminds examiners to exercise care to “distinguish claims that recite an exception (which require further eligibility analysis) from claims that merely involve an exception (which are eligible and do not require further eligibility analysis). Id. at 3 (emphasis added).

The USPTO’s Example 39 (an AI-related example) illustrates an example that merely involves an abstract idea, but does not recite one. Example 39 includes the limitation “training the neural network” but does not include or rely upon any mathematical concepts, calculations, formulas or equations using mathematical symbols. Id. Thus, Example is patent eligible because it is an AI-related invention that does recite a mathematical concept, even though it may involve them. Moreover, training a neural network is not something that a human mind can practically perform. For additional analysis of Example 39, see PatentNext: How to Patent an Artificial Intelligence (AI) Invention: Guidance from the U.S. Patent Office (USPTO).

By contrast, USPTO Example 47 (claim 2) specifically recites mathematical calculations performed by specific, known mathematical algorithms, e.g., “training, by the computer, the [Artificial Neural Network] ANN based on the input data and a selected training algorithm to generate a trained ANN, wherein the selected training algorithm includes a backpropagation algorithm and a gradient descent algorithm,” and thus “recites” a judicial exception (namely a mathematical concept). This results in the claim being vulnerable to further Section 101 analysis (and a Section 101) rejection, which presumably could have been avoided by excluding the mathematics related language. For additional analysis of Example 47, see PatentNext: The USPTO Issues Guidance on Patenting Artificial Intelligence (AI)-related Inventions per 35 U.S.C. § 101 (Subject Matter Eligibility).

Considerations under Step 2A, Prong Two (identifying a “Practical Application”)

After determining that a claim recites a judicial exception (e.g., an “abstract idea”) in Step 2A, Prong One, examiners then evaluate (under Prong Two) whether the claim as a whole integrates the recited judicial exception into a “practical application,” which can save a claim from being rejected under Section 101. 

Analysis of Claim as a Whole

The Software-related Invention Reminders reminds examiners that Step 2A, Prong Two requires consideration of calms “as a whole.” Id. at 3 (original emphasis). This requires identification of the so-called “practical application” in the context of the claims together as a whole, and not a separate and distinct feature (which examiners oftimes do).

Thus, additional limitations, which could form the practical application, “should not be evaluated in a vacuum, completely separate from the recited judicial exception.” Id. (original emphasis).

[An examiner’s] analysis should take into consideration all the claim limitations and how these limitations interact and impact each other when evaluating whether the exception is integrated into a practical application. 

While an additional limitation (or combination) that merely applies the judicial exception on a generic computer may not render a claim eligible on its own, an additional limitation (or combination) that meaningfully limits the judicial exception can render it eligible. Id.

Improvements (the “Gold Standard”)

The Software-related Invention Reminders also includes a section describing whether the invention recites an improvement to an underlying computing device or technical field. An “improvement” based argument is often considered the “gold standard” or otherwise best way to establish patent eligibility under Section 101. See, e.g., PatentNext: How to Patent Software Inventions: Show an “Improvement.”

The Software-related Invention Reminders instructs examiners to consult the specification to determine whether the disclosed invention improves an underlying computing device or otherwise a technical field, and evaluate the claim to ensure it reflects the disclosed improvement. Id. at 4. 

Importantly, the Software-related Invention Reminders reminds examiners that the specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Id. 

In addition, the claim itself does not need to explicitly recite the improvement described in the specification. Id.

Limitations on the “Apply It” argument in view of Improvements

Examiners can sometimes ignore or otherwise deemphasize improvements recited in claims with the oft made “apply it” argument – where examiners commonly reject claims that include or otherwise indicate improvements by arguing that such improvements amount to no more than a recitation of “apply it” (or equivalent) on a computer. The Software-related Invention Reminders caution examiners against this:

Examiners are cautioned not to to oversimplify claim limitations and expand the application of the ‘apply it’ consideration. 

The Software-related Invention Reminders provide several considerations for whether the “apply it” argument should or should not be made (as summarized by the below table):

#	Reasons supporting an “Apply It” argument	Reasons NOT supporting an “Apply It” argument
1	The claim recites only an idea of a solution or outcome, i.e., the claim fails to recite details of how a solution to a problem is accomplished.	The claim covers a particular solution to a problem or a particular way to achieve a desired outcome.
2	The claim invokes computers or other machinery merely as a tool to perform an existing process.	The claim purports to improve computer capabilities or to improve an existing technology.
3	General application of the judicial exception.	A Particular application of the judicial exception.

Thus, from the above, the Software-related Invention Reminders guide examiners in considering whether the technological limitations are being used as a tool to improve the recited judicial exception (e.g., automating a manual business process) or whether the claim as a whole provides an improvement to technology or a technical field.

Claims that are determined to improve computer capabilities or improve technology or a technical field support a finding that the claim integrates the judicial exception into a practical application or amounts to significantly more than the judicial exception itself.

Additional “Reminders” on Whether to Make a Section 101 Rejection

“Close Calls”

For an application involving a “close call,” the Software-related Invention Reminders “remind” examiners to “only make a rejection when it is more likely than not (i.e., more than 50%) that the claim is ineligible under 35 U.S.C. 101.” Id. at 5 (citing MPEP 706(I) and stating that “the standard to be applied in all cases is the ‘preponderance of the evidence’ test.”). 

An examiner should not make a rejection simply because of uncertainty about the claim’s eligibility under Section 101. Id.

Compact Prosecution requires analysis of “every claim” 

Finally, the Software-related Invention Reminders also call on examiners to engage in “compact prosecution.” This calls for examiners to provide a complete examination for “every claim” under each of the other patentability requirements (e.g., 35 U.S.C. 102, 103, 112). Id. at 5. “Examiners should state all non-cumulative reasons and bases for rejecting claims in the first Office action.” Id. 

Arguably this requires examiners to rely on the other patentability requirements for examination, rather than using Section 101 as a “crutch” or otherwise shorthand for rejecting claims, especially for a first office action. 

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