PatentNext Takeaway: An improvement in the functioning of a computer, or an improvement to other technology or technical field, can provide an overlooked response to a software patent eligibility rejection. MPEP § 2106.04(d)(1) supplies two instructions: (1) the claim need not expressly announce the improvement, provided its limitations reflect the features producing it; and (2) that improvement can establish practical application at Step 2A although it may not improve upon well-understood, routine, conventional activity. These arguments are especially effective when Section 101 is the only outstanding rejection.
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I. Identifying the Technical Improvement
A Section 101 rejection may characterize software operations as abstract and dismiss the computer components as conventional, overlooking an improvement in the functioning of a computer or an improvement to other technology or technical field. The response should identify that improvement and explain how the claimed implementation produces it.
Briefly, as a backdrop, the USPTO’s eligibility analysis is summarized in MPEP § 2106. Step 1 asks whether the claim falls within a statutory category: a process, machine, manufacture, or composition of matter. For a claim satisfying that threshold, Step 2A applies two prongs: Prong One asks whether the claim recites a judicial exception—an abstract idea, law of nature, or natural phenomenon—and, if so, Prong Two asks whether the claim integrates that exception into a practical application. A claim that recites no exception or integrates it into a practical application is eligible without reaching Step 2B. If the claim remains directed to a judicial exception, Step 2B asks whether its additional elements, individually or in an ordered combination, amount to significantly more than the exception, supplying an inventive concept. Whether those elements involve well-understood, routine, conventional activity is relevant at Step 2B, but is not part of the Step 2A Prong Two inquiry.
MPEP § 2106.04(d)(1) provides two instructions supporting this argument. Whether the examiner overlooks the guidance or fails to apply it, practitioners should connect the claim language to the disclosed improvement. The relevant improvement is an improvement in the functioning of a computer, or an improvement to other technology or technical field.
While the claim language must reflect the features producing that improvement, it need not explicitly recite it. Nor does the improvement need to be an improvement over well-understood, routine, conventional activity – it merely needs to be an improvement to the functioning of a computer or a technical field. In other words, it need not be a “novel improvement” – that is the purview of Section 102, which is a different analysis than Section 101. Examiners often confuse the two, and this is why responding, as discussed further below, is important.
II. The Improvement Need Not be Explicitly recited in a Claim
The improvement need not be expressly recited, but the claim should allude to it through the components or steps producing it. That is, the claims must substantively reflect the disclosed improvement; a vague suggestion is insufficient. The specification must provide enough detail for a skilled artisan to recognize the improvement.
Specifically, the MPEP then states:
“The claim itself does not need to explicitly recite the improvement described in the specification (e.g., ‘thereby increasing the bandwidth of the channel’).”
MPEP § 2106.04(d)(1). (emphasis added).
Consider a protocol whose acknowledgment schedule reduces redundant transmissions in the network. If the claim includes the timing and retransmission conditions producing that improvement, it need not also state “thereby reducing redundant transmissions.”
The claim must reflect the improvement when read with the specification. A claim merely requiring network transmission cannot borrow an unclaimed acknowledgment schedule from the disclosure. The implementing features must be claimed, even though their technical benefit may remain implicit.
Before adding a result clause, ask which implementing feature the examiner believes is missing. If the objection concerns only absent benefit language, explain how the existing limitations produce the technical improvement.
III. The “Improvement” need not be an improvement over well-understood, routine, conventional activity
The improvement can satisfy Step 2A Prong Two although it may not improve upon well-understood, routine, conventional activity.
Importantly, the second instruction states:
“That is, the claimed invention may integrate the judicial exception into a practical application by demonstrating that it improves the relevant existing technology although it may not be an improvement over well-understood, routine, conventional activity.”
MPEP § 2106.04(d)(1) (emphasis added).
Most examiners miss this important MPEP instruction. The inquiry concerns an improvement in the functioning of a computer, or an improvement to other technology or technical field, without applying Step 2B’s conventionality test. Even if the technique producing that improvement is conventional, the claim is eligible under the USPTO’s framework when its implementation of the technical improvement integrates the alleged exception into a practical application. The analysis ends at Step 2A; no additional showing of an inventive concept at Step 2B is required.
With reference to the above protocol example, a conventional acknowledgment technique can support practical application, and thus patent eligibility, if the claimed implementation improves network operation as disclosed.
IV. Applying the Improvement Arguments Against Section 101 rejections
The above two MPEP citations can form the basis for a response to a Section 101 argument. If the claim integrates an alleged Section 101 judicial exception into a practical application through the technical improvement, eligibility is established without reaching Step 2B. See MPEP § 2106.04(d).
This approach is especially useful when Section 101 is the only remaining rejection: the response can concentrate on the claimed implementation’s technical significance. A practitioner, responding to such a Section 101 rejection, should identify the additional elements or combination disputed as conventional and examine the examiner’s factual support. If the examiner argues that the improvement is well-understood, routine, and conventional, then the practitioner should certainly respond by stating (and citing the relevant portions of the MPEP per the above) that the improvement need not be explicitly recited in a claim and the “improvement” need not be an improvement over well-understood, routine, conventional activity. After all, the USPTO’s Berkheimer memorandum explains that prior-art disclosure alone does not establish conventionality.
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