MPEP 2106.04 (Jan. 2018) (at 2100-21, right column) quotes the original 2014 Guidance (79 FR 74618, 74622) that “A claim is directed to a judicial exception when ... an abstract idea is recited (i.e., set forth or described) in the claim.” However, the Federal Circuit’s Enfish decision specifically found that the “‘directed to’ inquiry ... cannot simply ask whether the claims *involve* a patent-ineligible concept.” 822 F.3d 1327, 1335 (CAFC 2016) (emphasis original). Instead, the “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Id. Would you please reconsider the MPEP’s treatment of this portion of Enfish? Or, if this question is out of the MPEP Editor’s scope, would you please forward it to OPLA for consideration?
The MPEP does discuss Enfish at 2100-22. However, I cannot find any discussion in 2106.04 or any of the rest of 2106 of the “character as a whole” of the claims. Instead, the MPEP states that “Examiners should ... be careful to distinguish claims that recite an exception ... and claims that merely involve an exception.” Would you please replace this guidance with direction that the Examiner consider the “character as a whole” of the claims, following Enfish?
I appreciate that Alice is just as challenging for the Corps as it is for the Bar. I also appreciate that you are trying to stay consistent with the May 19, 2016, memo regarding Enfish and TLI. However, Enfish is clear that simply mentioning an abstract idea in a claim does not invalidate that claim under Step 2A. As far as I know, Enfish still controls. Would you please update the MPEP accordingly? Thank you!
(As always, all opinions are my own and not necessarily those of my employer, any client, or any other party.)