After Alice, the USPTO’s various guidance memoranda included references to non-precedential Federal Circuit decisions, particularly Smartgene, Cyberfone, and Planet Bingo, as examples of patent-ineligible subject matter. Naturally, examiners cited these decisions in support of their Section 101 rejections. Smartgene was the most frequently cited because the USPTO glossed it simply as “comparing new and stored information and using rules to identify options,” a characterization that allowed examiners to apply the case to just about any computer-implemented method. I and others expressed our concerns to the USPTO about the examiners’ reliance on Smartgene and other non-precedential cases in comments on the Interim and subsequent guidance memos. Full disclosure: I was counsel to ABL, the patentee in Smartgene. On November 2, 2016, the Office issued the “McRO” memo, explaining how examiners should interpret the Federal Circuit’s decision in McRO v. Bandai. The memo ended with an instruction that examiners should limit their reliance on non-precedential cases:
The guidance seemed clear: unless the application before the examiner “uniquely matched” the facts of a non-precedential decision, the decision should not be relied upon–there was an “ever-increasing” number of precedential cases that could be used instead.