On August 4, 2025, the United States Patent and Trademark Office (PTO) released updated guidance (the “2025 Update”) to examiners evaluating subject matter eligibility under 35 U.S.C. § 101, with a particular focus on artificial intelligence (AI) and machine learning (ML) inventions. The 2025 Update is framed as a series of reminders to patent examiners on the evaluation of subject matter eligibility.
The 2025 Update addresses Prongs One and Two of Step 2A of the Alice/Mayo test for subject matter eligibility.
In Prong One of Step 2A, examiners must determine whether a claim recites a judicial exception, such as an abstract idea, law of nature, or natural phenomenon. The update focuses on two areas of Prong One:
Clarifying the “Mental Process” Grouping
For software-related inventions, abstract ideas are categorized into mathematical concepts, certain methods of organizing human activity, and mental processes. The “mental process” grouping includes claimed subject that can be practically performed in the human mind (e.g., observations, evaluations, judgments) into the category of abstract ideas.
In addressing the “mental process” grouping, the 2025 Update states that “a claim does not recite a mental process . . . when the human mind is not equipped to perform the claim limitation(s).” Furthermore, “[e]xaminers are reminded not to expand this grouping in a manner that encompasses claim limitations that cannot practically be performed in the human mind.”
Distinguishing “Recites” vs. “Involves”
The 2025 Update also reminds examiners to distinguish between claims that recite a judicial exception (requiring further analysis) and those that merely involve an exception (which may be eligible without further analysis). As an example, the 2025 Update notes that while the claim limitation “training a neural network” involves or may rely on mathematical concepts, this limitation does not recite an abstract idea because it does not include any specific mathematical relations, calculations, formulas, or equations. In contrast, claims referencing specific mathematical algorithms (e.g., training a neural network using a backpropagation or gradient descent algorithm) “[recite] a judicial exception.”
In Prong Two of Step 2A, if a claim recites a judicial exception, examiners must assess whether the claim as a whole integrates the exception into a practical application. The 2025 Update focuses on three areas of Prong Two:
Analyze Claim “As A Whole”
The 2025 Update reiterates that examiners should not focus solely on the judicial exception when analyzing a claim under Step 2A. Rather, all of the recited claim limitations must be considered collectively including those limitations reciting the identified judicial exception, and examiners are to consider how “all of the limitations interact and impact each other” when evaluating whether the exception is integrated into a practical solution.
Improvements to Technology
Claims that reflect an improvement to the functioning of a computer or to another technology or technical field are considered to integrate a recited judicial exception into a practical application and are therefore patent eligible. The 2025 Update reminds examiners to consult the specification to determine whether the disclosed invention improves technology or a technical field and evaluate the claim to ensure the claim reflects the disclosed improvement. Importantly, the 2025 Update recognizes that “the claim itself does not need to explicitly recite the improvement described in the specification.”
The “Apply It” Consideration
Claims that merely implement an abstract idea on a generic computer are not patent-eligible. However, the 2025 Update cautions examiners not to oversimplify claim limitations or to expand the application of this “apply it” consideration. The PTO notes that the “apply it” consideration often overlaps with the “improvements to technology” consideration. The 2025 Update also provides specific factors that weigh in favor of eligibility:
- whether the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, rather than simply reciting the idea of the solution or outcome, and
- whether the claim purports to improve computer capabilities, rather than merely invoking a computer as a tool to perform an existing process.
Implications
The 2025 Update does not change the underlying law relating to subject matter eligibility. However, the 2025 Update signals a more balanced approach by instructing examiners to follow existing guidance and avoid expansive interpretations of abstract ideas. The 2025 Update also cautions against the use of the “101 rejection” as an automatic catch-all in software applications and places limits on examiners that may reduce the occurrence of 101 rejections as well as strengthen applicant arguments against such rejection software applications and, in particular, applications directed to inventions based on AI and ML. For patent applicants, the 2025 Update offers a useful guide for drafting claims and responding to 101 rejections.