- Execution by a machine — weighs against an abstract idea
- Transformation of an article — weighs against an abstract idea
- Application of a Law of Nature — weighs in favor of an abstract idea
- General principle involved in executing the method — weighs in favor of an abstract idea
The Examiner should provide a "clear rationale supporting the determination that an abstract idea has been claimed, such that the examiner establishes a prima facie case of patentability."
My two cents: Note that the guidelines speak only of method claims. Thus, I would expect Examiners to stop applying "abstract idea" to apparatus, system, or computer-readable medium claims. I find this encouraging, since I understand that the Solicitor's office looked carefully into the case law in drafting these guidelines. So far, the district courts and the BPAI have routinely applied "abstract idea" to all types of claims. I wonder if the BPAI will take a look at the Examiner guidelines. [Perhaps they should not, as a matter of policy, in order to keep some degree of judicial independence.]
As soon as Bilski was released, the PTO released a memo to Examiners indicating that guidelines were in the works, and a one paragraph summary of how Examiners were to handle Bilski in the meantime. The summary said that a method claim that fails the Machine-or-Transformation test should be rejected under § 101 absent a "clear indication" that it is not directed to an abstract idea. A number of practitioners expressed concern about the phrasing used the memo, interpreting this as shifting the burden to the applicant to show patent eligibility before the PTO even made a prima facie case. (For example, see the guest post here on PatentlyO.) The PTO's guidelines specifically state that the Examiner must establish a prima facie case. I'm interested to see if this statement allays those concerns.
I speculated in an earlier post on whether the Machine-or-Transformation was a safe harbor, such that passing MoT ended the analysis. The PTO guidelines have a clear answer to this question. Machine is a factor, as is Transformation. But the ultimate issue is whether or not a claim is directed to an "abstract idea." Thus, it's theoretically possible under the guidelines that a given claim could be executed by a machine and transform an article, and still not be patentable subject matter, if the remaining factors outweigh the first two.