2106-Patent Subject Matter Eligibility

2106 Patent Subject Matter Eligibility [R-10.2019]
First, the claimed invention must be to one of the four
statutory categories. 35 U.S.C. 101 defines the four categories of invention that
Congress deemed to be the appropriate subject matter of a patent: processes, machines,
manufactures and compositions of matter. The latter three categories define “things” or
“products” while the first category defines “actions” (i.e., inventions that consist of
a series of steps or acts to be performed). See 35 U.S.C. 100(b) (“The term
‘process’ means process, art, or method, and includes a new use of a known process,
machine, manufacture, composition of matter, or material.”). See MPEP §
2106.03 for detailed information on the four categories.
Second, the claimed invention also must qualify as
patent-eligible subject matter, i.e., the claim must not be directed to a judicial
exception unless the claim as a whole includes additional limitations amounting to
significantly more than the exception. The judicial exceptions (also called “judicially
recognized exceptions” or simply “exceptions”) are subject matter that the courts have
found to be outside of, or exceptions to, the four statutory categories of invention,
and are limited to abstract ideas, laws of nature and natural phenomena (including
products of nature). Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573
U.S. 208, 216, 110 USPQ2d 1976, 1980 (2014) (citing Ass'n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589, 106 USPQ2d 1972,
1979 (2013). See MPEP § 2106.04 for detailed information
on the judicial exceptions.
Because abstract ideas, laws of nature, and natural
phenomenon "are the basic tools of scientific and technological work", the Supreme Court
has expressed concern that monopolizing these tools by granting patent rights may impede
innovation rather than promote it. See Alice Corp., 573 U.S. at 216,
110 USPQ2d at 1980; Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012). However, the Court has
also emphasized that an invention is not considered to be ineligible for patenting
simply because it involves a judicial exception. Alice Corp., 573
U.S. at 217, 110 USPQ2d at 1980-81 (citing Diamond v. Diehr, 450 U.S.
175, 187, 209 USPQ 1, 8 (1981)). See also Thales Visionix Inc. v. United
States, 850 F.3d. 1343, 1349, 121 USPQ2d 1898, 1902 (Fed. Cir. 2017) (“That
a mathematical equation is required to complete the claimed method and system does not
doom the claims to abstraction.”). Accordingly, the Court has said that integration of
an abstract idea, law of nature or natural phenomenon into a practical application may
be eligible for patent protection. See, e.g., Alice, 573 U.S. at 217,
110 USPQ2d at 1981 (explaining that “in applying the §101 exception, we must distinguish
between patents that claim the ‘buildin[g] block[s]’ of human ingenuity and those that
integrate the building blocks into something more” (quoting Mayo, 566
U.S. at 89, 110 USPQ2d at 1971) and stating that Mayo “set forth a
framework for distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those concepts”);
Mayo, 566 U.S. at 80, 84, 101 USPQ2d at 1969, 1971 (noting that
the Court in Diamond v. Diehr found “the overall process patent
eligible because of the way the additional steps of the process integrated the equation
into the process as a whole,” but the Court in Gottschalk v. Benson
“held that simply implementing a mathematical principle on a physical machine, namely a
computer, was not a patentable application of that principle”); Bilski v.
Kappos, 561 U.S. 593, 611, 95 USPQ2d 1001, 1010 (2010)
(“Diehr explained that while an abstract idea, law of nature, or
mathematical formula could not be patented, ‘an application of a law of nature or
mathematical formula to a known structure or process may well be deserving of patent
protection.’” (quoting Diamond v. Diehr, 450 U.S. 175, 187, 209 USPQ
1, 8 (1981)) (emphasis in original)); Diehr, 450 U.S. at 187, 192
n.14, 209 USPQ at 10 n.14 (explaining that the process in Parker v.
Flook was ineligible not because it contained a mathematical formula, but
because it did not provide an application of the formula). See Diamond v.
Diehr, 450 U.S. 175, 209 USPQ 1 (1981); Gottschalk v.
Benson, 409 U.S. 63, 175 USPQ 673 (1972); Parker v.
Flook, 437 U.S. 584, 198 USPQ 193 (1978).
The Supreme Court in Mayo laid out a
framework for determining whether an applicant is seeking to patent a judicial exception
itself, or a patent-eligible application of the judicial exception. See Alice
Corp., 573 U.S. at 217-18, 110 USPQ2d at 1981 (citing
Mayo, 566 U.S. 66, 101 USPQ2d 1961). This framework, which is
referred to as the Mayo test or the Alice/Mayo
test, is discussed in further detail in subsection III, below. The first part of the
Mayo test is to determine whether the claims are directed to an
abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception).
Id. If the claims are directed to a judicial exception, the second
part of the Mayo test is to determine whether the claim recites
additional elements that amount to significantly more than the judicial exception.
Id. citing Mayo, 566 U.S. at 72-73, 101 USPQ2d
at 1966). The Supreme Court has described the second part of the test as the "search for
an 'inventive concept'". Alice Corp., 573 U.S. at 217-18, 110 USPQ2d
at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966).
The Alice/Mayo two-part test is the
only test that should be used to evaluate the eligibility of claims under examination.
While the machine-or-transformation test is an important clue to eligibility, it should
not be used as a separate test for eligibility. Instead it should be considered as part
of the "integration" determination or "significantly more" determination articulated in
the Alice/Mayo test. Bilski v. Kappos, 561 U.S.
593, 605, 95 USPQ2d 1001, 1007 (2010). See MPEP §
2106.04(d) for more information about evaluating whether a
claim reciting a judicial exception is integrated into a practical application and
MPEP §
2106.05(b) and MPEP §
2106.05(c) for more information about how the
machine-or-transformation test fits into the Alice/Mayo two-part
framework. Likewise, eligibility should not be evaluated based on whether the claim
recites a "useful, concrete, and tangible result," State Street Bank,
149 F.3d 1368, 1374, 47 USPQ2d 1596, 1602 (Fed. Cir. 1998) (quoting In re
Alappat, 33 F.3d 1526, 1544, 31 USPQ2d 1545, 1557 (Fed. Cir. 1994)), as
this test has been superseded. In re Bilski, 545 F.3d 943, 959-60, 88
USPQ2d 1385, 1394-95 (Fed. Cir. 2008) (en banc), aff'd by
Bilski v. Kappos, 561 U.S. 593, 95 USPQ2d 1001 (2010). See also
TLI Communications LLC v. AV Automotive LLC, 823 F.3d 607, 613,
118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (“It is well-settled that mere recitation of
concrete, tangible components is insufficient to confer patent eligibility to an
otherwise abstract idea”). The programmed computer or “special purpose computer” test of
In re Alappat, 33 F.3d 1526, 31 USPQ2d 1545 (Fed. Cir. 1994)
(i.e., the rationale that an otherwise ineligible algorithm or
software could be made patent-eligible by merely adding a generic computer to the claim
for the “special purpose” of executing the algorithm or software) was also superseded by
the Supreme Court’s Bilski and Alice Corp.
decisions. Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785
F.3d 616, 623, 114 USPQ2d 1711, 1715 (Fed. Cir. 2015) (“[W]e note that
Alappat has been superseded by Bilski, 561 U.S.
at 605–06, and Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 110
USPQ2d 1976 (2014)”); Intellectual Ventures I LLC v. Capital One Bank (USA),
N.A., 792 F.3d 1363, 1366, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015) (“An
abstract idea does not become nonabstract by limiting the invention to a particular
field of use or technological environment, such as the Internet [or] a computer”).
Lastly, eligibility should not be evaluated based on whether the claimed invention has
utility, because “[u]tility is not the test for patent-eligible subject matter.”
Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1380, 118 USPQ2d
1541, 1548 (Fed. Cir. 2016).
Examiners are reminded that 35 U.S.C. 101 is
not the sole tool for determining patentability; 35 U.S.C. 112 , 35 U.S.C. 102, and
35 U.S.C.
103 will provide additional tools for ensuring that the claim
meets the conditions for patentability. As the Supreme Court made clear in
Bilski, 561 U.S. at 602, 95 USPQ2d at 1006:
The § 101 patent-eligibility inquiry
is only a threshold test. Even if an invention qualifies as a process, machine,
manufacture, or composition of matter, in order to receive the Patent Act’s
protection the claimed invention must also satisfy ‘‘the conditions and requirements
of this title.’’ §
101. Those requirements include that the invention be novel,
see §
102, nonobvious, see § 103, and fully and particularly
described, see §
112.
II. ESTABLISH BROADEST REASONABLE INTERPRETATION OF CLAIM AS A WHOLE
It is essential that the broadest reasonable interpretation
(BRI) of the claim be established prior to examining a claim for eligibility. The BRI
sets the boundaries of the coverage sought by the claim and will influence whether the
claim seeks to cover subject matter that is beyond the four statutory categories or
encompasses subject matter that falls within the exceptions. See MyMail, Ltd.
v. ooVoo, LLC, 934 F.3d 1373, 1379, 2019 USPQ2d 305789 (Fed. Cir. 2019)
(“Determining patent eligibility requires a full understanding of the basic character of
the claimed subject matter”), citing Bancorp Servs., LLC v. Sun Life Assurance
Co. of Can. (U.S.), 687 F.3d 1266, 1273-74, 103 USPQ2d 1425, 1430 (Fed.
Cir. 2012); In re Bilski, 545 F.3d 943, 951, 88 USPQ2d 1385, 1388
(Fed. Cir. 2008) (en banc ), aff'd by Bilski v.
Kappos, 561 U.S. 593, 95 USPQ2d 1001 (2010) (“claim construction … is an
important first step in a § 101 analysis”). Evaluating
eligibility based on the BRI also ensures that patent eligibility under
35 U.S.C.
101 does not depend simply on the draftsman’s art.
Alice, 573 U.S. 208, 224, 110 USPQ2d at 1984, 1985 (citing
Parker v. Flook, 437 U.S. 584, 593, 198 USPQ 193, 198 (1978) and
Mayo, 566 U.S. at 72, 101 USPQ2d at 1966). See
MPEP §
2111 for more information about determining the BRI.
Claim interpretation affects the evaluation of both
criteria for eligibility. For example, in Mentor Graphics v. EVE-USA,
Inc., 851 F.3d 1275, 112 USPQ2d 1120 (Fed. Cir. 2017), claim interpretation
was crucial to the court’s determination that claims to a “machine-readable medium” were
not to a statutory category. In Mentor Graphics, the court
interpreted the claims in light of the specification, which expressly defined the medium
as encompassing “any data storage device” including random-access memory and carrier
waves. Although random-access memory and magnetic tape are statutory media, carrier
waves are not because they are signals similar to the transitory, propagating signals
held to be non-statutory in Nuijten. 851 F.3d at 1294, 112 USPQ2d at
1133 (citing In re Nuijten, 500 F.3d 1346, 84 USPQ2d 1495 (Fed. Cir.
2007)). Accordingly, because the BRI of the claims covered both subject matter that
falls within a statutory category (the random-access memory), as well as subject matter
that does not (the carrier waves), the claims as a whole were not to a statutory
category and thus failed the first criterion for eligibility.
With regard to the second criterion for eligibility, the
Alice/Mayo test, claim interpretation can affect the first part of
the test (whether the claims are directed to a judicial exception). For example, the
patentee in Synopsys argued that the claimed methods of logic circuit
design were intended to be used in conjunction with computer-based design tools, and
were thus not mental processes. Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1147-49, 120 USPQ2d 1473, 1480-81 (Fed. Cir. 2016).
The court disagreed, because it interpreted the claims as encompassing nothing other
than pure mental steps (and thus falling within an abstract idea grouping) because the
claims did not include any limitations requiring computer implementation. In contrast,
the patentee in Enfish argued that its claimed self-referential table
for a computer database was an improvement in an existing technology and thus not
directed to an abstract idea. Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1336-37, 118 USPQ2d 1684, 1689-90 (Fed. Cir. 2016). The court agreed with the
patentee, based on its interpretation of the claimed “means for configuring” under
35 U.S.C.
112(f) as requiring a four-step algorithm that achieved the
improvements, as opposed to merely any form of storing tabular data. See also
McRO, Inc. v. Bandai Namco Games America, Inc. 837 F.3d 1299,
1314, 120 USPQ2d 1091, 1102 (Fed. Cir. 2016) (the claim’s construction incorporated
rules of a particular type that improved an existing technological process). Claim
interpretation can also affect the second part of the Alice/Mayo test
(whether the claim recites additional elements that amount to significantly more than
the judicial exception). For example, in Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., where the court relied on the construction of the term
“enhance” (to require application of a number of field enhancements in a distributed
fashion) to determine that the claim entails an unconventional technical solution to a
technological problem. 841 F.3d 1288, 1300-01, 120 USPQ2d 1527, 1537 (Fed. Cir. 2016).
III. SUMMARY OF ANALYSIS AND FLOWCHART
Examiners should determine whether a claim satisfies the
criteria for subject matter eligibility by evaluating the claim in accordance with the
following flowchart. The flowchart illustrates the steps of the subject matter
eligibility analysis for products and processes that are to be used during examination
for evaluating whether a claim is drawn to patent-eligible subject matter. It is
recognized that under the controlling legal precedent there may be variations in the
precise contours of the analysis for subject matter eligibility that will still achieve
the same end result. The analysis set forth herein promotes examination efficiency and
consistency across all technologies.
As shown in the flowchart, Step 1 relates to the
statutory categories and ensures that the first criterion is met by confirming that the
claim falls within one of the four statutory categories of invention. See
MPEP §
2106.03 for more information on Step 1. Step 2, which is the
Supreme Court’s Alice/Mayo test, is a two-part test to identify
claims that are directed to a judicial exception (Step 2A) and to then evaluate if
additional elements of the claim provide an inventive concept (Step 2B) (also called
"significantly more" than the recited judicial exception). See MPEP §
2106.04 for more information on Step 2A and
MPEP §
2106.05 for more information on Step 2B.
The flowchart also shows three pathways (A, B, and C) to
eligibility:
Pathway A: Claims taken as a whole that fall within
a statutory category (Step 1: YES) and, which may or may not recite a judicial
exception, but whose eligibility is self-evident can be found eligible at Pathway
A using a streamlined analysis. See MPEP §
2106.06 for more information on this pathway and on
self-evident eligibility.
Pathway B: Claims taken as a whole that fall within
a statutory category (Step 1: YES) and are not directed to a judicial exception
(Step 2A: NO) are eligible at Pathway B. These claims do not need to go to Step
2B. See MPEP § 2106.04 for more
information about this pathway and Step 2A.
Pathway C: Claims taken as a whole that fall
within a statutory category (Step 1: YES), are directed to a judicial exception
(Step 2A: YES), and recite additional elements either individually or in an
ordered combination that amount to significantly more than the judicial exception
(Step 2B: YES) are eligible at Pathway C. See MPEP §
2106.05 for more information about this pathway and Step
2B.
Claims that could have been found eligible at Pathway A
(streamlined analysis), but are subjected to further analysis at Steps 2A or Step 2B,
will ultimately be found eligible at Pathways B or C. Thus, if the examiner is uncertain
about whether a streamlined analysis is appropriate, the examiner is encouraged to
conduct a full eligibility analysis. However, if the claim is not found eligible at any
of Pathways A, B or C, the claim is patent ineligible and should be rejected under
35 U.S.C.
101.
Regardless of whether a rejection under 35 U.S.C. 101 is
made, a complete examination should be made for every claim under each of the other
patentability requirements: 35 U.S.C. 102, 103,
112, and 101 (utility, inventorship and
double patenting) and non-statutory double patenting. MPEP §
2103.
2106.01 [Reserved]
2106.02 [Reserved]
35 U.S.C. 101 enumerates four
categories of subject matter that Congress deemed to be appropriate subject matter
for a patent: processes, machines, manufactures and compositions of matter. As
explained by the courts, these “four categories together describe the exclusive reach
of patentable subject matter. If a claim covers material not found in any of the four
statutory categories, that claim falls outside the plainly expressed scope of
§
101 even if the subject matter is otherwise new and useful.”
In re Nuijten, 500 F.3d 1346, 1354, 84 USPQ2d 1495, 1500 (Fed.
Cir. 2007).
A process defines “actions”, i.e.,
an invention that is claimed as an act or step, or a series of acts or steps. As
explained by the Supreme Court, a “process” is “a mode of treatment of certain
materials to produce a given result. It is an act, or a series of
acts, performed upon the subject-matter to be transformed and reduced to
a different state or thing.” Gottschalk v. Benson, 409 U.S. 63,
70, 175 USPQ 673, 676 (1972) (italics added) (quoting Cochrane v.
Deener, 94 U.S. 780, 788, 24 L. Ed. 139, 141 (1876)). See also
Nuijten, 500 F.3d at 1355, 84 USPQ2d at 1501 (“The Supreme
Court and this court have consistently interpreted the statutory term ‘process’ to
require action”); NTP, Inc. v. Research in Motion, Ltd., 418 F.3d
1282, 1316, 75 USPQ2d 1763, 1791 (Fed. Cir. 2005) (“[A] process is a series of
acts.”) (quoting Minton v. Natl. Ass’n. of Securities Dealers, 336
F.3d 1373, 1378, 67 USPQ2d 1614, 1681 (Fed. Cir. 2003)). As defined in
35 U.S.C.
100(b), the term “process” is synonymous with “method.”
The other three categories (machines, manufactures
and compositions of matter) define the types of physical or tangible “things” or
“products” that Congress deemed appropriate to patent. Digitech Image Techs.
v. Electronics for Imaging, 758 F.3d 1344, 1348, 111 USPQ2d 1717, 1719
(Fed. Cir. 2014) (“For all categories except process claims, the eligible subject
matter must exist in some physical or tangible form.”). Thus, when determining
whether a claimed invention falls within one of these three categories, examiners
should verify that the invention is to at least one of the following categories
and is claimed in a physical or tangible form.
• A manufacture is “a tangible article that is
given a new form, quality, property, or combination through man-made or
artificial means.” Digitech, 758 F.3d at 1349, 111 USPQ2d at
1719-20 (citing Diamond v. Chakrabarty, 447 U.S. 303, 308,
206 USPQ 193, 197 (1980)). As the courts have explained, manufactures are
articles that result from the process of manufacturing,
i.e., they were produced “from raw or prepared materials
by giving to these materials new forms, qualities, properties, or combinations,
whether by hand-labor or by machinery.” Samsung Electronics Co. v.
Apple Inc., 137 S. Ct. 429, 120 USPQ2d 1749, 1752-3 (2016)
(quoting Diamond v. Chakrabarty, 447 U. S. 303, 308, 206
USPQ 193, 196-97 (1980)); Nuijten, 500 F.3d at 1356-57, 84
USPQ2d at 1502. Manufactures also include “the parts of a machine considered
separately from the machine itself.” Samsung Electronics,
137 S. Ct. at 435, 120 USPQ2d at 1753 (quoting 1 W. Robinson, The Law of
Patents for Useful Inventions §183, p. 270 (1890)).
• A composition of matter is a “combination of
two or more substances and includes all composite articles.”
Digitech, 758 F.3d at 1348-49, 111 USPQ2d at 1719
(citation omitted). This category includes all compositions of two or more
substances and all composite articles, “'whether they be the results of
chemical union or of mechanical mixture, or whether they be gases, fluids,
powders or solids.'” Chakrabarty, 447 U.S. at 308, 206 USPQ
at 197 (quoting Shell Dev. Co. v. Watson, 149 F. Supp. 279,
280 (D.D.C. 1957); id. at 310 holding genetically modified
microorganism to be a manufacture or composition of matter).
It is not necessary to identify a single category into
which a claim falls, so long as it is clear that the claim falls into at least one
category. For example, because a microprocessor is generally understood to be a
manufacture, a product claim to the microprocessor or a system comprising the
microprocessor satisfies Step 1 regardless of whether the claim falls within any
other statutory category (such as a machine). It is also not necessary to identify a
“correct” category into which the claim falls, because although in many instances it
is clear within which category a claimed invention falls, a claim may satisfy the
requirements of more than one category. For example, a bicycle satisfies both the
machine and manufacture categories, because it is a tangible product that is concrete
and consists of parts such as a frame and wheels (thus satisfying the machine
category), and it is an article that was produced from raw materials such as aluminum
ore and liquid rubber by giving them a new form (thus satisfying the manufacture
category). Similarly, a genetically modified bacterium satisfies both the composition
of matter and manufacture categories, because it is a tangible product that is a
combination of two or more substances such as proteins, carbohydrates and other
chemicals (thus satisfying the composition of matter category), and it is an article
that was genetically modified by humans to have new properties such as the ability to
digest multiple types of hydrocarbons (thus satisfying the manufacture category).
Non-limiting examples of claims that are not directed
to any of the statutory categories include:
• Products that do not have a physical or
tangible form, such as information (often referred to as “data per se”) or a
computer program per se (often referred to as “software per se”) when claimed
as a product without any structural recitations;
• Transitory forms of signal transmission
(often referred to as “signals per se”), such as a propagating electrical or
electromagnetic signal or carrier wave; and
• Subject matter that the statute expressly
prohibits from being patented, such as humans per se, which are excluded under
The Leahy-Smith America Invents Act (AIA), Public Law 112-29, sec. 33, 125
Stat. 284 (September 16, 2011).
As the courts' definitions of machines, manufactures
and compositions of matter indicate, a product must have a physical or tangible form
in order to fall within one of these statutory categories.
Digitech, 758 F.3d at 1348, 111 USPQ2d at 1719. Thus, the
Federal Circuit has held that a product claim to an intangible collection of
information, even if created by human effort, does not fall within any statutory
category. Digitech, 758 F.3d at 1350, 111 USPQ2d at 1720 (claimed
“device profile” comprising two sets of data did not meet any of the categories
because it was neither a process nor a tangible product). Similarly, software
expressed as code or a set of instructions detached from any medium is an idea
without physical embodiment. See Microsoft Corp. v. AT&T
Corp., 550 U.S. 437, 449, 82 USPQ2d 1400, 1407 (2007); see also
Benson, 409 U.S. 67, 175 USPQ2d 675 (An "idea" is not patent
eligible). Thus, a product claim to a software program that does not also contain at
least one structural limitation (such as a “means plus function” limitation) has no
physical or tangible form, and thus does not fall within any statutory category.
Another example of an intangible product that does not fall within a statutory
category is a paradigm or business model for a marketing company. In re
Ferguson, 558 F.3d 1359, 1364, 90 USPQ2d 1035, 1039-40 (Fed. Cir. 2009).
Even when a product has a physical or tangible form,
it may not fall within a statutory category. For instance, a transitory signal, while
physical and real, does not possess concrete structure that would qualify as a device
or part under the definition of a machine, is not a tangible article or commodity
under the definition of a manufacture (even though it is man-made and physical in
that it exists in the real world and has tangible causes and effects), and is not
composed of matter such that it would qualify as a composition of matter.
Nuijten, 500 F.3d at 1356-1357, 84 USPQ2d at 1501-03. As such,
a transitory, propagating signal does not fall within any statutory category.
Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1294,
112 USPQ2d 1120, 1133 (Fed. Cir. 2017); Nuijten, 500 F.3d at
1356-1357, 84 USPQ2d at 1501-03.
II. ELIGIBILITY STEP 1: WHETHER A CLAIM
IS TO A STATUTORY CATEGORY
As described in MPEP § 2106,
subsection III, Step 1 of the eligibility analysis asks: Is the claim to a process,
machine, manufacture or composition of matter? Like the other steps in the
eligibility analysis, evaluation of this step should be made after determining what
the inventor has invented by reviewing the entire application disclosure and
construing the claims in accordance with their broadest reasonable interpretation
(BRI). See MPEP §
2106, subsection II, for more information about the
importance of understanding what has been invented, and MPEP § 2111 for
more information about the BRI.
In the context of the flowchart in
MPEP §
2106, subsection III, Step 1 determines whether:
• The claim as a whole does not fall within any
statutory category (Step 1: NO) and thus is non-statutory, warranting a
rejection for failure to claim statutory subject matter; or
• The claim as a whole falls within one or
more statutory categories (Step 1: YES), and thus must be further analyzed to
determine whether it qualifies as eligible at Pathway A or requires further
analysis at Step 2A to determine if the claim is directed to a judicial
exception.
A claim whose BRI covers both statutory and
non-statutory embodiments embraces subject matter that is not eligible for patent
protection and therefore is directed to non-statutory subject matter. Such claims
fail the first step (Step 1: NO) and should be rejected under 35 U.S.C. 101,
for at least this reason. In such a case, it is a best practice for the examiner to
point out the BRI and recommend an amendment, if possible, that would narrow the
claim to those embodiments that fall within a statutory category.
For example, the BRI of machine readable media can
encompass non-statutory transitory forms of signal transmission, such as a
propagating electrical or electromagnetic signal per se. See In re
Nuijten, 500 F.3d 1346, 84 USPQ2d 1495 (Fed. Cir. 2007). When the BRI
encompasses transitory forms of signal transmission, a rejection under
35 U.S.C.
101 as failing to claim statutory subject matter would be
appropriate. Thus, a claim to a computer readable medium that can be a compact disc
or a carrier wave covers a non-statutory embodiment and therefore should be rejected
under 35 U.S.C.
101 as being directed to non-statutory subject matter. See,
e.g., Mentor Graphics v. EVE-USA, Inc., 851 F.3d at 1294-95,
112 USPQ2d at 1134 (claims to a “machine-readable medium” were non-statutory, because
their scope encompassed both statutory random-access memory and non-statutory carrier
waves).
If a claim is clearly not within one of the four
categories (Step 1: NO), then a rejection under 35 U.S.C. 101 must be made
indicating that the claim is directed to non-statutory subject matter. Form
paragraphs 7.05 and 7.05.01 should be used; see
MPEP
§ 2106.07(a)(1). However, as shown in the flowchart in
MPEP §
2106 subsection III, when a claim fails under Step 1 (Step
1: NO), but it appears from applicant’s disclosure that the claim could be amended to
fall within a statutory category (Step 1: YES), the analysis should proceed to
determine whether such an amended claim would qualify as eligible at Pathway A, B or
C. In such a case, it is a best practice for the examiner to recommend an amendment,
if possible, that would resolve eligibility of the claim.
In addition to the terms “laws of nature,” “natural
phenomena,” and “abstract ideas,” judicially recognized exceptions have been
described using various other terms, including “physical phenomena,” “products of
nature,” “scientific principles,” “systems that depend on human intelligence alone,”
“disembodied concepts,” “mental processes,” and “disembodied mathematical algorithms
and formulas.” It should be noted that there are no bright lines between the types of
exceptions, and that many of the concepts identified by the courts as exceptions can
fall under several exceptions. For example, mathematical formulas are considered to
be a judicial exception as they express a scientific truth, but have been labelled by
the courts as both abstract ideas and laws of nature. Likewise, “products of nature”
are considered to be an exception because they tie up the use of naturally occurring
things, but have been labelled as both laws of nature and natural phenomena. Thus, it
is sufficient for this analysis for the examiner to identify that the claimed concept
(the specific claim limitation(s) that the examiner believes may recite an exception)
aligns with at least one judicial exception.
The Supreme Court has explained that the judicial
exceptions reflect the Court’s view that abstract ideas, laws of nature, and natural
phenomena are “the basic tools of scientific and technological work”, and are thus
excluded from patentability because “monopolization of those tools through the grant
of a patent might tend to impede innovation more than it would tend to promote it.”
Alice Corp., 573 U.S. at 216, 110 USPQ2d at 1980 (quoting
Myriad, 569 U.S. at 589, 106 USPQ2d at 1978 and Mayo
Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101
USPQ2d 1961, 1965 (2012)). The Supreme Court’s concern that drives this “exclusionary
principle” is pre-emption. Alice Corp., 573 U.S. at 216, 110
USPQ2d at 1980. The Court has held that a claim may not preempt abstract ideas, laws
of nature, or natural phenomena, even if the judicial exception is narrow (e.g., a
particular mathematical formula such as the Arrhenius equation). See, e.g.,
Mayo, 566 U.S. at 79-80, 86-87, 101 USPQ2d at 1968-69, 1971 (claims
directed to “narrow laws that may have limited applications” held ineligible);
Flook, 437 U.S. at 589-90, 198 USPQ at 197 (claims that did not
“wholly preempt the mathematical formula” held ineligible). This is because such a
patent would “in practical effect [] be a patent on the [abstract idea, law of nature
or natural phenomenon] itself.” Benson, 409 U.S. at 71- 72, 175
USPQ at 676. The concern over preemption was expressed as early as 1852. See
Le Roy v. Tatham, 55 U.S. (14 How.) 156, 175 (1852) (“A
principle, in the abstract, is a fundamental truth; an original cause; a motive;
these cannot be patented, as no one can claim in either of them an exclusive
right.”).
The Supreme Court’s decisions make it clear that
judicial exceptions need not be old or long-prevalent, and that even newly discovered
or novel judicial exceptions are still exceptions. For example, the mathematical
formula in Flook, the laws of nature in Mayo,
and the isolated DNA in Myriad were all novel or newly discovered,
but nonetheless were considered by the Supreme Court to be judicial exceptions
because they were “‘basic tools of scientific and technological work’ that lie beyond
the domain of patent protection.” Myriad, 569 U.S. 576, 589, 106
USPQ2d at 1976, 1978 (noting that Myriad discovered the BRCA1 and
BRCA1 genes and quoting Mayo, 566 U.S. 71, 101 USPQ2d at 1965);
Flook, 437 U.S. at 591-92, 198 USPQ2d at 198 (“the novelty of
the mathematical algorithm is not a determining factor at all”);
Mayo, 566 U.S. 73-74, 78, 101 USPQ2d 1966, 1968 (noting that
the claims embody the researcher's discoveries of laws of nature). The Supreme
Court’s cited rationale for considering even “just discovered” judicial exceptions as
exceptions stems from the concern that “without this exception, there would be
considerable danger that the grant of patents would ‘tie up’ the use of such tools
and thereby ‘inhibit future innovation premised upon them.’”
Myriad, 569 U.S. at 589, 106 USPQ2d at 1978-79 (quoting
Mayo, 566 U.S. at 86, 101 USPQ2d at 1971). See also
Myriad, 569 U.S. at 591, 106 USPQ2d at 1979 (“Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the
§101 inquiry.”). The Federal Circuit has also applied this
principle, for example, when holding a concept of using advertising as an exchange or
currency to be an abstract idea, despite the patentee’s arguments that the concept
was “new”. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15,
112 USPQ2d 1750, 1753-54 (Fed. Cir. 2014). Cf. Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir.
2016) (“a new abstract idea is still an abstract
idea”) (emphasis in original).
For a detailed discussion of abstract ideas, see
MPEP
§ 2106.04(a); for a detailed discussion of laws of nature,
natural phenomena and products of nature, see MPEP §
2106.04(b).
II. ELIGIBILITY STEP 2A: WHETHER A CLAIM
IS DIRECTED TO A JUDICIAL EXCEPTION
As described in MPEP § 2106,
subsection III, Step 2A of the Office’s eligibility analysis is the first part of the
Alice/Mayo test, i.e., the Supreme Court’s
“framework for distinguishing patents that claim laws of nature, natural phenomena,
and abstract ideas from those that claim patent-eligible applications of those
concepts.” Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208,
217-18, 110 USPQ2d 1976, 1981 (2014) (citing Mayo, 566 U.S. at
77-78, 101 USPQ2d at 1967-68). Like the other steps in the eligibility analysis,
evaluation of this step should be made after determining what the inventor has
invented by reviewing the entire application disclosure and construing the claims in
accordance with their broadest reasonable interpretation. See MPEP § 2106,
subsection II for more information about the importance of understanding what has
been invented, and MPEP § 2111 for more information about the broadest
reasonable interpretation.
Step 2A asks: Is the claim directed to a law of
nature, a natural phenomenon (product of nature) or an abstract idea? In the context
of the flowchart in MPEP § 2106, subsection III, Step 2A determines whether:
• The claim as a whole is not directed to a
judicial exception (Step 2A: NO) and thus is eligible at Pathway B, thereby
concluding the eligibility analysis; or
• The claim as a whole is directed to a
judicial exception (Step 2A: YES) and thus requires further analysis at Step 2B
to determine if the claim as a whole amounts to significantly more than the
exception itself.
A.Step 2A Is a Two-Prong Inquiry
Step 2A is a two-prong inquiry, in which examiners
determine in Prong One whether a claim recites a judicial exception, and if so, then
determine in Prong Two if the recited judicial exception is integrated into a
practical application of that exception. Together, these prongs represent the first
part of the Alice/Mayo test, which determines whether a claim is
directed to a judicial exception.
The flowchart below depicts the two-prong analysis
that is performed in order to answer the Step 2A inquiry.
1. Prong One
Prong One asks does the claim recite an abstract
idea, law of nature, or natural phenomenon? In Prong One examiners evaluate
whether the claim recites a judicial exception, i.e. whether a law of nature,
natural phenomenon, or abstract idea is set forth or
described in the claim. While the terms "set forth" and
"described" are thus both equated with "recite", their different language is
intended to indicate that there are two ways in which an exception can be recited
in a claim. For instance, the claims in Diehr, 450 U.S. at 178
n. 2, 179 n.5, 191-92, 209 USPQ at 4-5 (1981), clearly stated a mathematical
equation in the repetitively calculating step, and the claims in
Mayo, 566 U.S. 66, 75-77, 101 USPQ2d 1961, 1967-68 (2012),
clearly stated laws of nature in the wherein clause, such that the claims “set
forth” an identifiable judicial exception. Alternatively, the claims in
Alice Corp., 573 U.S. at 218, 110 USPQ2d at 1982, described
the concept of intermediated settlement without ever explicitly using the words
“intermediated” or “settlement.”
The Supreme Court has held that Section 101
contains an implicit exception for ‘‘[l]aws of nature, natural phenomena, and
abstract ideas,’’ which are ‘‘the basic tools of scientific and technological
work.’’ Alice Corp., 573 U.S. at 216, 110 USPQ2d at 1980
(citing Mayo, 566 US at 71, 101 USPQ2d at 1965). Yet, the Court
has explained that ‘‘[a]t some level, all inventions embody, use, reflect, rest
upon, or apply laws of nature, natural phenomena, or abstract ideas,’’ and has
cautioned ‘‘to tread carefully in construing this exclusionary principle lest it
swallow all of patent law.’’ Id. See also Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335, 118 USPQ2d 1684, 1688 (Fed.
Cir. 2016) (“The ‘directed to’ inquiry, therefore, cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially every routinely
patent-eligible claim involving physical products and actions involves a law of
nature and/or natural phenomenon”). Examiners should accordingly be careful to
distinguish claims that recite an exception (which require further
eligibility analysis) and claims that merely involve an exception
(which are eligible and do not require further eligibility analysis).
An example of a claim that recites a judicial
exception is “A machine comprising elements that operate in accordance with F=ma.”
This claim sets forth the principle that force equals mass times acceleration
(F=ma) and therefore recites a law of nature exception. Because F=ma represents a
mathematical formula, the claim could alternatively be considered as reciting an
abstract idea. Because this claim recites a judicial exception, it requires
further analysis in Prong Two in order to answer the Step 2A inquiry. An example
of a claim that merely involves, or is based on, an exception is a claim to “A
teeter-totter comprising an elongated member pivotably attached to a base member,
having seats and handles attached at opposing sides of the elongated member.” This
claim is based on the concept of a lever pivoting on a fulcrum, which involves the
natural principles of mechanical advantage and the law of the lever. However, this
claim does not recite these natural principles and therefore is not directed to a
judicial exception (Step 2A: NO). Thus, the claim is eligible at Pathway B without
further analysis.
If the claim recites a judicial exception
(i.e., an abstract idea enumerated in MPEP §
2106.04(a), a law of nature, or a natural phenomenon),
the claim requires further analysis in Prong Two. If the claim does not recite a
judicial exception (a law of nature, natural phenomenon, or abstract idea), then
the claim cannot be directed to a judicial exception (Step 2A: NO), and thus the
claim is eligible at Pathway B without further analysis.
For more information how to determine if a claim
recites an abstract idea, see MPEP §
2106.04(a). For more information on how to determine if
a claim recites a law of nature or natural phenomenon, see MPEP §
2106.04(b). For more information on how to determine if
a claim recites a product of nature, see MPEP §
2106.04(c).
2. Prong Two
Prong Two asks does the claim recite additional
elements that integrate the judicial exception into a practical application? In
Prong Two, examiners evaluate whether the claim as a whole integrates the
exception into a practical application of that exception. If the additional
elements in the claim integrate the recited exception into a practical application
of the exception, then the claim is not directed to the judicial exception (Step
2A: NO) and thus is eligible at Pathway B. This concludes the eligibility
analysis. If, however, the additional elements do not integrate the exception into
a practical application, then the claim is directed to the recited judicial
exception (Step 2A: YES), and requires further analysis under Step 2B (where it
may still be eligible if it amounts to an ‘‘inventive concept’’). For more
information on how to evaluate whether a judicial exception is integrated into a
practical application, see MPEP § 2106.04(d)(2).
The mere inclusion of a judicial exception such as
a mathematical formula (which is one of the mathematical concepts identified as an
abstract idea in MPEP § 2106.04(a)) in a claim
means that the claim “recites” a judicial exception under Step 2A Prong One.
However, mere recitation of a judicial exception does not mean that the claim is
“directed to” that judicial exception under Step 2A Prong Two. Instead, under
Prong Two, a claim that recites a judicial exception is not directed to that
judicial exception, if the claim as a whole integrates the recited judicial
exception into a practical application of that exception. Prong Two thus
distinguishes claims that are “directed to” the recited judicial exception from
claims that are not “directed to” the recited judicial exception.
Because a judicial exception is not eligible
subject matter, Bilski, 561 U.S. at 601, 95 USPQ2d at 1005-06
(quoting Chakrabarty, 447 U.S. at 309, 206 USPQ at 197 (1980)),
if there are no additional claim elements besides the judicial exception, or if
the additional claim elements merely recite another judicial exception, that is
insufficient to integrate the judicial exception into a practical application.
See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1327, 122 USPQ2d 1377 (Fed. Cir. 2017) (“Adding one abstract idea (math) to
another abstract idea (encoding and decoding) does not render the claim
non-abstract”); Genetic Techs. v. Merial LLC, 818 F.3d 1369,
1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility “cannot be furnished by
the unpatentable law of nature (or natural phenomenon or abstract idea) itself.”).
For a claim reciting a judicial exception to be eligible, the additional elements
(if any) in the claim must “transform the nature of the claim” into a
patent-eligible application of the judicial exception, Alice
Corp., 573 U.S. at 217, 110 USPQ2d at 1981, either at Prong Two or in
Step 2B. If there are no additional elements in the claim, then it cannot be
eligible. In such a case, after making the appropriate rejection (see
MPEP § 2106.07 for more information on formulating a
rejection for lack of eligibility), it is a best practice for the examiner to
recommend an amendment, if possible, that would resolve eligibility of the claim.
B.Evaluating Claims Reciting Multiple Judicial
Exceptions
A claim may recite multiple judicial exceptions.
For example, claim 4 at issue in Bilski v. Kappos, 561 U.S.
593, 95 USPQ2d 1001 (2010) recited two abstract ideas, and the claims at issue in
Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S.
66, 101 USPQ2d 1961 (2012) recited two laws of nature. However, these claims were
analyzed by the Supreme Court in the same manner as claims reciting a single
judicial exception, such as those in Alice Corp., 573 U.S. 208,
110 USPQ2d 1976.
During examination, examiners should apply the
same eligibility analysis to all claims regardless of the number of exceptions
recited therein. Unless it is clear that a claim recites distinct exceptions, such
as a law of nature and an abstract idea, care should be taken not to parse the
claim into multiple exceptions, particularly in claims involving abstract ideas.
Accordingly, if possible examiners should treat the claim for Prong Two and Step
2B purposes as containing a single judicial exception.
In some claims, the multiple exceptions are
distinct from each other, e.g., a first limitation describes a
law of nature, and a second limitation elsewhere in the claim recites an abstract
idea. In these cases, for purposes of examination efficiency, examiners should
select one of the exceptions and conduct the eligibility analysis for that
selected exception. If the analysis indicates that the claim recites an additional
element or combination of elements that integrate the selected exception into a
practical application or that amount to significantly more than the selected
exception, then the claim should be considered patent eligible. On the other hand,
if the claim does not recite any additional element or combination of elements
that integrate the selected exception into a practical application, and also does
not recite any additional element or combination of elements that amounts to
significantly more than the selected exception, then the claim should be
considered ineligible. University of Utah Research Foundation v. Ambry
Genetics, 774 F.3d 755, 762, 113 USPQ2d 1241, 1246 (Fed. Cir. 2014)
(because claims did not amount to significantly more than the recited abstract
idea, court “need not decide” if claims also recited a law of nature).
In other claims, multiple abstract ideas, which
may fall in the same or different groupings, or multiple laws of nature may be
recited. In these cases, examiners should not parse the claim. For example, in a
claim that includes a series of steps that recite mental steps as well as a
mathematical calculation, an examiner should identify the claim as reciting both a
mental process and a mathematical concept for Step 2A Prong One to make the
analysis clear on the record. However, if possible, the examiner should consider
the limitations together as a single abstract idea for Step 2A Prong Two and Step
2B (if necessary) rather than as a plurality of separate abstract ideas to be
analyzed individually.
2106.04(a) Abstract Ideas [R-07.2022]
The abstract idea exception has deep roots in the
Supreme Court’s jurisprudence. See Bilski v. Kappos, 561 U.S. 593,
601-602, 95 USPQ2d 1001, 1006 (2010) (citing Le Roy v. Tatham, 55
U.S. (14 How.) 156, 174–175 (1853)). Despite this long history, the courts have
declined to define abstract ideas. However, it is clear from the body of judicial
precedent that software and business methods are not excluded categories of subject
matter. For example, the Supreme Court concluded that business methods are not
“categorically outside of § 101's scope,” stating that “a
business method is simply one kind of ‘method’ that is, at least in some
circumstances, eligible for patenting under § 101.”
Bilski, 561 U.S. at 607, 95 USPQ2d at 1008 (2010). See also
Content Extraction and Transmission, LLC v. Wells Fargo Bank,
776 F.3d 1343, 1347, 113 USPQ2d 1354, 1357 (Fed. Cir. 2014) (“there is no categorical
business-method exception”). Likewise, software is not automatically an abstract
idea, even if performance of a software task involves an underlying mathematical
calculation or relationship. See, e.g., Thales Visionix, Inc. v. United
States, 850 F.3d 1343, 121 USPQ2d 1898, 1902 (Fed. Cir. 2017) (“That a
mathematical equation is required to complete the claimed method and system does not
doom the claims to abstraction.”); McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1316, 120 USPQ2d 1091, 1103 (Fed. Cir. 2016)
(methods of automatic lip synchronization and facial expression animation using
computer-implemented rules were not directed to an abstract idea); Enfish,
822 F.3d 1327, 1336, 118 USPQ2d 1684, 1689 (Fed. Cir. 2016) (claims to
self-referential table for a computer database were not directed to an abstract
idea).
To facilitate examination, the Office has set forth an
approach to identifying abstract ideas that distills the relevant case law into
enumerated groupings of abstract ideas. The enumerated groupings are firmly rooted in
Supreme Court precedent as well as Federal Circuit decisions interpreting that
precedent, as is explained in MPEP § 2106.04(a)(2). This approach
represents a shift from the former case-comparison approach that required examiners
to rely on individual judicial cases when determining whether a claim recites an
abstract idea. By grouping the abstract ideas, the examiners’ focus has been shifted
from relying on individual cases to generally applying the wide body of case law
spanning all technologies and claim types.
Examiners should determine whether a claim recites an
abstract idea by (1) identifying the specific limitation(s) in the claim under
examination that the examiner believes recites an abstract idea, and (2) determining
whether the identified limitations(s) fall within at least one of the groupings of
abstract ideas listed above. The groupings of abstract ideas, and their relationship
to the body of judicial precedent, are further discussed in MPEP §
2106.04(a)(2).
If the identified limitation(s) falls within at least
one of the groupings of abstract ideas, it is reasonable to conclude that the claim
recites an abstract idea in Step 2A Prong One. The claim then requires further
analysis in Step 2A Prong Two, to determine whether any additional elements in the
claim integrate the abstract idea into a practical application, see
MPEP
§ 2106.04(d).
If the identified limitation(s) do not fall within
any of the groupings of abstract ideas, it is reasonable to find that the claim does
not recite an abstract idea. This concludes the abstract idea judicial exception
eligibility analysis, except in the rare circumstance discussed in
MPEP
§ 2106.04(a)(3), below. The claim is thus eligible at
Pathway B unless the claim recites, and is directed to, another exception (such as a
law of nature or natural phenomenon).
If the claims recites another judicial exception (i.e.
law of nature or natural phenomenon), see MPEP §§
2106.04(b) and 2106.04(c) for more information on Step 2A analysis.
MPEP § 2106.04(a)(1) provides
examples of claims that do not recite abstract ideas (or other judicial exceptions)
and thus are eligible at Step 2A Prong One.
MPEP § 2106.04(a)(2) provides
further explanation on the abstract idea groupings. It should be noted that these
groupings are not mutually exclusive, i.e., some claims recite limitations that fall
within more than one grouping or sub-grouping. For example, a claim reciting
performing mathematical calculations using a formula that could be practically
performed in the human mind may be considered to fall within the mathematical
concepts grouping and the mental process grouping. Accordingly, examiners should
identify at least one abstract idea grouping, but preferably identify all groupings
to the extent possible, if a claim limitation(s) is determined to fall within
multiple groupings and proceed with the analysis in Step 2A Prong Two.
2106.04(a)(1) Examples of Claims That Do Not Recite
Abstract Ideas [R-10.2019]
When evaluating a claim to determine whether it
recites an abstract idea, examiners should keep in mind that while “all inventions
at some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomenon, or abstract ideas”, not all claims recite an abstract idea. See
Alice Corp. Pty. Ltd. v. CLS Bank, Int’l, 573 U.S. 208, 217,
110 USPQ2d 1976, 1980-81 (2014) (citing Mayo Collaborative Servs. v.
Prometheus Labs. Inc., 566 US 66, 71, 101 USPQ2d 1961, 1965 (2012)).
The Step 2A Prong One analysis articulated in MPEP §
2106.04 accounts for this cautionary principle by
requiring a claim to recite (i.e., set forth or describe) an
abstract idea in Prong One before proceeding to the Prong Two inquiry about
whether the claim is directed to that idea, thereby separating claims reciting
abstract ideas from those that are merely based on or involve an abstract
idea.
Some claims are not directed to an abstract idea
because they do not recite an abstract idea, although it may be apparent that at
some level they are based on or involve an abstract idea. Because these claims do
not recite an abstract idea (or other judicial exception), they are eligible at
Step 2A Prong One (Pathway B).
Non-limiting hypothetical examples of claims that
do not recite (set forth or describe) an abstract idea include:
i. a printer comprising a belt, a roller, a
printhead and at least one ink cartridge;
ii. a washing machine comprising a tub, a drive
motor operatively connected to the tub, a controller for controlling the
drive motor, and a housing for containing the tub, drive motor, and
controller;
iii. an earring comprising a sensor for taking
periodic blood glucose measurements and a memory for storing measurement
data from the sensor;
iv. a method for sequencing BRCA1 gene sequences
comprising: amplifying by a polymerization chain reaction technique all or
part of a BRCA1 gene from a tissue sample from a human subject using a set
of primers to produce amplified nucleic acids; and sequencing the amplified
nucleic acids;
v. a method for loading BIOS into a local
computer system which has a system processor and volatile memory and
non-volatile memory, the method comprising the steps of: responding to
powering up of the local computer system by requesting from a memory
location remote from the local computer system the transfer to and storage
in the volatile memory of the local computer system of BIOS configured for
effective use of the local computer system, transferring and storing such
BIOS, and transferring control of the local computer system to such
BIOS;
vi. a method of rearranging icons on a graphical
user interface (GUI) comprising the steps of: receiving a user selection to
organize each icon based on the amount of use of each icon, determining the
amount of use of each icon by using a processor to track the amount of
memory allocated to the application associated with the icon over a period
of time, and automatically moving the most used icons to a position in the
GUI closest to the start icon of the computer system based on the determined
amount of use; and
vii. a method of training a neural network for
facial detection comprising: collecting a set of digital facial images,
applying one or more transformations to the digital images, creating a first
training set including the modified set of digital facial images; training
the neural network in a first stage using the first training set, creating a
second training set including digital non-facial images that are incorrectly
detected as facial images in the first stage of training; and training the
neural network in a second stage using the second training set.
The Court’s rationale for identifying these
“mathematical concepts” as judicial exceptions is that a ‘‘mathematical formula
as such is not accorded the protection of our patent laws,’’
Diehr, 450 U.S. at 191, 209 USPQ at 15 (citing
Benson, 409 U.S. 63, 175 USPQ 673), and thus ‘‘the
discovery of [a mathematical formula] cannot support a patent unless there is
some other inventive concept in its application.’’ Flook,
437 U.S. at 594, 198 USPQ at 199. In the past, the Supreme Court sometimes
described mathematical concepts as laws of nature, and at other times described
these concepts as judicial exceptions without specifying a particular type of
exception. See, e.g., Benson, 409 U.S. at 65, 175 USPQ2d at
674; Flook, 437 U.S. at 589, 198 USPQ2d at 197;
Mackay Radio & Telegraph Co. v. Radio Corp. of Am.,
306 U.S. 86, 94, 40 USPQ 199, 202 (1939) (‘‘[A] scientific truth, or the
mathematical expression of it, is not patentable invention[.]’’). More recent
opinions of the Supreme Court, however, have affirmatively characterized
mathematical relationships and formulas as abstract ideas. See, e.g.,
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 218, 110
USPQ2d 1976, 1981 (2014) (describing Flook as holding “that
a mathematical formula for computing ‘alarm limits’ in a catalytic conversion
process was also a patent-ineligible abstract idea.”); Bilski v.
Kappos, 561 U.S. 593, 611-12, 95 USPQ2d 1001, 1010 (2010) (noting
that the claimed “concept of hedging, described in claim 1 and reduced to a
mathematical formula in claim 4, is an unpatentable abstract idea,”).
When determining whether a claim recites a
mathematical concept (i.e., mathematical relationships,
mathematical formulas or equations, and mathematical calculations), examiners
should consider whether the claim recites a mathematical concept or merely
limitations that are based on or involve a mathematical concept. A claim does
not recite a mathematical concept (i.e., the claim
limitations do not fall within the mathematical concept grouping), if it is
only based on or involves a mathematical concept. See, e.g., Thales
Visionix, Inc. v. United States, 850 F.3d 1343, 1348-49, 121
USPQ2d 1898, 1902-03 (Fed. Cir. 2017) (determining that the claims to a
particular configuration of inertial sensors and a particular method of using
the raw data from the sensors in order to more accurately calculate the
position and orientation of an object on a moving platform did not merely
recite “the abstract idea of using ‘mathematical equations for determining the
relative position of a moving object to a moving reference frame’.”). For
example, a limitation that is merely based on or involves a mathematical
concept described in the specification may not be sufficient to fall into this
grouping, provided the mathematical concept itself is not recited in the claim.
It is important to note that a mathematical
concept need not be expressed in mathematical symbols, because “[w]ords used in
a claim operating on data to solve a problem can serve the same purpose as a
formula.” In re Grams, 888 F.2d 835, 837 and n.1, 12 USPQ2d
1824, 1826 and n.1 (Fed. Cir. 1989). See, e.g., SAP America, Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1163, 127 USPQ2d 1597, 1599 (Fed.
Cir. 2018) (holding that claims to a ‘‘series of mathematical calculations
based on selected information’’ are directed to abstract ideas);
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc.,
758 F.3d 1344, 1350, 111 USPQ2d 1717, 1721 (Fed. Cir. 2014) (holding that
claims to a ‘‘process of organizing information through mathematical
correlations’’ are directed to an abstract idea); and Bancorp Servs.,
LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1280,
103 USPQ2d 1425, 1434 (Fed. Cir. 2012) (identifying the concept of ‘‘managing a
stable value protected life insurance policy by performing calculations and
manipulating the results’’ as an abstract idea).
A. Mathematical Relationships
A mathematical relationship is a
relationship between variables or numbers. A mathematical relationship may
be expressed in words or using mathematical symbols. For example, pressure
(p) can be described as the ratio between the magnitude of the normal force
(F) and area of the surface on contact (A), or it can be set forth in the
form of an equation such as p = F/A.
Examples of mathematical relationships
recited in a claim include:
i. a relationship between reaction rate
and temperature, which relationship can be expressed in the form of a
formula called the Arrhenius equation, Diamond v.
Diehr; 450 U.S. at 178 n. 2, 179 n.5, 191-92, 209 USPQ at
4-5 (1981);
ii. a conversion between binary coded
decimal and pure binary, Benson, 409 U.S. at 64,
175 USPQ at 674;
iii. a mathematical relationship between
enhanced directional radio activity and antenna conductor arrangement
(i.e., the length of the conductors with respect
to the operating wave length and the angle between the conductors),
Mackay Radio & Tel. Co. v. Radio Corp. of
America, 306 U.S. 86, 91, 40 USPQ 199, 201 (1939) (while
the litigated claims 15 and 16 of U.S. Patent No. 1,974,387 expressed
this mathematical relationship using a formula that described the
angle between the conductors, other claims in the patent
(e.g., claim 1) expressed the mathematical
relationship in words); and
iv. organizing information and
manipulating information through mathematical correlations,
Digitech Image Techs., LLC v. Electronics for Imaging,
Inc., 758 F.3d 1344, 1350, 111 USPQ2d 1717, 1721 (Fed.
Cir. 2014). The patentee in Digitech claimed
methods of generating first and second data by taking existing
information, manipulating the data using mathematical functions, and
organizing this information into a new form. The court explained that
such claims were directed to an abstract idea because they described a
process of organizing information through mathematical correlations,
like Flook's method of calculating using a
mathematical formula. 758 F.3d at 1350, 111 USPQ2d at 1721.
B. Mathematical Formulas or Equations
A claim that recites a numerical formula or
equation will be considered as falling within the “mathematical concepts”
grouping. In addition, there are instances where a formula or equation is
written in text format that should also be considered as falling within this
grouping. For example, the phrase “determining a ratio of A to B” is merely
using a textual replacement for the particular equation (ratio = A/B).
Additionally, the phrase “calculating the force of the object by multiplying
its mass by its acceleration” is using a textual replacement for the
particular equation (F= ma).
Examples of mathematical equations or formulas
recited in a claim include:
A claim that recites a mathematical
calculation, when the claim is given its broadest reasonable interpretation
in light of the specification, will be considered as falling within the
“mathematical concepts” grouping. A mathematical calculation is a
mathematical operation (such as multiplication) or an act of calculating
using mathematical methods to determine a variable or number,
e.g., performing an arithmetic operation such as
exponentiation. There is no particular word or set of words that indicates a
claim recites a mathematical calculation. That is, a claim does not have to
recite the word “calculating” in order to be considered a mathematical
calculation. For example, a step of “determining” a variable or number using
mathematical methods or “performing” a mathematical operation may also be
considered mathematical calculations when the broadest reasonable
interpretation of the claim in light of the specification encompasses a
mathematical calculation.
• commercial or legal interactions
(including agreements in the form of contracts, legal obligations,
advertising, marketing or sales activities or behaviors, and business
relations); and
• managing personal behavior or
relationships or interactions between people, (including social
activities, teaching, and following rules or instructions).
The Supreme Court has identified a number of
concepts falling within the “certain methods of organizing human activity”
grouping as abstract ideas. In particular, in Alice, the
Court concluded that the use of a third party to mediate settlement risk is a
‘‘fundamental economic practice’’ and thus an abstract idea. 573 U.S. at
219–20, 110 USPQ2d at 1982. In addition, the Court in Alice
described the concept of risk hedging identified as an abstract idea in
Bilski as ‘‘a method of organizing human activity’’.
Id. Previously, in Bilski, the Court
concluded that hedging is a ‘‘fundamental economic practice’’ and therefore an
abstract idea. 561 U.S. at 611–612, 95 USPQ2d at 1010.
The term “certain” qualifies the “certain
methods of organizing human activity” grouping as a reminder of several
important points. First, not all methods of organizing human activity are
abstract ideas (e.g., “a defined set of steps for combining
particular ingredients to create a drug formulation” is not a certain "method
of organizing human activity”), In re Marco Guldenaar Holding
B.V., 911 F.3d 1157, 1160-61, 129 USPQ2d 1008, 1011 (Fed. Cir.
2018). Second, this grouping is limited to activity that falls within the
enumerated sub-groupings of fundamental economic principles or practices,
commercial or legal interactions, and managing personal behavior and
relationships or interactions between people, and is not to be expanded beyond
these enumerated sub-groupings except in rare circumstances as explained in
MPEP § 2106.04(a)(3). Finally, the sub-groupings
encompass both activity of a single person (for example, a person following a
set of instructions or a person signing a contract online) and activity that
involves multiple people (such as a commercial interaction), and thus, certain
activity between a person and a computer (for example a method of anonymous
loan shopping that a person conducts using a mobile phone) may fall within the
“certain methods of organizing human activity” grouping. It is noted that the
number of people involved in the activity is not dispositive as to whether a
claim limitation falls within this grouping. Instead, the determination should
be based on whether the activity itself falls within one of the sub-groupings.
A.Fundamental Economic Practices or
Principles
The courts have used the phrases “fundamental
economic practices” or “fundamental economic principles” to describe
concepts relating to the economy and commerce. Fundamental economic
principles or practices include hedging, insurance, and mitigating
risks.
The term “fundamental” is not used in the
sense of necessarily being “old” or “well-known.” See, e.g., OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1364, 115
U.S.P.Q.2d 1090, 1092 (Fed Cir. 2015) (a new method of price optimization
was found to be a fundamental economic concept); In re
Smith, 815 F.3d 816, 818-19, 118 USPQ2d 1245, 1247 (Fed. Cir.
2016) (describing a new set of rules for conducting a wagering game as a
“fundamental economic practice”); In re Greenstein, 774
Fed. Appx. 661, 664, 2019 USPQ2d 212400 (Fed Cir. 2019) (non-precedential)
(claims to a new method of allocating returns to different investors in an
investment fund was a fundamental economic concept). However, being old or
well-known may indicate that the practice is fundamental. See,
e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573
U.S. 208, 219-20, 110 USPQ2d 1981-82 (2014) (describing the concept of
intermediated settlement, like the risk hedging in
Bilski, to be a “‘fundamental economic practice long
prevalent in our system of commerce’” and also as “a building block of the
modern economy”) (citation omitted); Bilski v. Kappos,
561 U.S. 593, 611, 95 USPQ2d 1001, 1010 (2010) (claims to the concept of
hedging are a “fundamental economic practice long prevalent in our system of
commerce and taught in any introductory finance class.”) (citation omitted);
Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307, 1313, 120 USPQ2d 1353, 1356 (Fed. Cir. 2016) (“The category of
abstract ideas embraces ‘fundamental economic practice[s] long prevalent in
our system of commerce,’ … including ‘longstanding commercial
practice[s]’”).
An example of a case identifying a claim as
reciting a fundamental economic practice is Bilski v.
Kappos, 561 U.S. 593, 609, 95 USPQ2d 1001, 1009 (2010). The
fundamental economic practice at issue was hedging or protecting against
risk. The applicant in Bilski claimed “a series of steps
instructing how to hedge risk,” i.e., how to protect
against risk. 561 U.S. at 599, 95 USPQ2d at 1005. The method allowed energy
suppliers and consumers to minimize the risks resulting from fluctuations in
market demand for energy. The Supreme Court determined that hedging is
“fundamental economic practice” and therefore is an “unpatentable abstract
idea.” 561 U.S. at 611-12, 95 USPQ2d at 1010.
Another example of a case identifying a
claim as reciting a fundamental economic practice is Bancorp
Services., L.L.C. v. Sun Life Assurance Co. of Canada (U.S.),
687 F.3d 1266, 103 USPQ2d 1425 (Fed. Cir. 2012). The fundamental economic
practice at issue in Bancorp pertained to insurance. The
patentee in Bancorp claimed methods and systems for
managing a life insurance policy on behalf of a policy holder, which
comprised steps including generating a life insurance policy including a
stable value protected investment with an initial value based on a value of
underlying securities, calculating surrender value protected investment
credits for the life insurance policy; determining an investment value and a
value of the underlying securities for the current day; and calculating a
policy value and a policy unit value for the current day. 687 F.3d at
1270-71, 103 USPQ2d at 1427. The court described the claims as an “attempt
to patent the use of the abstract idea of [managing a stable value protected
life insurance policy] and then instruct the use of well-known
[calculations] to help establish some of the inputs into the equation.” 687
F.3d at 1278, 103 USPQ2d at 1433 (alterations in original) (citing
Bilski).
Other examples of "fundamental economic
principles or practices" include:
“Commercial interactions” or “legal
interactions” include agreements in the form of contracts, legal
obligations, advertising, marketing or sales activities or behaviors, and
business relations.
An example of a claim reciting a commercial
or legal interaction, where the interaction is an agreement in the form of
contracts, is found in buySAFE, Inc. v. Google, Inc., 765
F.3d. 1350, 112 USPQ2d 1093 (Fed. Cir. 2014). The agreement at issue in
buySAFE was a transaction performance guaranty, which
is a contractual relationship. 765 F.3d at 1355, 112 USPQ2d at 1096. The
patentee claimed a method in which a computer operated by the provider of a
safe transaction service receives a request for a performance guarantee for
an online commercial transaction, the computer processes the request by
underwriting the requesting party in order to provide the transaction
guarantee service, and the computer offers, via a computer network, a
transaction guaranty that binds to the transaction upon the closing of the
transaction. 765 F.3d at 1351-52, 112 USPQ2d at 1094. The Federal Circuit
described the claims as directed to an abstract idea because they were
“squarely about creating a contractual relationship--a ‘transaction
performance guaranty’.” 765 F.3d at 1355, 112 USPQ2d at 1096.
Other examples of subject matter where the
commercial or legal interaction is an agreement in the form of contracts
include:
An example of a claim reciting a commercial
or legal interaction in the form of a legal obligation is found in
Fort Properties, Inc. v. American Master Lease, LLC,
671 F.3d 1317, 101 USPQ2d 1785 (Fed Cir. 2012). The patentee claimed a
method of “aggregating real property into a real estate portfolio, dividing
the interests in the portfolio into a number of deedshares, and subjecting
those shares to a master agreement.” 671 F.3d at 1322, 101 USPQ2d at 1788.
The legal obligation at issue was the tax-free exchanges of real estate. The
Federal Circuit concluded that the real estate investment tool designed to
enable tax-free exchanges was an abstract concept. 671 F.3d at 1323, 101
USPQ2d at 1789.
Other examples of subject matter where the
commercial or legal interaction is a legal obligation include:
An example of a claim reciting advertising is
found in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
714-15, 112 USPQ2d 1750, 1753-54 (Fed. Cir. 2014). The patentee in
Ultramercial claimed an eleven-step method for
displaying an advertisement (ad) in exchange for access to copyrighted
media, comprising steps of receiving copyrighted media, selecting an ad,
offering the media in exchange for watching the selected ad, displaying the
ad, allowing the consumer access to the media, and receiving payment from
the sponsor of the ad. 772 F.3d. at 715, 112 USPQ2d at 1754. The Federal
Circuit determined that the "combination of steps recites an abstraction—an
idea, having no particular concrete or tangible form" and thus was directed
to an abstract idea, which the court described as "using advertising as an
exchange or currency." Id.
Other examples of subject matter where the
commercial or legal interaction is advertising, marketing or sales
activities or behaviors include:
An example of a claim reciting business
relations is found in Credit Acceptance Corp. v. Westlake
Services, 859 F.3d 1044, 123 USPQ2d 1100 (Fed. Cir. 2017). The
business relation at issue in Credit Acceptance is the
relationship between a customer and dealer when processing a credit
application to purchase a vehicle. The patentee claimed a “system for
maintaining a database of information about the items in a dealer’s
inventory, obtaining financial information about a customer from a user,
combining these two sources of information to create a financing package for
each of the inventoried items, and presenting the financing packages to the
user.” 859 F.3d at 1054, 123 USPQ2d at 1108. The Federal Circuit described
the claims as directed to the abstract idea of “processing an application
for financing a loan” and found “no meaningful distinction between this type
of financial industry practice” and the concept of intermediated settlement
in Alice or the hedging concept in
Bilski. 859 F.3d at 1054, 123 USPQ2d at 1108.
Another example of subject matter where the
commercial or legal interaction is business relations includes:
C. Managing Personal Behavior or Relationships or Interactions
Between People
The sub-grouping “managing personal behavior
or relationships or interactions between people” include social activities,
teaching, and following rules or instructions.
An example of a claim reciting managing
personal behavior is Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363, 115 USPQ2d 1636 (Fed. Cir. 2015).
The patentee in this case claimed methods comprising storing user-selected
pre-set limits on spending in a database, and when one of the limits is
reached, communicating a notification to the user via a device. 792 F.3d. at
1367, 115 USPQ2d at 1639-40. The Federal Circuit determined that the claims
were directed to the abstract idea of “tracking financial transactions to
determine whether they exceed a pre-set spending limit
(i.e., budgeting)”, which “is not meaningfully
different from the ideas found to be abstract in other cases before the
Supreme Court and our court involving methods of organizing human activity.”
792 F.3d. at 1367-68, 115 USPQ2d at 1640.
Other examples of managing personal behavior
recited in a claim include:
iii. a mental process that a neurologist
should follow when testing a patient for nervous system malfunctions,
In re Meyer, 688 F.2d 789, 791-93, 215 USPQ 193,
194-96 (CCPA 1982).
An example of a claim reciting social
activities is Voter Verified, Inc. v. Election Systems &
Software, LLC, 887 F.3d 1376, 126 USPQ2d 1498 (Fed. Cir. 2018).
The social activity at issue in Voter Verified was
voting. The patentee claimed “[a] method for voting providing for
self-verification of a ballot comprising the steps of” presenting an
election ballot for voting, accepting input of the votes, storing the votes,
printing out the votes, comparing the printed votes to votes stored in the
computer, and determining whether the printed ballot is acceptable. 887 F.3d
at 1384-85, 126 USPQ2d at 1503-04. The Federal Circuit found that the claims
were directed to the abstract idea of “voting, verifying the vote, and
submitting the vote for tabulation”, which is a “fundamental activity that
forms the basis of our democracy” and has been performed by humans for
hundreds of years. 887 F.3d at 1385-86, 126 USPQ2d at 1504-05.
Another example of a claim reciting social
activities is Interval Licensing LLC, v. AOL, Inc., 896
F.3d 1335, 127 USPQ2d 1553 (Fed. Cir. 2018). The social activity at issue
was the social activity of “’providing information to a person without
interfering with the person’s primary activity.’” 896 F.3d at 1344, 127
USPQ2d 1553 (citing Interval Licensing LLC v. AOL, Inc.,
193 F. Supp.3d 1184, 1188 (W.D. 2014)). The patentee claimed an attention
manager for acquiring content from an information source, controlling the
timing of the display of acquired content, displaying the content, and
acquiring an updated version of the previously-acquired content when the
information source updates its content. 896 F.3d at 1339-40, 127 USPQ2d at
1555. The Federal Circuit concluded that “[s]tanding alone, the act of
providing someone an additional set of information without disrupting the
ongoing provision of an initial set of information is an abstract idea,”
observing that the district court “pointed to the nontechnical human
activity of passing a note to a person who is in the middle of a meeting or
conversation as further illustrating the basic, longstanding practice that
is the focus of the [patent ineligible] claimed invention.” 896 F.3d at
1344-45, 127 USPQ2d at 1559.
An example of a claim reciting following
rules or instructions is In re Marco Guldenaar Holding
B.V., 911 F.3d 1157, 1161, 129 USPQ2d 1008, 1011 (Fed. Cir.
2018). The patentee claimed a method of playing a dice game including
placing wagers on whether certain die faces will appear face up. 911 F.3d at
1160; 129 USPQ2d at 1011. The Federal Circuit determined that the claims
were directed to the abstract idea of “rules for playing games”, which the
court characterized as a certain method of organizing human activity. 911
F.3d at 1160-61; 129 USPQ2d at 1011.
Other examples of following rules or
instructions recited in a claim include:
ii. a series of instructions of how to
hedge risk, Bilski v. Kappos, 561 U.S. 593, 595, 95
USPQ2d 1001, 1004 (2010).
III. MENTAL
PROCESSES
The courts consider a mental process (thinking)
that “can be performed in the human mind, or by a human using a pen and paper”
to be an abstract idea. CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011).
As the Federal Circuit explained, “methods which can be performed mentally, or
which are the equivalent of human mental work, are unpatentable abstract ideas
the ‘basic tools of scientific and technological work’ that are open to all.’”
654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v.
Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo
Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71,
101 USPQ2d 1961, 1965 (2012) (“‘[M]ental processes[] and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work’” (quoting Benson, 409 U.S. at 67, 175
USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ
193, 197 (1978) (same).
Accordingly, the “mental processes” abstract
idea grouping is defined as concepts performed in the human mind, and examples
of mental processes include observations, evaluations, judgments, and opinions.
A discussion of concepts performed in the human mind, as well as concepts that
cannot practically be performed in the human mind and thus are not “mental
processes”, is provided below with respect to point A.
The courts do not distinguish between mental
processes that are performed entirely in the human mind and mental processes
that require a human to use a physical aid (e.g., pen and
paper or a slide rule) to perform the claim limitation. See, e.g.,
Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75, 674 (noting that
the claimed “conversion of [binary-coded decimal] numerals to pure binary
numerals can be done mentally,” i.e., “as a person would do
it by head and hand.”); Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1139, 120 USPQ2d 1473, 1474 (Fed. Cir. 2016)
(holding that claims to a mental process of “translating a functional
description of a logic circuit into a hardware component description of the
logic circuit” are directed to an abstract idea, because the claims “read on an
individual performing the claimed steps mentally or with pencil and paper”).
Mental processes performed by humans with the assistance of physical aids such
as pens or paper are explained further below with respect to point B.
Nor do the courts distinguish between claims
that recite mental processes performed by humans and claims that recite mental
processes performed on a computer. As the Federal Circuit has explained,
“[c]ourts have examined claims that required the use of a computer and still
found that the underlying, patent-ineligible invention could be performed via
pen and paper or in a person’s mind.” Versata Dev. Group v. SAP Am.,
Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015).
See also Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception
of generic computer-implemented steps, there is nothing in the claims
themselves that foreclose them from being performed by a human, mentally or
with pen and paper.’’); Mortgage Grader, Inc. v. First Choice Loan
Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (Fed. Cir.
2016) (holding that computer-implemented method for "anonymous loan shopping"
was an abstract idea because it could be "performed by humans without a
computer"). Mental processes recited in claims that require computers are
explained further below with respect to point C.
Because both product and process claims may
recite a “mental process”, the phrase “mental processes” should be understood
as referring to the type of abstract idea, and not to the statutory category of
the claim. The courts have identified numerous product claims as reciting
mental process-type abstract ideas, for instance the product claims to computer
systems and computer-readable media in Versata Dev. Group. v. SAP Am.,
Inc., 793 F.3d 1306, 115 USPQ2d 1681 (Fed. Cir. 2015). This
concept is explained further below with respect to point D.
The following discussion is meant to guide
examiners and provide more information on how to determine whether a claim
recites a mental process. Examiners should keep in mind the following points A,
B, C, and D when performing this evaluation.
A. A Claim With Limitation(s) That Cannot Practically be Performed
in the Human Mind Does Not Recite a Mental
Process
Claims do not recite a mental process when
they do not contain limitations that can practically be performed in the
human mind, for instance when the human mind is not equipped to perform the
claim limitations. See SRI Int’l, Inc. v. Cisco Systems,
Inc., 930 F.3d 1295, 1304 (Fed. Cir. 2019) (declining to
identify the claimed collection and analysis of network data as abstract
because “the human mind is not equipped to detect suspicious activity by
using network monitors and analyzing network packets as recited by the
claims”); CyberSource, 654 F.3d at 1376, 99 USPQ2d at
1699 (distinguishing Research Corp. Techs. v. Microsoft
Corp., 627 F.3d 859, 97 USPQ2d 1274 (Fed. Cir. 2010), and
SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319,
94 USPQ2d 1607 (Fed. Cir. 2010), as directed to inventions that ‘‘could not,
as a practical matter, be performed entirely in a human’s mind’’).
Examples of claims that do not recite mental
processes because they cannot be practically performed in the human mind
include:
• a claim to a method for calculating
an absolute position of a GPS receiver and an absolute time of
reception of satellite signals, where the claimed GPS receiver
calculated pseudoranges that estimated the distance from the GPS
receiver to a plurality of satellites, SiRF Tech.,
601 F.3d at 1331-33, 94 USPQ2d at 1616-17;
• a claim to a method for rendering a
halftone image of a digital image by comparing, pixel by pixel, the
digital image against a blue noise mask, where the method required the
manipulation of computer data structures (e.g., the
pixels of a digital image and a two-dimensional array known as a mask)
and the output of a modified computer data structure (a halftoned
digital image), Research Corp. Techs., 627 F.3d at
868, 97 USPQ2d at 1280.
In contrast, claims do recite a mental
process when they contain limitations that can practically be performed in
the human mind, including for example, observations, evaluations, judgments,
and opinions. Examples of claims that recite mental processes include:
• a claim to “collecting information,
analyzing it, and displaying certain results of the collection and
analysis,” where the data analysis steps are recited at a high level
of generality such that they could practically be performed in the
human mind, Electric Power Group v. Alstom, S.A.,
830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016);
• claims to “comparing BRCA sequences
and determining the existence of alterations,” where the claims cover
any way of comparing BRCA sequences such that the comparison steps can
practically be performed in the human mind, University of
Utah Research Foundation v. Ambry Genetics, 774 F.3d 755,
763, 113 USPQ2d 1241, 1246 (Fed. Cir. 2014);
• a claim to collecting and comparing
known information (claim 1), which are steps that can be practically
performed in the human mind, Classen Immunotherapies, Inc. v.
Biogen IDEC, 659 F.3d 1057, 1067, 100 USPQ2d 1492, 1500
(Fed. Cir. 2011); and
• a claim to identifying head shape
and applying hair designs, which is a process that can be practically
performed in the human mind, In re Brown, 645 Fed.
App'x 1014, 1016-17 (Fed. Cir. 2016) (non-precedential).
B. A Claim That Encompasses a Human Performing the Step(s)
Mentally With or Without a Physical Aid Recites a Mental
Process
If a claim recites a limitation that can
practically be performed in the human mind, with or without the use of a
physical aid such as pen and paper, the limitation falls within the mental
processes grouping, and the claim recites an abstract idea. See,
e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75,
674 (noting that the claimed “conversion of [binary-coded decimal] numerals
to pure binary numerals can be done mentally,” i.e., “as
a person would do it by head and hand.”); Synopsys, 839
F.3d at 1139, 120 USPQ2d at 1474 (holding that claims to the mental process
of “translating a functional description of a logic circuit into a hardware
component description of the logic circuit” are directed to an abstract
idea, because the claims “read on an individual performing the claimed steps
mentally or with pencil and paper”).
The use of a physical aid
(e.g., pencil and paper or a slide rule) to help
perform a mental step (e.g., a mathematical calculation)
does not negate the mental nature of the limitation, but simply accounts for
variations in memory capacity from one person to another. For instance, in
CyberSource, the court determined that the step of
“constructing a map of credit card numbers” was a limitation that was able
to be performed “by writing down a list of credit card transactions made
from a particular IP address.” In making this determination, the court
looked to the specification, which explained that the claimed map was
nothing more than a listing of several (e.g., four)
credit card transactions. The court concluded that this step was able to be
performed mentally with a pen and paper, and therefore, it qualified as a
mental process. 654 F.3d at 1372-73, 99 USPQ2d at 1695. See also
Flook, 437 U.S. at 586, 198 USPQ at 196 (claimed
“computations can be made by pencil and paper calculations”);
University of Florida Research Foundation, Inc. v. General
Electric Co., 916 F.3d 1363, 1367, 129 USPQ2d 1409, 1411-12
(Fed. Cir. 2019) (relying on specification’s description of the claimed
analysis and manipulation of data as being performed mentally “‘using pen
and paper methodologies, such as flowsheets and patient charts’”);
Symantec, 838 F.3d at 1318, 120 USPQ2d at 1360
(although claimed as computer-implemented, steps of screening messages can
be “performed by a human, mentally or with pen and paper”).
C. A Claim That Requires a Computer May Still Recite a Mental
Process
Claims can recite a mental process even if
they are claimed as being performed on a computer. The Supreme Court
recognized this in Benson, determining that a
mathematical algorithm for converting binary coded decimal to pure binary
within a computer’s shift register was an abstract idea. The Court concluded
that the algorithm could be performed purely mentally even though the
claimed procedures “can be carried out in existing computers long in use, no
new machinery being necessary.” 409 U.S at 67, 175 USPQ at 675. See also
Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699
(concluding that concept of “anonymous loan shopping” recited in a computer
system claim is an abstract idea because it could be “performed by humans
without a computer”).
In evaluating whether a claim that requires a
computer recites a mental process, examiners should carefully consider the
broadest reasonable interpretation of the claim in light of the
specification. For instance, examiners should review the specification to
determine if the claimed invention is described as a concept that is
performed in the human mind and applicant is merely claiming that concept
performed 1) on a generic computer, or 2) in a computer environment, or 3)
is merely using a computer as a tool to perform the concept. In these
situations, the claim is considered to recite a mental process.
1. Performing a mental process on a
generic computer. An example of a case identifying a mental
process performed on a generic computer as an abstract idea is
Voter Verified, Inc. v. Election Systems & Software,
LLC, 887 F.3d 1376, 1385, 126 USPQ2d 1498, 1504 (Fed.
Cir. 2018). In this case, the Federal Circuit relied upon the
specification in explaining that the claimed steps of voting,
verifying the vote, and submitting the vote for tabulation are “human
cognitive actions” that humans have performed for hundreds of years.
The claims therefore recited an abstract idea, despite the fact that
the claimed voting steps were performed on a computer. 887 F.3d at
1385, 126 USPQ2d at 1504. Another example is
Versata, in which the patentee claimed a system
and method for determining a price of a product offered to a
purchasing organization that was implemented using general purpose
computer hardware. 793 F.3d at 1312-13, 1331, 115 USPQ2d at 1685,
1699. The Federal Circuit acknowledged that the claims were performed
on a generic computer, but still described the claims as “directed to
the abstract idea of determining a price, using organizational and
product group hierarchies, in the same way that the claims in
Alice were directed to the abstract idea of
intermediated settlement, and the claims in Bilski
were directed to the abstract idea of risk hedging.” 793 F.3d at 1333;
115 USPQ2d at 1700-01.
2. Performing a mental process in a
computer environment. An example of a case identifying a
mental process performed in a computer environment as an abstract idea
is Symantec Corp., 838 F.3d at 1316-18, 120 USPQ2d
at 1360. In this case, the Federal Circuit relied upon the
specification when explaining that the claimed electronic post office,
which recited limitations describing how the system would receive,
screen and distribute email on a computer network, was analogous to
how a person decides whether to read or dispose of a particular piece
of mail and that “with the exception of generic computer-implemented
steps, there is nothing in the claims themselves that foreclose them
from being performed by a human, mentally or with pen and paper”. 838
F.3d at 1318, 120 USPQ2d at 1360. Another example is
FairWarning IP, LLC v. Iatric Sys., Inc., 839
F.3d 1089, 120 USPQ2d 1293 (Fed. Cir. 2016). The patentee in
FairWarning claimed a system and method of
detecting fraud and/or misuse in a computer environment, in which
information regarding accesses of a patient’s personal health
information was analyzed according to one of several rules
(i.e., related to accesses in excess of a
specific volume, accesses during a pre-determined time interval, or
accesses by a specific user) to determine if the activity indicates
improper access. 839 F.3d. at 1092, 120 USPQ2d at 1294. The court
determined that these claims were directed to a mental process of
detecting misuse, and that the claimed rules here were “the same
questions (though perhaps phrased with different words) that humans in
analogous situations detecting fraud have asked for decades, if not
centuries.” 839 F.3d. at 1094-95, 120 USPQ2d at 1296.
3. Using a computer as a tool to
perform a mental process. An example of a case in which a
computer was used as a tool to perform a mental process is
Mortgage Grader, 811 F.3d. at 1324, 117 USPQ2d
at 1699. The patentee in Mortgage Grader claimed a
computer-implemented system for enabling borrowers to anonymously shop
for loan packages offered by a plurality of lenders, comprising a
database that stores loan package data from the lenders, and a
computer system providing an interface and a grading module. The
interface prompts a borrower to enter personal information, which the
grading module uses to calculate the borrower’s credit grading, and
allows the borrower to identify and compare loan packages in the
database using the credit grading. 811 F.3d. at 1318, 117 USPQ2d at
1695. The Federal Circuit determined that these claims were directed
to the concept of “anonymous loan shopping”, which was a concept that
could be “performed by humans without a computer.” 811 F.3d. at 1324,
117 USPQ2d at 1699. Another example is Berkheimer v. HP,
Inc., 881 F.3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018), in
which the patentee claimed methods for parsing and evaluating data
using a computer processing system. The Federal Circuit determined
that these claims were directed to mental processes of parsing and
comparing data, because the steps were recited at a high level of
generality and merely used computers as a tool to perform the
processes. 881 F.3d at 1366, 125 USPQ2d at 1652-53.
D. Both Product and
Process Claims May Recite a Mental
Process
Examiners should keep in mind that both
product claims (e.g., computer system, computer-readable
medium, etc.) and process claims may recite mental processes. For example,
in Mortgage Grader, the patentee claimed a
computer-implemented system and a method for enabling borrowers to
anonymously shop for loan packages offered by a plurality of lenders,
comprising a database that stores loan package data from the lenders, and a
computer system providing an interface and a grading module. The Federal
Circuit determined that both the computer-implemented system and method
claims were directed to “anonymous loan shopping”, which was an abstract
idea because it could be “performed by humans without a computer.” 811 F.3d.
at 1318, 1324-25, 117 USPQ2d at 1695, 1699-1700. See also
FairWarning IP, 839 F.3d at 1092, 120 USPQ2d at 1294
(identifying both system and process claims for detecting improper access of
a patient's protected health information in a health-care system computer
environment as directed to abstract idea of detecting fraud);
Content Extraction & Transmission LLC v. Wells Fargo Bank,
N.A., 776 F.3d 1343, 1345, 113 USPQ2d 1354, 1356 (Fed. Cir.
2014) (system and method claims of inputting information from a hard copy
document into a computer program). Accordingly, the phrase “mental
processes” should be understood as referring to the type of abstract idea,
and not to the statutory category of the claim.
Examples of product claims reciting mental
processes include:
• An application program interface for
extracting and processing information from a diversity of types of
hard copy documents – Content Extraction, 776 F.3d
at 1345, 113 USPQ2d at 1356;
• A wide-area real-time performance
monitoring system for monitoring and assessing dynamic stability of an
electric power grid – Electric Power Group, 830
F.3d at 1351 and n.1, 119 USPQ2d at 1740 and n.1; and
2106.04(a)(3) Tentative Abstract
Ideas [R-10.2019]
There may be rare circumstances in which an
examiner believes a claim limitation should be treated as an abstract idea even
though it does not fall within any of the groupings of abstract ideas discussed in
MPEP § 2106.04(a)(2) (i.e., mathematical concepts,
certain methods of organizing human activity, mental processes). This type of
claim limitation is referred to as a “tentative abstract idea.”
In such circumstances, the examiner should
evaluate the claim under the subject matter eligibility framework:
• If the claim as a whole integrates the
tentative abstract idea into a practical application, the claim is not
directed to a judicial exception (Step 2A; NO) and thus is
eligible at Pathway B. This concludes the eligibility
analysis.
• If the claim as a whole does not integrate
the tentative abstract idea into a practical application, then the claim is
directed to a judicial exception (Step 2A: YES) and thus requires further
analysis at Step 2B. At Step 2B, if the claim as a whole provides an
inventive concept (Step 2B: YES), the claim is eligible at
Pathway C. This concludes the eligibility analysis.
• If the claim as a whole does not provide
an inventive concept (Step 2B: NO), the application should be brought to the
attention of the Technology Center (TC) director. A rejection of a claim
reciting a tentative abstract idea must be approved by the TC director
(which approval will be indicated in the file record of the application) and
must provide a justification for why such claim limitation is being treated
as reciting an abstract idea.
The TC Director will give approval for a Step
2B subject matter eligibility rejection of a claim reciting a tentative
abstract idea. The ensuing Office action will identify that the claim(s) are
directed to a previously non-enumerated abstract idea via form paragraph
7.05.017 and include the TC Director’s
signature. The TC Director will then inform Patents Management that this
procedure has been used so that the public can be notified, for example, on
USPTO.GOV at the Subject Matter Eligibility website.
In response to a Step 2B rejection of a claim
reciting a tentative abstract idea, an interview with the examiner may be
conducted, which may help advance prosecution and identify patent eligible
subject matter. See MPEP § 713. For applications
in which an abstract idea has been identified using the tentative abstract idea
procedure, an interview with the TC Director that provided approval is not
necessary because the examiner retains the authority to withdraw or maintain a
rejection upon consideration of applicant’s reply. The examiner is not required
to obtain TC Director approval to withdraw or maintain such a § 101
subject matter eligibility rejection.
Laws of nature and natural phenomena, as identified by
the courts, include naturally occurring principles/relations and nature-based
products that are naturally occurring or that do not have markedly different
characteristics compared to what occurs in nature. The courts have often described
these exceptions using other terms, including “physical phenomena,” “scientific
principles”, “natural laws,” and “products of nature.”
I. LAWS OF NATURE AND NATURAL
PHENOMENA, GENERALLY
The law of nature and natural phenomenon
exceptions reflect the Supreme Court's view that the basic tools of scientific and
technological work are not patentable, because the “manifestations of laws of
nature” are “part of the storehouse of knowledge,” “free to all men and reserved
exclusively to none.” Funk Bros. Seed Co. v. Kalo Inoculant
Co., 333 U.S. 127, 130, 76 USPQ 280, 281 (1948). Thus, “a new mineral
discovered in the earth or a new plant found in the wild is not patentable subject
matter” under Section 101. Diamond v. Chakrabarty, 447
U.S. 303, 309, 206 USPQ 193, 197 (1980). “Likewise, Einstein could not patent his
celebrated law that E=mc2; nor could Newton have
patented the law of gravity.” Id. Nor can one patent “a novel
and useful mathematical formula,” Parker v. Flook, 437 U.S.
584, 585, 198 USPQ 193, 195 (1978); electromagnetism or steam power,
O’Reilly v. Morse, 56 U.S. (15 How.) 62, 113-114 (1853); or
“[t]he qualities of ... bacteria, ... the heat of the sun, electricity, or the
qualities of metals,” Funk, 333 U.S. at 130, 76 USPQ at 281;
see also Le Roy v. Tatham, 55 U.S. (14 How.) 156, 175
(1853).
The courts have identified the following concepts
and products as examples of laws of nature or natural phenomena:
The courts have also noted, however, that not every
claim describing a natural ability or quality of a product, or describing a
natural process, necessarily recites a law of nature or natural phenomenon. See
Rapid Litig. Mgmt. v. CellzDirect, Inc., 827 F.3d 1042,
1048-49, 119 USPQ2d 1370, 1374 (Fed. Cir. 2016) (claims reciting process steps of
fractionating, recovering, and cryopreserving hepatocytes held to be eligible,
because they are not focused on merely observing or detecting the ability of
hepatocytes to survive multiple freeze-thaw cycles). Thus, in a claimed method of
treating cancer with chemotherapy, the cancer cells’ inability to survive
chemotherapy is not considered to be a law of nature. Similarly, in a claimed
method of treating headaches with aspirin, the human body’s natural response to
aspirin is not considered to be a law of nature. These claims are accordingly
eligible at Prong One unless they recite another exception, in which case they
require further analysis in Prong Two (and Step 2B, if needed) to determine their
eligibility. Similarly, a method of producing a new compound is not directed to
the individual components’ ability to combine to form the new compound.
Id. See also Tilghman v. Proctor, 102
U.S. 707, 729 (1881) (claims reciting process steps for manufacturing fatty acids
and glycerol by hydrolyzing fat at high temperature and pressure were held to be
eligible, because they are not focused on the chemical principle that fat can be
hydrolyzed into its components).
Even if a claim does recite a law of nature or
natural phenomenon, it may still be eligible at any of Pathways A through C. For
example, claims reciting a naturally occurring relationship between a patient’s
genotype and the risk of QTc prolongation (a law of nature) were held eligible as
not “directed to” that relationship because they also recited a step of treating
the patient with an amount of a particular medication that was tailored to the
patient’s genotype. Vanda Pharms., 887 F.3d at 1134-36, 126
USPQ2d at 1279-81. This particular treatment step applied the natural relationship
in a manner that integrated it into a practical application. The court’s analysis
in Vanda is equivalent to a finding of eligibility at Step 2A
Prong Two (Pathway B).
As explained in MPEP §
2106.04, a claim that recites a law of nature or a
natural phenomenon requires further analysis in Step 2A Prong Two to determine
whether the claim integrates the exception into a practical application.
A claim that does not recite a law of nature or
natural phenomenon is eligible at Pathway B (Step 2A: NO) unless the claim
recites, and is directed to, another exception (such as an abstract idea, or a
product of nature).
II. PRODUCTS OF
NATURE
When a law of nature or natural phenomenon is
claimed as a physical product, the courts have often referred to the exception as
a “product of nature”. For example, the isolated DNA of Myriad
and the primers of Ambry Genetics were described as products of
nature by the courts. Ass’n for Molecular Pathology v. Myriad Genetics,
Inc., 569 U.S. 576, 580, 106 USPQ2d 1972, 1975 (2013);
University of Utah Research Foundation v. Ambry Genetics,
774 F.3d 755, 758-59, 113 USPQ2d 1241, 1243 (Fed. Cir. 2014). As explained in
those decisions, products of nature are considered to be an exception because they
tie up the use of naturally occurring things, but they have been labeled as both
laws of nature and natural phenomena. See Myriad Genetics,
Inc., 569 U.S. at 590-91, 106 USPQ2d at 1979 (claims to isolated DNA
held ineligible because they “claim naturally occurring phenomena” and are
“squarely within the law of nature exception”); Funk Bros. Seed Co. v.
Kalo Inoculant Co., 333 U.S. 127, 130, 76 USPQ 280, 281 (1948)
(claims to bacterial mixtures held ineligible as “manifestations of laws of
nature” and “phenomena of nature”). Step 2A of the Office’s eligibility analysis
uses the terms “law of nature” and “natural phenomenon” as inclusive of “products
of nature”.
It is important to keep in mind that product of
nature exceptions include both naturally occurring products and non-naturally
occurring products that lack markedly different characteristics from any naturally
occurring counterpart. See, e.g.,Ambry Genetics, 774 F.3d at 760, 113 USPQ2d at 1244 (“Contrary
to Myriad's argument, it makes no difference that the
identified gene sequences are synthetically replicated. As the Supreme Court made
clear, neither naturally occurring compositions of matter, nor synthetically
created compositions that are structurally identical to the naturally occurring
compositions, are patent eligible.”). Thus, a synthetic, artificial, or
non-naturally occurring product such as a cloned organism or a human-made hybrid
plant is not automatically eligible because it was created by human ingenuity or
intervention. See, e.g.,In re Roslin Institute (Edinburgh), 750 F.3d 1333, 1337, 110
USPQ2d 1668, 1671-72 (Fed. Cir. 2014) (cloned sheep); cf. J.E.M. Ag
Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U.S. 130-132, 60
USPQ2d 1868-69 (2001) (hybrid plant). Instead, the key to the eligibility of all
non-naturally occurring products is whether they possess markedly different
characteristics from any naturally occurring counterpart.
When a claim recites a nature-based product
limitation, examiners should use the markedly different characteristics analysis
discussed in MPEP § 2106.04(c) to evaluate the
nature-based product limitation and determine the answer to Step 2A. Nature-based
products, as used herein, include both eligible and ineligible products and merely
refer to the types of products subject to the markedly different characteristics
analysis used to identify product of nature exceptions. Examples of nature-based
products include the isolated gene and cDNA sequences of
Myriad, the cloned farm animals of
Roslin, and the bacterium of Chakrabarty.
As is evident from these examples, and as further discussed in
MPEP §
2105, a nature-based product that is a living organism
(e.g., a plant, an animal, a bacterium, etc.) is not
excluded from patent protection merely because it is alive, and such a product is
eligible for patenting if it satisfies the markedly different characteristics
analysis.
It is important to keep in mind that under the
broadest reasonable interpretation (BRI) of the claims, a nature-based product
limitation may encompass both eligible and ineligible products. For example, a
claim to a “cloned giraffe” may have a BRI encompassing cloned giraffes with
markedly different characteristics, as well as cloned giraffes that lack markedly
different characteristics and thus are products of nature. Cf.
Roslin, 750 F.3d at 1338-39, 110 USPQ2d at 1673 (applicant
could not rely on unclaimed features to distinguish claimed mammals from donor
mammals).
Such a claim recites a product of nature, and thus
requires further analysis in Prong Two. If the claim is ultimately rejected as
failing to encompass an inventive concept (Step 2B: NO), it is a best practice for
the examiner to point out the broadest reasonable interpretation and recommend an
amendment, if possible, that would narrow the claim to those embodiments that are
not directed to products of nature, or that are otherwise eligible.
For claims that recite a nature-based product
limitation (which may or may not be a product of nature exception) but which are
directed to inventions that clearly do not seek to tie up any judicial exception,
examiners should consider whether the streamlined eligibility analysis discussed
in MPEP § 2106.06 is appropriate. In such cases, it would
not be necessary to conduct a markedly different characteristics analysis.
The markedly different characteristics analysis is
part of Step 2A Prong One, because the courts use this analysis to identify product
of nature exceptions. For example, Chakrabarty relied on a
comparison of the claimed bacterium to naturally occurring bacteria when determining
that the claimed bacterium was not a product of nature because it had “markedly
different characteristics from any found in nature”. Diamond v.
Chakrabarty, 447 U.S. 303, 310, 206 USPQ 193, 197 (1980). Similarly,
Roslin relied on a comparison of the claimed sheep to naturally
occurring sheep when determining that the claimed sheep was a product of nature
because it “does not possess ‘markedly different characteristics from any [farm
animals] found in nature.’” In re Roslin Institute (Edinburgh),
750 F.3d 1333, 1337, 110 USPQ2d 1668, 1671-72 (Fed. Cir. 2014) (quoting
Chakrabarty, 447 U.S. at 310, 206 USPQ at 197 (alterations in
original)).
This section sets forth guidelines for performing
the markedly different characteristics analysis, including information on when to
perform the analysis, and how to perform the analysis. Examiners should consult these
guidelines when performing an eligibility analysis of a claim that recites a
nature-based product limitation. Nature-based products, as used herein, include both
eligible and ineligible products and merely refer to the types of products subject to
the markedly different characteristics analysis used to identify product of nature
exceptions.
If the claim includes a nature-based product that has
markedly different characteristics, then the claim does not recite a product of
nature exception and is eligible (Step 2A: NO) at Pathway B unless the claim recites
another exception (such as a law of nature or abstract idea, or a different natural
phenomenon). For claims where the entire claim is a single nature-based product
(e.g., a claim to “a Lactobacillus bacterium”), once a markedly
different characteristic in that product is shown, no further analysis would be
necessary for eligibility because no product of nature exception is recited (i.e.,
Step 2B is not necessary because the answer to Step 2A is NO). For claims including
limitations in addition to the nature-based product, examiners should consider
whether the claim recites another exception and thus requires further eligibility
analysis.
If the claim includes a nature-based product that
does not exhibit markedly different characteristics from its naturally occurring
counterpart in its natural state, then the claim recites a “product of nature”
exception, and requires further analysis in Step 2A Prong Two to determine whether
the claim as a whole integrates the exception into a practical application.
I. WHEN TO PERFORM THE MARKEDLY
DIFFERENT CHARACTERISTICS ANALYSIS
Because a nature-based product can be claimed by
itself (e.g., “a Lactobacillus bacterium”)
or as one or more limitations of a claim (e.g., “a probiotic composition
comprising a mixture of Lactobacillus and milk in a
container”), care should be taken not to overly extend the markedly different
characteristics analysis to products that when viewed as a whole are not
nature-based. Instead, the markedly different characteristics analysis should be
applied only to the nature-based product limitations in the claim to determine
whether the nature-based products are “product of nature” exceptions.
Examiners should keep in mind that if the
nature-based product limitation is naturally occurring, there is no need to
perform the markedly different characteristics analysis because the limitation is
by definition directed to a naturally occurring product and thus falls under the
product of nature exception. However, if the nature-based product limitation is
not naturally occurring, for example due to some human intervention, then the
markedly different characteristics analysis must be performed to determine whether
the claimed product limitation is a product of nature exception.
A. Product Claims
Where the claim is to a nature-based product by
itself (e.g., a claim to “a Lactobacillus
bacterium”), the markedly different characteristics analysis should be applied
to the entire product. See, e.g., Chakrabarty, 447 U.S. at
305, 309-10, 206 USPQ at 195, 197-98 (applying analysis to entire claimed
“bacterium from the genus Pseudomonas containing therein at
least two stable energy-generating plasmids, each of said plasmids providing a
separate hydrocarbon degradative pathway”).
Where the claim is to a nature-based product
produced by combining multiple components (e.g., a claim to
“a probiotic composition comprising a mixture of
Lactobacillus and milk”), the markedly different
characteristics analysis should be applied to the resultant nature-based
combination, rather than its component parts. For instance, for the probiotic
composition example, the mixture of Lactobacillus and milk
should be analyzed for markedly different characteristics, rather than the
Lactobacillus separately and the milk separately. See
subsection II, below, for further guidance on the markedly different
characteristic analysis.
Where the claim is to a nature-based product
in combination with non-nature based elements (e.g., a claim
to “a yogurt starter kit comprising Lactobacillus in a
container with instructions for culturing Lactobacillus with
milk to produce yogurt”), the markedly different characteristics analysis
should be applied only to the nature-based product limitation. For instance,
for the yogurt starter kit example, the Lactobacillus would
be analyzed for markedly different characteristics. The container and
instructions would not be subject to the markedly different characteristics
analysis as they are not nature-based products, but would be evaluated as
additional elements in Prong Two (and Step 2B if needed) if it is determined
that the Lactobacillus does not have markedly different
characteristics from any naturally occurring counterpart and thus is a product
of nature exception. See, e.g., Funk Bros. Seed Co. v. Kalo Inoculant
Co., 333 U.S. 127, 130, 76 USPQ 280, 281 (1948) (although claims
7, 8, 13 and 14 recited an inoculant comprising a bacterial mixture and a
powder base, only the bacterial mixture was analyzed).
B. Product-by-Process Claims
For a product-by-process claim
(e.g., a claim to a cloned farm animal produced by a
nuclear transfer cloning method), the analysis turns on whether the
nature-based product in the claim has markedly different characteristics from
its naturally occurring counterpart. See MPEP § 2113
for more information on product-by-process claims.
C. Process Claims
For a process claim, the general rule is that
the claim is not subject to the markedly different analysis for nature-based
products used in the process. This is because the analysis of a process claim
should focus on the active steps of the process rather than the products used
in those steps. For example, when evaluating a claimed process of
cryopreserving hepatocyte cells comprising performing density gradient
fractionation to separate viable and non-viable hepatocytes, recovering the
viable hepatocytes, and cryopreserving the recovered viable hepatocytes, the
court did not subject the claim to the markedly different characteristics
analysis for the nature-based products (the hepatocytes) used in the process.
Rapid Litig. Mgmt. v. CellzDirect, Inc., 827 F.3d 1042,
1049, 119 USPQ2d 1370, 1374 (Fed. Cir. 2016) (claims are directed to a process
of creating a preparation of multi-cryopreserved hepatocytes, not to the
preparation itself).
However, in the limited situation where a
process claim reciting a nature-based product is drafted in such a way that
there is no difference in substance from a product claim, the claim is subject
to the markedly different analysis for the recited nature-based product. These
types of claims are drafted in a way that focuses on the product rather than
the process steps. For example, consider a claim that recites, in its entirety,
“a method of providing an apple.” Under the broadest reasonable interpretation,
this claim is focused on the apple fruit itself, which is a nature-based
product. Similarly, claims to detecting naturally occurring cell-free fetal DNA
(cffDNA) in maternal blood were held to be directed to the cffDNA, because the
“existence and location of cffDNA is a natural phenomenon [and thus]
identifying its presence was merely claiming the natural phenomena itself.”
Rapid Litig. Mgmt., 827 F.3d at 1048, 119 USPQ2d at 1374,
(explaining the holding in Ariosa Diagnostics, Inc. v.
Sequenom, 788 F.3d 1371, 115 USPQ2d 1152 (Fed. Cir. 2015)).
II. HOW TO PERFORM THE MARKEDLY
DIFFERENT CHARACTERISTICS ANALYSIS
The markedly different characteristics analysis
compares the nature-based product limitation to its naturally occurring
counterpart in its natural state. Markedly different characteristics can be
expressed as the product’s structure, function, and/or other properties, and are
evaluated based on what is recited in the claim on a case-by-case basis. If the
analysis indicates that a nature-based product limitation does not exhibit
markedly different characteristics, then that limitation is a product of nature
exception. If the analysis indicates that a nature-based product limitation does
have markedly different characteristics, then that limitation is not a product of
nature exception.
This section sets forth guidelines for performing
the markedly different characteristics analysis, including information on (a)
selecting the appropriate naturally occurring counterpart(s) to the nature-based
product limitation, (b) identifying appropriate characteristics for analysis, and
(c) evaluating characteristics to determine whether they are “markedly different”.
A. Selecting The Appropriate
Counterpart(s)
Because the markedly different characteristics
analysis compares the nature-based product limitation to its naturally
occurring counterpart in its natural state, the first step in the analysis is
to select the appropriate counterpart(s) to the nature-based product.
When the nature-based product is derived from
a naturally occurring thing, then the naturally occurring thing is the
counterpart. For example, assume that applicant claims deoxyacid A, which is a
chemical derivative of a naturally occurring chemical called acid A. Because
the inventor created the claimed nature-based product (deoxyacid A) by
modifying the naturally occurring acid A, the closest natural counterpart for
deoxyacid A would be the natural product from which it was derived,
i.e., acid A. See, e.g.,Chakrabarty, 447 U.S. at 305 and n.1, 206 USPQ at 195 and
n.1 (counterpart to genetically modified Pseudomonas
bacterium containing multiple plasmids is the naturally occurring unmodified
Pseudomonas bacterium from which the claimed bacterium
was created); Roslin, 750 F.3d at 1337, 110 USPQ2d at
1671-72 (counterparts to cloned sheep are naturally occurring sheep such as the
donor ewe from which the clone was created).
Although the selected counterpart should be in
its natural state, examiners should take care not to confuse the counterpart
with other material that may occur naturally with, or adjacent to, the
counterpart. For example, assume that applicant claims a nucleic acid having a
nucleotide sequence derived from naturally occurring gene B. Although gene B
occurs in nature as part of a chromosome, the closest natural counterpart for
the claimed nucleic acid is gene B, and not the whole chromosome. See,
e.g., Ass’n for Molecular Pathology v. Myriad Genetics,
Inc., 569 U.S. 576, 591-94, 106 USPQ2d 1972, 1979-81 (2013)
(comparing isolated BRCA1 genes and BRCA1 cDNA molecules to naturally occurring
BRCA1 gene); Roche Molecular System, Inc. v. CEPHEID, 905
F.3d 1363, 1371, 128 USPQ2d 1221, 1227 (Fed. Cir. 2018) (comparing claimed
primers to “their corresponding nucleotide sequences on the naturally occurring
DNA”). Similarly, assume that applicant claims a single-stranded piece of DNA
(a primer) having a nucleotide sequence derived from the sense strand of
naturally occurring nucleic acid C. Although nucleic acid C occurs in nature as
a double-stranded molecule having a sense and an antisense strand, the closest
natural counterpart for the claimed nucleic acid is the sense strand of C only.
See, e.g., University of Utah Research Foundation v. Ambry
Genetics, 774 F.3d 755, 760, 113 USPQ2d 1241, 1241 (Fed. Cir.
2014) (comparing single-stranded nucleic acid to the same strand found in
nature, even though “single-stranded DNA cannot be found in the human body”).
When there are multiple counterparts to the
nature-based product, the comparison should be made to the closest naturally
occurring counterpart. For example, assume that the inventor creates a cloned
sheep D by transferring nuclear DNA from a Finn-Dorset sheep into an egg cell
(which contains mitochondrial DNA) from a Scottish Blackface sheep. Applicant
then claims sheep D. Here, because sheep D was created via combining DNA from
two different naturally occurring sheep of different breeds, there is no single
closest natural counterpart. The examiner should therefore select the
counterpart most closely related to sheep D based on the examiner’s expertise
in the particular art. For the example discussed here, the closest counterparts
might be naturally occurring Finn-Dorset or Scottish Blackface sheep, as
opposed to sheep of a different breed such as Bighorn sheep. Cf.
Roslin, 750 F.3d at 1337, 110 USPQ2d at 1671-72 (claimed sheep
produced by nuclear transfer into an oocyte and subsequent manipulation of
natural embryonic development processes was compared to naturally occurring
sheep such as the donor ewe from which the nuclear material was obtained). When
the nature-based product is a combination produced from multiple components,
the closest counterpart may be the individual nature-based components of the
combination. For example, assume that applicant claims an inoculant comprising
a mixture of bacteria from different species, e.g., some
bacteria of species E and some bacteria of species F. Because there is no
counterpart mixture in nature, the closest counterparts to the claimed mixture
are the individual components of the mixture, i.e., each
naturally occurring species by itself. See, e.g., Funk
Bros., 333 U.S. at 130, 76 USPQ at 281 (comparing claimed mixture
of bacterial species to each species as it occurs in nature); Ambry
Genetics, 774 F.3d at 760, 113 USPQ2d at 1244 (although claimed as
a pair, individual primer molecules were compared to corresponding segments of
naturally occurring gene sequence); In re Bhagat, 726 Fed.
Appx. 772, 778-79 (Fed. Cir. 2018) (non-precedential) (comparing claimed
mixture of lipids with particular lipid profile to “naturally occurring lipid
profiles of walnut oil and olive oil”). See subsection II.C.
If the claim is rejected as ineligible, it is a
“best practice” for the examiner to identify the selected counterpart in the
Office action if the record is not already clear. This practice assists the
applicant in responding, and clarifies the record as to how the examiner is
interpreting the claim.
B. Identifying Appropriate Characteristics For
Analysis
Because the markedly different characteristics
analysis is based on comparing the characteristics of the claimed nature-based
product and its counterpart, the second step in the analysis is to identify
appropriate characteristics to compare.
Appropriate characteristics must be possessed
by the claimed product, because it is the claim that must define the invention
to be patented. Cf. Roslin, 750 F.3d at 1338, 110 USPQ2d at
1673 (unclaimed characteristics could not contribute to eligibility). Examiners
can identify the characteristics possessed by the claimed product by looking at
what is recited in the claim language and encompassed within the broadest
reasonable interpretation of the nature-based product. In some claims, a
characteristic may be explicitly recited. For example, in a claim to
“deoxyribose”, the recited chemical name informs those in the art of the
structural characteristics of the product (i.e., the “deoxy”
prefix indicates that a hydroxyl group has been removed as compared to ribose).
In other claims, the characteristic may be apparent from the broadest
reasonable interpretation even though it is not explicitly recited in the
claim. For example, in a claim to “isolated gene B,” the examiner would need to
rely on the broadest reasonable interpretation of “isolated gene B” to
determine what characteristics the isolated gene has, e.g.,
what its nucleotide sequence is, and what, if any, protein it encodes.
Appropriate characteristics can be expressed
as the nature-based product’s structure, function, and/or other properties, and
are evaluated on a case-by-case basis. Non-limiting examples of the types of
characteristics considered by the courts when determining whether there is a
marked difference include:
• Biological or pharmacological
functions or activities;
• Chemical and physical properties;
• Phenotype, including functional and
structural characteristics; and
• Structure and form, whether chemical,
genetic or physical.
Examples of biological or pharmacological
functions or activities include, but are not limited to:
i. the protein-encoding information of a
nucleic acid, Myriad, 569 U.S. at 590-91, 106 USPQ2d
at 1979;
ii. the ability of complementary nucleotide
sequences to bind to each other, Ambry Genetics, 774
F.3d at 760-61, 113 USPQ2d at 1244;
iii. the properties and functions of bacteria
such as the ability to infect certain leguminous plants, Funk
Bros., 333 U.S. at 130-31, 76 USPQ2d at 281-82;
iv. the ability to degrade certain
hydrocarbons, Diamond v. Chakrabarty, 447 U.S. at 310,
206 USPQ2d at 195; and
Examples of phenotypic characteristics include,
but are not limited to:
i. functional and structural characteristics
such as the shape, size, color, and behavior of an organism,
Roslin, 750 F.3d at 1338, 110 USPQ2d at 1672.
Examples of structure and form include, but are
not limited to:
i. physical structure or form such as the
physical presence of plasmids in a bacterial cell,
Chakrabarty, 447 U.S. at 305 and n.1, 206 USPQ2d at
195 and n.1;
ii. chemical structure and form such as a
chemical being a “nonsalt” and a “crystalline substance”,
Parke-Davis, 189 F. at 100, 103;
iii. genetic structure such as the nucleotide
sequence of DNA, Myriad, 569 U.S. at 590, 594-95, 106
USPQ2d at 1979, 1981; and
iv. the genetic makeup (genotype) of a cell
or organism, Roslin, 750 F.3d at 1338-39, 110 USPQ2d
at 1672-73.
C. Evaluating Characteristics To Determine Whether They Are “Markedly
Different”
The final step in the markedly different
characteristics analysis is to compare the characteristics of the claimed
nature-based product to its naturally occurring counterpart in its natural
state, in order to determine whether the characteristics of the claimed product
are markedly different. The courts have emphasized that to show a marked
difference, a characteristic must be changed as compared to nature, and cannot
be an inherent or innate characteristic of the naturally occurring counterpart
or an incidental change in a characteristic of the naturally occurring
counterpart. Myriad, 569 U.S. at 580, 106 USPQ2d at 1974-75.
Thus, in order to be markedly different, the inventor must have caused the
claimed product to possess at least one characteristic that is different from
that of the counterpart.
If there is no change in any characteristic,
the claimed product lacks markedly different characteristics, and is a product
of nature exception. If there is a change in at least one characteristic as
compared to the counterpart, and the change came about or was produced by the
inventor’s efforts or influences, then the change will generally be considered
a markedly different characteristic such that the claimed product is not a
product of nature exception.
1. Examples of Products Having Markedly Different
Characteristics
In Chakrabarty, the
Supreme Court identified a claimed bacterium as a nature-based product
having markedly different characteristics. This bacterium had a changed
functional characteristic, i.e., it was able to degrade
at least two different hydrocarbons as compared to naturally occurring
Pseudomonas bacteria that can only degrade a single
hydrocarbon. The claimed bacterium also had a different structural
characteristic, i.e., it was genetically modified to
include more plasmids than are found in a single naturally occurring
Pseudomonas bacterium. The Supreme Court considered
these changed characteristics to be “markedly different characteristics from
any found in nature” due to the additional plasmids and resultant capacity
for degrading multiple hydrocarbon components of oil. Therefore, the
bacterium was eligible. Diamond v. Chakrabarty, 447 U.S.
303, 310, 206 USPQ 193, 197 (1980).
In Myriad, the Supreme
Court identified a claimed full-length complementary DNA (cDNA) of the BRCA1
gene as a nature-based product having markedly different characteristics.
This claimed cDNA had the same functional characteristics (i.e., it encoded
the same protein) as the naturally occurring gene, but had a changed
structural characteristic, i.e., a different nucleotide
sequence containing only exons, as compared to the naturally occurring
sequence containing both exons and introns. The Supreme Court concluded that
the “cDNA retains the naturally occurring exons of DNA, but it is distinct
from the DNA from which it was derived. As a result, [this] cDNA is not a
‘product of nature’” and is eligible. Myriad, 569 U.S. at
595, 106 USPQ2d at 1981.
2. Examples of Products Lacking
Markedly Different Characteristics
In Myriad, the Supreme
Court made clear that not all changes in characteristics will rise to the
level of a marked difference, e.g., the incidental
changes resulting from isolation of a gene sequence are not enough to make
the isolated gene markedly different. Myriad, 569 U.S. at
580, 106 USPQ2d at 1974-75. The patentee in Myriad had
discovered the location of the BRCA1 and BRCA2 genes in the human genome,
and isolated them, i.e., separated those specific genes
from the rest of the chromosome on which they exist in nature. As a result
of their isolation, the isolated genes had a different structural
characteristic than the natural genes, i.e., the natural
genes had covalent bonds on their ends that connected them to the rest of
the chromosome, but the isolated genes lacked these bonds. However, the
claimed genes were otherwise structurally identical to the natural genes,
e.g., they had the same genetic structure and
nucleotide sequence as the BRCA genes in nature. The Supreme Court concluded
that these isolated but otherwise unchanged genes were not eligible, because
they were not different enough from what exists in nature to avoid
improperly tying up the future use and study of the naturally occurring BRCA
genes. See, e.g., Myriad, 569 U.S. at 585, 106 USPQ2d at
1977 (“Myriad's patents would, if valid, give it the exclusive right to
isolate an individual’s BRCA1 and BRCA2 genes … But isolation is necessary
to conduct genetic testing”) and 569 U.S. at 593, 106 USPQ2d at 1980
(describing how would-be infringers could not avoid the scope of Myriad’s
claims). In sum, the claimed genes were different, but not markedly
different, from their naturally occurring counterparts (the BRCA genes), and
thus were product of nature exceptions.
In Ambry Genetics, the
court identified claimed DNA fragments known as “primers” as products of
nature, because they lacked markedly different characteristics.
University of Utah Research Foundation v. Ambry Genetics
Corp., 774 F.3d 755, 113 USPQ2d 1241 (Fed. Cir. 2014). The
claimed primers were single-stranded pieces of DNA, each of which
corresponded to a naturally occurring double-stranded DNA sequence in or
near the BRCA genes. The patentee argued that these primers had markedly
different structural characteristics from the natural DNA, because the
primers were synthetically created and because “single-stranded DNA cannot
be found in the human body”. The court disagreed, concluding that the
primers’ structural characteristics were not markedly different than the
corresponding strands of DNA in nature, because the primers and their
counterparts had the same genetic structure and nucleotide sequence. 774
F.3d at 760, 113 USPQ2d at 1243-44. The patentee also argued that the
primers had a different function than when they are part of the DNA strand
because when isolated as a primer, a primer can be used as a starting
material for a DNA polymerization process. The court disagreed, because this
ability to serve as a starting material is innate to DNA itself, and was not
created or altered by the patentee:
In fact, the naturally occurring genetic
sequences at issue here do not perform a significantly new function.
Rather, the naturally occurring material is used to form the first step
in a chain reaction--a function that is performed because the primer
maintains the exact same nucleotide sequence as the relevant portion of
the naturally occurring sequence. One of the primary functions of DNA’s
structure in nature is that complementary nucleotide sequences bind to
each other. It is this same function that is exploited here--the primer
binds to its complementary nucleotide sequence. Thus, just as in nature,
primers utilize the innate ability of DNA to bind to itself.
Ambry Genetics, 774 F.3d at 760-61, 113 USPQ2d at 1244.
In sum, because the characteristics of the claimed primers were innate to
naturally occurring DNA, they lacked markedly different characteristics from
nature and were thus product of nature exceptions. A similar result was
reached in Marden, where the court held a claim to
ductile vanadium ineligible, because the “ductility or malleability of
vanadium is . . . one of its inherent characteristics and not a
characteristic given to it by virtue of a new combination with other
materials or which characteristic is brought about by some chemical reaction
or agency which changes its inherent characteristics”. In re
Marden, 47 F.2d 958, 959, 18 CCPA 1057, 1060, 8 USPQ 347, 349
(CCPA 1931).
In Roslin, the court
concluded that claimed clones of farm animals were products of nature,
because they lacked markedly different characteristics from the counterpart
farm animals found in nature. In re Roslin Institute
(Edinburgh), 750 F.3d 1333, 1337, 110 USPQ2d 1668, 1671 (Fed.
Cir. 2014). The inventor created its clones (which included the famous
cloned sheep named Dolly) by transferring the genetic material of a donor
into an oocyte (egg cell), letting the oocyte develop into an embryo, and
then implanting the embryo into a surrogate animal where it developed into a
baby animal. The applicant argued that the clones, including Dolly, were
eligible because they were created via human ingenuity, and had phenotypic
differences such as shape, size and behavior compared to their donors. The
court was unpersuaded, explaining that the clones were exact genetic
replicas of the donors and thus did not possess markedly different
characteristics. 750 F.3d at 1337, 110 USPQ2d at 1671-72 (“Roslin’s chief
innovation was the preservation of the donor DNA such that the clone is an
exact copy of the mammal from which the somatic cell was taken. Such a copy
is not eligible for patent protection.”). The court noted that the alleged
phenotypic differences (e.g., the fact that Dolly may
have been taller or heavier than her donor) could not make the clones
markedly different because these differences were not claimed. 750 F.3d at
1338, 110 USPQ2d at 1672. See also Roche Molecular System, Inc. v.
CEPHEID, 905 F.3d 1363, 1370, 128 USPQ2d 1221, 1226 (Fed. Cir.
2018) (alleged structural differences between linear primers and their
counterparts on a circular chromosome were neither claimed nor relevant to
the eligibility inquiry).
2106.04(d) Integration of a Judicial Exception Into A
Practical Application [R-07.2022]
The Supreme Court has long distinguished between
principles themselves (which are not patent eligible) and the integration of those
principles into practical applications (which are patent eligible). See,
e.g., Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 80, 84, 101 USPQ2d 1961, 1968-69, 1970 (2012) (noting that the Court in
Diamond v. Diehr found ‘‘the overall process patent eligible
because of the way the additional steps of the process integrated the equation into
the process as a whole,’’ but the Court in Gottschalk v. Benson
‘‘held that simply implementing a mathematical principle on a physical machine,
namely a computer, was not a patentable application of that principle’’). Similarly,
in a growing body of decisions, the Federal Circuit has distinguished between claims
that are ‘‘directed to’’ a judicial exception (which require further analysis to
determine their eligibility) and those that are not (which are therefore patent
eligible), e.g., claims that improve the functioning of a computer
or other technology or technological field. See Diamond v. Diehr,
450 U.S. 175, 209 USPQ 1 (1981); Gottschalk v. Benson, 409 U.S.
63, 175 USPQ 673 (1972). See, e.g., MPEP §
2106.06(b) (summarizing Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 118 USPQ2d 1684 (Fed. Cir. 2016), McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 120 USPQ2d 1091
(Fed. Cir. 2016), and other cases that were eligible as improvements to technology or
computer functionality instead of being directed to abstract ideas).
Accordingly, after determining that a claim recites a
judicial exception in Step 2A Prong One, examiners should evaluate whether the claim
as a whole integrates the recited judicial exception into a practical application of
the exception in Step 2A Prong Two. A claim that integrates a judicial exception into
a practical application will apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that the claim
is more than a drafting effort designed to monopolize the judicial exception. Whether
or not a claim integrates a judicial exception into a practical application is
evaluated using the considerations set forth in subsection I below, in accordance
with the procedure described below in subsection II.
In the context of the flowchart in
MPEP §
2106, subsection III, Step 2A Prong Two determines
whether:
• The claim as a whole integrates the judicial
exception into a practical application, in which case the claim is not directed
to a judicial exception (Step 2A: NO) and is eligible at Pathway B. This
concludes the eligibility analysis.
• The claim as a whole does not integrate the
exception into a practical application, in which case the claim is directed to
the judicial exception (Step 2A: YES), and requires further analysis under Step
2B (where it may still be eligible if it amounts to an inventive concept). See
MPEP § 2106.05 for discussion of Step 2B.
The Supreme Court and Federal Circuit have
identified a number of considerations as relevant to the evaluation of whether the
claimed additional elements demonstrate that a claim is directed to
patent-eligible subject matter. The list of considerations here is not intended to
be exclusive or limiting. Additional elements can often be analyzed based on more
than one type of consideration and the type of consideration is of no import to
the eligibility analysis. Additional discussion of these considerations, and how
they were applied in particular judicial decisions, is provided in
MPEP § 2106.05(a) through (c) and MPEP §
2106.05(e) through (h).
Limitations the courts have found indicative that
an additional element (or combination of elements) may have integrated the
exception into a practical application include:
• An improvement in the functioning of a
computer, or an improvement to other technology or technical field, as
discussed in MPEP §§ 2106.04(d)(1) and
2106.05(a);
• Applying or using a judicial exception to
effect a particular treatment or prophylaxis for a disease or medical
condition, as discussed in MPEP §
2106.04(d)(2);
• Implementing a judicial exception with, or
using a judicial exception in conjunction with, a particular machine or
manufacture that is integral to the claim, as discussed in
MPEP § 2106.05(b);
• Effecting a transformation or reduction of
a particular article to a different state or thing, as discussed in
MPEP § 2106.05(c); and
• Applying or using the judicial exception
in some other meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception, as discussed in MPEP §
2106.05(e).
The courts have also identified limitations that
did not integrate a judicial exception into a practical application:
• Merely reciting the words “apply it” (or
an equivalent) with the judicial exception, or merely including instructions
to implement an abstract idea on a computer, or merely using a computer as a
tool to perform an abstract idea, as discussed in MPEP §
2106.05(f);
• Adding insignificant extra-solution
activity to the judicial exception, as discussed in MPEP §
2106.05(g); and
• Generally linking the use of a judicial
exception to a particular technological environment or field of use, as
discussed in MPEP § 2106.05(h).
Step 2A Prong Two is similar to Step 2B in that
both analyses involve evaluating a set of judicial considerations to determine if
the claim is eligible. See MPEP §§ 2106.05(a) through
(h) for the list of considerations that are evaluated
at Step 2B. Although most of these considerations overlap (i.e., they are
evaluated in both Step 2A Prong Two and Step 2B), Step 2A specifically excludes
consideration of whether the additional elements represent well-understood,
routine, conventional activity. Accordingly, in Step 2A Prong Two, examiners
should ensure that they give weight to all additional elements, whether or not
they are conventional, when evaluating whether a judicial exception has been
integrated into a practical application. Additional elements that represent
well-understood, routine, conventional activity may integrate a recited judicial
exception into a practical application.
It is notable that mere physicality or tangibility
of an additional element or elements is not a relevant consideration in Step 2A
Prong Two. As the Supreme Court explained in Alice Corp., mere
physical or tangible implementation of an exception does not guarantee
eligibility. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S.
208, 224, 110 USPQ2d 1976, 1983-84 (2014) (“The fact that a computer ‘necessarily
exist[s] in the physical, rather than purely conceptual, realm,’ is beside the
point”). See also Genetic Technologies Ltd. v. Merial LLC, 818
F.3d 1369, 1377, 118 USPQ2d 1541, 1547 (Fed. Cir. 2016) (steps of DNA
amplification and analysis are not “sufficient” to render claim 1 patent eligible
merely because they are physical steps). Conversely, the presence of a
non-physical or intangible additional element does not doom the claims, because
tangibility is not necessary for eligibility under the
Alice/Mayo test. Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 118 USPQ2d 1684 (Fed. Cir. 2016) (“that the
improvement is not defined by reference to ‘physical’ components does not doom the
claims”). See also McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1315, 120 USPQ2d 1091, 1102 (Fed. Cir. 2016), (holding that a
process producing an intangible result (a sequence of synchronized, animated
characters) was eligible because it improved an existing technological
process).
In addition, a specific way of achieving a result
is not a stand-alone consideration in Step 2A Prong Two. However, the specificity
of the claim limitations is relevant to the evaluation of several considerations
including the use of a particular machine, particular transformation and whether
the limitations are mere instructions to apply an exception. See
MPEP §§ 2106.05(b), 2106.05(c), and 2106.05(f). For example, in Parker v.
Flook, 437 U.S. 584, 198 USPQ 193 (1978), the Supreme Court noted
that the “patent application does not purport to explain how to select the
appropriate margin of safety, the weighting factor, or any of the other variables”
in the claimed mathematical formula, “[n]or does it purport to contain any
disclosure relating to the chemical processes at work, the monitoring of process
variables, or the means of setting off an alarm or adjusting an alarm system.” 437
U.S. at 586, 198 USPQ at 195. The Court found this failure to explain any
specifics of how to use the claimed formula informative when deciding that the
additional elements in the claim were insignificant post-solution activity and
thus not meaningful enough to render the claim eligible. 437 U.S. at 589-90, 198
USPQ at 197.
II. HOW TO EVALUATE WHETHER THE
ADDITIONAL ELEMENTS INTEGRATE THE JUDICIAL EXCEPTION INTO A PRACTICAL
APPLICATION
The analysis under Step 2A Prong Two is the same
for all claims reciting a judicial exception, whether the exception is an abstract
idea, a law of nature, or a natural phenomenon (including products of nature).
Examiners evaluate integration into a practical application by: (1) identifying
whether there are any additional elements recited in the claim beyond the judicial
exception(s); and (2) evaluating those additional elements individually and in
combination to determine whether they integrate the exception into a practical
application, using one or more of the considerations introduced in subsection I
supra, and discussed in more detail in MPEP §§
2106.04(d)(1), 2106.04(d)(2), 2106.05(a) through (c) and 2106.05(e) through (h).
Many of these considerations overlap, and often
more than one consideration is relevant to analysis of an additional element. Not
all considerations will be relevant to every element, or every claim. Because the
evaluation in Prong Two is not a weighing test, it is not important how the
elements are characterized or how many considerations apply from the list. It is
important to evaluate the significance of the additional elements relative to the
invention, and to keep in mind the ultimate question of whether the exception is
integrated into a practical application. If the claim as a whole integrates the
judicial exception into a practical application based upon evaluation of these
considerations, the additional limitations impose a meaningful limit on the
judicial exception and the claim is eligible at Step 2A.
Examiners should examine each claim for
eligibility separately, based on the particular elements recited therein. Claims
should not be judged to automatically stand or fall with similar claims in an
application. For instance, one claim may be ineligible because it is directed to a
judicial exception without amounting to significantly more, but another claim
dependent on the first may be eligible because it recites additional elements that
do amount to significantly more, or that integrate the exception into a practical
application.
For more information on how to evaluate claims
reciting multiple judicial exceptions, see MPEP §
2106.04, subsection II.B.
III. EXAMPLES OF HOW THE OFFICE
EVALUATES WHETHER THE CLAIM AS A WHOLE INTEGRATES THE JUDICIAL EXCEPTION INTO A
PRACTICAL APPLICATION
The Prong Two analysis considers the claim as a
whole. That is, the limitations containing the judicial exception as well as the
additional elements in the claim besides the judicial exception need to be
evaluated together to determine whether the claim integrates the judicial
exception into a practical application. Because a judicial exception alone is not
eligible subject matter, if there are no additional claim elements besides the
judicial exception, or if the additional claim elements merely recite another
judicial exception, that is insufficient to integrate the judicial exception into
a practical application. However, the way in which the additional elements use or
interact with the exception may integrate it into a practical application.
Accordingly, the additional limitations should not be evaluated in a vacuum,
completely separate from the recited judicial exception. Instead, the analysis
should take into consideration all the claim limitations and how those limitations
interact and impact each other when evaluating whether the exception is integrated
into a practical application.
Two examples of how the Office evaluates whether
the claim as a whole integrates the recited judicial exception into a practical
application are provided. In Solutran, Inc. v. Elavon, Inc.,
931 F.3d 1161, 2019 USPQ2d 281076 (Fed. Cir. 2019), the claims were to methods for
electronically processing paper checks, all of which contained limitations setting
forth receiving merchant transaction data from a merchant, crediting a merchant’s
account, and receiving and scanning paper checks after the merchant’s account is
credited. In part one of the Alice/Mayo test, the Federal
Circuit determined that the claims were directed to the abstract idea of crediting
the merchant’s account before the paper check is scanned. The court first
determined that the recited limitations of “crediting a merchant’s account as
early as possible while electronically processing a check” is a “long-standing
commercial practice” like in Alice and
Bilski. 931 F.3d at 1167, 2019 USPQ2d 281076, at *5 (Fed.
Cir. 2019). The Federal Circuit then continued with its analysis under part one of
the Alice/Mayo test finding that the claims are not directed to
an improvement in the functioning of a computer or an improvement to another
technology. In particular, the court determined that the claims “did not improve
the technical capture of information from a check to create a digital file or the
technical step of electronically crediting a bank account” nor did the claims
“improve how a check is scanned.” Id. This analysis is
equivalent to the Office’s analysis of determining that the exception is not
integrated into a practical application at Step 2A Prong Two, and thus that the
claims are directed to the judicial exception (Step 2A: YES).
In Finjan Inc. v. Blue Coat Systems,
Inc., 879 F.3d 1299, 125 USPQ2d 1282 (Fed. Cir. 2018), the claimed
invention was a method of virus scanning that scans an application program,
generates a security profile identifying any potentially suspicious code in the
program, and links the security profile to the application program. 879 F.3d at
1303-04, 125 USPQ2d at 1285-86. The Federal Circuit noted that the recited virus
screening was an abstract idea, and that merely performing virus screening on a
computer does not render the claim eligible. 879 F.3d at 1304, 125 USPQ2d at 1286.
The court then continued with its analysis under part one of the
Alice/Mayo test by reviewing the patent’s specification,
which described the claimed security profile as identifying both hostile and
potentially hostile operations. The court noted that the security profile thus
enables the invention to protect the user against both previously unknown viruses
and “obfuscated code,” as compared to traditional virus scanning, which only
recognized the presence of previously-identified viruses. The security profile
also enables more flexible virus filtering and greater user customization. 879
F.3d at 1304, 125 USPQ2d at 1286. The court identified these benefits as improving
computer functionality, and verified that the claims recite additional elements
(e.g., specific steps of using the security profile in a
particular way) that reflect this improvement. Accordingly, the court held the
claims eligible as not being directed to the recited abstract idea. 879 F.3d at
1304-05, 125 USPQ2d at 1286-87. This analysis is equivalent to the Office’s
analysis of determining that the additional elements integrate the judicial
exception into a practical application at Step 2A Prong Two, and thus that the
claims were not directed to the judicial exception (Step 2A: NO).
2106.04(d)(1) Evaluating Improvements in the
Functioning of a Computer, or an Improvement to Any Other Technology or Technical
Field in Step 2A Prong Two [R-10.2019]
A claim reciting a judicial exception is not
directed to the judicial exception if it also recites additional elements
demonstrating that the claim as a whole integrates the exception into a practical
application. One way to demonstrate such integration is when the claimed invention
improves the functioning of a computer or improves another technology or technical
field. The application or use of the judicial exception in this manner
meaningfully limits the claim by going beyond generally linking the use of the
judicial exception to a particular technological environment, and thus transforms
a claim into patent-eligible subject matter. Such claims are eligible at Step 2A
because they are not “directed to” the recited judicial exception.
The courts have not provided an explicit test for
this consideration, but have instead illustrated how it is evaluated in numerous
decisions. These decisions, and a detailed explanation of how examiners should
evaluate this consideration are provided in MPEP §
2106.05(a). In short, first the specification should be
evaluated to determine if the disclosure provides sufficient details such that one
of ordinary skill in the art would recognize the claimed invention as providing an
improvement. The specification need not explicitly set forth the improvement, but
it must describe the invention such that the improvement would be apparent to one
of ordinary skill in the art. Conversely, if the specification explicitly sets
forth an improvement but in a conclusory manner (i.e., a bare
assertion of an improvement without the detail necessary to be apparent to a
person of ordinary skill in the art), the examiner should not determine the claim
improves technology. Second, if the specification sets forth an improvement in
technology, the claim must be evaluated to ensure that the claim itself reflects
the disclosed improvement. That is, the claim includes the components or steps of
the invention that provide the improvement described in the specification. The
claim itself does not need to explicitly recite the improvement described in the
specification (e.g., “thereby increasing the bandwidth of the
channel”).
While the courts usually evaluate “improvements” as
part of the “directed to” inquiry in part one of the Alice/Mayo
test (equivalent to Step 2A), they have also performed this evaluation in part two
of the Alice/Mayo test (equivalent to Step 2B). See,
e.g., BASCOM Global Internet v. AT&T Mobility LLC, 827
F.3d 1341, 1349-50, 119 USPQ2d 1236, 1241-42 (Fed. Cir. 2016). However, the
improvement analysis at Step 2A Prong Two differs in some respects from the
improvements analysis at Step 2B. Specifically, the “improvements” analysis in
Step 2A determines whether the claim pertains to an improvement to the functioning
of a computer or to another technology without reference to what is
well-understood, routine, conventional activity. 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. It should be
noted that while this consideration is often referred to in an abbreviated manner
as the “improvements consideration,” the word “improvements” in the context of
this consideration is limited to improvements to the functioning of a computer or
any other technology/technical field, whether in Step 2A Prong Two or in Step
2B.
Examples of claims that improve technology and are
not directed to a judicial exception include: Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1339, 118 USPQ2d 1684, 1691-92 (Fed. Cir. 2016)
(claims to a self-referential table for a computer database were directed to an
improvement in computer capabilities and not directed to an abstract idea);
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1315, 120 USPQ2d 1091, 1102-03 (Fed. Cir. 2016) (claims to automatic lip
synchronization and facial expression animation were directed to an improvement in
computer-related technology and not directed to an abstract idea); Visual
Memory LLC v. NVIDIA Corp., 867 F.3d 1253,1259-60, 123 USPQ2d 1712,
1717 (Fed. Cir. 2017) (claims to an enhanced computer memory system were directed
to an improvement in computer capabilities and not an abstract idea);
Finjan Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 125
USPQ2d 1282 (Fed. Cir. 2018) (claims to virus scanning were found to be an
improvement in computer technology and not directed to an abstract idea);
SRI Int’l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1303
(Fed. Cir. 2019) (claims to detecting suspicious activity by using network
monitors and analyzing network packets were found to be an improvement in computer
network technology and not directed to an abstract idea). Additional examples are
provided in MPEP § 2106.05(a).
A claim reciting a judicial exception is not
directed to the judicial exception if it also recites additional element(s)
demonstrating that the claim as a whole integrates the exception into a practical
application. One way to demonstrate such integration is when the additional
elements apply or use the recited judicial exception to effect a particular
treatment or prophylaxis for a disease or medical condition. The application or
use of the judicial exception in this manner meaningfully limits the claim by
going beyond generally linking the use of the judicial exception to a particular
technological environment, and thus transforms a claim into patent-eligible
subject matter. Such claims are eligible at Step 2A, because they are not
“directed to” the recited judicial exception.
The particular treatment or prophylaxis
consideration originated as part of the other meaningful limitations consideration
discussed in MPEP § 2106.05(e) and shares the
same legal basis in Supreme Court jurisprudence as that consideration. However,
recent jurisprudence has provided additional guidance that is especially relevant
to only a subset of claims, thus warranting the elevation of the particular
treatment or prophylaxis consideration to become a stand-alone consideration in
the Step 2A Prong Two analysis. Vanda Pharm. Inc. v. West-Ward Pharm.
Int’l Ltd., 887 F.3d 1117, 126 USPQ2d 1266 (Fed. Cir. 2018). The
claims in Vanda recited a method of treating a patient having
schizophrenia with iloperidone, a drug known to cause QTc prolongation (a
disruption of the heart’s normal rhythm that can lead to serious health problems)
in patients having a particular genotype associated with poor drug metabolism. 887
F.3d at 1121, 126 USPQ2d at 1269-70. In particular, the claims recited steps of:
(1) performing a genotyping assay to determine if a patient has a genotype
associated with poor drug metabolism; and (2) administering iloperidone to the
patient in a dose range that depends on the patient’s genotype.
Id. Although Vanda’s claims recited a law
of nature (the naturally occurring relationship between the patient’s genotype and
the risk of QTc prolongation) like the claims in Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 101 USPQ2d 1961
(2012), the Federal Circuit distinguished them from the Mayo
claims based on the differences in the administration steps. In particular, the
court explained that Mayo’s step of administering a drug to a
patient was performed in order to gather data about the recited laws of nature,
and this step was thus ancillary to the overall diagnostic focus of the claims.
887 F.3d at 1134-35, 126 USPQ2d at 1280. In contrast, Vanda’s
claims used the recited law of nature to more safely treat the patients with the
drug, thereby reducing the patient’s risk of QTc prolongation. 887 F.3d at 1135,
126 USPQ2d at 1280. Accordingly, the court held Vanda’s claims
eligible at the first part of the Alice/Mayo test (Step 2A)
because the claims were not “directed to” the recited judicial exception. 887 F.3d
at 1136, 126 USPQ2d at 1281.
Examiners should keep in mind that in order to
qualify as a “treatment” or “prophylaxis” limitation for purposes of this
consideration, the claim limitation in question must affirmatively recite an
action that effects a particular treatment or prophylaxis for a disease or medical
condition. An example of such a limitation is a step of “administering amazonic
acid to a patient” or a step of “administering a course of plasmapheresis to a
patient.” If the limitation does not actually provide a treatment or prophylaxis,
e.g., it is merely an intended use of the claimed invention
or a field of use limitation, then it cannot integrate a judicial exception under
the “treatment or prophylaxis” consideration. For example, a step of “prescribing
a topical steroid to a patient with eczema” is not a positive limitation because
it does not require that the steroid actually be used by or on the patient, and a
recitation that a claimed product is a “pharmaceutical composition” or that a
“feed dispenser is operable to dispense a mineral supplement” are not affirmative
limitations because they are merely indicating how the claimed invention might be
used.
When determining whether a claim applies or uses a
recited judicial exception to effect a particular treatment or prophylaxis for a
disease or medical condition, the following factors are relevant.
a. The Particularity Or Generality Of The
Treatment Or Prophylaxis
The treatment or prophylaxis limitation must
be “particular,” i.e., specifically identified so that it
does not encompass all applications of the judicial exception(s). For
example, consider a claim that recites mentally analyzing information to
identify if a patient has a genotype associated with poor metabolism of beta
blocker medications. This falls within the mental process grouping of
abstract ideas enumerated in MPEP §
2106.04(a). The claim also recites “administering
a lower than normal dosage of a beta blocker medication to a patient
identified as having the poor metabolizer genotype.” This administration
step is particular, and it integrates the mental analysis step into a
practical application. Conversely, consider a claim that recites the same
abstract idea and “administering a suitable medication to a patient.” This
administration step is not particular, and is instead merely instructions to
“apply” the exception in a generic way. Thus, the administration step does
not integrate the mental analysis step into a practical application.
Examiners may find it helpful to evaluate
other considerations such as the mere instructions to apply an exception
consideration (see MPEP § 2106.05(f)), and the
field of use and technological environment consideration (see
MPEP § 2106.05(h)), when
making a determination of whether a treatment or prophylaxis limitation is
particular or general.
b. Whether The Limitation(s) Have More
Than A Nominal Or Insignificant Relationship To The
Exception(s)
The treatment or prophylaxis limitation must
have more than a nominal or insignificant relationship to the exception(s).
For example, consider a claim that recites a natural correlation (law of
nature) between blood glucose levels over 250 mg/dl and the risk of
developing ketoacidosis (a life-threatening medical condition). The claim
also recites "treating a patient having a blood glucose level over 250 mg/dl
with insulin”. Insulin acts to lower blood glucose levels, and administering
insulin to a patient will reduce the patient’s blood glucose level, thereby
lowering the risk that the patient will develop ketoacidosis. Thus, in the
context of this claim, the administration step is significantly related to
the recited correlation between high blood glucose levels and the risk of
ketoacidosis. Because insulin is also a “particular” treatment, this
administration step integrates the law of nature into a practical
application. Alternatively, consider a claim that recites the same law of
nature and also recites “treating a patient having a blood glucose level
over 250 mg/dl with aspirin.” Aspirin is not known in the art as a treatment
for ketoacidosis or diabetes, although some patients with diabetes may be on
aspirin therapy for other medical reasons (e.g., to
control pain or inflammation, or to prevent blood clots). In the context of
this claim and the recited correlation between high blood glucose levels and
the risk of ketoacidosis, administration of aspirin has at best a nominal
connection to the law of nature, because aspirin does not treat or prevent
ketoacidosis. This step therefore does not apply or use the exception in any
meaningful way. Thus, this step of administering aspirin does not integrate
the law of nature into a practical application.
Examiners may find it helpful to evaluate
other considerations such as the insignificant extra-solution activity
consideration (see MPEP § 2106.05(g)), and the
field of use and technological environment consideration (see
MPEP § 2106.05(h)), when
making a determination of whether a treatment or prophylaxis limitation has
more than a nominal or insignificant relationship to the exception(s).
c. Whether The Limitation(s) Are Merely
Extra-Solution Activity Or A Field Of Use
The treatment or prophylaxis limitation must
impose meaningful limits on the judicial exception, and cannot be
extra-solution activity or a field-of-use. For example, consider a claim
that recites (a) administering rabies and feline leukemia vaccines to a
first group of domestic cats in accordance with different vaccination
schedules, and (b) analyzing information about the vaccination schedules and
whether the cats later developed chronic immune-mediated disorders to
determine a lowest-risk vaccination schedule. Step (b) falls within the
mental process grouping of abstract ideas enumerated in
MPEP § 2106.04(a). While
step (a) administers vaccines to the cats, this administration is performed
in order to gather data for the mental analysis step, and is a necessary
precursor for all uses of the recited exception. It is thus extra-solution
activity, and does not integrate the judicial exception into a practical
application. Conversely, consider a claim reciting the same steps (a) and
(b), but also reciting step (c) “vaccinating a second group of domestic cats
in accordance with the lowest-risk vaccination schedule.” Step (c) applies
the exception, in that the information from the mental analysis in step (b)
is used to alter the order and timing of the vaccinations so that the second
group of cats has a lower risk of developing chronic immune-mediated
disorders. Step (c) thus integrates the abstract idea into a practical
application.
Examiners may find it helpful to evaluate
other considerations such as the insignificant extra-solution activity
consideration (see MPEP § 2106.05(g)), and the
field of use and technological environment consideration (see
MPEP § 2106.05(h)), when
making a determination of whether a treatment or prophylaxis limitation is
merely extra-solution activity or a field of use.
An inventive concept “cannot be furnished by the
unpatentable law of nature (or natural phenomenon or abstract idea) itself.”
Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d
1541, 1546 (Fed. Cir. 2016). See also Alice Corp., 573 U.S. at
21-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 78, 101 USPQ2d
at 1968 (after determining that a claim is directed to a judicial exception, “we then
ask, ‘[w]hat else is there in the claims before us?”) (emphasis added));
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122
USPQ2d 1377 (Fed. Cir. 2017) (“Adding one abstract idea (math) to another abstract
idea (encoding and decoding) does not render the claim non-abstract”). Instead, an
“inventive concept” is furnished by an element or combination of elements that is
recited in the claim in addition to (beyond) the judicial exception, and is
sufficient to ensure that the claim as a whole amounts to significantly more than the
judicial exception itself. Alice Corp., 573 U.S. at 27-18, 110
USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at
1966).
Evaluating additional elements to determine whether
they amount to an inventive concept requires considering them both individually and
in combination to ensure that they amount to significantly more than the judicial
exception itself. Because this approach considers all claim elements, the Supreme
Court has noted that “it is consistent with the general rule that patent claims ‘must
be considered as a whole.’” Alice Corp., 573 U.S. at 218 n.3, 110
USPQ2d at 1981 (quoting Diamond v. Diehr, 450 U.S. 175, 188, 209
USPQ 1, 8-9 (1981)). Consideration of the elements in combination is particularly
important, because even if an additional element does not amount to significantly
more on its own, it can still amount to significantly more when considered in
combination with the other elements of the claim. See, e.g., Rapid Litig.
Mgmt. v. CellzDirect, 827 F.3d 1042, 1051, 119 USPQ2d 1370, 1375 (Fed.
Cir. 2016) (process reciting combination of individually well-known freezing and
thawing steps was “far from routine and conventional” and thus eligible);
BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827
F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) (inventive concept may be
found in the non-conventional and non-generic arrangement of components that are
individually well-known and conventional).
Although the courts often evaluate considerations such
as the conventionality of an additional element in the eligibility analysis, the
search for an inventive concept should not be confused with a novelty or
non-obviousness determination. See Mayo, 566 U.S. at 91, 101
USPQ2d at 1973 (rejecting “the Government’s invitation to substitute
§§
102, 103, and 112
inquiries for the better established inquiry under § 101”). As
made clear by the courts, the “‘novelty’ of any element or steps in a process, or
even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Intellectual Ventures I
v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir.
2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at
9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) (“a claim for a
new abstract idea is still an abstract idea.
The search for a §
101 inventive concept is thus distinct from demonstrating
§
102 novelty.”). In addition, the search for an inventive
concept is different from an obviousness analysis under 35 U.S.C.
103. See, e.g., BASCOM Global Internet v. AT&T
Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir.
2016) (“The inventive concept inquiry requires more than recognizing that each claim
element, by itself, was known in the art. . . . [A]n inventive concept can be found
in the non-conventional and non-generic arrangement of known, conventional pieces.”).
Specifically, lack of novelty under 35 U.S.C. 102 or obviousness
under 35
U.S.C. 103 of a claimed invention does not necessarily indicate
that additional elements are well-understood, routine, conventional elements. Because
they are separate and distinct requirements from eligibility, patentability of the
claimed invention under 35 U.S.C. 102 and
103 with respect to the prior art is neither required for, nor
a guarantee of, patent eligibility under 35 U.S.C. 101. The distinction
between eligibility (under 35 U.S.C. 101) and patentability
over the art (under 35 U.S.C. 102 and/or
103) is further discussed in MPEP §
2106.05(d).
The Supreme Court has identified a number of
considerations as relevant to the evaluation of whether the claimed additional
elements amount to an inventive concept. The list of considerations here is not
intended to be exclusive or limiting. Additional elements can often be analyzed
based on more than one type of consideration and the type of consideration is of
no import to the eligibility analysis. Additional discussion of these
considerations, and how they were applied in particular judicial decisions, is
provided in in MPEP § 2106.05(a) through (h).
Limitations that the courts have found to qualify
as “significantly more” when recited in a claim with a judicial exception include:
ii. Improvements to any other technology or
technical field, e.g., a modification of conventional
rubber-molding processes to utilize a thermocouple inside the mold to
constantly monitor the temperature and thus reduce under- and over-curing
problems common in the art, as discussed in Diamond v.
Diehr, 450 U.S. 175, 191-92, 209 USPQ 1, 10 (1981) (see
MPEP § 2106.05(a));
iii. Applying the judicial exception with, or by
use of, a particular machine, e.g., a Fourdrinier machine
(which is understood in the art to have a specific structure comprising a
headbox, a paper-making wire, and a series of rolls) that is arranged in a
particular way to optimize the speed of the machine while maintaining
quality of the formed paper web, as discussed in Eibel Process Co.
v. Minn. & Ont. Paper Co., 261 U.S. 45, 64-65 (1923) (see
MPEP § 2106.05(b));
iv. Effecting a transformation or reduction of a
particular article to a different state or thing, e.g., a
process that transforms raw, uncured synthetic rubber into precision-molded
synthetic rubber products, as discussed in Diehr, 450
U.S. at 184, 209 USPQ at 21 (see MPEP §
2106.05(c));
Limitations that the courts have found not to be
enough to qualify as “significantly more” when recited in a claim with a judicial
exception include:
i. Adding the words “apply it” (or an
equivalent) with the judicial exception, or mere instructions to implement
an abstract idea on a computer, e.g., a limitation
indicating that a particular function such as creating and maintaining
electronic records is performed by a computer, as discussed in
Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984
(see MPEP § 2106.05(f));
ii. Simply appending well-understood, routine,
conventional activities previously known to the industry, specified at a
high level of generality, to the judicial exception,
e.g., a claim to an abstract idea requiring no more
than a generic computer to perform generic computer functions that are
well-understood, routine and conventional activities previously known to the
industry, as discussed in Alice Corp., 573 U.S. at 225,
110 USPQ2d at 1984 (see MPEP §
2106.05(d));
iii. Adding insignificant extra-solution activity
to the judicial exception, e.g., mere data gathering in
conjunction with a law of nature or abstract idea such as a step of
obtaining information about credit card transactions so that the information
can be analyzed by an abstract mental process, as discussed in
CyberSource v. Retail Decisions, Inc., 654 F.3d 1366,
1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) (see MPEP §
2106.05(g)); or
iv. Generally linking the use of the judicial
exception to a particular technological environment or field of use,
e.g., a claim describing how the abstract idea of
hedging could be used in the commodities and energy markets, as discussed in
Bilski v. Kappos, 561 U.S. 593, 595, 95 USPQ2d 1001,
1010 (2010) or a claim limiting the use of a mathematical formula to the
petrochemical and oil-refining fields, as discussed in Parker v.
Flook, 437 U.S. 584, 588-90, 198 USPQ 193, 197-98 (1978)
(MPEP § 2106.05(h)).
It is notable that mere physicality or tangibility
of an additional element or elements is not a relevant consideration in Step 2B.
As the Supreme Court explained in Alice Corp., mere physical or
tangible implementation of an exception is not in itself an inventive concept and
does not guarantee eligibility:
The fact that a computer “necessarily exist[s]
in the physical, rather than purely conceptual, realm,” is beside the point.
There is no dispute that a computer is a tangible system (in § 101
terms, a “machine”), or that many computer-implemented claims are formally
addressed to patent-eligible subject matter. But if that were the end of the
§
101 inquiry, an applicant could claim any principle of
the physical or social sciences by reciting a computer system configured to
implement the relevant concept. Such a result would make the determination of
patent eligibility “depend simply on the draftsman’s art,” Flook,
supra, at 593, 98 S. Ct. 2522, 57 L. Ed. 2d 451, thereby
eviscerating the rule that “‘[l]aws of nature, natural phenomena, and abstract
ideas are not patentable,’” Myriad, 133 S. Ct. 1289, 186 L.
Ed. 2d 124, 133).
Alice Corp. provides an example
of how courts conduct the significantly more analysis. In this case, the Supreme
Court analyzed claims to computer systems, computer readable media, and
computer-implemented methods, all of which described a scheme for mitigating
“settlement risk,” which is the risk that only one party to an agreed-upon
financial exchange will satisfy its obligation. In part one of the
Alice/Mayo test, the Court determined that the claims were
directed to the abstract idea of mitigating settlement risk. Alice
Corp., 573 U.S. at 221, 110 USPQ2d at 1982. The Court then walked
through part two of the Alice/Mayo test, in which:
• The Court identified the additional
elements in the claim, e.g., by noting that the method
claims recited steps of using a computer to “create electronic records,
track multiple transactions, and issue simultaneous instructions”, and that
the product claims recited hardware such as a “data processing system” with
a “communications controller” and a “data storage unit” (573 U.S. at 224-26,
110 USPQ2d at 1984-85);
• The Court considered the additional
elements individually, noting that all the computer functions were
“‘well-understood, routine, conventional activit[ies]’ previously known to
the industry," each step “does no more than require a generic computer to
perform generic computer functions”, and the recited hardware was “purely
functional and generic” (573 U.S. at 225-26, 110 USPQ2d at 1984-85); and
• The Court considered the additional
elements “as an ordered combination,” and determined that “the computer
components … ‘[a]dd nothing … that is not already present when the steps are
considered separately’” and simply recite intermediated settlement as
performed by a generic computer.” 573 U.S. at 225 (citing
Mayo, 566 U.S. at 79, 101 USPQ2d at 1972).
Based on this analysis, the Court concluded that
the claims amounted to “‘nothing significantly more’ than an instruction to apply
the abstract idea of intermediated settlement using some unspecified, generic
computer”, and therefore held the claims ineligible because they were directed to
a judicial exception and failed the second part of the
Alice/Mayo test. Alice Corp., 573 U.S. at
225-27, 110 USPQ2d at 1984.
BASCOM provides another example
of how courts conduct the significantly more analysis, and of the critical
importance of considering the additional elements in combination. In this case,
the Federal Circuit vacated a judgment of ineligibility because the district court
failed to properly perform the second step of the Alice/Mayo
test when analyzing a claimed system for filtering content retrieved from an
Internet computer network. BASCOM Global Internet v. AT&T Mobility
LLC, 827 F.3d 1341, 119 USPQ2d 1236 (Fed. Cir. 2016). The Federal
Circuit agreed with the district court that the claims were directed to the
abstract idea of filtering Internet content, and then walked through the district
court’s analysis in part two of the Alice/Mayo test, noting
that:
• The district court properly considered the
additional elements individually, for example by consulting the
specification, which described each of the additional elements as
“well-known generic computer components” (827 F.3d at 1349, 119 USPQ2d at
1242); and
• The district court should have considered
the additional elements in combination, because the “inventive concept
inquiry requires more than recognizing that each claim element, by itself,
was known in the art” (827 F.3d at 1350, 119 USPQ2d at 1242).
Based on this analysis, the Federal Circuit
concluded that the district court erred by failing to recognize that when
combined, an inventive concept may be found in the non-conventional and
non-generic arrangement of the additional elements, i.e., the installation of a
filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user. 827 F.3d at 1350, 119
USPQ2d at 1242.
As described in MPEP § 2106,
subsection III, Step 2B of the Office’s eligibility analysis is the second part of
the Alice/Mayo test, i.e., the Supreme Court’s
“framework for distinguishing patents that claim laws of nature, natural phenomena,
and abstract ideas from those that claim patent-eligible applications of those
concepts.” Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208,
217, 110 USPQ2d 1976, 1981 (2014) (citing Mayo, 566 U.S. 66, 101
USPQ2d 1961 (2012)). Like the other steps in the eligibility analysis, evaluation of
this step should be made after determining what the inventor has invented by
reviewing the entire application disclosure and construing the claims in accordance
with their broadest reasonable interpretation. See MPEP § 2106,
subsection II for more information about the importance of understanding what has
been invented, and MPEP § 2111 for more information about the broadest
reasonable interpretation.
Step 2B asks: Does the claim recite additional
elements that amount to significantly more than the judicial exception? Examiners
should answer this question by first identifying whether there are any additional
elements (features/limitations/steps) recited in the claim beyond the judicial
exception(s), and then evaluating those additional elements individually
and in combination to determine whether
they contribute an inventive concept (i.e., amount to
significantly more than the judicial exception(s)).
This evaluation is made with respect to the
considerations that the Supreme Court has identified as relevant to the eligibility
analysis, which are introduced generally in Part I.A of this section, and discussed
in detail in MPEP § 2106.05(a) through (h). Many
of these considerations overlap, and often more than one consideration is relevant to
analysis of an additional element. Not all considerations will be relevant to every
element, or every claim. Because the evaluation in Step 2B is not a weighing test, it
is not important how the elements are characterized or how many considerations apply
from this list. It is important to evaluate the significance of the additional
elements relative to the invention, and to keep in mind the ultimate question of
whether the additional elements encompass an inventive concept.
Although the conclusion of whether a claim is
eligible at Step 2B requires that all relevant considerations be evaluated, most of
these considerations were already evaluated in Step 2A Prong Two. Thus, in Step 2B,
examiners should:
• Carry over their identification of the
additional element(s) in the claim from Step 2A Prong Two;
• Re-evaluate any additional element or
combination of elements that was considered to be insignificant extra-solution
activity per MPEP § 2106.05(g), because if
such re-evaluation finds that the element is unconventional or otherwise more
than what is well-understood, routine, conventional activity in the field, this
finding may indicate that the additional element is no longer considered to be
insignificant; and
• Evaluate whether any additional element or
combination of elements are other than what is well-understood, routine,
conventional activity in the field, or simply append well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception, per MPEP §
2106.05(d).
In the context of the flowchart in
MPEP §
2106, subsection III, Step 2B determines whether:
• The claim as a whole does not amount to
significantly more than the exception itself (there is no inventive concept in
the claim) (Step 2B: NO) and thus is not eligible, warranting a rejection for
lack of subject matter eligibility and concluding the eligibility analysis; or
• The claim as a whole does amount to
significantly more than the exception (there is an inventive concept in the
claim) (Step 2B: YES), and thus is eligible at Pathway C, thereby concluding
the eligibility analysis.
Examiners should examine each claim for eligibility
separately, based on the particular elements recited therein. Claims should not be
judged to automatically stand or fall with similar claims in an application. For
instance, one claim may be ineligible because it is directed to a judicial exception
without amounting to significantly more, but another claim dependent on the first may
be eligible because it recites additional elements that do amount to significantly
more.
For more information on how to evaluate claims
reciting multiple judicial exceptions, see MPEP §
2106.04, subsection II.B.
If the claim as a whole does recite significantly
more than the exception itself, the claim is eligible (Step 2B: YES) at Pathway C,
and the eligibility analysis is complete. If there are no meaningful limitations in
the claim that transform the exception into a patent-eligible application, such that
the claim does not amount to significantly more than the exception itself, the claim
is not patent-eligible (Step 2B: NO) and should be rejected under 35 U.S.C. 101.
See MPEP
§ 2106.07 for information on how to formulate an
ineligibility rejection.
2106.05(a) Improvements to the Functioning of a Computer
or To Any Other Technology or Technical Field [R-07.2022]
While improvements were evaluated in Alice
Corp. as relevant to the search for an inventive concept (Step 2B),
several decisions of the Federal Circuit have also evaluated this consideration when
determining whether a claim was directed to an abstract idea (Step 2A). See,
e.g., Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36,
118 USPQ2d 1684, 1689 (Fed. Cir. 2016); McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1314-16, 120 USPQ2d 1091, 1102-03 (Fed. Cir. 2016);
Visual Memory, LLC v. NVIDIA Corp., 867 F.3d 1253, 1259-60, 123
USPQ2d 1712, 1717 (Fed. Cir. 2017). Thus, an examiner should evaluate whether a claim
contains an improvement to the functioning of a computer or to any other technology
or technical field at Step 2A Prong Two and Step 2B, as well as when considering
whether the claim has such self-evident eligibility that it qualifies for the
streamlined analysis. See MPEP § 2106.04(d)(1) for more
information about evaluating improvements in Step 2A Prong Two, and
MPEP
§ 2106.07(b) for more information about improvements in the
streamlined analysis context.
If it is asserted that the invention improves upon
conventional functioning of a computer, or upon conventional technology or
technological processes, a technical explanation as to how to implement the invention
should be present in the specification. That is, the disclosure must provide
sufficient details such that one of ordinary skill in the art would recognize the
claimed invention as providing an improvement. The specification need not explicitly
set forth the improvement, but it must describe the invention such that the
improvement would be apparent to one of ordinary skill in the art. Conversely, if the
specification explicitly sets forth an improvement but in a conclusory manner (i.e.,
a bare assertion of an improvement without the detail necessary to be apparent to a
person of ordinary skill in the art), the examiner should not determine the claim
improves technology. An indication that the claimed invention provides an improvement
can include a discussion in the specification that identifies a technical problem and
explains the details of an unconventional technical solution expressed in the claim,
or identifies technical improvements realized by the claim over the prior art. For
example, in McRO, the court relied on the specification’s
explanation of how the particular rules recited in the claim enabled the automation
of specific animation tasks that previously could only be performed subjectively by
humans, when determining that the claims were directed to improvements in computer
animation instead of an abstract idea. McRO, 837 F.3d at 1313-14,
120 USPQ2d at 1100-01. In contrast, the court in Affinity Labs of Tex. v.
DirecTV, LLC relied on the specification’s failure to provide details
regarding the manner in which the invention accomplished the alleged improvement when
holding the claimed methods of delivering broadcast content to cellphones ineligible.
838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016).
After the examiner has consulted the specification
and determined that the disclosed invention improves technology, the claim must be
evaluated to ensure the claim itself reflects the disclosed improvement in
technology. Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307, 1316, 120 USPQ2d 1353, 1359 (Fed. Cir. 2016) (patent owner argued that the
claimed email filtering system improved technology by shrinking the protection gap
and mooting the volume problem, but the court disagreed because the claims themselves
did not have any limitations that addressed these issues). That is, the claim must
include the components or steps of the invention that provide the improvement
described in the specification. However, the claim itself does not need to explicitly
recite the improvement described in the specification (e.g.,
“thereby increasing the bandwidth of the channel”). The full scope of the claim under
the BRI should be considered to determine if the claim reflects an improvement in
technology (e.g., the improvement described in the specification).
In making this determination, it is critical that examiners look at the claim “as a
whole,” in other words, the claim should be evaluated “as an ordered combination,
without ignoring the requirements of the individual steps.” When performing this
evaluation, examiners should be “careful to avoid oversimplifying the claims” by
looking at them generally and failing to account for the specific requirements of the
claims. McRO, 837 F.3d at 1313, 120 USPQ2d at 1100.
An important consideration in determining whether a
claim improves technology is the extent to which the claim covers a particular
solution to a problem or a particular way to achieve a desired outcome, as opposed to
merely claiming the idea of a solution or outcome. McRO, 837 F.3d
at 1314-15, 120 USPQ2d at 1102-03; DDR Holdings, 773 F.3d at 1259,
113 USPQ2d at 1107. In this respect, the improvement consideration overlaps with
other considerations, specifically the particular machine consideration (see
MPEP
§ 2106.05(b)), and the mere instructions to apply an
exception consideration (see MPEP § 2106.05(f)). Thus, evaluation
of those other considerations may assist examiners in making a determination of
whether a claim satisfies the improvement consideration.
It is important to note, the judicial exception alone
cannot provide the improvement. The improvement can be provided by one or more
additional elements. See the discussion of Diamond v. Diehr, 450
U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In
addition, the improvement can be provided by the additional element(s) in combination
with the recited judicial exception. See MPEP §
2106.04(d) (discussing Finjan, Inc. v. Blue Coat
Sys., Inc., 879 F.3d 1299, 1303-04, 125 USPQ2d 1282, 1285-87 (Fed. Cir.
2018)). Thus, it is important for examiners to analyze the claim as a whole when
determining whether the claim provides an improvement to the functioning of computers
or an improvement to other technology or technical field.
During examination, the examiner should analyze the
“improvements” consideration by evaluating the specification and the claims to ensure
that a technical explanation of the asserted improvement is present in the
specification, and that the claim reflects the asserted improvement. Generally,
examiners are not expected to make a qualitative judgement on the merits of the
asserted improvement. If the examiner concludes the disclosed invention does not
improve technology, the burden shifts to applicant to provide persuasive arguments
supported by any necessary evidence to demonstrate that one of ordinary skill in the
art would understand that the disclosed invention improves technology. Any such
evidence submitted under 37 CFR 1.132 must establish what
the specification would convey to one of ordinary skill in the art and cannot be used
to supplement the specification. See, e.g.MPEP §
716.09 on 37 CFR 1.132 practice with
respect to rejections under 35 U.S.C. 112(a). For example, in
response to a rejection under 35 U.S.C. 101, an applicant could
submit a declaration under § 1.132 providing testimony on
how one of ordinary skill in the art would interpret the disclosed invention as
improving technology and the underlying factual basis for that conclusion.
I. IMPROVEMENTS TO COMPUTER
FUNCTIONALITY
In computer-related technologies, the examiner
should determine whether the claim purports to improve computer capabilities or,
instead, invokes computers merely as a tool. Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1336, 118 USPQ2d 1684, 1689 (Fed. Cir. 2016).
In Enfish, the court evaluated the patent eligibility of claims
related to a self-referential database. Id. The court concluded
the claims were not directed to an abstract idea, but rather an improvement to
computer functionality. Id. It was the specification’s
discussion of the prior art and how the invention improved the way the computer
stores and retrieves data in memory in combination with the specific data
structure recited in the claims that demonstrated eligibility. 822 F.3d at 1339,
118 USPQ2d at 1691. The claim was not simply the addition of general purpose
computers added post-hoc to an abstract idea, but a specific implementation of a
solution to a problem in the software arts. 822 F.3d at 1339, 118 USPQ2d at
1691.
Examples that the courts have indicated may show
an improvement in computer-functionality:
v. A memory system having programmable
operational characteristics that are configurable based on the type of
processor, which can be used with different types of processors without a
tradeoff in processor performance, Visual Memory, LLC v. NVIDIA
Corp., 867 F.3d 1253, 1259-60, 123 USPQ2d 1712, 1717 (Fed. Cir.
2017);
vii. Particular structure of a server that stores
organized digital images, TLI Communications, 823 F.3d at
612, 118 USPQ2d at 1747 (finding the use of a generic server insufficient to
add inventive concepts to an abstract idea);
It is important to note that in order for a method
claim to improve computer functionality, the broadest reasonable interpretation of
the claim must be limited to computer implementation. That is, a claim whose
entire scope can be performed mentally, cannot be said to improve computer
technology. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 120 USPQ2d 1473 (Fed. Cir. 2016) (a method of translating a logic circuit
into a hardware component description of a logic circuit was found to be
ineligible because the method did not employ a computer and a skilled artisan
could perform all the steps mentally). Similarly, a claimed process covering
embodiments that can be performed on a computer, as well as embodiments that can
be practiced verbally or with a telephone, cannot improve computer technology. See
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1328, 122
USPQ2d 1377, 1381 (Fed. Cir. 2017) (process for encoding/decoding facial data
using image codes assigned to particular facial features held ineligible because
the process did not require a computer).
Examples that the courts have indicated may not be
sufficient to show an improvement in computer-functionality:
iv. Recording, transmitting, and archiving
digital images by use of conventional or generic technology in a nascent but
well-known environment, without any assertion that the invention reflects an
inventive solution to any problem presented by combining a camera and a
cellular telephone, TLI Communications, 823 F.3d at
611-12, 118 USPQ2d at 1747;
v. Affixing a barcode to a mail object in order
to more reliably identify the sender and speed up mail processing, without
any limitations specifying the technical details of the barcode or how it is
generated or processed, Secured Mail Solutions, LLC v. Universal
Wilde, Inc., 873 F.3d 905, 910-11, 124 USPQ2d 1502, 1505-06
(Fed. Cir. 2017);
vii. Providing historical usage information to
users while they are inputting data, in order to improve the quality and
organization of information added to a database, because “an improvement to
the information stored by a database is not equivalent to an improvement in
the database’s functionality,” BSG Tech LLC v. Buyseasons,
Inc., 899 F.3d 1281, 1287-88, 127 USPQ2d 1688, 1693-94 (Fed.
Cir. 2018); and
The courts have also found that improvements in
technology beyond computer functionality may demonstrate patent eligibility. In
McRO, the Federal Circuit held claimed methods of automatic
lip synchronization and facial expression animation using computer-implemented
rules to be patent eligible under 35 U.S.C. 101, because they
were not directed to an abstract idea. McRO, 837 F.3d at 1316,
120 USPQ2d at 1103. The basis for the McRO court's decision was
that the claims were directed to an improvement in computer animation and thus did
not recite a concept similar to previously identified abstract ideas.
Id. The court relied on the specification's explanation of
how the claimed rules enabled the automation of specific animation tasks that
previously could not be automated. 837 F.3d at 1313, 120 USPQ2d at 1101. The
McRO court indicated that it was the incorporation of the
particular claimed rules in computer animation that "improved [the] existing
technological process", unlike cases such as Alice where a
computer was merely used as a tool to perform an existing process. 837 F.3d at
1314, 120 USPQ2d at 1102. The McRO court also noted that the
claims at issue described a specific way (use of particular rules to set morph
weights and transitions through phonemes) to solve the problem of producing
accurate and realistic lip synchronization and facial expressions in animated
characters, rather than merely claiming the idea of a solution or outcome, and
thus were not directed to an abstract idea. 837 F.3d at 1313, 120 USPQ2d at 1101.
Consideration of improvements is relevant to the
eligibility analysis regardless of the technology of the claimed invention. That
is, the consideration applies equally whether it is a computer-implemented
invention, an invention in the life sciences, or any other technology. See,
e.g., Rapid Litigation Management v. CellzDirect, Inc., 827
F.3d 1042, 119 USPQ2d 1370 (Fed. Cir. 2016), in which the court noted that a
claimed process for preserving hepatocytes could be eligible as an improvement to
technology because the claim achieved a new and improved way for preserving
hepatocyte cells for later use, even though the claim is based on the discovery of
something natural. Notably, the court did not distinguish between the types of
technology when determining the invention improved technology. However, it is
important to keep in mind that an improvement in the abstract idea itself
(e.g. a recited fundamental economic concept) is not an
improvement in technology. For example, in Trading Technologies Int’l v.
IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the
court determined that the claimed user interface simply provided a trader with
more information to facilitate market trades, which improved the business process
of market trading but did not improve computers or technology.
Examples that the courts have indicated may be
sufficient to show an improvement in existing technology include:
i. Particular computerized method of operating
a rubber molding press, e.g., a modification of
conventional rubber-molding processes to utilize a thermocouple inside the
mold to constantly monitor the temperature and thus reduce under- and
over-curing problems common in the art, Diamond v. Diehr,
450 U.S. 175, 187 and 191-92, 209 USPQ 1, 8 and 10 (1981);
To show that the involvement of a computer assists
in improving the technology, the claims must recite the details regarding how a
computer aids the method, the extent to which the computer aids the method, or the
significance of a computer to the performance of the method. Merely adding generic
computer components to perform the method is not sufficient. Thus, the claim must
include more than mere instructions to perform the method on a generic component
or machinery to qualify as an improvement to an existing technology. See
MPEP § 2106.05(f) for more information about mere
instructions to apply an exception.
Examples that the courts have indicated may not be
sufficient to show an improvement to technology include:
2106.05(b) Particular Machine [R-07.2022]
When determining whether a claim integrates a
judicial exception, into a practical application in Step 2A Prong Two and whether a
claim recites significantly more than a judicial exception in Step 2B, examiners
should consider whether the judicial exception is applied with, or by use of, a
particular machine. "The machine-or-transformation test is a useful and important
clue, and investigative tool” for determining whether a claim is patent eligible
under §
101. Bilski v. Kappos, 561 U.S. 593, 604, 95
USPQ2d 1001, 1007 (2010).
It is noted that while the application of a judicial
exception by or with a particular machine is an important clue, it is
not a stand-alone test for eligibility.
Id.
All claims must be evaluated for eligibility using the
two-part test from Alice/Mayo. If a claim passes the
Alice/Mayo test (i.e., is not directed to an
exception at Step 2A, or amounts to significantly more than any recited exception in
Step 2B), then the claim is eligible even if it fails the machine-or-transformation
test ("M-or-T test"). Bilski v. Kappos, 561 U.S. 593, 604, 95
USPQ2d 1001, 1007 (2010) (explaining that a claim may be eligible even if it does not
satisfy the M-or-T test); McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1315, 120 USPQ2d 1091, 1102 (Fed. Cir. 2016)
(“[T]here is nothing that requires a method ‘be tied to a machine or transform an
article’ to be patentable”). And if a claim fails the Alice/Mayo
test (i.e., is directed to an exception at Step 2A and does not
amount to significantly more than the exception in Step 2B), then the claim is
ineligible even if it passes the M-or-T test. DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256, 113 USPQ2d 1097, 1104 (Fed. Cir.
2014) (“[I]n Mayo, the Supreme Court emphasized that satisfying
the machine-or-transformation test, by itself, is not sufficient to render a claim
patent-eligible, as not all transformations or machine implementations infuse an
otherwise ineligible claim with an 'inventive concept.'”).
Examiners may find it helpful to evaluate other
considerations such as the mere instructions to apply an exception consideration (see
MPEP §
2106.05(f)), the insignificant extra-solution activity
consideration (see MPEP § 2106.05(g)), and the field of
use and technological environment consideration (see MPEP §
2106.05(h)), when making a determination of whether an
element (or combination of elements) is a particular machine. For information on the
definition of the term “machine,” see MPEP §
2106.03.
When determining whether a machine recited in a claim
provides significantly more, the following factors are relevant.
I. THE PARTICULARITY OR GENERALITY OF
THE ELEMENTS OF THE MACHINE OR APPARATUS
The particularity or generality of the elements of
the machine or apparatus, i.e., the degree to which the machine
in the claim can be specifically identified (not any and all machines). One
example of applying a judicial exception with a particular machine is
Mackay Radio & Tel. Co. v. Radio Corp. of America, 306
U.S. 86, 40 USPQ 199 (1939). In this case, a mathematical formula was employed to
use standing wave phenomena in an antenna system. The claim recited the particular
type of antenna and included details as to the shape of the antenna and the
conductors, particularly the length and angle at which they were arranged. 306
U.S. at 95-96; 40 USPQ at 203. Another example is Eibel
Process, in which gravity (a law of nature or natural phenomenon) was
applied by a Fourdrinier machine (which was understood in the art to have a
specific structure comprising a headbox, a paper-making wire, and a series of
rolls) arranged in a particular way to optimize the speed of the machine while
maintaining quality of the formed paper web. Eibel Process Co. v. Minn.
& Ont. Paper Co., 261 U.S. 45, 64-65 (1923).
It is important to note that a general purpose
computer that applies a judicial exception, such as an abstract idea, by use of
conventional computer functions does not qualify as a particular machine.
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112
USPQ2d 1750, 1755-56 (Fed. Cir. 2014). See also TLI Communications LLC v.
AV Automotive LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed.
Cir. 2016) (mere recitation of concrete or tangible components is not an inventive
concept); Eon Corp. IP Holdings LLC v. AT&T Mobility LLC,
785 F.3d 616, 623, 114 USPQ2d 1711, 1715 (Fed. Cir. 2015) (noting that
Alappat’s rationale that an otherwise ineligible algorithm
or software could be made patent-eligible by merely adding a generic computer to
the claim was superseded by the Supreme Court’s Bilski and
Alice Corp. decisions). If applicant amends a claim to add a
generic computer or generic computer components and asserts that the claim recites
significantly more because the generic computer is 'specially programmed' (as in
Alappat, now considered superseded) or is a 'particular
machine' (as in Bilski), the examiner should look at whether
the added elements integrate the exception into a practical application or provide
significantly more than the judicial exception. Merely adding a generic computer,
generic computer components, or a programmed computer to perform generic computer
functions does not automatically overcome an eligibility rejection. Alice
Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 223-24, 110 USPQ2d
1976, 1983-84 (2014). See In re Alappat, 33 F.3d 1526, 1545, 31
USPQ2d 1545, 1558 (Fed. Cir. 1994); In re Bilski, 545 F.3d 943,
88 USPQ2d 1385 (Fed. Cir. 2008)
II. WHETHER THE MACHINE OR APPARATUS
IMPLEMENTS THE STEPS OF THE METHOD
Integral use of a machine to achieve performance
of a method may integrate the recited judicial exception into a practical
application or provide significantly more, in contrast to where the machine is
merely an object on which the method operates, which does not integrate the
exception into a practical application or provide significantly more. See
CyberSource v. Retail Decisions, 654 F.3d 1366, 1370, 99
USPQ2d 1690, 1694 (Fed. Cir. 2011) ("We are not persuaded by the appellant's
argument that the claimed method is tied to a particular machine because it ‘would
not be necessary or possible without the Internet.’ . . . Regardless of whether
"the Internet" can be viewed as a machine, it is clear that the Internet cannot
perform the fraud detection steps of the claimed method"). For example, as
described in MPEP § 2106.05(f), additional
elements that invoke computers or other machinery merely as a tool to perform an
existing process will generally not amount to significantly more than a judicial
exception. See, e.g., Versata Development Group v. SAP America,
793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015) (explaining that in
order for a machine to add significantly more, it must “play a significant part in
permitting the claimed method to be performed, rather than function solely as an
obvious mechanism for permitting a solution to be achieved more quickly”).
III. WHETHER ITS INVOLVEMENT IS
EXTRA-SOLUTION ACTIVITY OR A FIELD-OF-USE
Whether its involvement is extra-solution activity
or a field-of-use, i.e., the extent to which (or how) the
machine or apparatus imposes meaningful limits on the claim. Use of a machine that
contributes only nominally or insignificantly to the execution of the claimed
method (e.g., in a data gathering step or in a field-of-use limitation) would not
integrate a judicial exception or provide significantly more. See
Bilski, 561 U.S. at 610, 95 USPQ2d at 1009 (citing
Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 197
(1978)), and CyberSource v. Retail Decisions, 654 F.3d 1366,
1370, 99 USPQ2d 1690 (Fed. Cir. 2011) (citations omitted) (“[N]othing in claim 3
requires an infringer to use the Internet to obtain that data. The Internet is
merely described as the source of the data. We have held that mere
‘[data-gathering] step[s] cannot make an otherwise nonstatutory claim statutory.’”
654 F.3d at 1375, 99 USPQ2d at 1694 (citation omitted)). See MPEP § 2106.05(g) &
(h) for more information on insignificant extra-solution
activity and field of use, respectively.
2106.05(c) Particular Transformation [R-07.2022]
Another consideration when determining whether a
claim integrates a judicial exception into a practical application in Step 2A Prong
Two and whether a claim recites significantly more in Step 2B is whether the claim
effects a transformation or reduction of a particular article to a different state or
thing. "[T]ransformation and reduction of an article ‘to a different state or thing’
is the clue to patentability of a process claim that does not include particular
machines." Bilski v. Kappos, 561 U.S. 593, 658, 95 USPQ2d 1001,
1007 (2010) (quoting Gottschalk v. Benson, 409 U.S. 63, 70, 175
USPQ 673, 676 (1972)). If such a transformation exists, the claims are likely to be
significantly more than any recited judicial exception or to integrate any recited
judicial exception into a practical application.
It is noted that while the transformation of an
article is an important clue, it is not a stand-alone test for
eligibility. Id.
All claims must be evaluated for eligibility using
the two-part test from Alice/Mayo. If a claim passes the
Alice/Mayo test (i.e., is not directed to an
exception at Step 2A, or amounts to significantly more than any recited exception in
Step 2B), then the claim is eligible even if it “fails” the M-or-T test.
Bilski v. Kappos, 561 U.S. 593, 604, 95 USPQ2d 1001, 1007
(2010) (explaining that a claim may be eligible even if it does not satisfy the
M-or-T test); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299, 1315, 120 USPQ2d 1091, 1102 (Fed. Cir. 2016) (“[T]here is nothing that requires
a method ‘be tied to a machine or transform an article’ to be patentable”). And if a
claim fails the Alice/Mayo test (i.e., is
directed to an exception at Step 2A and does not amount to significantly more than
the exception in Step 2B), then the claim is ineligible even if it passes the M-or-T
test. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256,
113 USPQ2d 1097, 1104 (Fed. Cir. 2014) (“[I]n Mayo, the Supreme
Court emphasized that satisfying the machine-or-transformation test, by itself, is
not sufficient to render a claim patent-eligible, as not all transformations or
machine implementations infuse an otherwise ineligible claim with an “inventive
concept.”).
Examiners may find it helpful to evaluate other
considerations such as the mere instructions to apply an exception consideration (see
MPEP §
2106.05(f)), the insignificant extra-solution activity
consideration (see MPEP § 2106.05(g)), and the field of
use and technological environment consideration (see MPEP §
2106.05(h)), when making a determination of whether a claim
satisfies the particular transformation consideration.
An “article” includes a physical object or substance.
The physical object or substance must be particular, meaning it can be specifically
identified. “Transformation” of an article means that the “article” has changed to a
different state or thing. Changing to a different state or thing usually means more
than simply using an article or changing the location of an article. A new or
different function or use can be evidence that an article has been transformed.
Purely mental processes in which thoughts or human based actions are “changed” are
not considered an eligible transformation. For data, mere “manipulation of basic
mathematical constructs [i.e.,] the paradigmatic ‘abstract idea,’” has not been
deemed a transformation. CyberSource v. Retail Decisions, 654 F.3d
1366, 1372 n.2, 99 USPQ2d 1690, 1695 n.2 (Fed. Cir. 2011) (quoting In re
Warmerdam, 33 F.3d 1354, 1355, 1360, 31 USPQ2d 1754, 1755, 1759 (Fed.
Cir. 1994)).
Tilghman v. Proctor, 102 U.S. 707
(1881), provides an example of effecting a transformation of a particular article to
a different state or thing. In that case, the claim was directed to a process of
subjecting a mixture of fat and water to a high degree of heat and included
additional parameters relating to the level of heat, the quantities of fat and water,
and the strength of the mixing vessel. The claimed process, which used the natural
principle that the elements of neutral fat require that they be severally united with
an atomic equivalent of water in order to separate and become free, resulted in the
transformation of the fatty bodies into fat acids and glycerine. Id. at
729.
Where a transformation is recited in a claim, the
following factors are relevant to the analysis:
2. The degree to which the recited article is
particular. A transformation applied to a generically recited
article or to any and all articles would likely not provide significantly more
than the judicial exception. A transformation that can be specifically
identified, or that applies to only particular articles, is more likely to
provide significantly more (or integrates a judicial exception into a practical
application).
3. The nature of the transformation in terms
of the type or extent of change in state or thing. A transformation
resulting in the transformed article having a different function or use, would
likely provide significantly more, but a transformation resulting in the
transformed article merely having a different location, would likely not
provide significantly more (or integrate a judicial exception into a practical
application). For example, a process that transforms raw, uncured synthetic
rubber into precision-molded synthetic rubber products, as discussed in
Diamond v. Diehr, 450 U.S. 175, 184, 209 USPQ 1, 21
(1981)), provides significantly more (or integrate a judicial exception into a
practical application).
4. The nature of the article transformed.
Transformation of a physical or tangible object or substance is more
likely to provide significantly more (or integrate a judicial exception into a
practical application) than the transformation of an intangible concept such as
a contractual obligation or mental judgment.
5. Whether the transformation is
extra-solution activity or a field-of-use (i.e., the
extent to which (or how) the transformation imposes meaningful limits on the
execution of the claimed method steps). A transformation that
contributes only nominally or insignificantly to the execution of the claimed
method (e.g., in a data gathering step or in a field-of-use
limitation) would not provide significantly more (or integrate a judicial
exception into a practical application). For example, in
Mayo the Supreme Court found claims regarding calibrating
the proper dosage of thiopurine drugs to be patent ineligible subject matter.
The Federal Circuit had held that the step of administering the thiopurine drug
demonstrated a transformation of the human body and blood.
Mayo, 566 U.S. at 76, 101 USPQ2d at 1967. The Supreme
Court disagreed, finding that this step was only a field-of-use limitation and
did not provide significantly more than the judicial exception.
Id. See MPEP §
2106.05(g) &
(h) for more information on insignificant
extra-solution activity and field of use, respectively.
Another consideration when determining whether a claim
recites significantly more than a judicial exception is whether the additional
element(s) are well-understood, routine, conventional activities previously known to
the industry. This consideration is only evaluated in Step 2B of the eligibility
analysis.
If the additional element (or combination of elements)
is a specific limitation other than what is well-understood, routine and conventional
in the field, for instance because it is an unconventional step that confines the
claim to a particular useful application of the judicial exception, then this
consideration favors eligibility. If, however, the additional element (or combination
of elements) is no more than well-understood, routine, conventional activities
previously known to the industry, which is recited at a high level of generality,
then this consideration does not favor eligibility.
DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 113 USPQ2d 1097 (Fed. Cir. 2014), provides an
example of additional elements that favored eligibility because they were more than
well-understood, routine conventional activities in the field. The claims in
DDR Holdings were directed to systems and methods of generating
a composite webpage that combines certain visual elements of a host website with the
content of a third-party merchant. 773 F.3d at 1248, 113 USPQ2d at 1099. The court
found that the claim had additional elements that amounted to significantly more than
the abstract idea, because they modified conventional Internet hyperlink protocol to
dynamically produce a dual-source hybrid webpage, which differed from the
conventional operation of Internet hyperlink protocol that transported the user away
from the host’s webpage to the third party’s webpage when the hyperlink was
activated. 773 F.3d at 1258-59, 113 USPQ2d at 1106-07. Thus, the claims in
DDR Holdings were eligible.
On the other hand, Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 67, 101 USPQ2d 1961, 1964 (2010)
provides an example of additional elements that were not an inventive concept because
they were merely well-understood, routine, conventional activity previously known to
the industry, which were not by themselves sufficient to transform a judicial
exception into a patent eligible invention. Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 79-80, 101 USPQ2d 1969 (2012)
(citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 199
(1978) (the additional elements were “well known” and, thus, did not amount to a
patentable application of the mathematical formula)). In Mayo, the
claims at issue recited naturally occurring correlations (the relationships between
the concentration in the blood of certain thiopurine metabolites and the likelihood
that a drug dosage will be ineffective or induce harmful side effects) along with
additional elements including telling a doctor to measure thiopurine metabolite
levels in the blood using any known process. 566 U.S. at 77-79, 101 USPQ2d at
1967-68. The Court found this additional step of measuring metabolite levels to be
well-understood, routine, conventional activity already engaged in by the scientific
community because scientists “routinely measured metabolites as part of their
investigations into the relationships between metabolite levels and efficacy and
toxicity of thiopurine compounds.” 566 U.S. at 79, 101 USPQ2d at 1968. Even when
considered in combination with the other additional elements, the step of measuring
metabolite levels did not amount to an inventive concept, and thus the claims in
Mayo were not eligible. 566 U.S. at 79-80, 101 USPQ2d at
1968-69.
When making a determination whether the additional
elements in a claim amount to significantly more than a judicial exception, the
examiner should evaluate whether the elements define only well-understood,
routine, conventional activity. In this respect, the well-understood, routine,
conventional consideration overlaps with other Step 2B considerations,
particularly the improvement consideration (see MPEP §
2106.05(a)), the mere instructions to apply an exception
consideration (see MPEP § 2106.05(f)), and the
insignificant extra-solution activity consideration (see MPEP §
2106.05(g)). Thus, evaluation of those other
considerations may assist examiners in making a determination of whether a
particular element or combination of elements is well-understood, routine,
conventional activity.
In addition, examiners should keep in mind the
following points when determining whether additional elements define only
well-understood, routine, conventional activity.
1. An additional element (or combination
of additional elements) that is known in the art can still be
unconventional or non-routine. The question of whether a
particular claimed invention is novel or obvious is “fully apart” from the
question of whether it is eligible. Diamond v. Diehr, 450
U.S. 175, 190, 209 USPQ 1, 9 (1981). For example, claims may exhibit an
improvement over conventional computer functionality even if the improvement
lacks novelty over the prior art. Compare, e.g.,Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 118 USPQ2d
1684 (Fed. Cir. 2016) (holding several claims from U.S. Patent Nos.
6,151,604 and 6,163,775 eligible) with Microsoft Corp. v. Enfish,
LLC, 662 Fed. App'x 981 (Fed. Cir. 2016) (holding some of the
same claims to be anticipated by prior art). The eligible claims in
Enfish recited a self-referential database having two
key features: all entity types can be stored in a single table; and the
table rows can contain information defining the table columns.
Enfish, 822 F.3d at 1332, 118 USPQ2d at 1687. Although
these features were taught by a single prior art reference (thus
anticipating the claims), Microsoft Corp., 662 Fed. App'x
at 986, the features were not conventional and thus were considered to
reflect an improvement to existing technology. In particular, they enabled
the claimed table to achieve benefits over conventional databases, such as
increased flexibility, faster search times, and smaller memory requirements.
Enfish, 822 F.3d at 1337, 118 USPQ2d at 1690.
2. A factual determination is required to
support a conclusion that an additional element (or combination of
additional elements) is well-understood, routine, conventional
activity.Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d
1649, 1654 (Fed. Cir. 2018). However, this does not mean that a prior art
search is necessary to resolve this inquiry. Instead, examiners should rely
on what the courts have recognized, or those in the art would recognize, as
elements that are well-understood, routine, conventional activity in the
relevant field when making the required determination. For example, in many
instances, the specification of the application may indicate that additional
elements are well-known or conventional. See, e.g., Intellectual
Ventures v. Symantec, 838 F.3d 1307, 1317; 120 USPQ2d 1353,
1359 (Fed. Cir. 2016) (“The written description is particularly useful in
determining what is well-known or conventional”); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d
1414, 1418 (Fed. Cir. 2015) (relying on specification’s description of
additional elements as “well-known”, “common” and “conventional”);
TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607,
614, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (Specification described
additional elements as “either performing basic computer functions such as
sending and receiving data, or performing functions ‘known’ in the art.”).
As such, an examiner should determine that
an element (or combination of elements) is well-understood, routine,
conventional activity only when the examiner can readily conclude, based on
their expertise in the art, that the element is widely prevalent or in
common use in the relevant industry. The analysis as to whether an element
(or combination of elements) is widely prevalent or in common use is the
same as the analysis under 35 U.S.C. 112(a) as to
whether an element is so well-known that it need not be described in detail
in the patent specification. See Genetic Techs. Ltd. v. Merial
LLC, 818 F.3d 1369, 1377, 118 USPQ2d 1541, 1546 ( Fed. Cir.
2016) (supporting the position that amplification was well-understood,
routine, conventional for purposes of subject matter eligibility by
observing that the patentee expressly argued during prosecution of the
application that amplification was a technique readily practiced by those
skilled in the art to overcome the rejection of the claim under
35
U.S.C. 112, first paragraph); see also
Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick
Co., 730 F.2d 1452, 1463, 221 USPQ 481, 489 (Fed. Cir. 1984)
("[T]he specification need not disclose what is well known in the art.");
In re Myers, 410 F.2d 420, 424, 161 USPQ 668, 671
(CCPA 1969) ("A specification is directed to those skilled in the art and
need not teach or point out in detail that which is well-known in the
art."); Exergen Corp., 725 Fed. App’x. 959, 965 (Fed.
Cir. 2018) (holding that "[l]ike indefiniteness, enablement, or obviousness,
whether a claim is directed to patent eligible subject matter is a question
of law based on underlying facts," and noting that the Supreme Court has
recognized that "the inquiry 'might sometimes overlap' with other
fact-intensive inquiries like novelty under 35 U.S.C. §
102"). If the element is not widely prevalent or in
common use, or is otherwise beyond those elements recognized in the art or
by the courts as being well-understood, routine or conventional, then the
element will in most cases favor eligibility. For example, even if a
particular technique (e.g., measuring blood glucose via
an earring worn by a person with diabetes) would have been obvious to one of
ordinary skill in the art because it was discussed in several widely-read
scientific journals or used by a few scientists, mere knowledge of the
particular technique or use of the particular technique by a few scientists
is not necessarily sufficient to make the use of the particular technique
routine or conventional in the relevant field. The examiner in this
situation would already know, based on the examiner's expertise in the
field, that blood glucose is routinely and conventionally monitored by other
techniques (e.g., via placing a small droplet of blood on
a diagnostic test strip, or via an implanted insulin pump with a glucose
sensor). Thus, the examiner would not need to perform a prior art search in
order to determine that the particular claimed technique using the
glucose-sensing earring was not well-understood, routine, conventional
activity previously engaged in by scientists in the field.
The required factual determination must be
expressly supported in writing, as discussed in MPEP §
2106.07(a). Appropriate forms of support include
one or more of the following: (a) A citation to an express statement in the
specification or to a statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional nature of the
additional element(s); (b) A citation to one or more of the court decisions
discussed in Subsection II below as noting the well-understood, routine,
conventional nature of the additional element(s); (c) A citation to a
publication that demonstrates the well-understood, routine, conventional
nature of the additional element(s); and (d) A statement that the examiner
is taking official notice of the well-understood, routine, conventional
nature of the additional element(s). For more information on supporting a
conclusion that an additional element (or combination of additional
elements) is well-understood, routine, conventional activity, see
MPEP § 2106.07(a),
subsection III.
3. Even if one or more additional elements
are well-understood, routine, conventional activity when considered
individually, the combination of additional elements may amount to an
inventive concept.Diamond v. Diehr, 450 U.S. at 188, 209 USPQ at 9 (1981)
(“[A] new combination of steps in a process may be patentable even though
all the constituents of the combination were well known and in common use
before the combination was made.”). For example, a microprocessor that
performs mathematical calculations and a clock that produces time data may
individually be generic computer components that perform merely generic
computer functions, but when combined may perform functions that are not
generic computer functions and thus be an inventive concept. See,
e.g. Rapid Litig. Mgmt. v. CellzDirect, Inc., 827 F.3d
1042, 1051, 119 USPQ2d 1370, 1375 (Fed. Cir. 2016) (holding that while the
additional steps of freezing and thawing hepatocytes were well known,
repeating those steps, contrary to what was taught in the art, was not
routine or conventional). For example, in BASCOM, even
though the court found that all of the additional elements in the claim
recited generic computer network or Internet components, the elements in
combination amounted to significantly more because of the non-conventional
and non-generic arrangement that provided a technical improvement in the
art. BASCOM Global Internet Servs. v. AT&T Mobility
LLC, 827 F.3d 1341, 1350-51, 119 USPQ2d 1236, 1243-44
(2016).
A rejection should only be made if an examiner
relying on the examiner's expertise in the art can conclude in the Step 2B inquiry
that the additional elements do not amount to significantly more (Step 2B: NO). If
the elements or functions are beyond those recognized in the art or by the courts
as being well‐understood, routine, conventional activity, then the elements or
functions will in most cases amount to significantly more (Step 2B: YES). For more
information on formulating a subject matter eligibility rejection involving
well-understood, routine, conventional activity, see MPEP §
2106.07(a).
II. ELEMENTS THAT THE COURTS HAVE
RECOGNIZED AS WELL-UNDERSTOOD, ROUTINE, CONVENTIONAL ACTIVITY IN PARTICULAR
FIELDS
Because examiners should rely on what the courts
have recognized, or those of ordinary skill in the art would recognize, as
elements that describe well‐understood, routine activities, the following section
provides examples of elements that have been recognized by the courts as
well-understood, routine, conventional activity in particular fields. It should be
noted, however, that many of these examples failed to satisfy other considerations
(e.g., because they were recited at a high level of
generality and thus were mere instructions to apply an exception, or were
insignificant extra-solution activity). Thus, examiners should carefully analyze
additional elements in a claim with respect to all relevant Step 2B
considerations, including this consideration, before making a conclusion as to
whether they amount to an inventive concept.
The courts have recognized the following computer
functions as well‐understood, routine, and conventional functions when they are
claimed in a merely generic manner (e.g., at a high level of
generality) or as insignificant extra-solution activity.
ii. Performing repetitive calculations,
Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing
or readjusting alarm limit values); Bancorp Services v. Sun
Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir.
2012) (“The computer required by some of Bancorp’s claims
is employed only for its most basic function, the performance of repetitive
calculations, and as such does not impose meaningful limits on the scope of
those claims.”);
This listing is not meant to imply that all
computer functions are well‐understood, routine, conventional activities, or that
a claim reciting a generic computer component performing a generic computer
function is necessarily ineligible. See e.g. Amdocs (Israel), Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1316, 120 USPQ2d 1527, 1549
(Fed. Cir. 2016), BASCOM Global Internet Servs. v. AT&T Mobility
LLC, 827 F.3d 1341, 1348, 119 USPQ2d 1236, 1241 (Fed. Cir. 2016).
Courts have held computer‐implemented processes not to be significantly more than
an abstract idea (and thus ineligible) where the claim as a whole amounts to
nothing more than generic computer functions merely used to implement an abstract
idea, such as an idea that could be done by a human analog (i.e., by hand or by
merely thinking). On the other hand, courts have held computer-implemented
processes to be significantly more than an abstract idea (and thus eligible),
where generic computer components are able in combination to perform functions
that are not merely generic. DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257-59, 113 USPQ2d 1097, 1105-07 (Fed. Cir.
2014).
The courts have recognized the following
laboratory techniques as well-understood, routine, conventional activity in the
life science arts when they are claimed in a merely generic manner
(e.g., at a high level of generality) or as insignificant
extra-solution activity:
Below are examples of other types of activity
that the courts have found to be well-understood, routine, conventional activity
when they are claimed in a merely generic manner (e.g., at a
high level of generality) or as insignificant extra-solution activity:
2106.05(e) Other Meaningful Limitations [R-10.2019]
The analysis of whether the claim includes other
meaningful limitations may be relevant for both eligibility analysis Step 2A Prong
Two, and Step 2B.
The claim should add meaningful limitations beyond
generally linking the use of the judicial exception to a particular technological
environment to transform the judicial exception into patent-eligible subject matter.
The phrase “meaningful limitations” has been used by the courts even before Alice and
Mayo in various contexts to describe additional elements that provide an inventive
concept to the claim as a whole. The considerations described in
MPEP §
2106.05(a)-(d) are meaningful limitations when they amount
to significantly more than the judicial exception, or when they integrate a judicial
exception into a practical application. This broad label signals that there can be
other considerations besides those described in MPEP §
2106.05(a)-(d) that when added to a judicial exception
amount to meaningful limitations that can transform a claim into patent-eligible
subject matter.
Diamond v. Diehr provides an
example of a claim that recited meaningful limitations beyond generally linking the
use of the judicial exception to a particular technological environment. 450 U.S.
175, 209 USPQ 1 (1981). In Diehr, the claim was directed to the
use of the Arrhenius equation (an abstract idea or law of nature) in an automated
process for operating a rubber-molding press. 450 U.S. at 177-78, 209 USPQ at 4. The
Court evaluated additional elements such as the steps of installing rubber in a
press, closing the mold, constantly measuring the temperature in the mold, and
automatically opening the press at the proper time, and found them to be meaningful
because they sufficiently limited the use of the mathematical equation to the
practical application of molding rubber products. 450 U.S. at 184, 187, 209 USPQ at
7, 8. In contrast, the claims in Alice Corp. v. CLS Bank
International did not meaningfully limit the abstract idea of mitigating
settlement risk. 573 U.S. 208, 110 USPQ2d 1976 (2014). In particular, the Court
concluded that the additional elements such as the data processing system and
communications controllers recited in the system claims did not meaningfully limit
the abstract idea because they merely linked the use of the abstract idea to a
particular technological environment (i.e., “implementation via computers”) or were
well-understood, routine, conventional activity recited at a high level of
generality. 573 U.S. at 225-26, 110 USPQ2d at 1984-85.
Classen Immunotherapies Inc. v. Biogen IDEC provides another
example of claims that recited meaningful limitations. 659 F.3d 1057, 100 USPQ2d 1492
(Fed. Cir. 2011) (decision on remand from the Supreme Court, which had vacated the
lower court’s prior holding of ineligibility in view of Bilski v.
Kappos, 561 U.S. 593, 95 USPQ2d 1001 (2010)). In
Classen, the claims recited methods that gathered and analyzed
the effects of particular immunization schedules on the later development of chronic
immune-mediated disorders in mammals in order to identify a lower risk immunization
schedule, and then immunized mammalian subjects in accordance with the identified
lower risk schedule (thereby lowering the risk that the immunized subject would later
develop chronic immune-mediated diseases). 659 F.3d at 1060-61; 100 USPQ2d at
1495-96. Although the analysis step was an abstract mental process that collected and
compared known information, the immunization step was meaningful because it
integrated the results of the analysis into a specific and tangible method that
resulted in the method “moving from abstract scientific principle to specific
application.” 659 F.3d at 1066-68; 100 USPQ2d at 1500-01. In contrast, in
OIP Technologies, Inc. v. Amazon.com, Inc., the court
determined that the additional steps to “test prices and collect data based on the
customer reactions” did not meaningfully limit the abstract idea of offer-based price
optimization, because the steps were well-understood, routine, conventional
data-gathering activities. 788 F.3d 1359, 1363-64, 115 USPQ2d 1090, 1093 (Fed. Cir.
2015).
With respect to treatment or prophylaxis limitations,
such as the immunization step in Classen, examiners should note
that the other meaningful limitations consideration overlaps with the particular
treatment or prophylaxis consideration that is evaluated in Step 2A Prong Two (see
MPEP §
2106.04(d)(2)).
When evaluating whether additional elements
meaningfully limit the judicial exception, it is particularly critical that examiners
consider the additional elements both individually and as a combination. When an
additional element is considered individually by an examiner, the additional element
may be enough to qualify as “significantly more” if it meaningfully limits the
judicial exception, and may also add a meaningful limitation by integrating the
judicial exception into a practical application. However, even in the situation where
the individually-viewed elements do not add significantly more or integrate the
exception, those additional elements when viewed in combination may render the claim
eligible. See Diamond v. Diehr, 450 U.S. 175, 188, 209 USPQ2d 1, 9
(1981) (“a new combination of steps in a process may be patentable even though all
the constituents of the combination were well known and in common use before the
combination was made”); BASCOM Global Internet Servs. v. AT&T Mobility
LLC, 827 F.3d 1341, 1349, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016). It is
important to note that, when appropriate, an examiner may explain on the record why
the additional elements meaningfully limit the judicial exception.
2106.05(f) Mere Instructions To Apply An
Exception [R-10.2019]
Another consideration when determining whether a
claim integrates a judicial exception into a practical application in Step 2A Prong
Two or recites significantly more than a judicial exception in Step 2B is whether the
additional elements amount to more than a recitation of the words “apply it” (or an
equivalent) or are more than mere instructions to implement an abstract idea or other
exception on a computer. As explained by the Supreme Court, in order to make a claim
directed to a judicial exception patent-eligible, the additional element or
combination of elements must do “‘more than simply stat[e] the [judicial exception]
while adding the words ‘apply it’”. Alice Corp. v. CLS Bank, 573
U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative
Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961,
1965). Thus, for example, claims that amount to nothing more than an instruction to
apply the abstract idea using a generic computer do not render an abstract idea
eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See
also 573 U.S. at 224, 110 USPQ2d at 1984 (warning against a § 101 analysis
that turns on “the draftsman’s art”).
The Supreme Court has identified additional elements
as mere instructions to apply an exception in several cases. For instance, in
Mayo, the Supreme Court concluded that a step of determining
thiopurine metabolite levels in patients’ blood did not amount to significantly more
than the recited laws of nature, because this additional element simply instructed
doctors to apply the laws by measuring the metabolites in any way the doctors (or
medical laboratories) chose to use. 566 U.S. at 79, 101 USPQ2d at 1968. In
Alice Corp., the claim recited the concept of intermediated
settlement as performed by a generic computer. The Court found that the recitation of
the computer in the claim amounted to mere instructions to apply the abstract idea on
a generic computer. 573 U.S. at 225-26, 110 USPQ2d at 1984. The Supreme Court also
discussed this concept in an earlier case, Gottschalk v. Benson,
409 U.S. 63, 70, 175 USPQ 673, 676 (1972), where the claim recited a process for
converting binary-coded-decimal (BCD) numerals into pure binary numbers. The Court
found that the claimed process had no meaningful practical application except in
connection with a computer. Benson, 409 U.S. at 71-72, 175 USPQ at
676. The claim simply stated a judicial exception (e.g., law of
nature or abstract idea) while effectively adding words that “apply it” in a
computer. Id.
Requiring more than mere instructions to apply an
exception does not mean that the claim must be narrow in order to be eligible. The
courts have identified some broad claims as eligible see, e.g.,McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 120
USPQ2d 1091 (Fed. Cir. 2016); Thales Visionix Inc. v. United
States, 850 F.3d. 1343, 121 USPQ2d 1898 (Fed. Cir. 2017), and some
narrow claims as ineligible see e.g.,Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 112 USPQ2d 1750
(Fed. Cir. 2014); Electric Power Group, LLC v. Alstom, S.A., 830
F.3d 1350, 119 USPQ2d 1739 (Fed. Cir. 2016). Thus, examiners should carefully
consider each claim on its own merits, as well as evaluate all other relevant
considerations, before making a determination of whether an element (or combination
of elements) is more than mere instructions to apply an exception. For example,
because this consideration often overlaps with the improvement consideration (see
MPEP §
2106.05(a)), the particular machine and particular
transformation considerations (see MPEP § 2106.05(b) and
(c), respectively), and the well-understood, routine,
conventional consideration (see MPEP § 2106.05(d)), evaluation of
those other considerations may assist examiners in making a determination of whether
an element (or combination of elements) is more than mere instructions to apply an
exception. Note, however, that examiners should not evaluate the well-understood,
routine, conventional consideration in the Step 2A Prong Two analysis, because that
consideration is only evaluated in Step 2B.
For claim limitations that do not amount to more than
a recitation of the words “apply it” (or an equivalent), such as mere instructions to
implement an abstract idea on a computer, examiners should explain why they do not
meaningfully limit the claim in an eligibility rejection. For example, an examiner
could explain that implementing an abstract idea on a generic computer, does not
integrate the abstract idea into a practical application in Step 2A Prong Two or add
significantly more in Step 2B, similar to how the recitation of the computer in the
claim in Alice amounted to mere instructions to apply the abstract
idea of intermediated settlement on a generic computer. For more information on
formulating a subject matter eligibility rejection. See MPEP §
2106.07(a).
When determining whether a claim simply recites a
judicial exception with the words “apply it” (or an equivalent), such as mere
instructions to implement an abstract idea on a computer, examiners may consider the
following:
(1) Whether the claim recites only the idea of a solution or outcome
i.e., the claim fails to recite details of how a solution to
a problem is accomplished. The recitation of claim limitations that attempt
to cover any solution to an identified problem with no restriction on how the result
is accomplished and no description of the mechanism for accomplishing the result,
does not integrate a judicial exception into a practical application or provide
significantly more because this type of recitation is equivalent to the words “apply
it”. See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350,
1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v.
Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016);
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343,
1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015). In contrast, claiming a particular
solution to a problem or a particular way to achieve a desired outcome may integrate
the judicial exception into a practical application or provide significantly more.
See Electric Power, 830 F.3d at 1356, 119 USPQ2d at 1743.
By way of example, in Intellectual Ventures
I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir.
2017), the steps in the claims described “the creation of a dynamic document based
upon ‘management record types’ and ‘primary record types.’” 850 F.3d at 1339-40; 121
USPQ2d at 1945-46. The claims were found to be directed to the abstract idea of
“collecting, displaying, and manipulating data.” 850 F.3d at 1340; 121 USPQ2d at
1946. In addition to the abstract idea, the claims also recited the additional
element of modifying the underlying XML document in response to modifications made in
the dynamic document. 850 F.3d at 1342; 121 USPQ2d at 1947-48. Although the claims
purported to modify the underlying XML document in response to modifications made in
the dynamic document, nothing in the claims indicated what specific steps were
undertaken other than merely using the abstract idea in the context of XML documents.
The court thus held the claims ineligible, because the additional limitations
provided only a result-oriented solution and lacked details as to how the computer
performed the modifications, which was equivalent to the words “apply it”. 850 F.3d
at 1341-42; 121 USPQ2d at 1947-48 (citing Electric Power Group.,
830 F.3d at 1356, 1356, USPQ2d at 1743-44 (cautioning against claims “so result
focused, so functional, as to effectively cover any solution to an identified
problem”)).
Other examples where the courts have found the
additional elements to be mere instructions to apply an exception, because they
recite no more than an idea of a solution or outcome include:
ii. A general method of screening emails on a
generic computer without any limitations that addressed the issues of shrinking
the protection gap and mooting the volume problem, Intellectual
Ventures I v. Symantec Corp., 838 F.3d 1307, 1319, 120 USPQ2d
1353, 1361 (Fed. Cir. 2016); and
In contrast, other cases have found that additional
elements are more than “apply it” or are not “mere instructions” when the claim
recites a technological solution to a technological problem. In DDR
Holdings, the court found that the additional elements did amount to
more than merely instructing that the abstract idea should be applied on the
Internet. DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1259, 113 USPQ2d 1097, 1107 (Fed. Cir. 2014). The claims at issue specified how
interactions with the Internet were manipulated to yield a desired result—a result
that overrode the routine and conventional sequence of events ordinarily triggered by
the click of a hyperlink. 773 F.3d at 1258; 113 USPQ2d at 1106. In
BASCOM, the court determined that the claimed combination of
limitations did not simply recite an instruction to apply the abstract idea of
filtering content on the Internet. BASCOM Global Internet Servs. v. AT&T
Mobility, LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1243 (Fed. Cir.
2016). Instead, the claim recited a “technology based solution” of filtering content
on the Internet that overcome the disadvantages of prior art filtering systems. 827
F.3d at 1350-51, 119 USPQ2d at 1243. Finally, in Thales Visionix,
the particular configuration of inertial sensors and the particular method of using
the raw data from the sensors was more than simply applying a law of nature.
Thales Visionix, Inc. v. United States, 850 F.3d 1343, 1348-49,
121 USPQ2d 1898, 1902 (Fed. Cir. 2017). The court found that the claims provided a
system and method that “eliminate[d] many ‘complications’ inherent in previous
solutions for determining position and orientation of an object on a moving
platform.” In other words, the claim recited a technological solution to a
technological problem. Id.
(2) Whether the claim invokes computers or
other machinery merely as a tool to perform an existing process. Use of a
computer or other machinery in its ordinary capacity for economic or other tasks
(e.g., to receive, store, or transmit data) or simply adding a
general purpose computer or computer components after the fact to an abstract idea
(e.g., a fundamental economic practice or mathematical
equation) does not integrate a judicial exception into a practical application or
provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d
1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI
Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744,
1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the
improved speed or efficiency inherent with applying the abstract idea on a computer”
does not integrate a judicial exception into a practical application or provide an
inventive concept. Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In
contrast, a claim that purports to improve computer capabilities or to improve an
existing technology may integrate a judicial exception into a practical application
or provide significantly more. McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016);
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118
USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§
2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the
functioning of a computer or to another technology or technical field.
TLI Communications provides an
example of a claim invoking computers and other machinery merely as a tool to perform
an existing process. The court stated that the claims describe steps of recording,
administration and archiving of digital images, and found them to be directed to the
abstract idea of classifying and storing digital images in an organized manner. 823
F.3d at 612, 118 USPQ2d at 1747. The court then turned to the additional elements of
performing these functions using a telephone unit and a server and noted that these
elements were being used in their ordinary capacity (i.e., the
telephone unit is used to make calls and operate as a digital camera including
compressing images and transmitting those images, and the server simply receives
data, extracts classification information from the received data, and stores the
digital images based on the extracted information). 823 F.3d at 612-13, 118 USPQ2d at
1747-48. In other words, the claims invoked the telephone unit and server merely as
tools to execute the abstract idea. Thus, the court found that the additional
elements did not add significantly more to the abstract idea because they were simply
applying the abstract idea on a telephone network without any recitation of details
of how to carry out the abstract idea.
Other examples where the courts have found the
additional elements to be mere instructions to apply an exception, because they do no
more than merely invoke computers or machinery as a tool to perform an existing
process include:
ii. Generating a second menu from a first menu and
sending the second menu to another location as performed by generic computer
components, Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229,
1243-44, 120 USPQ2d 1844, 1855-57 (Fed. Cir. 2016);
v. Requiring the use of software to tailor
information and provide it to the user on a generic computer,
Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1370-71, 115 USPQ2d 1636, 1642 (Fed. Cir. 2015); and
vi. A method of assigning hair designs to balance
head shape with a final step of using a tool (scissors) to cut the hair,
In re Brown, 645 Fed. App'x 1014, 1017 (Fed. Cir. 2016)
(non-precedential).
(3) The particularity or generality of the
application of the judicial exception. A claim having broad applicability
across many fields of endeavor may not provide meaningful limitations that integrate
a judicial exception into a practical application or amount to significantly more.
For instance, a claim that generically recites an effect of the judicial exception or
claims every mode of accomplishing that effect, amounts to a claim that is merely
adding the words “apply it” to the judicial exception. See Internet Patents
Corporation v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d
1414, 1418 (Fed. Cir. 2015) (The recitation of maintaining the state of data in an
online form without restriction on how the state is maintained and with no
description of the mechanism for maintaining the state describes “the effect or
result dissociated from any method by which maintaining the state is accomplished”
and does not provide a meaningful limitation because it merely states that the
abstract idea should be applied to achieve a desired result). See also
O’Reilly v. Morse, 56 U.S. 62 (1854) (finding ineligible a
claim for “the use of electromagnetism for transmitting signals at a distance”); The
Telephone Cases, 126 U.S. 1, 209 (1888) (finding a method of
“transmitting vocal or other sound telegraphically ... by causing electrical
undulations, similar in form to the vibrations of the air accompanying the said vocal
or other sounds,” to be ineligible, because it “monopolize[d] a natural force” and
“the right to avail of that law by any means whatever.”).
In contrast, limitations that confine the judicial
exception to a particular, practical application of the judicial exception may amount
to significantly more or integrate the judicial exception into a practical
application. For example, in BASCOM, the combination of additional
elements, and specifically “the installation of a filtering tool at a specific
location, remote from the end‐users, with customizable filtering features specific to
each end user” where the filtering tool at the ISP was able to “identify individual
accounts that communicate with the ISP server, and to associate a request for
Internet content with a specific individual account,” were held to be meaningful
limitations because they confined the abstract idea of content filtering to a
particular, practical application of the abstract idea. 827 F.3d at 1350-51, 119
USPQ2d at 1243.
2106.05(g) Insignificant Extra-Solution
Activity [R-10.2019]
Another consideration when determining whether a
claim integrates the judicial exception into a practical application in Step 2A Prong
Two or recites significantly more in Step 2B is whether the additional elements add
more than insignificant extra-solution activity to the judicial exception. The term
“extra-solution activity” can be understood as activities incidental to the primary
process or product that are merely a nominal or tangential addition to the claim.
Extra-solution activity includes both pre-solution and post-solution activity. An
example of pre-solution activity is a step of gathering data for use in a claimed
process, e.g., a step of obtaining information about credit card
transactions, which is recited as part of a claimed process of analyzing and
manipulating the gathered information by a series of steps in order to detect whether
the transactions were fraudulent. An example of post-solution activity is an element
that is not integrated into the claim as a whole, e.g., a printer
that is used to output a report of fraudulent transactions, which is recited in a
claim to a computer programmed to analyze and manipulate information about credit
card transactions in order to detect whether the transactions were fraudulent.
As explained by the Supreme Court, the addition of
insignificant extra-solution activity does not amount to an inventive concept,
particularly when the activity is well-understood or conventional. Parker v.
Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). In
Flook, the Court reasoned that “[t]he notion that post-solution
activity, no matter how conventional or obvious in itself, can transform an
unpatentable principle into a patentable process exalts form over substance. A
competent draftsman could attach some form of post-solution activity to almost any
mathematical formula”. 437 U.S. at 590; 198 USPQ at 197; Id.
(holding that step of adjusting an alarm limit variable to a figure computed
according to a mathematical formula was “post-solution activity”). See also
Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S.
66, 79, 101 USPQ2d 1961, 1968 (2012) (additional element of measuring metabolites of
a drug administered to a patient was insignificant extra-solution activity).
Examiners should carefully consider each claim on
its own merits, as well as evaluate all other relevant considerations, before making
a determination of whether an element (or combination of elements) is insignificant
extra-solution activity. In particular, evaluation of the particular machine and
particular transformation considerations (see MPEP § 2106.05(b) and
(c), respectively), the well-understood, routine,
conventional consideration (see MPEP § 2106.05(d)), and the field of
use and technological environment consideration (see MPEP §
2106.05(h)) may assist examiners in making a determination
of whether an element (or combination of elements) is insignificant extra-solution
activity. Note, however, that examiners should not evaluate the well-understood,
routine, conventional consideration in the Step 2A Prong Two analysis, because that
consideration is only evaluated in Step 2B.
This consideration is similar to factors used in past
Office guidance (for example, the now superseded Bilski and
Mayo analyses) that were described as mere data gathering in
conjunction with a law of nature or abstract idea. When determining whether an
additional element is insignificant extra-solution activity, examiners may consider
the following:
(1) Whether the extra-solution limitation is well
known. See Bilski v. Kappos, 561 U.S. 593, 611-12, 95
USPQ2d 1001, 1010 (2010) (well-known random analysis techniques to establish the
inputs of an equation were token extra-solution activity); Flook,
437 U.S. at 593-95, 198 USPQ at 197 (a formula would not be patentable by only
indicating that is could be usefully applied to existing surveying techniques);
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315,
1328-29, 121 USPQ2d 1928, 1937 (Fed. Cir. 2017) (the use of a well-known XML tag to
form an index was deemed token extra-solution activity). Because this overlaps with
the well-understood, routine, conventional consideration, it should not be considered
in the Step 2A Prong Two extra-solution activity analysis.
(2) Whether the limitation is significant
(i.e. it imposes meaningful limits on the claim such that it
is not nominally or tangentially related to the invention). See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16, 112 USPQ2d 1750,
1755 (Fed. Cir. 2014) (restricting public access to media was found to be
insignificant extra-solution activity); Apple, Inc. v. Ameranth,
Inc., 842 F.3d 1229, 1242, 120 USPQ2d 1844, 1855 (Fed. Cir. 2016) (in
patents regarding electronic menus, features related to types of ordering were found
to be insignificant extra-solution activity). This is considered in Step 2A Prong Two
and Step 2B.
ii. Testing a system for a response, the
response being used to determine system malfunction, In re
Meyers, 688 F.2d 789, 794; 215 USPQ 193, 196-97 (CCPA 1982);
iii. Presenting offers to potential customers
and gathering statistics generated based on the testing about how
potential customers responded to the offers; the statistics are then used
to calculate an optimized price, OIP Technologies, 788
F.3d at 1363, 115 USPQ2d at 1092-93;
vi. Determining the level of a biomarker in
blood, Mayo, 566 U.S. at 79, 101 USPQ2d at 1968. See
also PerkinElmer, Inc. v. Intema Ltd., 496 Fed. App'x
65, 73, 105 USPQ2d 1960, 1966 (Fed. Cir. 2012) (assessing or measuring
data derived from an ultrasound scan, to be used in a diagnosis).
• Selecting a particular data source or type of data to be
manipulated:
For claim limitations that add insignificant
extra-solution activity to the judicial exception (e.g., mere data
gathering in conjunction with a law of nature or abstract idea), examiners should
explain in an eligibility rejection why they do not meaningfully limit the claim. For
example, an examiner could explain that adding a final step of storing data to a
process that only recites computing the area of a space (a mathematical relationship)
does not add a meaningful limitation to the process of computing the area. For more
information on formulating a subject matter eligibility rejection, see
MPEP
§ 2106.07(a).
2106.05(h) Field of Use and Technological
Environment [R-10.2019]
Another consideration when determining whether a
claim integrates the judicial exception into a practical application in Step 2A Prong
Two or recites significantly more than a judicial exception in Step 2B is whether the
additional elements amount to more than generally linking the use of a judicial
exception to a particular technological environment or field of use. As explained by
the Supreme Court, a claim directed to a judicial exception cannot be made eligible
“simply by having the applicant acquiesce to limiting the reach of the patent for the
formula to a particular technological use.” Diamond v. Diehr, 450
U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to
merely indicating a field of use or technological environment in which to apply a
judicial exception do not amount to significantly more than the exception itself, and
cannot integrate a judicial exception into a practical application.
The courts often cite to Parker v.
Flook as providing a classic example of a field of use limitation. See,
e.g., Bilski v. Kappos, 561 U.S. 593, 612, 95 USPQ2d 1001, 1010
(2010) (“Flook established that limiting an abstract idea to one
field of use or adding token postsolution components did not make the concept
patentable”) (citing Parker v. Flook, 437 U.S. 584, 198 USPQ 193
(1978)). In Flook, the claim recited steps of calculating an
updated value for an alarm limit (a numerical limit on a process variable such as
temperature, pressure or flow rate) according to a mathematical formula “in a process
comprising the catalytic chemical conversion of hydrocarbons.” 437 U.S. at 586, 198
USPQ at 196. Processes for the catalytic chemical conversion of hydrocarbons were
used in the petrochemical and oil-refining fields. Id. Although
the applicant argued that limiting the use of the formula to the petrochemical and
oil-refining fields should make the claim eligible because this limitation ensured
that the claim did not preempt all uses of the formula, the Supreme Court disagreed.
437 U.S. at 588-90, 198 USPQ at 197-98. Instead, the additional element in
Flook regarding the catalytic chemical conversion of
hydrocarbons was not sufficient to make the claim eligible, because it was merely an
incidental or token addition to the claim that did not alter or affect how the
process steps of calculating the alarm limit value were performed. Further, the
Supreme Court found that this limitation did not amount to an inventive concept. 437
U.S. at 588-90, 198 USPQ at 197-98. The Court reasoned that to hold otherwise would
“exalt[] form over substance”, because a competent claim drafter could attach a
similar type of limitation to almost any mathematical formula. 437 U.S. at 590, 198
USPQ at 197.
In contrast, the additional elements in
Diamond v. Diehr as a whole provided eligibility and did not
merely recite calculating a cure time using the Arrhenius equation “in a rubber
molding process”. Instead, the claim in Diehr recited specific
limitations such as monitoring the elapsed time since the mold was closed, constantly
measuring the temperature in the mold cavity, repetitively calculating a cure time by
inputting the measured temperature into the Arrhenius equation, and opening the press
automatically when the calculated cure time and the elapsed time are equivalent. 450
U.S. at 179, 209 USPQ at 5, n. 5. These specific limitations act in concert to
transform raw, uncured rubber into cured molded rubber. 450 U.S. at 177-78, 209 USPQ
at 4.
A more recent example of a limitation that does no
more than generally link a judicial exception to a particular technological
environment is Affinity Labs of Texas v. DirecTV, LLC, 838 F.3d
1253, 120 USPQ2d 1201 (Fed. Cir. 2016). In Affinity Labs, the
claim recited a broadcast system in which a cellular telephone located outside the
range of a regional broadcaster (1) requests and receives network-based content from
the broadcaster via a streaming signal, (2) is configured to wirelessly download an
application for performing those functions, and (3) contains a display that allows
the user to select particular content. 838 F.3d at 1255-56, 120 USPQ2d at 1202. The
court identified the claimed concept of providing out-of-region access to regional
broadcast content as an abstract idea, and noted that the additional elements limited
the wireless delivery of regional broadcast content to cellular telephones (as
opposed to any and all electronic devices such as televisions, cable boxes,
computers, or the like). 838 F.3d at 1258-59, 120 USPQ2d at 1204. Although the
additional elements did limit the use of the abstract idea, the court explained that
this type of limitation merely confines the use of the abstract idea to a particular
technological environment (cellular telephones) and thus fails to add an inventive
concept to the claims. 838 F.3d at 1259, 120 USPQ2d at 1204.
Examples of limitations that the courts have
described as merely indicating a field of use or technological environment in which
to apply a judicial exception include:
i. A step of administering a drug providing
6-thioguanine to patients with an immune-mediated gastrointestinal disorder,
because limiting drug administration to this patient population did no more
than simply refer to the relevant pre-existing audience of doctors who used
thiopurine drugs to treat patients suffering from autoimmune disorders,
Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566
U.S. 66, 78, 101 USPQ2d 1961, 1968 (2012);
ii. Identifying the participants in a process for
hedging risk as commodity providers and commodity consumers, because limiting
the use of the process to these participants did no more than describe how the
abstract idea of hedging risk could be used in the commodities and energy
markets, Bilski, 561 U.S. at 595, 95 USPQ2d at 1010;
iii. Limiting the use of the formula C = 2 (pi) r to
determining the circumference of a wheel as opposed to other circular objects,
because this limitation represents a mere token acquiescence to limiting the
reach of the claim, Flook, 437 U.S. at 595, 198 USPQ at
199;
iv. Specifying that the abstract idea of monitoring
audit log data relates to transactions or activities that are executed in a
computer environment, because this requirement merely limits the claims to the
computer field, i.e., to execution on a generic computer,
FairWarning v. Iatric Sys., 839 F.3d 1089, 1094-95, 120
USPQ2d 1293, 1295 (Fed. Cir. 2016);
v. Language specifying that the process steps of
virus screening were used within a telephone network or the Internet, because
limiting the use of the process to these technological environments did not
provide meaningful limits on the claim, Intellectual Ventures I v.
Symantec Corp., 838 F.3d 1307, 1319-20, 120 USPQ2d 1353, 1361
(2016);
vi. Limiting the abstract idea of collecting
information, analyzing it, and displaying certain results of the collection and
analysis to data related to the electric power grid, because limiting
application of the abstract idea to power-grid monitoring is simply an attempt
to limit the use of the abstract idea to a particular technological
environment, Electric Power Group, LLC v. Alstom S.A., 830
F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016);
vii. Language informing doctors to apply a law of
nature (linkage disequilibrium) for purposes of detecting a genetic
polymorphism, because this language merely informs the relevant audience that
the law of nature can be used in this manner, Genetic Techs. Ltd. v.
Merial LLC, 818 F.3d 1369, 1379, 118 USPQ2d 1541, 1549 (Fed. Cir.
2016);
viii. Language specifying that the abstract idea of
budgeting was to be implemented using a “communication medium” that broadly
included the Internet and telephone networks, because this limitation merely
limited the use of the exception to a particular technological environment,
Intellectual Ventures I v. Capital One Bank, 792 F.3d
1363, 1367, 115 USPQ2d 1636, 1640 (Fed. Cir. 2015);
ix. Specifying that the abstract idea of using
advertising as currency is used on the Internet, because this narrowing
limitation is merely an attempt to limit the use of the abstract idea to a
particular technological environment, Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 716, 112 USPQ2d 1750, 1755 (Fed. Cir. 2014);
and
x. Requiring that the abstract idea of creating a
contractual relationship that guarantees performance of a transaction (a) be
performed using a computer that receives and sends information over a network,
or (b) be limited to guaranteeing online transactions, because these
limitations simply attempted to limit the use of the abstract idea to computer
environments, buySAFE Inc. v. Google, Inc., 765 F.3d 1350,
1354, 112 USPQ2d 1093, 1095-96 (Fed. Cir. 2014).
Examiners should be aware that the courts often use
the terms “technological environment” and “field of use” interchangeably, and thus
for purposes of the eligibility analysis examiners should consider these terms
interchangeable. Examiners should also keep in mind that this consideration overlaps
with other considerations, particularly insignificant extra-solution activity (see
MPEP
§ 2106.05(g)). For instance, a data gathering step that is
limited to a particular data source (such as the Internet) or a particular type of
data (such as power grid data or XML tags) could be considered to be both
insignificant extra-solution activity and a field of use limitation. See,
e.g., Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755
(limiting use of abstract idea to the Internet); Electric Power,
830 F.3d at 1354, 119 USPQ2d at 1742 (limiting application of abstract idea to power
grid data); Intellectual Ventures I LLC v. Erie Indem. Co., 850
F.3d 1315, 1328-29, 121 USPQ2d 1928, 1939 (Fed. Cir. 2017) (limiting use of abstract
idea to use with XML tags). Thus, examiners should carefully consider each claim on
its own merits, as well as evaluate all other relevant considerations, before making
a determination on this consideration.
For claim limitations that generally link the use of
the judicial exception to a particular technological environment or field of use,
examiners should explain in an eligibility rejection why they do not meaningfully
limit the claim. For example, an examiner could explain that employing generic
computer functions to execute an abstract idea, even when limiting the use of the
idea to one particular environment, does not add significantly more, similar to how
limiting the abstract idea in Flook to petrochemical and
oil-refining industries was insufficient. For more information on formulating a
subject matter eligibility rejection, see MPEP §
2106.07(a).
2106.06 Streamlined Analysis [R-10.2019]
For purposes of efficiency in examination, examiners may
use a streamlined eligibility analysis (Pathway A) when the eligibility of the claim is
self-evident, e.g., because the claim clearly improves a technology
or computer functionality. However, if there is doubt as to whether the applicant is
effectively seeking coverage for a judicial exception itself, the full eligibility
analysis (the Alice/Mayo test described in MPEP § 2106,
subsection III) should be conducted to determine whether the claim integrates the
judicial exception into a practical application or recites significantly more than the
judicial exception.
The results of the streamlined analysis will always be
the same as the full analysis, thus the streamlined analysis is not a means of avoiding
a finding of ineligibility that would occur if a claim were to undergo the full
eligibility analysis. Similarly, a claim that qualifies as eligible after Step 2A
(Pathway B) or Step 2B (Pathway C) of the full analysis would also be eligible if the
streamlined analysis (Pathway A) were applied to that claim. It may not be apparent that
an examiner employed the streamlined analysis because the result is a conclusion that
the claim is eligible, and there will be no rejection of the claim on eligibility
grounds. In practice, the record may reflect the conclusion of eligibility simply by the
absence of an eligibility rejection or may include clarifying remarks, when appropriate.
In the context of the flowchart in MPEP § 2106,
subsection III, if, when viewed as a whole, the eligibility of the claim is self-evident
(e.g., because the claim clearly improves a technology or computer functionality), the
claim is eligible at Pathway A, thereby concluding the eligibility analysis.
2106.06(a) Eligibility is Self Evident [R-08.2017]
A streamlined eligibility analysis can be used for a
claim that may or may not recite a judicial exception but, when viewed as a whole,
clearly does not seek to tie up any judicial exception such that others cannot
practice it. Such claims do not need to proceed through the full analysis herein as
their eligibility will be self-evident. On the other hand, a claim that does not
qualify as eligible after Step 2B of the full analysis would not be suitable for the
streamlined analysis, because the claim lacks self‐evident eligibility.
For instance, a claim directed to a complex
manufactured industrial product or process that recites meaningful limitations along
with a judicial exception may sufficiently limit its practical application so that a
full eligibility analysis is not needed. As an example, a robotic arm assembly having
a control system that operates using certain mathematical relationships is clearly
not an attempt to tie up use of the mathematical relationships and would not require
a full analysis to determine eligibility. Also, a claim that recites a nature-based
product, but clearly does not attempt to tie up the nature-based product, does not
require a markedly different characteristics analysis to identify a “product of
nature” exception. As an example, a claim directed to an artificial hip prosthesis
coated with a naturally occurring mineral is not an attempt to tie up the mineral.
Similarly, claimed products that merely include ancillary nature-based components,
such as a claim that is directed to a cellphone with an electrical contact made of
gold or a plastic chair with wood trim, would not require analysis of the
nature-based component to determine whether the claims are directed to a “product of
nature” exception because such claims do not attempt to improperly tie up the
nature-based product.
2106.06(b) Clear Improvement to a Technology or to
Computer Functionality [R-08.2017]
As explained by the Federal Circuit, some
improvements to technology or to computer functionality are not abstract when
appropriately claimed, and thus claims to such improvements do not always need to
undergo the full eligibility analysis. Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1689 (Fed. Cir. 2016).
MPEP §
2106.05(a) provides details regarding improvements to a
technology or computer functionality.
For instance, claims directed to clear improvements
to computer-related technology do not need the full eligibility analysis.
Enfish, 822 F.3d at 1339, 118 USPQ2d at 1691-92 (claims to a
self-referential table for a computer database held eligible at step 1 of the
Alice/Mayo test as not directed to an abstract idea). Claims
directed to improvements to other technologies or technological processes, beyond
computer improvements, may also avoid the full eligibility analysis. McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316, 120 USPQ2d
1091, 1103 (Fed. Cir. 2016) (claims to automatic lip synchronization and facial
expression animation found eligible at Step 1 of the Alice/Mayo
test as directed to an improvement in computer-related technology). In these cases,
when the claims were viewed as a whole, their eligibility was self-evident based on
the clear improvement, so no further analysis was needed. Although the Federal
Circuit held these claims eligible at Step 2A as not being directed to abstract
ideas, it would be reasonable for an examiner to have found these claims eligible at
Pathway A based on the clear improvement, or at Pathway B (Step 2A) as not being
directed to an abstract idea.
If the claims are a “close call” such that it is
unclear whether the claims improve technology or computer functionality, a full
eligibility analysis should be performed to determine eligibility. See
BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341,
1349, 119 USPQ2d 1236, 1241 (Fed Cir. 2016). Only when the claims clearly improve
technology or computer functionality, or otherwise have self-evident eligibility,
should the streamlined analysis be used. For example, because the claims in
BASCOM described the concept of filtering content, which is a
method of organizing human behavior previously found to be abstract, the Federal
Circuit considered them to present a “close call” in the first step of the
Alice/Mayo test (Step 2A), and thus proceeded to the second
step of the Alice/Mayo test (Step 2B) to determine their
eligibility. Id. Although the Federal Circuit held these claims
eligible at Step 2B (Pathway C) because they presented a “technology-based solution”
of filtering content on the Internet that overcame the disadvantages of prior art
filtering systems and that amounted to significantly more than the recited abstract
idea, it also would be reasonable for an examiner to have found these claims eligible
at Pathway A or B if the examiner had considered the technology-based solution to be
an improvement to computer functionality.
Eligibility rejections must be based on failure to
comply with the substantive law under 35 U.S.C. 101 as interpreted by
judicial precedent. The substantive law on eligibility is discussed in
MPEP §§
2106.03 through 2106.06.
Examination guidance, training, and explanatory examples discuss the substantive law and
establish the policies and procedures to be followed by examiners in evaluating patent
applications for compliance with the substantive law, but do not serve as a basis for a
rejection. Accordingly, while it would be acceptable for applicants to cite training
materials or examples in support of an argument for finding eligibility in an
appropriate factual situation, applicants should not be required to model their claims
or responses after the training materials or examples to attain eligibility.
When evaluating a claimed invention for compliance with
the substantive law on eligibility, examiners should review the record as a whole
(e.g., the specification, claims, the prosecution history, and any
relevant case law precedent or prior art) before reaching a conclusion with regard to
whether the claimed invention sets forth patent eligible subject matter. The evaluation
of whether the claimed invention qualifies as patent-eligible subject matter should be
made on a claim-by-claim basis, because claims do not automatically rise or fall with
similar claims in an application. For example, even if an independent claim is
determined to be ineligible, the dependent claims may be eligible because they add
limitations that integrate the judicial exception into a practical application or amount
to significantly more than the judicial exception recited in the independent claim. And
conversely, even if an independent claim is determined to be eligible, a dependent claim
may be ineligible because it adds a judicial exception without also adding limitations
that integrate the judicial exception or provide significantly more. Thus, each claim in
an application should be considered separately based on the particular elements recited
therein.
If the evaluation of the claimed invention results in a
conclusion that it is more likely than not that the claim as a whole does not satisfy
both criteria for eligibility (Step 1: NO and/or Step 2B: NO), then examiners should
formulate an appropriate rejection of that claim under Step 1 and/or Step 2B. The
rejection should set forth a prima facie case of ineligibility under
the substantive law. The concept of the prima facie case is a
procedural tool of patent examination, which allocates the burdens going forward between
the examiner and applicant. In particular, the initial burden is on the examiner to
explain why a claim or claims are ineligible for patenting clearly and specifically, so
that applicant has sufficient notice and is able to effectively respond.
When an examiner determines a claim does not fall
within a statutory category (Step 1: NO), the rejection should provide an explanation of
why the claim does not fall within one of the four statutory categories of invention.
See MPEP §
2106.03 for a discussion of Step 1 and the statutory
categories of invention.
When an examiner determines that a claim is directed to
a judicial exception (Step 2A: YES) and does not provide an inventive concept (Step 2B:
NO), the rejection should provide an explanation for each part of the Step 2 analysis.
For example, the rejection should identify the judicial exception by referring to what
is recited (i.e., set forth or described) in the claim and explain
why it is considered an exception, identify any additional elements (specifically point
to claim features/limitations/steps) recited in the claim beyond the identified judicial
exception, and explain the reason(s) that the additional elements taken individually,
and also taken as a combination, 1) do not integrate the judicial exception into a
practical application and 2) do not result in the claim as a whole amounting to
significantly more than the judicial exception. See MPEP §
2106.04et seq. for a discussion of Step 2A and the judicial exceptions,
MPEP §
2106.05et seq. for a discussion of Step 2B and the search for an inventive
concept, and MPEP § 2106.07(a) for more information
on formulating an ineligibility rejection.
If the evaluation of the claimed invention results in a
conclusion that it is more likely than not that the claimed invention falls within a
statutory category (Step 1: YES) and is either not directed to a judicial exception
(Step 2A: NO) or is directed to a judicial exception and amounts to significantly more
than the judicial exception (Step 2B: YES), then the examiner should not reject the
claim. When evaluating a response by applicant to a subject matter eligibility
rejection, examiners must carefully consider all of applicant’s arguments and evidence
presented to rebut the rejection. If applicant properly challenges the examiner’s
findings, the rejection should be withdrawn or, if the examiner deems it appropriate to
maintain the rejection, a rebuttal must be provided in the next Office action. This is
discussed in greater detail in MPEP § 2106.07(b).
After determining what has been invented and
establishing the broadest reasonable interpretation of the claimed invention (see
MPEP §
2111), the eligibility of each claim should be evaluated as
a whole using the analysis detailed in MPEP § 2106. If it is determined
that the claim does not recite eligible subject matter, a rejection under
35 U.S.C.
101 is appropriate. When making the rejection, the Office
action must provide an explanation as to why each claim is unpatentable, which must
be sufficiently clear and specific to provide applicant sufficient notice of the
reasons for ineligibility and enable the applicant to effectively respond.
A subject matter eligibility rejection under Step 2
should provide an explanation for each part of the Step 2 analysis:
• For Step 2A Prong One, the rejection should
identify the judicial exception by referring to what is recited
(i.e., set forth or described) in the claim and
explain why it is considered an exception. For example, if the
claim is directed to an abstract idea, the rejection should
identify the abstract idea as it is recited (i.e., set forth
or described) in the claim and explain why it is an abstract idea. Similarly,
if the claim is directed to a law of nature or a natural
phenomenon, the rejection should identify the law of nature or
natural phenomenon as it is recited (i.e., set forth or
described) in the claim and explain using a reasoned rationale why it is
considered a law of nature or natural phenomenon.
• For Step 2A Prong Two, the rejection should
identify any additional elements (specifically point to claim
features/limitations/steps) recited in the claim beyond the identified judicial
exception; and evaluate the integration of the judicial exception
into a practical application by explaining that 1) there are no
additional elements in the claim; or 2) the claim as a whole, looking at the
additional elements individually and in combination, does not integrate the
judicial exception into a practical application using the considerations set
forth in MPEP §§ 2106.04(d),
2106.05(a)- (c) and (e)- (h). Examiners should give weight to all of the
claimed additional elements in Prong Two, even if those elements represent
well-understood, routine, conventional activity.
• For Step 2B, the rejection should
explain why the additional elements, taken individually and in
combination, do not result in the claim, as a whole, amounting to significantly
more than the identified judicial exception. For instance, when the examiner
has concluded that certain claim elements recite well understood, routine,
conventional activities in the relevant field, the examiner must expressly
support the rejection in writing with one of the four options specified in
Subsection III.
Under the principles of compact prosecution,
regardless of whether a rejection under 35 U.S.C. 101 is made based on
lack of subject matter eligibility, a complete examination should be made for every
claim under each of the other patentability requirements: 35 U.S.C.
102, 103, 112, and
101 (utility, inventorship and double patenting) and
non-statutory double patenting. Thus, examiners should state all non-cumulative
reasons and bases for rejecting claims in the first Office action.
I. WHEN MAKING A REJECTION, IDENTIFY
AND EXPLAIN THE JUDICIAL EXCEPTION RECITED IN THE CLAIM (STEP 2A PRONG
ONE)
A subject matter eligibility rejection should
point to the specific claim limitation(s) that recites (i.e.,
sets forth or describes) the judicial exception. The rejection must explain why
those claim limitations set forth or describe a judicial exception
(e.g., a law of nature). Where the claim describes, but does
not expressly set forth, the judicial exception, the rejection must also explain
what subject matter those limitations describe, and why the described subject
matter is a judicial exception. See MPEP §
2106.04 for more information about Step 2A of the
eligibility analysis.
When the examiner has determined the claim recites
an abstract idea, the rejection should identify the abstract idea as
it is recited (i.e., set forth or described) in the claim, and
explain why it falls within one of the groupings of abstract ideas
(i.e., mathematical concepts, mental processes, or certain
methods of organizing human activity) enumerated in MPEP §
2106.04(a)(2). Alternatively, the examiner should
provide justification for why a specific limitation(s) recited in the claim is
being treated as an abstract idea if it does not fall within the groupings of
abstract ideas in accordance with the “tentative abstract idea” procedure (see
MPEP § 2106.04(a)(3)). While not required, this
explanation or justification may include citing to an appropriate court decision
that supports the identification of the subject matter recited in the claim
language as an abstract idea within one of the groupings. Examiners should be
familiar with any cited decision relied upon in making or maintaining a rejection
to ensure that the rejection is reasonably tied to the facts of the case and to
avoid relying upon language taken out of context. Examiners should not go beyond
those concepts that are enumerated as abstract ideas in MPEP §
2106.04, unless they are identifying a tentative
abstract idea in the claim, and should avoid relying upon or citing
non-precedential decisions unless the facts of the application under examination
uniquely match the facts at issue in the non-precedential decisions. Examiners are
reminded that a chart of court decisions is available on the USPTO’s Internet
website (www.uspto.gov/ PatentEligibility).
Sample explanation: The
claim recites the step of comparing collected information to a predefined
threshold, which is an act of evaluating information that can be practically
performed in the human mind. Thus, this step is an abstract idea in the “mental
process” grouping.
When the examiner has determined the claim recites
a law of nature or a natural phenomenon, the rejection
should identify the law of nature or natural phenomenon as it is recited
(i.e., set forth or described) in the claim and explain
using a reasoned rationale why it is considered a law of nature or natural
phenomenon. See MPEP § 2106.04(b) for more
information about laws of nature and natural phenomena.
Sample explanation: The
claim recites the correlation of X, and X is a law of nature because it
describes a consequence of natural processes in the human body, e.g., the
naturally-occurring relationship between the presence of Y and the
manifestation of Z.
Sample explanation: The
claim recites X, which is a natural phenomenon because it occurs in nature and
exists in principle apart from any human action.
When the examiner has determined the claim recites
a product of nature, the rejection should identify the exception as
it is recited (i.e., set forth or described) in the claim, and
explain using a reasoned rationale why the product does not have markedly
different characteristics from its naturally occurring counterpart in its natural
state. See MPEP § 2106.04(b) for more
information about products of nature, and MPEP §
2106.04(c) for more information about the markedly
different characteristics analysis.
Sample explanation: The
claim recites X, which as explained in the specification was isolated from
naturally occurring Y. X is a nature-based product, so it is compared to its
closest naturally occurring counterpart (X in its natural state) to determine
if it has markedly different characteristics. Because there is no indication in
the record that isolation of X has resulted in a marked difference in
structure, function, or other properties as compared to its counterpart, X is a
product of nature exception.
II. WHEN MAKING A REJECTION, EXPLAIN
WHY THE ADDITIONAL CLAIM ELEMENTS DO NOT RESULT IN THE CLAIM AS A WHOLE
INTEGRATING THE JUDICIAL EXCEPTION INTO A PRACTICAL APPLICATION OR AMOUNTING TO
SIGNIFICANTLY MORE THAN THE JUDICIAL EXCEPTION (STEP 2A PRONG TWO AND STEP
2B)
After identifying the judicial exception in the
rejection, identify any additional elements (features/limitations/steps) recited
in the claim beyond the judicial exception and explain why they do not integrate
the judicial exception into a practical application and do not add significantly
more to the exception. The explanation should address the additional elements both
individually and as a combination when determining whether the claim as whole
recites eligible subject matter. It is important to remember that a new
combination of steps in a process may be patent eligible even though all the steps
of the combination were individually well known and in common use before the
combination was made. Diamond v. Diehr, 450 U.S. 175, 188, 209
USPQ 1, 9 (1981). Thus, it is particularly critical to address the combination of
additional elements, because while individually-viewed elements may not appear to
integrate an exception into a practical application or add significantly more,
those additional elements when viewed in combination may amount to significantly
more than the exception by meaningfully limiting the judicial exception. See
MPEP § 2106.05 for more information about Step 2B of
the eligibility analysis.
A rejection should be made only if it is readily
apparent to an examiner relying on the examiner's expertise in the art in the Step
2A Prong Two inquiry and Step 2B inquiry that the additional elements do not
integrate the exception into a practical application and do not amount to claiming
significantly more than the recited judicial exception. When making a rejection,
it is important for the examiner to explain the rationale underlying the
conclusion so that applicant can effectively respond. On the other hand, when
appropriate, the examiner should explain why the additional elements integrate an
exception into a practical application or provide an inventive concept by adding a
meaningful limitation to the claimed exception. See MPEP §§
2106.04(d) and 2106.05 for a listing of considerations that qualify,
and to not qualify, as integrating an exception or providing significantly more
than an exception, and MPEP § 2106.07(c) for more
information on clarifying the record when a claim is found eligible.
In the Step 2B inquiry, if the examiner has
concluded that particular claim limitations are well understood, routine,
conventional activities (or elements) to those in the relevant field, the
rejection should support this conclusion in writing with a factual determination
in accordance with Subsection III below. See MPEP §
2106.05(d) for more information about well understood,
routine, conventional activities and elements, and Subsection III below for more
information about how to support a conclusion that a claim limitation is well
understood, routine, conventional activity.
For claim limitations that recite a generic
computer component performing generic computer functions at a high level of
generality, such as using the Internet to gather data, examiners can explain why
these generic computing functions do not meaningfully limit the claim. Examiners
should keep in mind that the courts have held computer-implemented processes to be
significantly more than an abstract idea (and thus eligible), where generic
computer components are able in combination to perform functions that are not
merely generic. DDR Holdings, LLC v. Hotels.com, LP, 773 F.3d
1245, 1258-59, 113 USPQ2d 1097, 1106-07 (Fed. Cir. 2014). See
MPEP § 2106.05(f) for more information about generic
computing functions that the courts have found to be mere instructions to
implement a judicial exception on a computer, and MPEP §
2106.05(d) for more information about well understood,
routine, conventional activities and elements (a relevant consideration only in
Step 2B).
For claim limitations that add insignificant
extra-solution activity to the judicial exception (e.g., mere data gathering in
conjunction with a law of nature or abstract idea), or that generally link the use
of the judicial exception to a particular technological environment or field of
use, examiners should explain why they do not meaningfully limit the claim. For
example, adding a final step of storing data to a process that only recites
computing the area of a two dimensional space (a mathematical relationship) does
not add a meaningful limitation to the process of computing the area. As another
example, employing well-known computer functions to execute an abstract idea, even
when limiting the use of the idea to one particular environment, does not
integrate the exception into a practical application or add significantly more,
similar to how limiting the computer implemented abstract idea in Flook to
petrochemical and oil-refining industries was insufficient. See e.g.,
Parker v. Flook, 437 U.S. 584, 588-90, 198 USPQ 193, 197-98 (1978)
(limiting use of mathematical formula to use in particular industries did not
amount to an inventive concept). See MPEP §
2106.05(g) for more information about insignificant
extra-solution activity, and MPEP § 2106.05(h) for more
information about generally linking use of a judicial exception to a particular
technological environment or field of use.
In the event a rejection is made, it is a best
practice for the examiner to consult the specification to determine if there are
elements that could be added to the claim to make it eligible. If so, the examiner
should identify those elements in the Office action and suggest them as a way to
overcome the rejection.
When performing the analysis at Step 2A Prong One,
it is sufficient for the examiner to provide a reasoned rationale that identifies
the judicial exception recited in the claim and explains why it is considered a
judicial exception (e.g., that the claim limitation(s) falls within one of the
abstract idea groupings). Therefore, there is no requirement for the examiner to
rely on evidence, such as publications or an affidavit or declaration under
37 CFR
1.104(d)(2), to find that a claim recites a judicial
exception. Cf. Affinity Labs of Tex., LLC v. Amazon.com Inc.,
838 F.3d 1266, 1271-72, 120 USPQ2d 1210, 1214-15 (Fed. Cir. 2016) (affirming
district court decision that identified an abstract idea in the claims without
relying on evidence); OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1362-64, 115 USPQ2d 1090, 1092-94 (Fed. Cir. 2015) (same);
Content Extraction & Transmission LLC v. Wells Fargo
Bank, N.A., 776 F.3d 1343, 1347, 113 USPQ2d 1354, 1357-58 (Fed. Cir.
2014) (same).
At Step 2A Prong Two or Step 2B, there is no
requirement for evidence to support a finding that the exception is not integrated
into a practical application or that the additional elements do not amount to
significantly more than the exception unless the examiner asserts that additional
limitations are well-understood, routine, conventional activities in Step 2B.
Examiners should not assert that an additional
element (or combination of elements) is well-understood, routine, or conventional
unless the examiner finds, and expressly supports the rejection in writing with
one or more of the following:
(A) A citation to an express statement in the
specification or to a statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional nature of the
additional element(s). A specification demonstrates the well-understood,
routine, conventional nature of additional elements when it describes the
additional elements as well-understood or routine or conventional (or an
equivalent term), as a commercially available product, or in a manner that
indicates that the additional elements are sufficiently well-known that the
specification does not need to describe the particulars of such additional
elements to satisfy 35 U.S.C. 112(a). A
finding that an element is well-understood, routine, or conventional cannot
be based only on the fact that the specification is silent with respect to
describing such element.
(B) A citation to one or more of the court
decisions discussed in MPEP § 2106.05(d),
subsection II, as noting the well-understood, routine, conventional nature
of the additional element(s). Examiners should be careful to ensure the
claim limitations before the examiner are the same as those found to be
well-understood, routine, conventional by the courts. The additional
elements under examination should be recited in the same manner, meaning
they should be recited at the same high level of generality as in those
court decisions. It is not enough that the additional elements are similar
to the elements at issue in those cases. In addition, the court decisions
discussed in MPEP § 2106.05(d),
subsection II, are not meant to imply that all computer functions are
well-understood, routine, conventional functions, or that a claim reciting a
generic computer component performing a generic computer function is
necessarily ineligible. Examiners should keep in mind that the courts have
held computer-implemented processes to be significantly more than an
abstract idea (and thus eligible), where generic computer components are
able in combination to perform functions that are not merely generic.
DDR Holdings, LLC v. Hotels.com, LP, 773 F.3d 1245,
1258-59, 113 USPQ2d 1097, 1106-07 (Fed. Cir. 2014). See
MPEP § 2106.05(f) for more
information about generic computing functions that the courts have found to
be mere instructions to implement a judicial exception on a computer.
(C) A citation to a publication that
demonstrates the well-understood, routine, conventional nature of the
additional element(s). An appropriate publication could include a book,
manual, review article, or other source that describes the state of the art
and discusses what is well-known and in common use in the relevant industry.
It does not include all items that might otherwise qualify as a "printed
publication" as used in 35 U.S.C. 102. Whether
something is disclosed in a document that is considered a "printed
publication" under 35 U.S.C. 102 is a
distinct inquiry from whether something is well-known, routine, conventional
activity. A document may be a printed publication but still fail to
establish that something it describes is well-understood, routine,
conventional activity. See Exergen Corp. v. Kaz USA, 725
Fed. App’x. 959, 966 (Fed. Cir. 2018) (the single copy of a thesis, written
in German and located in a German university library, considered to be a
"printed publication" in In re Hall, 781 F.2d 897, 228
USPQ 453 (Fed. Cir. 1986) "would not suffice to establish that something is
'well-understood, routine, and conventional activity previously engaged in
by scientists who work in the field'"). The nature of the publication and
the description of the additional elements in the publication would need to
demonstrate that the additional elements are widely prevalent or in common
use in the relevant field, comparable to the types of activity or elements
that are so well-known that they do not need to be described in detail in a
patent application to satisfy 35 U.S.C. 112(a). For
example, while U.S. patents and published applications are publications,
merely finding the additional element in a single patent or published
application would not be sufficient to demonstrate that the additional
element is well-understood, routine, conventional, unless the patent or
published application demonstrates that the additional element is widely
prevalent or in common use in the relevant field.
(D) A statement that the examiner is taking
official notice of the well-understood, routine, conventional nature of the
additional element(s). This option should be used only when examiners are
certain, based upon their personal knowledge, that the additional element(s)
represents well-understood, routine, conventional activity engaged in by
those in the relevant art, in that the additional elements are widely
prevalent or in common use in the relevant field, comparable to the types of
activity or elements that are so well-known that they do not need to be
described in detail in a patent application to satisfy 35 U.S.C.
112(a). For example, the examiner could take official
notice that a generic computer component performing generic computer
functions at a high level of generality, such as using the Internet to
gather data, is well-understood, routine, conventional. Procedures for
taking official notice and addressing an applicant’s challenge to official
notice are discussed in MPEP § 2144.03.
2106.07(a)(1) Form Paragraphs for use in Lack of
Subject Matter Eligibility Rejections [R-10.2019]
Use form paragraphs 7.04.01,
7.05,
and 7.05.01 for rejections based on a failure to
claim an invention that falls within the statutory categories of invention (i.e.,
the claim is not to one of the four statutory categories of invention and is thus
rejected at Step 1 of the eligibility analysis).
Use form paragraphs 7.04.01,
7.05,
and 7.05.016 for rejections based on a failure to
claim an invention that is directed to patent-eligible subject matter, i.e., the
claim is directed to a judicial exception without providing an inventive
concept/significantly more, and is thus rejected at Step 2B of the eligibility
analysis. If the judicial exception to which the claim is directed is a "tentative
abstract idea," i.e., an abstract idea that does not fall within any of the
groupings of abstract ideas discussed in MPEP §
2106.04(a)(2), then the Step 2B rejection must also use
form paragraph 7.05.017 (in addition to form paragraphs
7.04.01, 7.05, and
7.05.016) and include the TC Director's
signature.
¶ 7.04.01 Statement of Statutory Basis, 35 U.S.C. 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a
patent therefor, subject to the conditions and requirements of this title.
Examiner Note:
This form paragraph must precede the first use of
35 U.S.C.
101 in all first actions on the merits and final rejections.
Examiner Note:
1. This form paragraph must be preceded by form paragraph
7.04.01 in
first actions and final rejections.
2. This form paragraph must be followed by a detailed explanation of
the grounds of rejection using one or more of form paragraphs
7.05.01,
7.05.016,
7.05.017,
7.05.02,
7.05.03,
or another appropriate reason.
Examiner Note:
2. In bracket 1, explain why the claimed invention is not patent
eligible subject matter by identifying what the claim(s) is/are directed to and explain
why it does not fall within at least one of the four categories of patent eligible
subject matter recited in 35 U.S.C. 101 (process, machine,
manufacture, or composition of matter), e.g., the claim(s) is/are directed to a signal
per se, mere information in the form of data, a contract between
two parties, or a human being (see MPEP § 2106, subsection I).
3. For a claim that is directed to a judicial exception and is
nonstatutory, use form paragraph 7.05.016.
the claimed invention is directed to [1] without
significantly more. The claim(s) recite(s) [2]. This judicial exception is not
integrated into a practical application because [3]. The claim(s) does/do not
include additional elements that are sufficient to amount to significantly more than the
judicial exception because [4].
Examiner Note:
1. This form paragraph should be preceded by form paragraph
7.05. For
claims that recite a tentative abstract idea (i.e., a limitation identified as an
abstract idea even though it does not fall within the groupings of abstract ideas
discussed in MPEP § 2106.04(a)(2)), this form
paragraph should be accompanied by form paragraph 7.05.017.
2. This form paragraph is for use with all product (machine,
manufacture, and composition of matter) and process claims, and for all claims directed
to a law of nature, natural phenomenon (including a product of nature), or abstract
idea.
3. In bracket 1, identify whether the claim(s) are directed to a
law of nature, a natural phenomenon (including a product of nature), or an abstract
idea.
4. In bracket 2, identify the exception by referring to how it is
recited in the claim and explain why it is considered an exception (e.g., for an
abstract idea, identify the abstract idea grouping in MPEP §
2106.04(a)(2) into which the recited exception falls). For
example, "the Arrhenius equation, which is a law of nature and a mathematical concept
which describes the relationship between temperature and reaction rate" or "the series
of steps instructing how to hedge risk, which is a fundamental economic practice and
thus grouped as a certain method of organizing human interactions." For a product of
nature exception, refer to how it is recited in the claim and explain why its
characteristics are not markedly different from the product’s naturally occurring
counterpart in its natural state. For example, "the naturally occurring DNA segment,
which is not markedly different from its naturally occurring counterpart because it
conveys the same genetic information." Provide additional explanation regarding the
exception and how it has been identified when appropriate.
5. In bracket 3, explain why the combination of additional
elements fails to integrate the judicial exception into a practical application. For
example, if the claim is directed to an abstract idea with additional generic computer
elements, explain that the generically recited computer elements do not add a meaningful
limitation to the abstract idea because they amount to simply implementing the abstract
idea on a computer; or, if the claim is directed to a method of using a naturally
occurring correlation, explain that data gathering steps required to use the correlation
do not add a meaningful limitation to the method as they are insignificant
extra-solution activity. Similarly, if the claim recites a "naturally occurring DNA
segment" with an additional element of a test tube, explain that merely placing the
product of nature into a generic container such as a test tube does not add a meaningful
limitation as it is merely a nominal or token extra-solution component of the claim, and
is nothing more than an attempt to generally link the product of nature to a particular
technological environment.
6. In bracket 4, identify the additional elements and explain why,
when considered separately and in combination, they do not add significantly more (also
known as an "inventive concept") to the exception. For example, if the additional
limitations only store and retrieve information in memory, explain that these are
well-understood, routine, conventional computer functions as recognized by the court
decisions listed in MPEP § 2106.05(d).
Examiner Note:
2. Approval from the TC Director is required to treat a tentative
abstract idea (i.e., a claim limitation(s) that does not fall within the groupings of
abstract ideas discussed in MPEP § 2106.04(a)(2)) as an abstract
idea. This form paragraph should be used to demonstrate that this approval has been
obtained.
3. In bracket 1, provide the justification for why the claim
limitation(s) is/are being treated as an abstract idea. For example, provide an
explanation of why the claim limitation is among the "basic tools of scientific and
technological work."
4. In bracket 2, insert the TC Director's signature. Approval of
the TC Director is required to treat a claim limitation that does not fall within the
groupings of abstract ideas discussed in MPEP §
2106.04(a)(2) as reciting an abstract idea. See
MPEP §
2106.04(a)(3).
2106.07(b) Evaluating Applicant’s Response [R-10.2019]
After examiners identify and explain in the record
the reasons why a claim is directed to an abstract idea, natural phenomenon, or law
of nature without significantly more, then the burden shifts to the applicant to
either amend the claim or make a showing of why the claim is eligible for patent
protection.
In response to a rejection based on failure to claim
patent-eligible subject matter, applicant may: (i) amend the claim, e.g., to add
additional elements or modify existing elements so that the claim as a whole amounts
to significantly more than the judicial exception, (or integrates the judicial
exception into a practical application), (ii) present persuasive arguments based on a
good faith belief as to why the rejection is in error and/or (iii) submit evidence
traversing a subject matter eligibility rejection according to the procedures set
forth in MPEP §
716.01 and 37 CFR 1.132. When evaluating a
response, examiners must carefully consider all of applicant's arguments and evidence
rebutting the subject matter eligibility rejection. If applicant has amended the
claim, examiners should determine the amended claim’s broadest reasonable
interpretation and again perform the subject matter eligibility analysis.
If applicant's claim amendment(s), evidence, and/or
argument(s) persuasively establish that the claim is not directed to a judicial
exception or is directed to significantly more than a judicial exception, the
rejection should be withdrawn. Applicant may argue that a claim is eligible because
the claim as a whole integrates the judicial exception into a practical application
or amounts to significantly more than the judicial exception when the additional
elements are considered both individually and in combination. When an additional
element is considered individually by the examiner, the additional element may be
enough to integrate the judicial exception into a practical application or to qualify
as "significantly more" if it meaningfully limits the judicial exception,
e.g., it improves another technology or technical field,
improves the functioning of a computer itself.
In addition, even if an element does not integrate a
judicial exception into a practical application or amount to significantly more on
its own (e.g., because it is merely a generic computer component
performing generic computer functions), it can still integrate or amount to
significantly more when considered in combination with the other elements of the
claim. For example, generic computer components that individually perform merely
generic computer functions (e.g., a CPU that performs mathematical
calculations or a clock that produces time data) in some instances are able in
combination to perform functions that are not generic computer functions and
therefore integrate or amount to significantly more than an abstract idea (and are
thus eligible).
If applicant properly challenges the examiner's
findings but the examiner deems it appropriate to maintain the rejection, a rebuttal
must be provided in the next Office action. Several examples of appropriate examiner
responses are provided below.
(1) If applicant challenges the identification of a
tentative abstract idea that was based on a court case and the challenge is not
persuasive, an appropriate response would be an explanation as to why the
abstract idea identified in the claim is similar to the concept in the cited
case.
(2) If applicant responds to an examiner's assertion
that something is well-known, routine, conventional activity with a specific
argument or evidence that the additional elements in a claim are not
well-understood, routine, conventional activities previously engaged in by
those in the relevant art, the examiner should reevaluate whether the
additional elements are in actuality well-known, routine, conventional
activities to those who work in the relevant field. It is especially necessary
for the examiner to fully reevaluate their position when such additional
elements are not discussed in the specification as being known generic
functions/components/activities or are not treated by the courts as
well-understood, routine, conventional activities. If the rejection is to be
maintained, the examiner should consider whether evidence should be provided to
further support the rejection and clarify the record for appeal. See
MPEP § 2106.05(d) for examples of elements that the
courts have found to be well understood, routine and conventional activity. If
the examiner has taken official notice per item (D) of subsection III above
that an element(s) is well-understood, routine, conventional activity, and the
applicant challenges the examiner's position, specifically stating that such
element(s) is not well-understood, routine, conventional activity, the examiner
must then provide one of the items discussed in paragraphs (A) through (C) of
subsection III above, or an affidavit or declaration under 37 CFR
1.104(d)(2) setting forth specific factual statements and
explanation to support the examiner’s position. See also MPEP §
2106.07(b), item (2).
(3) If applicant amends a claim to add a generic
computer or generic computer components and asserts that the claim is
integrated into a practical application or recites significantly more because
the generic computer is 'specially programmed' (as in
Alappat, now considered superseded) or is a 'particular
machine' (as in Bilski), the examiner should look at whether
the added elements integrate the judicial exception into a practical
application or provide significantly more than the judicial exception. Merely
adding a generic computer, generic computer components, or a programmed
computer to perform generic computer functions does not automatically overcome
an eligibility rejection. Alice Corp. Pty. Ltd. v. CLS Bank
Int'l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1984 (2014). See also
OIP Techs. v. Amazon.com, 788 F.3d 1359, 1364, 115 USPQ2d
1090, 1093-94 (Fed. Cir. 2015) (“Just as Diehr could not
save the claims in Alice, which were directed to
‘implement[ing] the abstract idea of intermediated settlement on a generic
computer’, it cannot save OIP's claims directed to
implementing the abstract idea of price optimization on a generic computer.”)
(citations omitted).
(4) If applicant argues that the claim is specific
and does not preempt all applications of the exception, the examiner should
reconsider Step 2A of the eligibility analysis, e.g., to
determine whether the claim is directed to an improvement to the functioning of
a computer or to any other technology or technical field. If an examiner still
determines that the claim is directed to a judicial exception, the examiner
should then reconsider in Step 2B whether the additional elements in
combination (as well as individually) amount to an inventive concept,
e.g., because they are more than the non-conventional and
non-generic arrangement of known, conventional elements. Such reconsideration
is appropriate because, although preemption is not a standalone test for
eligibility, it remains the underlying concern that drives the two-part
framework from Alice Corp. and Mayo
(Steps 2A and 2B). Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1150, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016); Rapid
Litig. Mgmt. v. CellzDirect, Inc., 827 F.3d 1042, 1052, 119 USPQ2d
1370, 1376 (Fed. Cir. 2016); Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379, 115 USPQ2d 1152, 1158 (Fed. Cir. 2015).
2106.07(c) Clarifying the Record [R-08.2017]
When the claims are deemed patent eligible, the
examiner may make clarifying remarks on the record. For example, if a claim is found
eligible because it improves upon existing technology, the examiner could reference
the portion of the specification that describes the claimed improvement and note the
claim elements that produce that improvement. The clarifying remarks may be made at
any point during prosecution as well as with a notice of allowance.
Clarifying remarks may be useful in explaining the
rationale for a rejection as well. For instance, explaining the broadest reasonable
interpretation (BRI) of a claim will assist applicant in understanding and responding
to a rejection. As an example, a rejection for failure to recite patent eligible
subject matter in a claim to a computer readable medium could include an explanation
that the broadest reasonable interpretation of the claim covers a carrier wave, which
does not fall within one of the four categories of invention, and a suggestion to
overcome the rejection by submitting a narrowing amendment to cover the statutory
embodiments.