[Federal Register Volume 84, Number 4 (Monday, January 7, 2019)]
[Notices]
[Pages 50-57]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2018-28282]


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Notices
                                                Federal Register
________________________________________________________________________

This section of the FEDERAL REGISTER contains documents other than rules 
or proposed rules that are applicable to the public. Notices of hearings 
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Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019 / 
Notices

[[Page 50]]



DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

[Docket No. PTO-P-2018-0053]


2019 Revised Patent Subject Matter Eligibility Guidance

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Examination Guidance; Request for comments.

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SUMMARY: The United States Patent and Trademark Office (USPTO) has 
prepared revised guidance (2019 Revised Patent Subject Matter 
Eligibility Guidance) for use by USPTO personnel in evaluating subject 
matter eligibility. The 2019 Revised Patent Subject Matter Eligibility 
Guidance revises the procedures for determining whether a patent claim 
or patent application claim is directed to a judicial exception (laws 
of nature, natural phenomena, and abstract ideas) under Step 2A of the 
USPTO's Subject Matter Eligibility Guidance in two ways. First, the 
2019 Revised Patent Subject Matter Eligibility Guidance explains that 
abstract ideas can be grouped as, e.g., mathematical concepts, certain 
methods of organizing human activity, and mental processes. Second, 
this guidance explains that a patent claim or patent application claim 
that recites a judicial exception is not ``directed to'' the judicial 
exception if the judicial exception is integrated into a practical 
application of the judicial exception. A claim that recites a judicial 
exception, but is not integrated into a practical application, is 
directed to the judicial exception under Step 2A and must then be 
evaluated under Step 2B (inventive concept) to determine the subject 
matter eligibility of the claim. The USPTO is seeking public comment on 
its subject matter eligibility guidance, and particularly the 2019 
Revised Patent Subject Matter Eligibility Guidance.

DATES: 
    Applicable Date: The 2019 Revised Patent Subject Matter Eligibility 
Guidance is effective on January 7, 2019. The 2019 Revised Patent 
Subject Matter Eligibility Guidance applies to all applications, and to 
all patents resulting from applications, filed before, on, or after 
January 7, 2019.
    Comment Deadline Date: Written comments must be received on or 
before March 8, 2019.

ADDRESSES: Comments must be sent by electronic mail message over the 
internet addressed to: <a href="/cdn-cgi/l/email-protection#e9ac85808e808b8085809d90dbd9d8d0a99c9a999d86c78e869f"><span class="__cf_email__" data-cfemail="2d6841444a444f44414459541f1d1c146d585e5d5942034a425b">[email protected]</span></a>.
    Electronic comments submitted in plain text are preferred, but also 
may be submitted in ADOBE[supreg] portable document format or MICROSOFT 
WORD[supreg] format. Comments not submitted electronically should be 
submitted on paper in a format that facilitates convenient digital 
scanning into ADOBE[supreg] portable document format. The comments will 
be available for viewing via the USPTO's internet website (http://www.uspto.gov). Because comments will be made available for public 
inspection, information that the submitter does not desire to make 
public, such as an address or phone number, should not be included in 
the comments.

FOR FURTHER INFORMATION CONTACT: June E. Cohan, Senior Legal Advisor, 
at 571-272-7744 or Carolyn Kosowski, Senior Legal Advisor, at 571-272-
7688, both with the Office of Patent Legal Administration.

SUPPLEMENTARY INFORMATION: Patent subject matter eligibility under 35 
U.S.C. 101 has been the subject of much attention over the past decade. 
Recently, much of that attention has focused on how to apply the U.S. 
Supreme Court's framework for evaluating eligibility (often called the 
Alice/Mayo test).\1\ Properly applying the Alice/Mayo test in a 
consistent manner has proven to be difficult, and has caused 
uncertainty in this area of the law. Among other things, it has become 
difficult in some cases for inventors, businesses, and other patent 
stakeholders to reliably and predictably determine what subject matter 
is patent-eligible. The legal uncertainty surrounding Section 101 poses 
unique challenges for the USPTO, which must ensure that its more than 
8500 patent examiners and administrative patent judges apply the Alice/
Mayo test in a manner that produces reasonably consistent and 
predictable results across applications, art units and technology 
fields.
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    \1\ Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217-
18 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., 
Inc., 566 U.S. 66 (2012)).
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    Since the Alice/Mayo test was announced and began to be extensively 
applied, the courts and the USPTO have tried to consistently 
distinguish between patent-eligible subject matter and subject matter 
falling within a judicial exception. Even so, patent stakeholders have 
expressed a need for more clarity and predictability in its 
application. In particular, stakeholders have expressed concern with 
the proper scope and application of the ``abstract idea'' exception. 
Some courts share these concerns, for example as demonstrated by 
several recent concurrences and dissents in the U.S. Court of Appeals 
for the Federal Circuit (``Federal Circuit'') calling for changes in 
the application of Section 101 jurisprudence.\2\ Many stakeholders, 
judges, inventors, and practitioners across the spectrum have argued 
that something needs to be done to increase clarity and consistency in 
how Section 101 is currently applied.
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    \2\ See, e.g., Interval Licensing LLC, v. AOL, Inc., 896 F.3d 
1335, 1348 (Fed. Cir. 2018) (Plager, J., concurring in part and 
dissenting in part); Smart Sys. Innovations, LLC v. Chicago Transit 
Auth., 873 F.3d 1364, 1377 (Fed. Cir. 2017) (Linn, J., dissenting in 
part and concurring in part); Berkheimer v. HP Inc., 890 F.3d 1369, 
1376 (Fed. Cir. 2018) (Lourie, J., joined by Newman, J., concurring 
in denial of rehearing en banc).
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    To address these and other concerns, the USPTO is revising its 
examination procedure with respect to the first step of the Alice/Mayo 
test \3\ (Step 2A of the USPTO's Subject Matter Eligibility Guidance as 
incorporated into the Manual of Patent Examining Procedure (``MPEP'') 
2106) \4\ by: (1) Providing groupings of subject matter that is 
considered an abstract idea; and (2) clarifying that a claim is not 
``directed to'' a judicial exception if the judicial exception is 
integrated into a practical application of that exception.
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    \3\ The first step of the Alice/Mayo test is to determine 
whether the claims are ``directed to'' a judicial exception. Alice, 
573 U.S. at 217 (citing Mayo, 566 U.S. at 77).
    \4\ All references to the MPEP in the 2019 Revised Patent 
Subject Matter Eligibility Guidance are to the Ninth Edition, 
Revision 08-2017 (rev. Jan. 2018), unless otherwise indicated.

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[[Page 51]]

    Section I of this 2019 Revised Patent Subject Matter Eligibility 
Guidance explains that the judicial exceptions are for subject matter 
that has been identified as the ``basic tools of scientific and 
technological work,'' \5\ which includes ``abstract ideas'' such as 
mathematical concepts, certain methods of organizing human activity, 
and mental processes; as well as laws of nature and natural phenomena. 
Only when a claim recites a judicial exception does the claim require 
further analysis in order to determine its eligibility. The groupings 
of abstract ideas contained in this guidance enable USPTO personnel to 
more readily determine whether a claim recites subject matter that is 
an abstract idea.
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    \5\ Mayo, 566 U.S. at 71 (``Phenomena of nature, though just 
discovered, mental processes, and abstract intellectual concepts are 
not patentable, as they are the basic tools of scientific and 
technological work'' (quoting Gottschalk v. Benson, 409 U.S. 63, 67 
(1972)).
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    Section II explains that the USPTO has set forth a revised 
procedure, rooted in Supreme Court caselaw, to determine whether a 
claim is ``directed to'' a judicial exception under the first step of 
the Alice/Mayo test (USPTO Step 2A).
    Section III explains the revised procedure that will be applied by 
the USPTO. The procedure focuses on two aspects of Revised Step 2A: (1) 
Whether the claim recites a judicial exception; and (2) whether a 
recited judicial exception is integrated into a practical application. 
Only when a claim recites a judicial exception and fails to integrate 
the exception into a practical application, is the claim ``directed 
to'' a judicial exception, thereby triggering the need for further 
analysis pursuant to the second step of the Alice/Mayo test (USPTO Step 
2B). Finally, if further analysis at Step 2B is needed (for example to 
determine whether the claim merely recites well-understood, routine, 
conventional activity), this 2019 Revised Patent Subject Matter 
Eligibility Guidance explains that the examiner or administrative 
patent judge will proceed in accordance with existing USPTO guidance as 
modified in April 2018.\6\
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    \6\ USPTO Memorandum of April 19, 2018, ``Changes in Examination 
Procedure Pertaining to Subject Matter Eligibility, Recent Subject 
Matter Eligibility Decision (Berkheimer v. HP, Inc.)'' (Apr. 19, 
2018), available at https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-20180419.PDF [hereinafter ``USPTO 
Berkheimer Memorandum''].
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    The USPTO is seeking public comment on its subject matter 
eligibility guidance, and particularly the 2019 Revised Patent Subject 
Matter Eligibility Guidance. The USPTO is determined to continue its 
mission to provide predictable and reliable patent rights in accordance 
with this rapidly evolving area of the law. The USPTO's ultimate goal 
is to draw distinctions between claims to principles in the abstract 
and claims that integrate those principles into a practical 
application. To that end, the USPTO may issue further guidance, or 
modify the current guidance, in the future based on its review of the 
comments received, further experience of the USPTO and its 
stakeholders, and additional judicial actions. Implementation of 
examination guidance on eligibility is an iterative process and may 
continue with periodic supplements. The USPTO invites the public to 
submit suggestions on eligibility-related topics to address in future 
guidance supplements as part of their comments on the USPTO's subject 
matter eligibility guidance.
    Impact on Examination Procedure and Prior Examination Guidance: 
This 2019 Revised Patent Subject Matter Eligibility Guidance supersedes 
MPEP 2106.04(II) (Eligibility Step 2A: Whether a Claim Is Directed to a 
Judicial Exception) to the extent it equates claims ``reciting'' a 
judicial exception with claims ``directed to'' a judicial exception, 
along with any other portion of the MPEP that conflicts with this 
guidance. A chart identifying portions of the MPEP that are affected by 
this guidance will be available for viewing via the USPTO's internet 
website (http://www.uspto.gov). This 2019 Revised Patent Subject Matter 
Eligibility Guidance also supersedes all versions of the USPTO's 
``Eligibility Quick Reference Sheet Identifying Abstract Ideas'' (first 
issued in July 2015 and updated most recently in July 2018). 
Eligibility-related guidance issued prior to the Ninth Edition, R-
08.2017, of the MPEP (published Jan. 2018) should not be relied upon. 
However, any claim considered patent eligible under prior guidance 
should be considered patent eligible under this guidance.
    This guidance does not constitute substantive rulemaking and does 
not have the force and effect of law. The guidance sets out agency 
policy with respect to the USPTO's interpretation of the subject matter 
eligibility requirements of 35 U.S.C. 101 in view of decisions by the 
Supreme Court and the Federal Circuit. The guidance was developed as a 
tool for internal USPTO management and does not create any right or 
benefit, substantive or procedural, enforceable by any party against 
the USPTO. Rejections will continue to be based upon the substantive 
law, and it is those rejections that are appealable to the Patent Trial 
and Appeal Board (PTAB) and the courts. All USPTO personnel are, as a 
matter of internal agency management, expected to follow the guidance. 
Failure of USPTO personnel to follow the guidance, however, is not, in 
itself, a proper basis for either an appeal or a petition.

I. Groupings of Abstract Ideas

    The Supreme Court has held that the patent eligibility statute, 
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.'' \7\ 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.'' \8\
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    \7\ Alice Corp., 573 U.S. at 216 (internal citation and 
quotation marks omitted); Mayo, 566 U.S. at 71.
    \8\ Id. (internal citation and quotation marks omitted).
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    Since the Alice case, courts have been ``compare[ing] claims at 
issue to those claims already found to be directed to an abstract idea 
in previous cases.'' \9\ Likewise, the USPTO has issued guidance to the 
patent examining corps about Federal Circuit decisions applying the 
Alice/Mayo test, for instance describing the subject matter claimed in 
the patent in suit and noting whether or not certain subject matter has 
been identified as an abstract idea.\10\
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    \9\ See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 
(Fed. Cir. 2016); see also Amdocs (Israel) Ltd. v. Openet Telecom, 
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (``[T]he decisional 
mechanism courts now apply [to identify an abstract idea] is to 
examine earlier cases in which a similar or parallel descriptive 
nature can be seen--what prior cases were about, and which way they 
were decided.'').
    \10\ See, e.g., 2014 Interim Guidance on Subject Matter 
Eligibility, 79 FR 74618, 74628-32 (Dec. 16, 2014) (discussing 
concepts identified as abstract ideas); July 2015 Update: Subject 
Matter Eligibility (Jul. 30, 2015), at 3-5, available at https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-update.pdf 
(same); USPTO Memorandum of May 19, 2016, ``Recent Subject Matter 
Eligibility Decisions (Enfish, LLC v. Microsoft Corp. and TLI 
Communications LLC v. A.V. Automotive, LLC),'' at 2 (May 19, 2016), 
available at https://www.uspto.gov/sites/default/files/documents/ieg-may-2016_enfish_memo.pdf [hereinafter, ``USPTO Enfish 
Memorandum''] (discussing the abstract idea in TLI Communications 
LLC v. A.V. Automotive, LLC, 823 F.3d 607 (Fed. Cir. 2016)); USPTO 
Memorandum of November 2, 2016, ``Recent Subject Matter Eligibility 
Decisions,'' at 2 (Nov. 2, 2016), available at https://www.uspto.gov/sites/default/files/documents/McRo-Bascom-Memo.pdf 
[hereinafter, ``USPTO McRo Memorandum''] (discussing how the claims 
in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 
(Fed. Cir. 2016), were directed to an improvement instead of an 
abstract idea); USPTO Memorandum of April 2, 2018, ``Recent Subject 
Matter Eligibility Decisions'' (Apr. 2, 2018), available at https://www.uspto.gov/sites/default/files/documents/memo-recent-sme-ctdec-20180402.PDF [hereinafter ``USPTO Finjan Memorandum''] (discussing 
how the claims in Finjan Inc. v. Blue Coat Systems, Inc., 879 F.3d 
1299 (Fed. Cir. 2018), and Core Wireless Licensing, S.A.R.L. v. LG 
Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018), were directed to 
improvements instead of abstract ideas); USPTO Berkheimer Memorandum 
at 2 (discussing the abstract idea in Berkheimer); MPEP 2106.04(a) 
(reviewing cases that did and did not identify abstract ideas).

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[[Page 52]]

    While that approach was effective soon after Alice was decided, it 
has since become impractical. The Federal Circuit has now issued 
numerous decisions identifying subject matter as abstract or non-
abstract in the context of specific cases, and that number is 
continuously growing. In addition, similar subject matter has been 
described both as abstract and not abstract in different cases.\11\ The 
growing body of precedent has become increasingly more difficult for 
examiners to apply in a predictable manner, and concerns have been 
raised that different examiners within and between technology centers 
may reach inconsistent results.
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    \11\ E.g., compare TLI Commc'ns, 823 F.3d at 611, with Enfish, 
822 F.3d at 1335, and Visual Memory LLC v. NVIDIA Corp., 867 F.3d 
1253, 1258 (Fed. Cir. 2017). While computer operations such as 
``output of data analysis . . . can be abstract,'' Credit Acceptance 
Corp. v. Westlake Servs., 859 F.3d 1044, 1056 (Fed. Cir. 2017), 
``software-based innovations can [also] make `non-abstract 
improvements to computer technology' and be deemed patent-eligible 
subject matter at step 1 [of the Mayo/Alice test],'' Finjan, 879 
F.3d at 1304 (quoting Enfish, 822 F.3d at 1335). Indeed, the Federal 
Circuit has held that ``improvements in computer-related 
technology'' and ``claims directed to software'' are not 
``inherently abstract.'' Enfish, 822 F.3d at 1335; see also Visual 
Memory, 867 F.3d at 1258. These developments in the caselaw can 
create complications for the patent-examination process. For 
example, claims in one application could be deemed to be abstract, 
whereas slightly different claims directed to the same or similar 
subject matter could be determined to reflect a patent eligible 
``improvement.'' Alternatively, claims in one application could be 
found to be abstract, whereas claims to the same or similar subject 
matter in another application, containing additional or different 
embodiments in the specification, could be deemed eligible as not 
directed to an abstract idea. In other words, the finding that the 
subject matter claimed in a prior patent was ``abstract'' as claimed 
may not determine whether similar subject matter in another 
application, claimed somewhat differently or supported by a 
different disclosure, is directed to an abstract idea and therefore 
patent ineligible.
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    The USPTO, therefore, aims to clarify the analysis. In accordance 
with judicial precedent and in an effort to improve consistency and 
predictability, the 2019 Revised Patent Subject Matter Eligibility 
Guidance extracts and synthesizes key concepts identified by the courts 
as abstract ideas to explain that the abstract idea exception includes 
the following groupings of subject matter, when recited as such in a 
claim limitation(s) (that is, when recited on their own or per se):
    (a) Mathematical concepts--mathematical relationships, mathematical 
formulas or equations, mathematical calculations; \12\
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    \12\ Bilski v. Kappos, 561 U.S. 593, 611 (2010) (``The concept 
of hedging . . . reduced to a mathematical formula . . . is an 
unpatentable abstract idea[.]''); Diamond v. Diehr, 450 U.S. 175, 
191 (1981) (``A mathematical formula as such is not accorded the 
protection of our patent laws'') (citing Benson, 409 U.S. 63); 
Parker v. Flook, 437 U.S. 584, 594 (1978) (``[T]he discovery of [a 
mathematical formula] cannot support a patent unless there is some 
other inventive concept in its application.''); Benson, 409 U.S. at 
71-72 (concluding that permitting a patent on the claimed invention 
``would wholly pre-empt the mathematical formula and in practical 
effect would be a patent on the algorithm itself''); Mackay Radio & 
Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939) (``[A] 
scientific truth, or the mathematical expression of it, is not 
patentable invention[.]''); SAP America, Inc. v. InvestPic, LLC, 898 
F.3d 1161, 1163 (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 (Fed. Cir. 2014) (holding 
that claims to a ``process of organizing information through 
mathematical correlations'' are directed to an abstract idea); 
Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 
F.3d 1266, 1280 (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).
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    (b) Certain methods of organizing human activity--fundamental 
economic principles or practices (including hedging, insurance, 
mitigating risk); commercial or legal interactions (including 
agreements in the form of contracts; legal obligations; advertising, 
marketing or sales activities or behaviors; business relations); 
managing personal behavior or relationships or interactions between 
people (including social activities, teaching, and following rules or 
instructions); \13\ and
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    \13\ Alice, 573 U.S. at 219-20 (concluding that use of a third 
party to mediate settlement risk is a ``fundamental economic 
practice'' and thus an abstract idea); id. (describing the concept 
of risk hedging identified as an abstract idea in Bilski as ``a 
method of organizing human activity''); Bilski, 561 U.S. at 611-612 
(concluding that hedging is a ``fundamental economic practice'' and 
therefore an abstract idea); Bancorp, 687 F.3d at 1280 (concluding 
that ``managing a stable value protected life insurance policy by 
performing calculations and manipulating the results'' is an 
abstract idea); Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 
876 F.3d 1372, 1378-79 (Fed. Cir. 2017) (holding that concept of 
``local processing of payments for remotely purchased goods'' is a 
``fundamental economic practice, which Alice made clear is, without 
more, outside the patent system.''); OIP Techs., Inc. v. Amazon.com, 
Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) (concluding that 
claimed concept of ``offer-based price optimization'' is an abstract 
idea ``similar to other `fundamental economic concepts' found to be 
abstract ideas by the Supreme Court and this court''); buySAFE, Inc. 
v. Google, Inc., 765 F.3d. 1350, 1355 (Fed. Cir. 2014) (holding that 
concept of ``creating a contractual relationship--a `transaction 
performance guaranty' '' is an abstract idea); In re Comiskey, 554 
F.3d 967, 981 (Fed. Cir. 2009) (claims directed to ``resolving a 
legal dispute between two parties by the decision of a human 
arbitrator'' are ineligible); Ultramercial, Inc. v. Hulu, LLC, 772 
F.3d 709, 715 (Fed Cir. 2014) (holding that claim ``describe[ing] 
only the abstract idea of showing an advertisement before delivering 
free content'' is patent ineligible); In re Ferguson, 558 F.3d 1359, 
1364 (Fed Cir. 2009) (holding methods ``directed to organizing 
business or legal relationships in the structuring of a sales force 
(or marketing company)'' to be ineligible); Credit Acceptance, 859 
F.3d 1044 at 1054 (``The Board determined that the claims are 
directed to the abstract idea of `processing an application for 
financing a purchase.' . . . We agree.''); Interval Licensing, 896 
F.3d at 1344-45 (concluding 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.''); Voter Verified, Inc. v. Election 
Systems & Software, LLC, 887 F.3d 1376, 1385 (Fed. Cir. 2018) 
(finding the concept of ``voting, verifying the vote, and submitting 
the vote for tabulation,'' a ``fundamental activity'' that humans 
have performed for hundreds of years, to be an abstract idea); In re 
Smith, 815 F.3d 816, 818 (Fed. Cir. 2016) (concluding that 
``[a]pplicants' claims, directed to rules for conducting a wagering 
game'' are abstract).
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    (c) Mental processes--concepts performed in the human mind \14\ 
(including an observation, evaluation, judgment, opinion).\15\
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    \14\ If a claim, under its broadest reasonable interpretation, 
covers performance in the mind but for the recitation of generic 
computer components, then it is still in the mental processes 
category unless the claim cannot practically be performed in the 
mind. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 
1307, 1318 (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.''); Mortg. Grader, Inc. v. First 
Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (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''); Versata Dev. Grp. v. SAP Am., Inc., 
793 F.3d 1306, 1335 (Fed. Cir. 2015) (``Courts 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.''); CyberSource Corp. v. Retail 
Decisions, Inc., 654 F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding 
that the incidental use of ``computer'' or ``computer readable 
medium'' does not make a claim otherwise directed to process that 
``can be performed in the human mind, or by a human using a pen and 
paper'' patent eligible); id. at 1376 (distinguishing Research Corp. 
Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF 
Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319 (Fed. Cir. 2010), 
as directed to inventions that ``could not, as a practical matter, 
be performed entirely in a human's mind''). Likewise, performance of 
a claim limitation using generic computer components does not 
necessarily preclude the claim limitation from being in the 
mathematical concepts grouping, Benson, 409 U.S. at 67, or the 
certain methods of organizing human activity grouping, Alice, 573 
U.S. at 219-20.
    \15\ Mayo, 566 U.S. at 71 (`` `[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)); Flook, 437 U.S. at 589 (same); Benson, 409 
U.S. at 67, 65 (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, (Fed. 
Cir. 2016) (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''); 
Mortg. Grader, 811 F.3d. at 1324 (concluding that concept of 
``anonymous loan shopping'' is an abstract idea because it could be 
``performed by humans without a computer''); In re BRCA1 & BRCA2-
Based Hereditary Cancer Test Patent Litig., 774 F.3d 755, 763 (Fed. 
Cir. 2014) (concluding that concept of ``comparing BRCA sequences 
and determining the existence of alterations'' is an ``abstract 
mental process''); In re Brown, 645 F. App'x. 1014, 1017 (Fed. Cir. 
2016) (non-precedential) (claim limitations ``encompass the mere 
idea of applying different known hair styles to balance one's head. 
Identifying head shape and applying hair designs accordingly is an 
abstract idea capable, as the Board notes, of being performed 
entirely in one's mind'').

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[[Page 53]]

    Claims that do not recite matter that falls within these enumerated 
groupings of abstract ideas should not be treated as reciting abstract 
ideas, except as follows: In the rare circumstance in which a USPTO 
employee believes a claim limitation that does not fall within the 
enumerated groupings of abstract ideas should nonetheless be treated as 
reciting an abstract idea, the procedure described in Section III.C for 
analyzing the claim should be followed.

II. ``Directed To'' a Judicial Exception

    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).\16\ 
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).\17\ For example, an improvement in the functioning of a 
computer or other technology or technological field may render a claim 
patent eligible at step one of the Alice/Mayo test even if it recites 
an abstract idea, law of nature, or natural phenomenon.\18\ Moreover, 
recent Federal Circuit jurisprudence has indicated that eligible 
subject matter can often be identified either at the first or the 
second step of the Alice/Mayo test.\19\ These revised patent 
examination procedures are designed to more accurately and consistently 
identify claims that recite a practical application of a judicial 
exception (and thus are not ``directed to'' a judicial exception), 
thereby increasing predictability and consistency in the patent 
eligibility analysis. This analysis is performed at USPTO Step 2A, and 
incorporates certain considerations that have been applied by the 
courts at step one and at step two of the Alice/Mayo framework, given 
the recognized overlap in the steps depending on the facts of any given 
case.
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    \16\ See, e.g., Alice, 573 U.S. at 217 (explaining that ``in 
applying the Sec.  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) 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 
(noting that the Court in 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 Benson ``held that simply implementing a mathematical principle 
on a physical machine, namely a computer, was not a patentable 
application of that principle''); Bilski, 561 U.S. at 611 (``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 Diehr, 450 
U.S. at 187) (emphasis in original)); Diehr, 450 U.S. at 187, 192 
n.14 (explaining that the process in Flook was ineligible not 
because it contained a mathematical formula, but because it did not 
provide an application of the formula); Mackay Radio, 306 U.S. at 94 
(``While a scientific truth, or the mathematical expression of it, 
is not patentable invention, a novel and useful structure created 
with the aid of knowledge of scientific truth may be.''); Le Roy v. 
Tatham, 55 U.S. (14 How.) 156, 175 (1852) (``The elements of the 
[natural phenomena] exist; the invention is not in discovering them, 
but in applying them to useful objects.'').
    \17\ See, e.g., MPEP 2106.06(b) (summarizing Enfish, McRO, and 
other cases that were eligible as improvements to technology or 
computer functionality instead of abstract ideas); USPTO Finjan 
Memorandum (discussing Finjan, and Core Wireless); USPTO Memorandum 
of June 7, 2018, ``Recent Subject Matter Eligibility Decision: Vanda 
Pharmaceuticals Inc. v. West-Ward Pharmaceuticals,'' available at 
https://www.uspto.gov/sites/default/files/documents/memo-vanda-20180607.PDF [hereinafter ``USPTO Vanda Memorandum'']; BASCOM Glob. 
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352 
(Fed. Cir. 2016) (concluding that claims could be eligible if 
ordered combination of limitations ``transform the abstract idea . . 
. into a particular, practical application of that abstract 
idea.''); Arrhythmia Research Tech., Inc. v. Corazonix Corp., 958 
F.2d 1053, 1056-57 (Fed. Cir. 1992) (``As the jurisprudence 
developed, inventions that were implemented by the mathematically-
directed performance of computers were viewed in the context of the 
practical application to which the computer-generated data were 
put.''); CLS Bank Int'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 
1315 (Fed. Cir. 2013) (Moore, J., joined by Rader, C.J., and Linn 
and O'Malley, JJ., dissenting in part) (``The key question is thus 
whether a claim recites a sufficiently concrete and practical 
application of an abstract idea to qualify as patent-eligible.''), 
aff'd, 573 U.S. 208 (2014).
    \18\ See, e.g., McRO, 837 F.3d at 1316; Enfish, 822 F.3d at 
1336; Core Wireless, 880 F.3d at 1362.
    \19\ See, e.g., Vanda Pharm. Inc. v. West-Ward Pharm. Int'l 
Ltd., 887 F.3d 1117, 1134 (Fed. Cir. 2018) (``If the claims are not 
directed to a patent ineligible concept at step one, we need not 
address step two of the inquiry.''); Rapid Litig. Mgmt. Ltd. v. 
CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 2016) (holding 
that claimed invention is patent eligible because it is not directed 
to a patent-ineligible concept under step one or is an inventive 
application of the patent-ineligible concept under step two); 
Enfish, 822 F.3d at 1339 (noting that eligibility determination can 
be reached either because claims not directed to an abstract idea 
under step one or recite a concrete improvement under step two); 
McRO, 837 F.3d at 1313 (recognizing that the ``court must look to 
the claims as an ordered combination'' in determining patentability 
``[w]hether at step one or step two of the Alice test''); Amdocs, 
841 F.3d at 1294 (observing that recent cases ``suggest that there 
is considerable overlap between step one and step two, and in some 
situations [the inventive concept] analysis could be accomplished 
without going beyond step one''). See also Ancora Techs. v. HTC Am., 
908 F.3d 1343, 1349 (Fed. Cir. 2018) (noting, in accord with the 
``recognition of overlaps between some step one and step two 
considerations,'' that its conclusion of eligibility at step one is 
``indirectly reinforced by some of [its] prior holdings under step 
two'').
---------------------------------------------------------------------------

    In accordance with judicial precedent, and to increase consistency 
in examination practice, the 2019 Revised Patent Subject Matter 
Eligibility Guidance sets forth a procedure to determine whether a 
claim is ``directed to'' a judicial exception under USPTO Step 2A. 
Under the procedure, if a claim recites a judicial exception (a law of 
nature, a natural phenomenon, or an abstract idea as grouped in Section 
I, above), it must then be analyzed to determine whether the recited 
judicial exception is integrated into a practical application of that 
exception. A claim is not ``directed to'' a judicial exception, and 
thus is patent eligible, if the claim as a whole integrates the recited 
judicial exception into a practical application of that exception. 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.

III. Instructions for Applying Revised Step 2A During Examination

    Examiners should determine whether a claim satisfies the criteria 
for subject matter eligibility by evaluating the claim in accordance 
with the criteria discussed in MPEP 2106, i.e., whether the claim is to 
a statutory category (Step 1) and the Alice/Mayo test for judicial 
exceptions (Steps 2A and 2B). The procedure set forth herein (referred 
to as ``revised Step 2A'') changes how examiners should apply the first 
step of the Alice/Mayo test, which determines whether a claim is 
``directed to'' a judicial exception.
    As before, Step 1 of the USPTO's eligibility analysis entails 
considering whether the claimed subject matter falls within the four 
statutory categories of

[[Page 54]]

patentable subject matter identified by 35 U.S.C. 101: Process, 
machine, manufacture, or composition of matter. The 2019 Revised Patent 
Subject Matter Eligibility Guidance does not change Step 1 or the 
streamlined analysis, which are discussed in MPEP 2106.03 and 2106.06, 
respectively. Examiners may continue to use a streamlined analysis 
(Pathway A) when the patent eligibility of a claim is self-evident.
    Step 2A of the 2019 Revised Patent Subject Matter Eligibility 
Guidance is a two-prong inquiry. In Prong One, examiners evaluate 
whether the claim recites a judicial exception.\20\ This prong is 
similar to procedures in prior guidance except that when determining if 
a claim recites an abstract idea, examiners now refer to the subject 
matter groupings of abstract ideas in Section I instead of comparing 
the claimed concept to the USPTO's prior ``Eligibility Quick Reference 
Sheet Identifying Abstract Ideas.''
---------------------------------------------------------------------------

    \20\ This notice does not change the type of claim limitations 
that are considered to recite a law of nature or natural phenomenon. 
For more information about laws of nature and natural phenomena, 
including products of nature, see MPEP 2106.04(b) and (c).
---------------------------------------------------------------------------

    <bullet> If the claim recites a judicial exception (i.e., an 
abstract idea enumerated in Section I of the 2019 Revised Patent 
Subject Matter Eligibility Guidance, a law of nature, or a natural 
phenomenon), the claim requires further analysis in Prong Two.
    <bullet> If the claim does not recite a judicial exception (a law 
of nature, natural phenomenon, or subject matter within the enumerated 
groupings of abstract ideas in Section I), then the claim is eligible 
at Prong One of revised Step 2A. This concludes the eligibility 
analysis, except in the rare circumstance described below.\21\
---------------------------------------------------------------------------

    \21\ Even if a claim is determined to be patent eligible under 
section 101, this or any other step of the eligibility analysis does 
not end the inquiry. The claims must also satisfy the other 
conditions and requirements for patentability, for example, under 
section 102 (novelty), 103 (nonobviousness), or 112 (enablement, 
written description, definiteness). Bilski, 561 U.S. at 602. 
Examiners should take care not to confuse or intermingle 
patentability requirements of these separate sections with patent 
eligibility analysis under section 101.
---------------------------------------------------------------------------

    <bullet> In the rare circumstance in which an examiner believes a 
claim limitation that does not fall within the enumerated groupings of 
abstract ideas should nonetheless be treated as reciting an abstract 
idea, the procedure described in Section III.C for analyzing the claim 
should be followed.
    In Prong Two, examiners evaluate whether the claim recites 
additional elements that integrate the exception into a practical 
application of that exception. This prong adds a more detailed 
eligibility analysis to step one of the Alice/Mayo test (USPTO Step 2A) 
than was required under prior guidance.
    <bullet> If the recited exception is integrated into a practical 
application of the exception, then the claim is eligible at Prong Two 
of revised Step 2A. This concludes the eligibility analysis.
    <bullet> If, however, the additional elements do not integrate the 
exception into a practical application, then the claim is directed to 
the recited judicial exception, and requires further analysis under 
Step 2B (where it may still be eligible if it amounts to an ``inventive 
concept'').\22\
---------------------------------------------------------------------------

    \22\ See, e.g., Amdocs, 841 F.3d at 1300, 1303; BASCOM, 827 F.3d 
at 1349-52; DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 
1257-59 (Fed. Cir. 2014); USPTO Berkheimer Memorandum; see also 
Rapid Litig., 827 F.3d at 1050 (holding that claimed invention is 
patent eligible because it is not directed to a patent-ineligible 
concept under step one or is an inventive application of the patent-
ineligible concept under step two).
---------------------------------------------------------------------------

    The following discussion provides additional detail on this revised 
procedure.

A. Revised Step 2A

1. Prong One: Evaluate Whether the Claim Recites a Judicial Exception
    In Prong One, examiners should evaluate whether the claim recites a 
judicial exception, i.e., an abstract idea, a law of nature, or a 
natural phenomenon. If the claim does not recite a judicial exception, 
it is not directed to a judicial exception (Step 2A: NO) and is 
eligible. This concludes the eligibility analysis. If the claim does 
recite a judicial exception, then it requires further analysis in Prong 
Two of Revised Step 2A to determine whether it is directed to the 
recited exception, as explained in Section III.A.2 of the 2019 Revised 
Patent Subject Matter Eligibility Guidance.
    For abstract ideas, Prong One represents a change as compared to 
prior guidance. To determine whether a claim recites an abstract idea 
in Prong One, examiners are now to: (a) Identify the specific 
limitation(s) in the claim under examination (individually or in 
combination) that the examiner believes recites an abstract idea; and 
(b) determine whether the identified limitation(s) falls within the 
subject matter groupings of abstract ideas enumerated in Section I of 
the 2019 Revised Patent Subject Matter Eligibility Guidance. If the 
identified limitation(s) falls within the subject matter groupings of 
abstract ideas enumerated in Section I, analysis should proceed to 
Prong Two in order to evaluate whether the claim integrates the 
abstract idea into a practical application. When evaluating Prong One, 
examiners are no longer to use the USPTO's ``Eligibility Quick 
Reference Sheet Identifying Abstract Ideas,'' which has been superseded 
by this document.
    In the rare circumstance in which an examiner believes a claim 
limitation that does not fall within the enumerated groupings of 
abstract ideas should nonetheless be treated as reciting an abstract 
idea, the procedure described in Section III.C for analyzing the claim 
should be followed.
    For laws of nature and natural phenomena, Prong One does not 
represent a change. Examiners should continue to follow existing 
guidance to identify whether a claim recites one of these 
exceptions,\23\ and if it does, proceed to Prong Two of the 2019 
Revised Patent Subject Matter Eligibility Guidance in order to evaluate 
whether the claim integrates the law of nature or natural phenomenon 
into a practical application.
---------------------------------------------------------------------------

    \23\ See MPEP 2106.04(b)-(c).
---------------------------------------------------------------------------

2. Prong Two: If the Claim Recites a Judicial Exception, Evaluate 
Whether the Judicial Exception Is Integrated Into a Practical 
Application
    In Prong Two, examiners should evaluate whether the claim as a 
whole integrates the recited judicial exception into a practical 
application of the exception. 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. When the exception is so 
integrated, then the claim is not directed to a judicial exception 
(Step 2A: NO) and is eligible. This concludes the eligibility analysis. 
If the additional elements do not integrate the exception into a 
practical application, then 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), 
as explained in Section III.B of the 2019 Revised Patent Subject Matter 
Eligibility Guidance.
    Prong Two represents a change from prior guidance. The analysis 
under 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.
    Examiners evaluate integration into a practical application by: (a) 
Identifying whether there are any additional elements recited in the 
claim beyond

[[Page 55]]

the judicial exception(s); and (b) 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 laid out by the Supreme Court and the Federal Circuit, 
for example those listed below. While some of the considerations listed 
below were discussed in prior guidance in the context of Step 2B, 
evaluating them in revised Step 2A promotes early and efficient 
resolution of patent eligibility, and increases certainty and 
reliability. Examiners should note, however, that revised Step 2A 
specifically excludes consideration of whether the additional elements 
represent well-understood, routine, conventional activity. Instead, 
analysis of well-understood, routine, conventional activity is done in 
Step 2B. Accordingly, in revised Step 2A 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.
    In the context of revised Step 2A, the following exemplary 
considerations are indicative that an additional element (or 
combination of elements) \24\ may have integrated the exception into a 
practical application:
---------------------------------------------------------------------------

    \24\ USPTO guidance uses the term ``additional elements'' to 
refer to claim features, limitations, and/or steps that are recited 
in the claim beyond the identified judicial exception. Again, 
whether an additional element or combination of elements integrate 
the exception into a practical application should be evaluated on 
the claim as a whole.
---------------------------------------------------------------------------

    <bullet> An additional element reflects an improvement in the 
functioning of a computer, or an improvement to other technology or 
technical field; \25\
---------------------------------------------------------------------------

    \25\ For example, a modification of internet hyperlink protocol 
to dynamically produce a dual-source hybrid web page. See MPEP 
2106.05(a) for more information concerning improvements in the 
functioning of a computer or to any other technology or technical 
field, including a discussion of the exemplar provided herein, which 
is based on DDR Holdings, 773 F.3d at 1258-59. See also USPTO Finjan 
Memorandum (discussing Finjan and Core Wireless).
---------------------------------------------------------------------------

    <bullet> an additional element that applies or uses a judicial 
exception to effect a particular treatment or prophylaxis for a disease 
or medical condition; \26\
---------------------------------------------------------------------------

    \26\ For example, an immunization step that integrates an 
abstract idea into a specific process of immunizing that lowers the 
risk that immunized patients will later develop chronic immune-
mediated diseases. See, e.g., Classen Immunotherapies, Inc. v. 
Biogen IDEC, 659 F.3d 1057, 1066-68 (Fed. Cir. 2011). See also Vanda 
Pharm. Inc. v. West-Ward Pharm. Int'l Ltd., 887 F.3d 1117, 1135 
(Fed. Cir. 2018) (holding claims to the practical application of the 
natural relationships between iloperidone, CYP2D6 metabolism, and 
QTc prolongation to treat schizophrenia, not merely the recognition 
of those relationships, to be patent eligible at Mayo/Alice step 1 
(USPTO Step 2A)), and USPTO Vanda Memorandum (discussing Vanda).
---------------------------------------------------------------------------

    <bullet> an additional element implements a judicial exception 
with, or uses a judicial exception in conjunction with, a particular 
machine or manufacture that is integral to the claim; \27\
---------------------------------------------------------------------------

    \27\ For example, 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 that uses gravity to optimize the speed of the machine while 
maintaining quality of the formed paper web. See MPEP 2106.05(b) for 
more information concerning use of a judicial exception with, or in 
conjunction with, a particular machine or manufacture, including a 
discussion of the exemplar provided herein, which is based on Eibel 
Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 64-65 
(1923).
---------------------------------------------------------------------------

    <bullet> an additional element effects a transformation or 
reduction of a particular article to a different state or thing; \28\ 
and
---------------------------------------------------------------------------

    \28\ For example, a process that transforms raw, uncured 
synthetic rubber into precision-molded synthetic rubber products by 
using a mathematical formula to control operation of the mold. See 
MPEP 2106.05(c) for more information concerning transformation or 
reduction of a particular article to a different state or thing, 
including a discussion of the exemplar provided herein, which is 
based on Diehr, 450 U.S. at 184.
---------------------------------------------------------------------------

    <bullet> an additional element applies or uses 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.\29\
---------------------------------------------------------------------------

    \29\ For example, a combination of steps including installing 
rubber in a press, closing the mold, constantly measuring the 
temperature in the mold, and automatically opening the press at the 
proper time, all of which together meaningfully limited the use of a 
mathematical equation to a practical application of molding rubber 
products. See MPEP 2106.05(e) for more information on this 
consideration, including a discussion of the exemplar provided 
herein, which is based on Diehr, 450 U.S. at 184, 187. See also 
USPTO Finjan Memorandum (discussing Finjan and Core Wireless).
---------------------------------------------------------------------------

    This is not an exclusive list, and there may be other examples of 
integrating the exception into a practical application.
    The courts have also identified examples in which a judicial 
exception has not been integrated into a practical application:
    <bullet> An additional element merely recites the words ``apply 
it'' (or an equivalent) with the judicial exception, or merely includes 
instructions to implement an abstract idea on a computer, or merely 
uses a computer as a tool to perform an abstract idea; \30\
---------------------------------------------------------------------------

    \30\ For example, a limitation indicating that a particular 
function such as creating and maintaining electronic records is 
performed by a computer, without specifying how. See MPEP 2106.05(f) 
for more information concerning mere instructions to apply a 
judicial exception, including a discussion of the exemplar provided 
herein, which is based on Alice, 573 U.S. at 222-26. See also 
Benson, 409 U.S. 63 (holding that merely implementing a mathematical 
principle on a general purpose computer is a patent ineligible 
abstract idea); Credit Acceptance Corp. v. Westlake Services, 859 
F.3d 1044 (Fed. Cir. 2017) (using a computer as a tool to process an 
application for financing a purchase).
---------------------------------------------------------------------------

    <bullet> an additional element adds insignificant extra-solution 
activity to the judicial exception; \31\ and
---------------------------------------------------------------------------

    \31\ For example, a mere data gathering such as a step of 
obtaining information about credit card transactions so that the 
information can be analyzed in order to detect whether the 
transactions were fraudulent. See MPEP 2106.05(g) for more 
information concerning insignificant extra-solution activity, 
including a discussion of the exemplar provided herein, which is 
based on CyberSource, 654 F.3d at 1375. See also Mayo, 566 U.S. at 
79 (concluding that additional element of measuring metabolites of a 
drug administered to a patient was insignificant extra-solution 
activity, which was insufficient to confer patent eligibility); 
Flook, 437 U.S. at 590 (step of adjusting an alarm limit based on 
the output of a mathematical formula was ``post-solution activity'' 
and did not render method patent eligible).
---------------------------------------------------------------------------

    <bullet> an additional element does no more than generally link the 
use of a judicial exception to a particular technological environment 
or field of use.\32\
---------------------------------------------------------------------------

    \32\ For example, a claim describing how the abstract idea of 
hedging could be used in the commodities and energy markets, or a 
claim limiting the use of a mathematical formula to the 
petrochemical and oil-refining fields. See MPEP 2106.05(h) 
concerning generally linking use of a judicial exception to a 
particular technological environment or field of use, including a 
discussion of the exemplars provided herein, which are based on 
Bilski, 561 U.S. at 612, and Flook, 437 U.S. at 588-90. Thus, the 
mere application of an abstract method of organizing human activity 
in a particular field is not sufficient to integrate the judicial 
exception into a practical application.
---------------------------------------------------------------------------

    It is critical that examiners consider the claim as a whole when 
evaluating whether the judicial exception is meaningfully limited by 
integration into a practical application of the exception. Some 
elements may be enough on their own to meaningfully limit an exception, 
but other times it is the combination of elements that provide the 
practical application. When evaluating whether an element (or 
combination of elements) integrates an exception into a practical 
application, examiners should give careful consideration to both the 
element and how it is used or arranged in the claim as a whole. Because 
revised Step 2A does not evaluate whether an additional element is 
well-understood, routine, conventional activity, examiners are reminded 
that a claim that includes conventional elements may still integrate an 
exception into a practical application, thereby satisfying the subject 
matter eligibility requirement of Section 101.\33\
---------------------------------------------------------------------------

    \33\ Of course, such claims must also satisfy the other 
conditions and requirements of patentability, for example, under 
section 102 (novelty), 103 (nonobviousness), and 112 (enablement, 
written description, definiteness). Bilski, 561 U.S. at 602.

---------------------------------------------------------------------------

[[Page 56]]

B. Step 2B: If the Claim Is Directed to a Judicial Exception, Evaluate 
Whether the Claim Provides an Inventive Concept

    It is possible that a claim that does not ``integrate'' a recited 
judicial exception is nonetheless patent eligible. For example the 
claim may recite additional elements that render the claim patent 
eligible even though a judicial exception is recited in a separate 
claim element.\34\ Along these lines, the Federal Circuit has held 
claims eligible at the second step of the Alice/Mayo test (USPTO Step 
2B) because the additional elements recited in the claims provided 
``significantly more'' than the recited judicial exception (e.g., 
because the additional elements were unconventional in 
combination).\35\ Therefore, if a claim has been determined to be 
directed to a judicial exception under revised Step 2A, examiners 
should then evaluate the additional elements individually and in 
combination under Step 2B to determine whether they provide an 
inventive concept (i.e., whether the additional elements amount to 
significantly more than the exception itself). If the examiner 
determines that the element (or combination of elements) amounts to 
significantly more than the exception itself (Step 2B: YES), the claim 
is eligible, thereby concluding the eligibility analysis. If the 
examiner determines that the element and combination of elements does 
not amount to significantly more than the exception itself, the claim 
is ineligible (Step 2B: NO) and the examiner should reject the claim 
for lack of subject matter eligibility.
---------------------------------------------------------------------------

    \34\ See, e.g., Diehr, 450 U.S. at 187 (``Our earlier opinions 
lend support to our present conclusion that a claim drawn to subject 
matter otherwise statutory does not become nonstatutory simply 
because it uses a mathematical formula, computer program, or digital 
computer.''); id. at 185 (``Our conclusion regarding respondents' 
claims is not altered by the fact that in several steps of the 
process a mathematical equation and a programmed digital computer 
are used.'').
    \35\ See, e.g., Amdocs, 841 F.3d at 1300, 1303; BASCOM, 827 F.3d 
at 1349-52; DDR Holdings, 773 F.3d at 1257-59.
---------------------------------------------------------------------------

    While many considerations in Step 2A need not be reevaluated in 
Step 2B, examiners should continue to consider in Step 2B whether an 
additional element or combination of elements:
    <bullet> Adds a specific limitation or combination of limitations 
that are not well-understood, routine, conventional activity in the 
field, which is indicative that an inventive concept may be present; or
    <bullet> simply appends well-understood, routine, conventional 
activities previously known to the industry, specified at a high level 
of generality, to the judicial exception, which is indicative that an 
inventive concept may not be present.\36\
---------------------------------------------------------------------------

    \36\ In accordance with existing guidance, an examiner's 
conclusion that an additional element (or combination of elements) 
is well understood, routine, conventional activity must be supported 
with a factual determination. For more information concerning 
evaluation of well-understood, routine, conventional activity, see 
MPEP 2106.05(d), as modified by the USPTO Berkheimer Memorandum.
---------------------------------------------------------------------------

    For this reason, if an examiner had previously concluded under 
revised Step 2A that, e.g., an additional element was insignificant 
extra-solution activity, they should reevaluate that conclusion in Step 
2B. If such reevaluation indicates that the element is unconventional 
or otherwise more than what is well-understood, routine, conventional 
activity in the field, this finding may indicate that an inventive 
concept is present and that the claim is thus eligible.\37\ For 
example, when evaluating a claim reciting an abstract idea such as a 
mathematical equation and a series of data gathering steps that collect 
a necessary input for the equation, an examiner might consider the data 
gathering steps to be insignificant extra-solution activity in revised 
Step 2A, and therefore find that the judicial exception is not 
integrated into a practical application.\38\ However, when the examiner 
reconsiders the data gathering steps in Step 2B, the examiner could 
determine that the combination of steps gather data in an 
unconventional way and therefore include an ``inventive concept,'' 
rendering the claim eligible at Step 2B.\39\ Likewise, a claim that 
does not meaningfully integrate a judicial exception into a practical 
application of the exception sufficient to pass muster at Step 2A, may 
nonetheless include additional subject matter that is unconventional 
and thus an ``inventive concept'' at Step 2B.\40\
---------------------------------------------------------------------------

    \37\ Mayo, 566 U.S. at 82 (``[S]imply appending conventional 
steps, specified at a high level of generality, to laws of nature, 
natural phenomena, and abstract ideas cannot make those laws, 
phenomena, and ideas patentable.''); but see id. at 85 (``[T]he 
claimed process included not only a law of nature but also several 
unconventional steps (such as inserting the receptacle, applying 
heat to the receptacle externally, and blowing the air into the 
furnace) that confined the claims to a particular, useful 
application of the principle.'' (discussing the old English case, 
Neilson v. Harford, Webster's Patent Cases 295 (1841))).
    \38\ See supra note 34; see also OIP Techs., 788 F.3d at 1363 
(finding that gathering statistics generated based on customer 
testing for input to a pricing calculation ``fail[s] to `transform' 
the claimed abstract idea into a patent-eligible invention'').
    \39\ Compare Flook, 437 U.S. at 585-86 (holding claimed method 
of updating alarm limits to be ineligible because: ``In essence, the 
method consists of three steps: an initial step which merely 
measures the present value of the process variable (e.g., the 
temperature); an intermediate step which uses an algorithm to 
calculate an updated alarm-limit value; and a final step in which 
the actual alarm limit is adjusted to the updated value. The only 
difference between the conventional methods of changing alarm limits 
and that described in respondent's application rests in the second 
step--the mathematical algorithm or formula.''); with Exergen Corp. 
v. Kaz USA, Inc., 725 F. App'x 959, 966 (Fed. Cir. 2018) (holding 
claimed body temperature detector to be eligible because: ``Here, 
the patent is directed to the measurement of a natural phenomenon 
(core body temperature). Even if the concept of such measurement is 
directed to a natural phenomenon and is abstract at step one, the 
measurement method here was not conventional, routine, and well-
understood. Following years and millions of dollars of testing and 
development, the inventor determined for the first time the 
coefficient representing the relationship between temporal-arterial 
temperature and core body temperature and incorporated that 
discovery into an unconventional method of temperature 
measurement.'').
    \40\ Compare Berkheimer, 881 F.3d at 1370 (holding independent 
claim 1 to be ineligible at Alice step 2: ``The[ ] conventional 
limitations of claim 1, combined with limitations of analyzing and 
comparing data and reconciling differences between the data, fail to 
transform the abstract idea into a patent-eligible invention. The 
limitations amount to no more than performing the abstract idea of 
parsing and comparing data with conventional computer components'') 
(internal quotation marks and citation omitted); with id. 
(concluding that dependent claims 4-7 may be eligible: ``Claims 4-7, 
in contrast, contain limitations directed to the arguably 
unconventional inventive concept described in the specification. 
Claim 4 recites `storing a reconciled object structure in the 
archive without substantial redundancy.' The specification states 
that storing object structures in the archive without substantial 
redundancy improves system operating efficiency and reduces storage 
costs. It also states that known asset management systems did not 
archive documents in this manner. Claim 5 depends on claim 4 and 
further recites `selectively editing an object structure, linked to 
other structures to thereby effect a one-to-many change in a 
plurality of archived items.' The specification states one-to-many 
editing substantially reduces effort needed to update files because 
a single edit can update every document in the archive linked to 
that object structure. This one-to-many functionality is more than 
`editing data in a straightforward copy-and-paste fashion,' as 
characterized by the district court. According to the specification, 
conventional digital asset management systems cannot perform one-to-
many editing because they store documents with numerous instances of 
redundant elements, rather than eliminate redundancies through the 
storage of linked object structures. Claims 6-7 depend from claim 5 
and accordingly contain the same limitations. These claims recite a 
specific method of archiving that, according to the specification, 
provides benefits that improve computer functionality. . . . [T]here 
is at least a genuine issue of material fact in light of the 
specification regarding whether claims 4-7 archive documents in an 
inventive manner that improves these aspects of the disclosed 
archival system.'') (internal quotation marks and citations 
omitted).
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C. Treating a Claim Limitation That Does Not Fall Within the Enumerated 
Groupings of Abstract Ideas as Reciting an Abstract Idea

    In the rare circumstance in which an examiner believes a claim 
limitation that does not fall within the enumerated groupings of 
abstract ideas should

[[Page 57]]

nonetheless be treated as reciting an abstract idea (``tentative 
abstract idea''), the examiner should evaluate whether the claim as a 
whole integrates the recited tentative abstract idea into a practical 
application as explained in Section III.A.2. If the claim as a whole 
integrates the recited tentative abstract idea into a practical 
application, the claim is not directed to a judicial exception (Step 
2A: NO) and is eligible (thus concluding the eligibility analysis). If 
the claim as a whole does not integrate the recited tentative abstract 
idea into a practical application, then the examiner should evaluate 
the additional elements individually and in combination to determine 
whether they provide an inventive concept as explained in Section 
III.B. If an additional element or combination of additional elements 
provides an inventive concept as explained in Section III.B (Step 2B: 
YES), the claim is eligible (thus concluding the eligibility analysis). 
If the additional element or combination of additional elements does 
not provide an inventive concept as explained in Section III.B (Step 
2B: NO), the examiner should bring the application to the attention of 
the Technology Center Director. Any rejection in which a claim 
limitation, which does not fall within the enumerated abstract ideas 
(tentative abstract idea), is nonetheless treated as reciting an 
abstract idea must be approved by the Technology Center Director (which 
approval will be indicated in the file record of the application), and 
must provide a justification \41\ for why such claim limitation is 
being treated as reciting an abstract idea.\42\
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    \41\ Such justification may include, for example, an explanation 
of why the element contains subject matter that, per se, invokes 
eligibility concerns similar to those expressed by the Supreme Court 
with regard to the judicial exceptions. See supra note 5.
    \42\ Similarly, in the rare circumstance in which a panel of 
administrative patent judges (or panel majority) believes that a 
claim reciting a tentative abstract idea should be treated as 
reciting an abstract idea, the matter should be brought to the 
attention of the PTAB leadership by a written request for clearance.
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D. Compact Prosecution

    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.\43\ Compact prosecution, however, does not mandate that the 
patentability requirements be analyzed in any particular order.
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    \43\ See MPEP 2103 et seq. and 2106(III).

    Dated: December 20, 2018.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2018-28282 Filed 1-4-19; 8:45 am]
BILLING CODE 3510-16-P


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