United States Patent and Trademark Office OG Notices: 22 November 2005
Interim Guidelines for Examination of Patent Applications
for Patent Subject Matter Eligibility
In the mid-1990's, the USPTO sought to clarify the legal requirements
for statutory subject matter with regard to computer-related inventions.
See Examination Guidelines for Computer Related Inventions, 61 Fed. Reg.
7478 (1996). Subsequent to the publication of those guidelines, the Court
of Appeals for the Federal Circuit issued opinions in State Street Bank &
Trust Co. v. Signature Financial Group Inc., 149 F. 3d 1368, 47 USPQ2d 1596
(Fed. Cir. 1998) and AT&T Corp. v. Excel Communications, Inc., 172 F.3d
1352, 50 USPQ2d 1447 (Fed. Cir. 1999). These decisions explained that, to
be eligible for patent protection, the claimed invention as a whole must
accomplish a practical application. That is, it must produce a "useful,
concrete and tangible result." State Street, 149 F.3d at 1373-74, 47 USPQ2d
at 1601-02. Since this time, the USPTO has seen increasing numbers of
applications outside the realm of computer-related inventions that raise
subject matter eligibility issues. In order to assist examiners in
identifying and resolving these issues, the USPTO is issuing these interim
examination guidelines to assist USPTO personnel in the examination of
patent applications to determine whether the subject matter as claimed is
eligible for patent protection.
The principal objective of these guidelines is to assist examiners in
determining, on a case-by-case basis, whether a claimed invention falls
within a judicial exception to statutory subject matter (i.e., is
nothing more than an abstract idea, law of nature, or natural
phenomenon), or whether it is a practical application of a judicial
exception to statutory subject matter. The guidelines explain that a
practical application of a 35 U.S.C. Sec. 101 judicial exception is
claimed if the claimed invention physically transforms an article or
physical object to a different state or thing, or if the claimed
invention otherwise produces a useful, concrete, and tangible result.
I. INTRODUCTION
These Examination Guidelines ("Guidelines") are based on
the USPTO's current understanding of the law and are believed to be
fully consistent with binding precedent of the Supreme Court, the
Federal Circuit and the Federal Circuit's predecessor courts.
These Guidelines do not constitute substantive rulemaking and hence do
not have the force and effect of law. These Guidelines have been
designed to assist USPTO personnel in analyzing claimed subject matter
for compliance with substantive law. Rejections will be based upon the
substantive law and it is these rejections which are appealable.
Consequently, any failure by USPTO personnel to follow the Guidelines
is neither appealable nor petitionable.
The Guidelines set forth the procedures USPTO personnel will follow
when examining applications. USPTO personnel are to rely on these
Guidelines in the event of any inconsistent treatment of issues between
these Guidelines and any earlier provided guidance from the USPTO.
Inquiries concerning these Interim Guidelines may be directed to Linda
Therkorn, Office of the Deputy Commissioner for Patent Examination Policy,
by telephone at 571-272-8800, or Ray Chen, Office of the Solicitor, by
telephone at 571-272-9035.
Annex I which appears at the end of this section includes a flow chart
of the process USPTO personnel should follow.
II. DETERMINE WHAT APPLICANT HAS INVENTED AND IS SEEKING TO PATENT
It is essential that patent applicants obtain a prompt yet
complete examination of their applications. Under the principles of
compact prosecution, each claim should be reviewed for compliance with
every statutory requirement for patentability in the initial review of
the application, even if one or more claims are found to be deficient
with respect to some statutory requirement. Thus, USPTO personnel
should state all reasons and bases for rejecting claims in the first
Office action. Deficiencies should be explained clearly, particularly
when they serve as a basis for a rejection. Whenever practicable, USPTO
personnel should indicate how rejections may be overcome and how
problems may be resolved. A failure to follow this approach can lead to
unnecessary delays in the prosecution of the application.
Prior to focusing on specific statutory requirements, USPTO personnel
must begin examination by determining what, precisely, the applicant has
invented and is seeking to patent, and how the claims relate to and define
that invention. (As the courts have repeatedly reminded the USPTO:
"The goal is to answer the question `What did applicants invent?'" In re
Abele, 684 F.2d 902, 907, 214 USPQ 682, 687. Accord, e.g., Arrhythmia
Research Tech. v. Corazonix Corp., 958 F.2d 1053, 1059, 22 USPQ2d 1033,
1038 (Fed. Cir. 1992).) USPTO personnel will review the complete
specification, including the detailed description of the invention, any
specific embodiments that have been disclosed, the claims and any specific,
substantial, and credible utilities that have been asserted for the
invention. After obtaining an understanding of what applicant invented,
the examiner will conduct a search of the prior art and determine whether
the invention as claimed complies with all statutory requirements.
A. Identify and Understand Any Utility and/or Practical Application
Asserted for the Invention
The claimed invention as a whole must be useful and accomplish
a practical application. That is, it must produce a "useful, concrete
and tangible result." State Street, 149 F.3d at 1373-74, 47 USPQ2d at
1601-02. The purpose of this requirement is to limit patent protection to
inventions that possess a certain level of "real world" value, as opposed
to subject matter that represents nothing more than an idea or concept, or
is simply a starting point for future investigation or research (Brenner v.
Manson, 383 U.S. 519, 528-36, 148 USPQ 689, 693-96 (1966)); In re Fisher,
421 F.3d 1365, 76 USPQ2d 1225 (Fed. Cir. 2005); In re Ziegler,
992 F.2d 1197, 1200-03, 26 USPQ2d 1600, 1603-06 (Fed. Cir. 1993)).
The applicant is in the best position to explain why an invention is
believed useful. Accordingly, a complete disclosure should contain some
indication of the practical application for the claimed invention,
i.e., why the applicant believes the claimed invention is useful. Such
a statement will usually explain the purpose of the invention or how
the invention may be used (e.g., a compound is believed to be useful in
the treatment of a particular disorder). Regardless of the form of
statement of utility, it must enable one ordinarily skilled in the art
to understand why the applicant believes the claimed invention is
useful. See MPEP Sec. 2107 for utility examination guidelines. An
applicant may assert more than one utility and practical application,
but only one is necessary.
B. Review the Detailed Disclosure and Specific Embodiments of the Invention
To Understand What the Applicant Has Invented
The written description will provide the clearest explanation
of the applicant's invention, by exemplifying the invention,
explaining how it relates to the prior art and explaining the relative
significance of various features of the invention. Accordingly, USPTO
personnel should continue their evaluation by
(1) determining the function of the invention, that is what the
invention does when used as disclosed (e.g., the functionality of the
programmed computer) (Arrhythmia, 958 F.2d at 1057, 22 USPQ
at 1036, "It is of course true that a modern digital computer
manipulates data, usually in binary form, by performing mathematical
operations, such as addition, subtraction, multiplication, division, or
bit shifting, on the data. But this is only how the computer does what
it does. Of importance is the significance of the data and their
manipulation in the real world, i.e., what the computer is doing.");
and
(2) determining the features necessary to accomplish at least one
asserted practical application.
Patent applicants can assist the USPTO by preparing applications that
clearly set forth these aspects of an invention.
C. Review the Claims
The claims define the property rights provided by a patent, and
thus require careful scrutiny. The goal of claim analysis is to
identify the boundaries of the protection sought by the applicant and
to understand how the claims relate to and define what the applicant
has indicated is the invention. USPTO personnel must first determine
the scope of a claim by thoroughly analyzing the language of the claim
before determining if the claim complies with each statutory
requirement for patentability. See In re Hiniker Co., 150
F.3d 1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998) ("[T]he name
of the game is the claim.").
USPTO personnel should begin claim analysis by identifying and
evaluating each claim limitation. For processes, the claim limitations
will define steps or acts to be performed. For products, the claim
limitations will define discrete physical structures or materials.
Product claims are claims that are directed to either machines,
manufactures or compositions of matter.
USPTO personnel are to correlate each claim limitation to all portions
of the disclosure that describe the claim limitation. This is to be
done in all cases whether or not the claimed invention is defined using
means or step plus function language. The correlation step will ensure
that USPTO personnel correctly interpret each claim limitation.
The subject matter of a properly construed claim is defined by the
terms that limit its scope. It is this subject matter that must be
examined. As a general matter, the grammar and intended meaning of
terms used in a claim will dictate whether the language limits the
claim scope. Language that suggests or makes optional but
does not require steps to be performed or does not limit a claim to a
particular structure does not limit the scope of a claim or claim
limitation. The following are examples of language that may raise a
question as to the limiting effect of the language in a claim:
(A) statements of intended use or field of use,
(B) "adapted to" or "adapted for" clauses,
(C) "wherein" clauses, or
(D) "whereby" clauses.
This list of examples is not intended to be exhaustive. See also MPEP
Sec. 2111.04. USPTO personnel are to give claims their broadest reasonable
interpretation in light of the supporting disclosure. In re Morris, 127
F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997). Limitations
appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369,
67 USPQ2d 1947, 1950 (Fed. Cir. 2003) (claims must be interpreted "in view
of the specification" without importing limitations from the specification
into the claims unnecessarily). In re Prater, 415 F.2d 1393, 1404-05, 162
USPQ 541, 550-551 (CCPA 1969). See also In re Zletz, 893 F.2d 319, 321-22,
13 USPQ2d 1320, 1322 (Fed. Cir. 1989) ("During patent examination the
pending claims must be interpreted as broadly as their terms reasonably
allow . . . The reason is simply that during patent prosecution when claims
can be amended, ambiguities should be recognized, scope and breadth of
language explored, and clarification imposed . . . An essential purpose of
patent examination is to fashion claims that are precise, clear, correct,
and unambiguous. Only in this way can uncertainties of claim scope be
removed, as much as possible, during the administrative process.").
Where an explicit definition is provided by the applicant for a term,
that definition will control interpretation of the term as it is used
in the claim. Toro Co. v. White Consolidated Industries
Inc., 199 F.3d 1295, 1301, 53 USPQ2d 1065, 1069 (Fed. Cir. 1999)
(meaning of words used in a claim is not construed in a
"lexicographic vacuum, but in the context of the specification and
drawings."). Any special meaning assigned to a term "must be
sufficiently clear in the specification that any departure from common
usage would be so understood by a person of experience in the field of
the invention." Multiform Desiccants Inc. v. Medzam Ltd.,
133 F.3d 1473, 1477, 45 USPQ2d 1429, 1432 (Fed. Cir. 1998). See
also MPEP Sec. 2111.01. If the applicant asserts that a term has a
meaning that conflicts with the term's art-accepted meaning, USPTO
personnel should encourage the applicant to amend the claim to better
reflect what applicant intends to claim as the invention. If the
application becomes a patent, it becomes prior art against subsequent
applications. Therefore, it is important for later search purposes to
have the patentee employ commonly accepted terminology, particularly
for searching text-searchable databases.
USPTO personnel must always remember to use the perspective of one of
ordinary skill in the art. Claims and disclosures are not to be
evaluated in a vacuum. If elements of an invention are well known in
the art, the applicant does not have to provide a disclosure that
describes those elements. Where means plus function language is used to
define the characteristics of a machine or manufacture invention, claim
limitations must be interpreted to read on only the structures or
materials disclosed in the specification and "equivalents thereof."
Two en banc decisions of the Federal Circuit have made clear that the USPTO
is to interpret means plus function language according to 35 U.S.C. Sec.
112, sixth paragraph. In re Donaldson, 16 F.3d 1189, 1193, 29 USPQ2d 1845,
1848 (Fed. Cir. 1994) (in banc); In re Alappat, 33 F.3d 1526, 1540, 31
USPQ2d 1545, 1554 (Fed. Cir. 1994) (in banc).
Disclosure may be express, implicit or inherent. Thus, at the outset,
USPTO personnel must attempt to correlate claimed means to elements set
forth in the written description. The written description includes the
original specification and the drawings. USPTO personnel are to give
the claimed means plus function limitations their broadest reasonable
interpretation consistent with all corresponding structures or materials
described in the specification and their equivalents including the manner
in which the claimed functions are performed. See Kemco Sales, Inc. v.
Control Papers Company, Inc., 208 F.3d 1352, 54 USPQ2d 1308 (Fed. Cir.
2000). Further guidance in interpreting the scope of equivalents is provided
in MPEP Sec. 2181 through Sec. 2186. While it is appropriate to use the
specification to determine what applicant intends a term to mean, a positive
limitation from the specification cannot be read into a claim that does not
impose that limitation. A broad interpretation of a claim by USPTO personnel
will reduce the possibility that the claim, when issued, will be
interpreted more broadly than is justified or intended. An applicant
can always amend a claim during prosecution to better reflect the
intended scope of the claim.
Finally, when evaluating the scope of a claim, every limitation in
the claim must be considered. USPTO personnel may not dissect a claimed
invention into discrete elements and then evaluate the elements in
isolation. Instead, the claim as a whole must be considered. See, e.g.,
Diamond v. Diehr, 450 U.S. 175, 188-89, 209 USPQ 1, 9 (1981) ("In
determining the eligibility of respondents' claimed process for patent
protection under Sec. 101, their claims must be considered as a whole. It
is inappropriate to dissect the claims into old and new elements and then
to ignore the presence of the old elements in the analysis. This is
particularly true in a process claim because 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.").
III. CONDUCT A THOROUGH SEARCH OF THE PRIOR ART
Prior to evaluating the claimed invention under 35 U.S.C. Sec.
101, USPTO personnel are expected to conduct a thorough search of the
prior art. Generally, a thorough search involves reviewing both U.S.
and foreign patents and nonpatent literature. In many cases, the result
of such a search will contribute to USPTO personnel's understanding of
the invention. Both claimed and unclaimed aspects of the invention
described in the specification should be searched if there is a
reasonable expectation that the unclaimed aspects may be later claimed.
A search must take into account any structure or material described in
the specification and its equivalents which correspond to the claimed
means plus function limitation, in accordance with 35 U.S.C. Sec. 112,
sixth paragraph and MPEP Sec. 2181 through Sec. 2186.
IV. DETERMINE WHETHER THE CLAIMED INVENTION COMPLIES WITH THE SUBJECT
MATTER ELIGIBILITY REQUIREMENT OF 35 U.S.C. SEC. 101
A. Consider the Breadth of 35 U.S.C. Sec. 101 Under Controlling Law
Section 101 of title 35, United States Code, provides:
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.
As the Supreme Court held, Congress chose the expansive language of 35
U.S.C. Sec. 101 so as to include "anything under the sun that is made by
man." Diamond v. Chakrabarty, 447 U.S. 303, 308-09, 206 USPQ 193, 197
(1980). In Chakrabarty, 447 U.S. at 308-309, 206 USPQ at 197, the court
stated:
In choosing such expansive terms as "manufacture" and
"composition of matter," modified by the comprehensive "any,"
Congress plainly contemplated that the patent laws would be given wide
scope. The relevant legislative history also supports a broad
construction. The Patent Act of 1793, authored by Thomas Jefferson,
defined statutory subject matter as "any new and useful art, machine,
manufacture, or composition of matter, or any new or useful improvement
[thereof]." Act of Feb. 21, 1793, ch. 11, Sec. 1, 1 Stat. 318. The
Act embodied Jefferson's philosophy that "ingenuity should receive a
liberal encouragement." V Writings of Thomas Jefferson, at 75-76. See
Graham v. John Deere Co., 383 U.S. 1, 7-10 (148
USPQ 459, 462-464) (1966).
Subsequent patent statutes in 1836, 1870, and 1874 employed this same
broad language. In 1952, when the patent laws were recodified, Congress
replaced the word "art" with "process," but otherwise left
Jefferson's language intact. The Committee Reports accompanying the
1952 Act inform us that Congress intended statutory subject matter to
"include anything under the sun that is made by man." S. Rep. No.
1979, 82d Cong., 2d Sess., 5 (1952); H.R. Rep. No. 1923, 82d Cong., 2d
Sess., 6 (1952). [Footnote omitted]
This perspective has been embraced by the Federal Circuit:
The plain and unambiguous meaning of section 101 is that any new and
useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may be patented if it meets the
requirements for patentability set forth in Title 35, such as those
found in sections 102, 103, and 112. The use of the expansive term
"any" in section 101 represents Congress's intent not to place any
restrictions on the subject matter for which a patent may be obtained
beyond those specifically recited in section 101 and the other parts of
Title 35 . . . Thus, it is improper to read into section 101
limitations as to the subject matter that may be patented where the
legislative history does not indicate that Congress clearly intended
such limitations.
Alappat, 33 F.3d at 1542, 31 USPQ2d at 1556.
35 U.S.C. Sec. 101 defines four catagories of inventions 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.").
Federal courts have held that 35 U.S.C. Sec. 101 does have certain
limits. First, the phrase "anything under the sun that is made by
man" is limited by the text of 35 U.S.C. Sec. 101, meaning that one may
only patent something that is a machine, manufacture, composition of
matter or a process. See, e.g., Alappat, 33 F.3d at 1542,
31 USPQ2d at 1556; In re Warmerdam, 33 F.3d 1354, 1358, 31
USPQ2d 1754, 1757 (Fed. Cir. 1994). Second, 35 U.S.C. Sec. 101 requires
that the subject matter sought to be patented be a "useful"
invention. Accordingly, a complete definition of the scope of 35 U.S.C.
Sec. 101, reflecting Congressional intent, is that any new and useful
process, machine, manufacture or composition of matter under the sun
that is made by man is the proper subject matter of a patent.
The subject matter courts have found to be outside of, or exceptions
to, the four statutory categories of invention is limited to abstract
ideas, laws of nature and natural phenomena. While this is easily
stated, determining whether an applicant is seeking to patent an
abstract idea, a law of nature or a natural phenomenon has proven to be
challenging. These three exclusions recognize that subject matter that
is not a practical application or use of an idea, a law of
nature or a natural phenomenon is not patentable. See, e.g.,
Rubber-Tip Pencil Co. v. Howard, 87 U.S. (20 Wall.) 498, 507
(1874) ("idea of itself is not patentable, but a new device by which
it may be made practically useful is"); Mackay Radio &
Telegraph Co. v. Radio Corp. of America, 306 U.S. 86, 94, 40 USPQ
199, 202 (1939) ("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."); Warmerdam, 33 F.3d at 1360, 31 USPQ2d at 1759
("steps of `locating' a medial axis, and `creating' a bubble
hierarchy . . . describe nothing more than the manipulation of basic
mathematical constructs, the paradigmatic `abstract idea'").
The courts have also held that a claim may not preempt ideas, laws of
nature or natural phenomena. 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."); Funk Bros.
Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 132, 76 USPQ 280,
282 (1948) (combination of six species of bacteria held to be
nonstatutory subject matter). Accordingly, one may not patent every
"substantial practical application" of an idea, law of nature or
natural phenomena because such a patent "in practical effect be a
patent on the [idea, law of nature or natural phenomena] itself."
Gottschalk v. Benson, 409 U.S. 63, 71-72, 175 USPQ 673, 676 (1972).
B. Determine Whether the Claimed Invention Falls Within An Enumerated
Statutory Category
To properly determine whether a claimed invention complies with
the statutory invention requirements of 35 U.S.C. 101, USPTO
personnel must first identify whether the claim falls within at least
one of the four enumerated categories of patentable subject matter
recited in section 101 (process, machine, manufacture or composition of
matter).
In many instances it is clear within which of the enumerated categories
a claimed invention falls. Even if the characterization of the claimed
invention is not clear, this is usually not an issue that will preclude
making an accurate and correct assessment with respect to the section
101 analysis. The scope of 35 U.S.C. Sec. 101 is the same regardless of
the form or category of invention in which a particular claim is
drafted. AT&T, 172 F.3d at 1357, 50 USPQ2d at 1451. See also State Street,
149 F.3d at 1375, 47 USPQ2d at 1602 wherein the Federal Circuit explained
The question of whether a claim encompasses statutory subject matter
should not focus on which of the four categories of subject
matter a claim is directed to - process, machine, manufacture, or
composition of matter - [provided the subject matter falls into at
least one category of statutory subject matter] but rather on the
essential characteristics of the subject matter, in particular, its
practical utility.
For example, a claimed invention may be a combination of devices that
appear to be directed to a machine and one or more steps of the
functions performed by the machine. Such instances of mixed attributes,
although potentially confusing as to which category of patentable
subject matter it belongs in, does not affect the analysis to be
performed by the examiner. Note that an apparatus claim with process
steps is not classified as a "hybrid" claim; instead, it is simply
an apparatus claim including functional limitations. See, e.g.,
R.A.C.C. Indus. v. Stun-Tech, Inc., 178 F.3d 1309 (Fed. Cir.
1998) (unpublished).
The burden is on the USPTO to set forth a prima facie case
of unpatentability. Therefore if the examiner determines that it is
more likely than not that the claimed subject matter falls outside all
of the statutory categories, the examiner must provide an explanation.
For example, a claim reciting only a musical composition, literary
work, compilation of data, or legal document (e.g., an insurance
policy) per se does not appear to be a process, machine,
manufacture, or composition of matter. If the examiner can establish a
prima facie case that a claim does not fall into a statutory category, that
does not preclude complete examination of the application for satisfaction
of all other conditions of patentability. The examiner must further continue
with the statutory subject matter analysis as set forth below. Also, the
examiner must still examine the claims for compliance with 35 U.S.C.
Secs. 102, 103, and 112.
If the invention as set forth in the written description is statutory,
but the claims define subject matter that is not, the deficiency can be
corrected by an appropriate amendment of the claims. In such a case,
USPTO personnel should reject the claims drawn to nonstatutory subject
matter under 35 U.S.C. Sec. 101, but identify the features of the
invention that would render the claimed subject matter statutory if
recited in the claim.
C. Determine Whether the Claimed Invention Falls Within Sec. 101 Judicial
Exceptions - Laws of Nature, Natural Phenomena and Abstract Ideas
Determining whether the claim falls within one of the four
enumerated categories of patentable subject matter recited in 35 U.S.C.
Sec. 101 (process, machine, manufacture or composition of matter) does
not end the analysis because claims directed to nothing more than
abstract ideas (such as mathematical algorithms), natural phenomena,
and laws of nature are not eligible and therefore are excluded from
patent protection. Diehr, 450 U.S. at 185, 209 USPQ at 7; accord, e.g.,
Chakrabarty, 447 U.S. at 309, 206 USPQ at 197; Parker v. Flook, 437 U.S.
584, 589, 198 USPQ 193, 197 (1978); Benson, 409 U.S. at 67-68 , 175 USPQ at
675; Funk, 333 U.S. at 130, 76 USPQ at 281. "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." Le Roy,
55 U.S. (14 How.) at 175. Instead, such "manifestations of laws of nature"
are "part of the storehouse of knowledge," "free to all men and reserved
exclusively to none." Funk, 333 U.S. at 130, 76 USPQ at 281.
Thus, "a new mineral discovered in the earth or a new plant found in
the wild is not patentable subject matter" under Section 101. Chakrabarty,
447 U.S. at 309, 206 USPQ at 197. "Likewise, Einstein could not patent his
celebrated law that E=mc2; nor could Newton have patented the law of
gravity." Ibid. Nor can one patent "a novel and useful mathematical
formula," Flook, 437 U.S. at 585, 198 USPQ at 195; 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 Le Roy, 55
U.S. (14 How.) at 175.
While abstract ideas, natural phenomena, and laws of nature are not
eligible for patenting, methods and products employing abstract ideas,
natural phenomena, and laws of nature to perform a real-world function
may well be. In evaluating whether a claim meets the requirements of
section 101, the claim must be considered as a whole to determine
whether it is for a particular application of an abstract
idea, natural phenomenon, or law of nature, rather than for the
abstract idea, natural phenomenon, or law of nature itself.
1. Determine Whether the Claimed Invention Covers Either a Sec. 101
Judicial Exception or a Practical Application of a Sec. 101 Judicial
Exception
An examiner must ascertain the scope of the claim to determine whether
it covers either a Sec. 101 judicial exception or a practical application
of a Sec. 101 judicial exception. The conclusion that a particular claim
includes a Sec. 101 judicial exception does not end the inquiry because
"[i]t is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection." Diehr, 450 U.S. at 187, 209 USPQ at 8 (emphasis in
original); accord Flook, 437 U.S. at 590, 198 USPQ at 197; Benson, 409 U.S.
at 67, 175 USPQ at 675. Thus, "[w]hile a scientific truth, or the
mathematical expression of it, is not a patentable invention, a novel and
useful structure created with the aid of knowledge of scientific truth may
be." Diehr, 450 U.S. at 188, 209 USPQ at 8-9 (quoting Mackay, 306 U.S. at
94); see also Corning v. Burden, 56 U.S. (15 How.) 252, 268, 14 L.Ed. 683
(1854) ("It is for the discovery or invention of some practical method or
means of producing a beneficial result or effect, that a patent is
granted . . .").
2. Determine Whether the Claimed Invention is a Practical Application
of an Abstract Idea, Law of Nature, or Natural Phenomenon Sec. 101
Judicial Exceptions)
For claims including such excluded subject matter to be eligible, the
claim must be for a practical application of the abstract idea, law of
nature, or natural phenomenon. Diehr, 450 U.S. at 187, 209 USPQ at 8
("application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection."); Benson,
409 U.S. at 71, 175 USPQ at 676 (rejecting formula claim because it "has no
substantial practical application").
To satisfy section 101 requirements, the claim must be for a practical
application of the Sec. 101 judicial exception, which can be identified
in various ways:
. The claimed invention "transforms" an article or physical
object to a different state or thing.
. The claimed invention otherwise produces a useful, concrete
and tangible result, based on the factors discussed below.
a. Practical Application by Physical Transformation
The examiner first shall review the claim and determine if it provides
a transformation or reduction of an article to a different state or
thing. If the examiner finds such a transformation or reduction, the
examiner shall end the inquiry and find that the claim meets the
statutory requirement of 35 U.S.C. Sec. 101. If the examiner does not
find such a transformation or reduction, the examiner has not determined as
a final matter that the claim is non-statutory. The examiner must proceed in
further inquiry.
b. Practical Application That Produces a Useful, Concrete, and Tangible
Result
For eligibility analysis, physical transformation "is not an
invariable requirement, but merely one example of how a mathematical
algorithm [or law of nature] may bring about a useful application."
AT&T, 172 F.3d at 1358-59, 50 USPQ2d at 1452. If the examiner determines
that the claim does not entail the transformation of an article, then the
examiner shall review the claim to determine if the claim provides a
practical application that produces a useful, tangible and concrete result.
In determining whether the claim is for a "practical application," the focus
is not on whether the steps taken to achieve a particular result are
useful, tangible and concrete, but rather that the final result achieved by
the claimed invention is "useful, tangible and concrete." The claim must be
examined to see if it includes anything more than a Sec. 101 judicial
exception. If the claim is directed to a practical application of the Sec.
101 judicial exception producing a result tied to the physical world that
does not preempt the judicial exception, then the claim meets the statutory
requirement of 35 U.S.C. Sec. 101. If the examiner does not find such a
practical application, the examiner has determined that the claim is
nonstatutory.
In determining whether a claim provides a practical application that
produces a useful, tangible, and concrete result, the examiner should
consider and weigh the following factors:
(1) "USEFUL RESULT"
For an invention to be "useful" it must satisfy the utility
requirement of section 101. The USPTO's official interpretation of the
utility requirement provides that the utility of an invention has to be
(i) specific, (ii) substantial and (iii) credible. MPEP Sec.
2107 and Fisher, 421 F.3d at ___, 76 USPQ2d at 1230 (citing
the Utility Guidelines with approval for interpretation of
"specific" and "substantial"). In addition, when the examiner
has reason to believe that the claim is not for a practical application
that produces a useful result, the claim should be rejected, thus
requiring the applicant to distinguish the claim from the three Sec. 101
judicial exceptions to patentable subject matter by specifically
reciting in the claim the practical application. In such cases,
statements in the specification describing a practical application may
not be sufficient to satisfy the requirements for section 101 with
respect to the claimed invention. Likewise, a claim that can be read so
broadly as to include statutory and nonstatutory subject matter must be
amended to limit the claim to a practical application. In other words,
if the specification discloses a practical application of a Sec. 101
judicial exception, but the claim is broader than the disclosure such
that it does not require a practical application, then the claim must
be rejected.
(2) "TANGIBLE RESULT"
The tangible requirement does not necessarily mean that a claim must
either be tied to a particular machine or apparatus or must operate to
change articles or materials to a different state or thing. However,
the tangible requirement does require that the claim must recite more
than a Sec. 101 judicial exception, in that the process claim must set
forth a practical application of that Sec. 101 judicial exception to
produce a real-world result. Benson, 409 U.S. at 71-72, 175
USPQ at 676-77 (invention ineligible because had "no substantial
practical application."). "[A]n application of a law of nature or
mathematical formula to a . . . process may well be deserving of patent
protection." Diehr, 450 U.S. at 187, 209 USPQ at 8 (emphasis added); see
also Corning, 56 U.S. (15 How.) at 268, 14 L.Ed. 683 ("It is for the
discovery or invention of some practical method or means of producing a
beneficial result or effect, that a patent is granted . . ."). In other
words, the opposite meaning of "tangible" is "abstract."
(3) "CONCRETE RESULT"
Another consideration is whether the invention produces a
"concrete" result. Usually, this question arises when a result
cannot be assured. In other words, the process must have a result that
can be substantially repeatable or the process must substantially
produce the same result again. In re Swartz, 232 F.3d 862,
864, 56 USPQ2d 1703, 1704 (Fed. Cir. 2000) (where asserted result
produced by the claimed invention is "irreproducible" claim should
be rejected under section 101). The opposite of "concrete" is
unrepeatable or unpredictable. Resolving this question is dependent on
the level of skill in the art. For example, if the claimed invention is
for a process which requires a particular skill, to determine whether
that process is substantially repeatable will necessarily require a
determination of the level of skill of the ordinary artisan in that
field. An appropriate rejection under 35 U.S.C. Sec. 101 should be
accompanied by a lack of enablement rejection under 35 U.S.C. Sec. 112,
paragraph 1, where the invention cannot operate as intended without
undue experimentation. See infra.
3. Determine Whether the Claimed Invention Preempts an Abstract Idea, Law
of Nature, or Natural Phenomenon (Sec. 101 Judicial Exceptions)
Even when a claim applies a mathematical formula, for example,
as part of a seemingly patentable process, the examiner must ensure
that it does not in reality "seek[] patent protection for that
formula in the abstract." Diehr, 450 U.S. at 191, 209
USPQ at 10. "Phenomena of nature, though just discovered, mental
processes, abstract intellectual concepts are not patentable, as they
are the basic tools of scientific and technological work."
Benson, 409 U.S. at 67, 175 USPQ at 675. One may not patent
a process that comprises every "substantial practical application"
of an abstract idea, because such a patent "in practical effect would
be a patent on the [abstract idea] itself." Benson, 409
U.S. at 71-72, 175 USPQ at 676; cf. Diehr, 450 U.S. at 187,
209 USPQ at 8 (stressing that the patent applicants in that case did
"not seek to pre-empt the use of [an] equation," but instead
sought only to "foreclose from others the use of that equation in
conjunction with all of the other steps in their claimed process").
"To hold otherwise would allow a competent draftsman to evade the
recognized limitations on the type of subject matter eligible for
patent protection." Diehr, 450 U.S. at 192, 209 USPQ at
10. Thus, a claim that recites a computer that solely calculates a
mathematical formula (see Benson) or a computer disk that
solely stores a mathematical formula is not directed to the type of
subject matter eligible for patent protection. If an examiner
determines that the claimed invention preempts a Sec. 101 judicial
exception, the examiner must identify the abstraction, law of nature,
or natural phenomenon and explain why the claim covers every
substantial practical application thereof.
D. Establish on the Record a Prima Facie Case
The examiner should review the totality of the evidence (e.g.,
the specification, claims, relevant prior art) before reaching a
conclusion with regard to whether the claimed invention sets forth
patent eligible subject matter. The examiner must weigh the
determinations made above to reach a conclusion as to whether it is
more likely than not that the claimed invention as a whole either falls
outside of one of the enumerated statutory classes or within one of the
exceptions to statutory subject matter. "The examiner bears the
initial burden . . . of presenting a prima facie case of unpatentability."
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
If the record as a whole suggests that it is more likely than not that the
claimed invention would be considered a practical application of an abstract
idea,natural phenomenon, or law of nature, the examiner should not reject
the claim.
After the examiner identifies and explains in the record the basis for
why a claim is for an abstract idea with no practical application, 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. See, e.g., In
re Brana, 51 F.3d 1560, 1566, 34 USPQ2d 1436, 1441 (Fed. Cir. 1995); see
generally MPEP Sec. 2107 (Utility Guidelines).
V. EVALUATE APPLICATION FOR COMPLIANCE WITH 35 U.S.C. SEC. 112
A. Determine Whether the Claimed Invention Complies with 35 U.S.C.
Sec. 112, Second Paragraph Requirements (MPEP Sec. 2171)
The second paragraph of 35 U.S.C. Sec. 112 contains two separate
and distinct requirements: (A) that the claim(s) set forth the subject
matter applicants regard as the invention, and (B) that the claim(s)
particularly point out and distinctly claim the invention.
An application will be deficient under the first requirement of 35
U.S.C. Sec. 112, second paragraph when evidence including admissions,
other than in the application as filed, shows applicant has stated that
he or she regards the invention to be different from what is claimed
(see MPEP Sec. 2171-2172.01).
An application fails to comply with the second requirement of 35 U.S.C.
Sec. 112, second paragraph when the claims do not set out and define the
invention with a reasonable degree of precision and particularity. In
this regard, the definiteness of the language must be analyzed, not in
a vacuum, but always in light of the teachings of the disclosure as it
would be interpreted by one of ordinary skill in the art. Applicant's
claims, interpreted in light of the disclosure, must reasonably apprise
a person of ordinary skill in the art of the invention.
The scope of a "means" limitation is defined as the corresponding
structure or material set forth in the written description and equivalents.
See MPEP Sec. 2181 through Sec. 2186. See MPEP Sec. 2173 et seq. for a
discussion of a variety of issues pertaining to the 35 U.S.C. Sec. 112,
second paragraph requirement that the claims particularly point out and
distinctly claim the invention.
B. Determine Whether the Claimed Invention Complies with 35 U.S.C.
Sec. 112, First Paragraph Requirements (MPEP Sec. 2161)
The first paragraph of 35 U.S.C. Sec. 112 contains three separate
and distinct requirements:
(A) adequate written description,
(B) enablement, and
(C) best mode.
1. Adequate Written Description (MPEP Sec. 2163)
For the written description requirement, an applicant's
specification must reasonably convey to those skilled in the art that
the applicant was in possession of the claimed invention as of the date
of invention. Regents of the University of California v. Eli Lilly & Co.,
119 F.3d 1559, 1566-67, 43 USPQ2d 1398, 1404-05 (Fed. Cir. 1997); Hyatt v.
Boone, 146 F.3d 1348, 1354, 47 USPQ2d 1128, 1132 (Fed. Cir. 1998). The
claimed invention subject matter need not be described literally, i.e.,
using the same terms, in order for the disclosure to satisfy the description
requirement. Software aspects of inventions, for example, may be described
functionally. See Robotic Vision Sys. v. View Eng'g, Inc., 112 F.3d 1163,
1166, 42 USPQ2d 1619, 1622-23 (Fed. Cir. 1997); Fonar Corp. v. General
Electric Co., 107 F.3d 1543, 1549, 41 USPQ2d 1801, 1805 (Fed. Cir. 1997);
In re Hayes Microcomputer Prods., Inc., 982 F.2d 1527, 1537-38, 25 USPQ2d
1241, 1248-49 (Fed. Cir. 1992). See MPEP Sec. 2163 for further guidance with
respect to the evaluation of a patent application for compliance with the
written description requirement.
2. Enabling Disclosure (MPEP Sec. 2164)
An applicant's specification must enable a person skilled in the
art to make and use the claimed invention without undue
experimentation. The fact that experimentation is complex, however,
will not make it undue if a person of skill in the art typically
engages in such complex experimentation. See MPEP Sec. 2164 et seq. for
detailed guidance with regard to the enablement requirement of 35 U.S.C.
Sec. 112, first paragraph.
3. Best Mode (MPEP Sec. 2165)
Determining compliance with the best mode requirement requires
a two-prong inquiry:
(1) at the time the application was filed, did the inventor possess a
best mode for practicing the invention; and
(2) if the inventor did possess a best mode, does the written
description disclose the best mode such that a person skilled in the
art could practice it.
See MPEP Sec. 2165 et seq for additional guidance. Deficiencies related
to disclosure of the best mode for carrying out the claimed invention are
not usually encountered during examination of an application because
evidence to support such a deficiency is seldom in the record. Fonar, 107
F.3d at 1548-49, 41 USPQ2d at 1804-05.
VI. DETERMINE WHETHER THE CLAIMED INVENTION COMPLIES WITH 35 U.S.C.
SECS. 102 AND 103
Reviewing a claimed invention for compliance with 35 U.S.C. Secs.
102 and 103 begins with a comparison of the claimed subject matter to
what is known in the prior art. See MPEP Secs. 2131 - 2146 for specific
guidance on patentability determinations under 35 U.S.C. Secs. 102 and
103. If no differences are found between the claimed invention and the
prior art, the claimed invention lacks novelty and is to be rejected by
USPTO personnel under 35 U.S.C. Sec. 102. Once differences are identified
between the claimed invention and the prior art, those differences must
be assessed and resolved in light of the knowledge possessed by a
person of ordinary skill in the art. Against this backdrop, one must
determine whether the invention would have been obvious at the time the
invention was made. If not, the claimed invention satisfies 35 U.S.C.
Sec. 103.
VII. CLEARLY COMMUNICATE FINDINGS, CONCLUSIONS AND THEIR BASES
Once USPTO personnel have concluded the above analyses of the
claimed invention under all the statutory provisions, including 35
U.S.C. Secs. 101, 112, 102 and 103, they should review all the proposed
rejections and their bases to confirm that the examiner is able to set
forth a prima facie case of unpatentability. Only then
should any rejection be imposed in an Office action. The Office action
should clearly communicate the findings, conclusions and reasons which
support them.
October 26, 2005 JOHN J. DOLL
Commissioner for Patents
(For ANNEX I Flow Chart see printed version of the Official Gazette.)
ANNEX II
Case Law Defining the Line Between
Eligible and Ineligible Subject Matter
A. Supreme Court
i. "Anything Under the Sun That Is Made by Man"
To be eligible for patent protection, the subject matter of the
invention or discovery must come within the boundaries set forth by 35
U.S.C. Sec. 101, which permits patents to be granted only for "any new
and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof."
A machine is "a concrete thing, consisting of parts or of certain
devices and combinations of devices." Burr v. Duryee, 68 U.S. (1 Wall.)
531, 570 (1863).
A manufacture is "the production of articles for use from raw or
prepared materials by giving to these materials new forms, qualities,
properties or combinations, whether by hand labor or by machinery."
Chakrabarty, 447 U.S. at 308, 206 USPQ at 196-97 (quoting American Fruit
Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11 (1931)).
A composition of matter is "a composition of two or more substances
[or] . . . a[] composite article, whether [it] be the result[]
of chemical union, or of mechanical mixture, or whether . . . [it] be
[a] gas[], fluid[], powder[], or solid[]." Id. at 308, 206 USPQ at 197
(quoting Shell Development Co. v. Watson, 149 F. Supp. 279, 280, [113 USPQ
265, 266] (D.D.C. 1957), aff'd per curiam, 252 F.2d 861, 116 USPQ 428 (D.C.
Cir. 1958)).
A claim that requires one or more acts to be performed defines a
process. However, not all processes are statutory under 35 U.S.C. Sec.
101. To be statutory, a claimed process must either: (A) result in a
physical transformation for which a practical application is either
disclosed in the specification or would have been known to a skilled
artisan, or (B) be limited to a practical application which produces a
useful, tangible, and concrete result. See Diehr, 450 U.S.
at 183-84, 209 USPQ at 6 (quoting Cochrane v. Deener, 94
U.S. 780, 787-88 (1876)) ("A [statutory] 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 . . . . The
process requires that certain things should be done with certain
substances, and in a certain order; but the tools to be used in doing
this may be of secondary consequence."). See also Alappat, 33 F.3d at 1543,
31 USPQ2d at 1556-57 (quoting Diehr, 450 U.S. at 192, [209 USPQ at 10]).
See also id. at 1569, 31 USPQ2d at 1578-79 (Newman, J., concurring)
("unpatentability of the principle does not defeat patentability of
its practical applications") (citing O'Reilly, 56 U.S. (15 How.) at 114-19).
In evaluating whether a claim meets the requirements of section 101,
the Supreme Court requires that the claim be considered as a whole to
determine whether it is for a particular application of an
abstract idea, rather than for the abstract idea itself. The Supreme
Court has noted that the scope of patentable subject matter is
generally quite broad, stating that "Congress intended statutory
subject matter to `include anything under the sun that is made by
man.'" Diehr, 450 U.S. at 182, 209 USPQ at 6 (quoting S.
Rep. No. 1979, 82d Cong., 2d Sess. 5 (1952); H.R. Rep. No. 1923, 82
Cong., 2d Sess. 6 (1952)).
ii. Exceptions: Laws of Nature, Natural Phenomena and Abstract Ideas
"Excluded from such patent protection," however, are "laws of
nature, natural phenomena, and abstract ideas." Diehr, 450 U.S. at 185, 209
USPQ at 7; accord, e.g., Chakrabarty, 447 U.S. at 309, 206 USPQ at 197;
Flook, 437 U.S. at 589, 198 USPQ at 197; Benson, 409 U.S. at 67-68, 175 USPQ
at 675; Funk, 333 U.S. at 130, 76 USPQ at 281. "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." Le Roy,
55 U.S. (14 How.) at 175. Instead, such "manifestations of laws of nature"
are "part of the storehouse of knowledge," "free to all men and reserved
exclusively to none." Funk, 333 U.S. at 130, 76 USPQ at 281.
Thus, "a new mineral discovered in the earth or a new plant found in
the wild is not patentable subject matter" under Section 101. Chakrabarty,
447 U.S. at 309, 206 USPQ at 197. "Likewise, Einstein could not patent his
celebrated law that E=mc2;nor could Newton have patented the law of
gravity." Ibid. Nor can one patent "a novel and useful mathematical
formula," Flook, 437 U.S. at 585, 198 USPQ at 195; electromagnetism
or steam power, O'Reilly, 56 U.S. (15 How.) at 113-114; 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
Le Roy, 55 U.S. (14 How.) at 175.
iii. Practical Application of a Law of Nature or Abstract Idea
Is Eligible
The conclusion that a particular claim includes an abstract
idea does not end the inquiry, however, because "[i]t is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection." Diehr,
450 U.S. at 187, 209 USPQ at 8 (emphasis in original); accord Flook, 437
U.S. at 590, 198 USPQ at 197; Benson, 409 U.S. at 67, 175 USPQ at 675.
Thus, "[w]hile a scientific truth, or the mathematical
expression of it, is not a patentable invention, a novel and useful
structure created with the aid of knowledge of scientific truth may
be." Diehr, 450 U.S. at 188, 209 USPQ at 8-9 (quoting Mackay, 306 U.S. at
94); see also Corning, 56 U.S. (15 How.) at 268, 14 L.Ed. 683("It is for the
discovery or invention of some practical method or means of producing a
beneficial result or effect, that a patent is granted . . .").
iv. Transformation Is Evidence of Eligibility
In the case where a claim is for a process, as opposed to a product,
"[t]he line between a patentable `process' and an unpatentable
`principle' is not always clear." Flook, 437 U.S. at
589, 198 USPQ at 197. In general, however, the "[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." Diehr, 450 U.S. 184, 209 USPQ at 7 (quoting Benson,
409 U.S. at 70); see Flook, 437 U.S. at 588-89 & n.9, 198 USPQ at 196-97 &
n.9; Cochrane v. Deener, 94 U.S. 780, 787-788 (1876). For example, the
Supreme Court has held that although one cannot patent a mathematical
formula, a multi-step process for curing synthetic rubber that makes use of
such a formula is patentable. Diehr, 450 U.S. at 186-87, 209
USPQ at 8.
v. No Preemption Permitted
Even when a claim applies a mathematical formula, for example, as part
of a seemingly patentable process, however, one must ensure that it
does not in reality "seek[] patent protection for that formula in
the abstract." Diehr, 450 U.S. at 191, 209 USPQ at 10.
One may not patent a process that comprises every "substantial
practical application" of an abstract idea , because such a patent
"in practical effect would be a patent on the [abstract idea]
itself." Benson, 409 U.S. at 71-72, 175 USPQ at 676;
cf. Diehr, 450 U.S. at 187, 209 USPQ at 8 (stressing that
the patent applicants in that case did "not seek to pre-empt the use
of [an] equation," but instead sought only to "foreclose from
others the use of that equation in conjunction with all of the other
steps in their claimed process"). Such limitations on process patents
are important because without them, "a competent draftsman [could]
evade the recognized limitations on the type of subject matter eligible
for patent protection." Diehr, 450 U.S. at 192, 209 USPQ
at 10; accord Flook, 437 U.S. at 590, 198 USPQ at 197.
Thus, a claim that recites a computer that solely calculates a
mathematical formula (see Benson), a computer disk that
solely stores a mathematical formula, or a electromagnetic carrier
signal that carries solely a mathematical formula is not statutory.
vi. Claim Must Be Considered as a Whole
Only "when a claim containing [an abstract idea] implements or
applies that [idea] in a structure or process which, when considered
as a whole, is performing a function which the patent laws were
designed to protect," does "the claim satisf[y] the requirements
of Sec. 101." Diehr, 450 U.S. at 192, 209 USPQ at 10.
B. Federal Circuit
i. "Practical Application of an Abstract Idea"
While the Supreme Court has ruled that "transformation" is relevant
to a section 101 inquiry, the Court has expressly refused to hold that
it is the only test for determining patent eligibility. The Federal
Circuit has provided further guidance in distinguishing between the
judicially-created exceptions to patentable subject matter and eligible
subject matter. The focus of the inquiry is whether the claim,
considered as a whole, constitutes "a practical application of an
abstract idea." State Street, 149 F.3d at 1373, 47 USPQ2d
at 1600. Thus, the question of whether a claim encompasses statutory
subject matter should not focus on which category of subject matter a
claim is directed to (e.g. process or machine), "but rather on the
essential characteristics of the subject matter, in particular its
practical utility." State Street, 149 F.3d at 1375, 47
USPQ2d at 1602 ; see also AT&T, 172 F.3d at 1360, 50 USPQ2d
at 1453 (focus on section 101 inquiry is "whether the mathematical
algorithm was applied in a practical manner"). Accordingly, an
"abstract idea" when practically applied to a useful end is
eligible for a patent. State Street, 149 F.3d at 1374, 47
USPQ2d at 1601 ("a process, machine, manufacture, or composition of
matter employing a law of nature, natural phenomenon, or
abstract idea is patentable subject matter even though a law of nature,
natural phenomenon, or abstract idea would not, by itself, be entitled
to such protection.") (emphasis added); see also Alappat,
33 F.3d at 1543, 31 USPQ2d at 1556-57(holding that "certain types of
mathematical subject matter, standing alone, represent nothing more
that abstract ideas until reduced to some type of practical
application, and thus that subject matter is not, in and of itself,
entitled to patent protection.").
ii. "Useful, Concrete and Tangible Result"
In State Street, the Federal Circuit examined some of its
prior section 101 cases, observing that the claimed inventions in those
cases were each for a "practical application of an abstract idea"
because the elements of the invention operated to produce a "useful,
concrete and tangible result." State Street, 149 F.3d at
1373-74, 47 USPQ2d at 1601-02. For example, the court in State
Street noted that the claimed invention in Alappat
"constituted a practical application of an abstract idea (a
mathematical algorithm, formula, or calculation), because it produced
`a useful, concrete and tangible result' - smooth waveform."
Id. Similarly, the claimed invention in Arrhythmia "constituted a practical
application of an abstract idea (a mathematical algorithm, formula, or
calculation), because it corresponded to a useful, concrete and tangible
thing - the condition of a patient's heart." Id.
In determining whether the claim is for a "practical application,"
the focus is not on whether the steps taken to achieve a particular
result are useful, tangible and concrete, but rather that the final
result is "useful, tangible and concrete." The Federal
Circuit further ruled that it is of little relevance whether a claim is
directed to a machine or process for the purpose of a Sec. 101 analysis.
AT&T, 172 F.3d at 1358, 50 USPQ2d at 1451.
A claim limited to a machine or manufacture, which has a practical
application, is statutory. In most cases, a claim to a specific machine
or manufacture will have a practical application. See
Alappat, 33 F.3d at 1544, 31 USPQ2d at 1557 ("the claimed
invention as a whole is directed to a combination of interrelated
elements which combine to form a machine for converting discrete
waveform data samples into anti-aliased pixel illumination intensity
data to be displayed on a display means. This is not a disembodied
mathematical concept which may be characterized as an `abstract
idea,' but rather a specific machine to produce a useful, concrete,
and tangible result."); and State Street, 149 F.3d at
1373-74, 47 USPQ2d at 1601-02 ("the transformation of data,
representing discrete dollar amounts, by a machine through a series of
mathematical calculations into a final share price, constitutes a
practical application of a mathematical algorithm, formula, or
calculation, because it produces `a useful, concrete and tangible
result' - a final share price momentarily fixed for recording and
reporting purposes and even accepted and relied upon by regulatory
authorities and in subsequent trades."). Also see AT&T,
172 F.3d at 1358, 50 USPQ2d at 1452 (Claims drawn to a long-distance
telephone billing process containing mathematical algorithms were held
patentable subject matter because the process used the algorithm to
produce a useful, concrete, tangible result without preempting other
uses of the mathematical principle.).
iii. Transformation of Articles
The Supreme Court noted that one example of a statutory "process"
is where the process steps provide a transformation or reduction of an
article to a different state or thing. Diehr, 450 U.S. at
183, 209 USPQ at 6. The Federal Circuit has explained, however, that
the physical transformation test is not an invariable requirement in
order for a claim to have statutory subject matter. The Federal Circuit
best explains:
The notion of "physical transformation" can be
misunderstood. In the first place, it is not an invariable requirement,
but merely one example of how a mathematical algorithm may bring about
a useful application. As the Supreme Court itself noted, "when [a
claimed invention] is performing a function which the patent laws were
designed to protect (e.g., transforming or reducing an
article to a different state or thing), then the claim satisfies the
requirements of Sec. 101." Diamond v. Diehr, 450 U.S. at
192 (emphasis added). The "e.g." signal denotes an example, not an
exclusive requirement.
AT&T, 172 F.3d at 1358-59, 50 USPQ2d at 1452. Thus, physical
transformation is only one example of a practical or useful application of
an abstract idea.
iv. Schrader and Grams distinguished
In the AT&T decision, the Federal Circuit stated that Schrader and Grams
were not persuasive because the Schrader court and the Grams court relied
upon the Freeman-Walter-Abele test instead of determining if the
subject matter was applied in a practical manner to produce a useful,
concrete and tangible result. The Federal Circuit stated:
In re Grams [888 F.2d 835, 12 USPQ2d 1824 (Fed. Cir. 1989)] is unhelpful
because the panel in that case did not ascertain if the end result of the
claimed process was useful, concrete, and tangible. Similarly, the court in
In re Schrader [22 F.3d 290, 30 USPQ2d 1455 (Fed. Cir. 1994)] relied on the
Freeman-Walter-Abele test for its analysis of the method claim involved. The
court found neither a physical transformation nor any physical step in the
claimed process aside from the entering of data into a record. See 22 F.3d
at 294, 30 USPQ2d at 1458. The Schrader court likened the data-recording
step to that of data-gathering and held that the claim was properly rejected
as failing to define patentable subject matter. See id. at 294, 296,
30 USPQ2d at 1458-59. The focus of the court in Schrader was not on whether
the mathematical algorithm was applied in a practical manner since it ended
its inquiry before looking to see if a useful, concrete, tangible result
ensued. Thus, in light of our recent understanding of the issue, the
Schrader court's analysis is as unhelpful as that of In re Grams.
AT&T, 172 F.3d at 1360, 50 USPQ2d at 1453. Accordingly, the Federal
Circuit has made clear that Schrader and Grams are not helpful in analyzing
claims under section 101.
ANNEX III
Improper Tests For
Subject Matter Eligibility
As set forth in the patent eligible subject matter interim
guidelines, a practical application of a 35 U.S.C. Sec. 101 judicial
exception is claimed if the claimed invention physically transforms an
article or physical object to a different state or thing, or if the
claimed invention otherwise produces a useful, concrete, and tangible
result. Therefore the following tests are not to be applied by examiners
in determining whether the claimed invention is patent eligible subject
matter:
(A) "not in the technological arts" test
(B) Freeman-Walter-Abele test
(C) mental step or human step tests
(D) the machine implemented test
(E) the per se data transformation test.
a. Technological Arts Test
United States patent law does not support the application of a
"technical aspect" or "technological arts" requirement. Title
35 of the United States Code does not recite, explicitly or implicitly,
that inventions must be within the "technological arts" to be
patentable. Section 101 of Title 35 recites that "[w]hoever 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 . . . " Accordingly, while an invention must
be "new" and "useful," there is no statutory requirement that
it fit within a category of "technological arts." Moreover,
although there has been some judicial discussion of the expression
"technological arts" and its relationship to patentability, this
dialogue has been rather limited and its viability is questioned. In
1970, the Court in In re Musgrave [431 F.2d 882, 167 USPQ
280 (CCPA 1970)] introduced a new standard for evaluating process
claims under Section 101: any sequence of operational steps is a
patentable process so long as it is within the technological arts so as
to promote the progress of useful arts. Since the announcement of a new
"technological arts" standard in Musgrave, only
fourteen cases make reference to this so-called "technological
arts" standard. In fact, only a handful of cases immediately
following the Musgrave decision employed the "technological arts"
standard in determining whether an invention is a process within the
framework of Section 101. Instead, the Supreme Court refused to adopt
that test when it reversed the Court of Customs and Patent Appeals in
Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972).
See also Diehr, 450 U.S. at 201, 209 USPQ at 14 (J. Stevens
dissenting) (discussing the Court did not recognize the lower court's
technological arts standard). Moreover, the CCPA effectively rejected
the technological arts test in In re Toma, 575 F.2d 872,
878, 197 USPQ 852, 857 (CCPA 1978), by strongly suggesting that
Musgrave was never intended to create a technological arts
test for patent eligibility:
The language which the examiner has quoted [from Musgrave and its
progeny relating to "technological arts"] was written in answer to
"mental steps rejections and was not intended to create a generalized
definition of statutory subject matter. Moreover, it was not intended to
form a basis for a new Sec. 101 rejection as the examiner apparently
suggests.
Toma, 575 F.2d at 878, 197 USPQ at 857.
In addition, the "technological arts" consideration is completely
absent from recent Federal Circuit case law like State
Street and AT&T. Given the current trend in the law,
the Musgrave test should not be considered as current legal
jurisprudence, and should not be used to evaluate process inventions
for compliance with Section 101.
More important, the Musgrave decision should not be interpreted as
imposing a new requirement that certain inventions be in the "technological
arts" to be patentable. Instead, Musgrave should be limited to its facts and
holding, i.e., that the computer-related invention in dispute was a
patentable invention within the meaning of Section 101 because it was an
advancement in technology which clearly promoted the useful arts. Thus,
the Musgrave decision should not be construed as announcing a new stand-
alone "technological arts" test for patentability, but should stand for the
proposition that computer-implemented process claims may be patentable
subject matter.
Furthermore, any attempts to define what is "in the technological
arts" raises more questions that it appears to answer. The mere
application of an article or a computer does not automatically qualify
as eligible subject matter. See, e.g., Benson, 409 U.S. 63,
175 USPQ 673. Thus, this potential analysis improperly focuses on how
the invention is implemented rather than on what is the practical
application and the result that is achieved.
The emergence of a new patentability requirement that is not firmly
rooted in our law also creates significant international concerns.
First, the United States is a leader in intellectual property
protection and strongly supports patent protection for all subject
matter regardless of whether there is a "technical aspect" or the
invention is in the "technological arts." The application of a
`technological art' requirement could be used to preclude the
patenting of certain inventions not only in the United States, but also
in other jurisdictions.
In Ex parte Lundgren, Appeal No. 2003-2088, Application
08/093,516, (Precedential BPAI opinion September 2005), the Board
rejected the examiner's argument that Musgrave and Toma created a
technological arts test. "We do not believe the court could have been any
clearer in rejecting the theory the present examiner now advances in this
case." Lundgren, at 8. The Board held that "there is currently
no judicially recognized separate "technological arts" test to
determine patent eligible subject matter under Sec. 101." Lundgren at 9.
USPTO personnel should no longer rely on the technological arts test to
determine whether a claimed invention is directed to statutory subject
matter. There is no other recognized exceptions to eligible subject
matter other than laws of nature, natural phenomena, and abstract
ideas.
b. Freeman-Walter-Abele Test
USPTO personnel should not rely on the Freeman-Walter-Abele test to
determine whether a claimed invention is directed to statutory subject
matter. The Federal Circuit questioned the continuing viability of the
Freeman-Walter-Abele test, noting that "[a]fter Diehr and Chakrabarty, the
Freeman-Walter-Abele test has little, if any, applicability to determining
the presence of statutory subject matter." State Street, 149 F.3d at 1374,
47 USPQ2d at 1601.
The Federal Circuit further stated "after Diehr and Alappat, the mere
fact that a claimed invention involves inputting numbers, calculating
numbers, outputting numbers and storing numbers, in and of itself, would
not render it nonstatutory . . . " State Street, 149 F.3d at 1374, 47 USPQ2d
at 1602 (citing In re Alappat, 33 F.3d at 1544, 31 USPQ2d at 1557). The
Federal Circuit in an en banc decision pointed out that
"the ultimate issue always has been whether the claim as a whole is
drawn to statutory subject matter." Alappat, 33 F.3d at
1543 n. 21, 31 USPQ2d at 1557 n. 21.
In AT&T, the Federal Circuit focused the inquiry on whether
the claim as a whole is drawn to statutory subject matter, deemed the
"ultimate issue" by Alappat, rather than on the
Freeman-Walter-Abele test which dissects the claim by removing the
labeled nonstatutory subject matter and then labels the remaining
portion of the claim as either data gathering steps or insignificant
post solution activity. AT&T, 172 F.3d at 1359, 50 USPQ2d
at 1453. The Federal Circuit concluded that "[w]hatever may be left
of the earlier [Freeman-Walter-Abele] test, if anything, this type of
physical limitations analysis seems of little value." Id.
Therefore, USPTO personnel should no longer rely on the
Freeman-Walter-Abele test to determine whether a claimed invention is
directed to statutory subject matter.
c. (i) The Mental Step Test
If a claimed process is performed by a machine, it is immaterial
whether some or all the steps could be carried out by the human mind.
As stated in Musgrave, 431 F.2d at 893, 167 USPQ at 289-90:
"[w]e cannot agree with the board that these claims (all the steps
of which can be carried out by the disclosed apparatus) are directed to
non-statutory processes merely because some or all
[emphasis added] the steps therein can also be carried out in or with
the aid of the human mind or because it may be necessary for one
performing the processes to think." Therefore, USPTO personnel should
no longer rely on the mental step test to determine whether a claimed
invention is directed to statutory subject matter. If all the steps of
a claimed process can be carried out in the human mind, examiners must
determine whether the claimed process produces a useful, tangible, and
concrete result, i.e., apply the practical application test set forth
in State Street.
c. (ii) The Human Step Test
It is immaterial whether the process may be performed by some or all
steps that are carried out by a human. Claims are not directed to
non-statutory processes merely because some or all the steps
therein can also be carried out in or with the aid of a human or
because it may be necessary for one performing the processes to do some
or all of the process steps. The inclusion in a patent of a process
that may be performed by a person is not fatal to patentability.
Alco Standard Corp. v. Tennessee Valley Authority, 808 F.2d 1490, 1496, 1
USPQ2d 1337, 1341 (Fed. Cir. 1987) (citing Diehr, 450 U.S. at 175); see e.g.
Smith & Nephew, Inc. v. Ethicon, Inc., 276 F.3d 1304, 61 USPQ2d 1065 (Fed.
Cir. 2001) (method claim where all the steps are carried out by a human).
Therefore, USPTO personnel should no longer rely on the human step test
to determine whether a claimed invention is directed to statutory
subject matter.
d. Machine Implemented Test
Whether a claim recites a machine implemented process is not
determinative of whether that process claim is statutory. Such a test
would recognize that an abstraction merely implemented on a computer is
statutory. An example will illustrate the point. Assume that y = 2x +
C, where x and C are positive real numbers, is nothing more than an
abstract idea. The claim recites: a computer-implemented process
comprising providing x and C defined as positive real numbers,
multiplying x by 2 to get Z and determining y by adding C to Z. Thus,
the claim is nothing more than an abstract idea which is machine
implemented and such a claim is not statutory. See, e.g.,
Benson, 409 U.S. 63, 175 USPQ 673 (finding machine-implemented
method of converting binary-coded decimal numbers into pure binary
numbers unpatentable). However, using the machine implemented test, the
claim would be found to be statutory.
The Federal Circuit held that the mere manipulations of abstract ideas
are not patentable. Schrader, 22 F.3d at 292-93, 30 USPQ2d
at 1457-58. If a claimed process manipulates only numbers, abstract
concepts or ideas, or signals representing any of the foregoing, the
claim is not being applied to appropriate subject matter.
Schrader, 22 F.3d at 294-95, 30 USPQ2d at 1458-59. The
Federal Circuit also recognizes that the fact that a nonstatutory
method is carried out on a programmed computer does not make the
process claim statutory. Grams, 888 F.2d at 841, 12 USPQ2d
at 1829 (claim 16 ruled nonstatutory even though it was a
computer-implemented process).
In addition, the Federal Circuit has recently noted that a
"structural inquiry is unnecessary" when determining whether a
process claim is eligible for patent protection. AT&T, 172
F.3d at 1359, 50 USPQ2d at 1452.
Thus, a finding that a claim fails to recite a computer-implemented
process is not determinative in whether that claim passes muster under
Sec. 101. Therefore, USPTO personnel should no longer rely on the machine
implemented test to determine whether a claimed invention is directed
to statutory subject matter.
e. Per Se Data Transformation Test
Identifying that a claim transforms data from one value to another is
not by itself sufficient for establishing that the claim is eligible
for patent protection. See, e.g., Benson, 409 U.S. 63, 175
USPQ 673 (finding machine-implemented method of converting binary-coded
decimal numbers into pure binary numbers unpatentable). In
Benson, the claims invention was held to be merely a series
of mathematical calculations having "no substantial practical
application." Id. at 71, 175 USPQ at 676. Therefore,
claims that perform data transformation must still be examined for
whether there is a practical application of an abstract idea that
produces a useful, concrete, and tangible result.
ANNEX IV
Computer-Related Nonstatutory Subject Matter
Descriptive material can be characterized as either "functional
descriptive material" or "nonfunctional descriptive material." In this
context, "functional descriptive material" consists of data structures and
computer programs which impart functionality when employed as a computer
component. (The definition of "data structure" is "a physical or logical
relationship among data elements, designed to support specific data
manipulation functions." The New IEEE Standard Dictionary of Electrical and
Electronics Terms 308 (5th ed. 1993).) "Nonfunctional descriptive material"
includes but is not limited to music, literary works and a compilation or
mere arrangement of data.
Both types of "descriptive material" are nonstatutory when claimed
as descriptive material per se. Warmerdam, 33 F.3d at 1360,
31 USPQ2d at 1759. When functional descriptive material is recorded on
some computer-readable medium it becomes structurally and functionally
interrelated to the medium and will be statutory in most cases since
use of technology permits the function of the descriptive material to
be realized. Compare In re Lowry, 32 F.3d 1579, 1583-84, 32
USPQ2d 1031, 1035 (Fed. Cir. 1994) (claim to data structure stored on a
computer readable medium that increases computer efficiency held
statutory) and Warmerdam, 33 F.3d at 1360-61, 31 USPQ2d at
1759 (claim to computer having a specific data structure stored in
memory held statutory product-by-process claim) with Warmerdam, 33 F.3d
at 1361, 31 USPQ2d at 1760 (claim to a data structure per se held
nonstatutory).
When nonfunctional descriptive material is recorded on some
computer-readable medium, in a computer or on an electromagnetic
carrier signal, it is not statutory since no requisite functionality is
present to satisfy the practical application requirement. Merely
claiming nonfunctional descriptive material, i.e., abstract
ideas, stored in a computer-readable medium, in a computer, on an
electromagnetic carrier signal does not make it statutory. See
Diehr, 450 U.S. at 185-86, 209 USPQ at 8 (noting that the claims
for an algorithm in Benson were unpatentable as abstract
ideas because "[t]he sole practical application of the algorithm
was in connection with the programming of a general purpose
computer."). Such a result would exalt form over substance. In
re Sarkar, 588 F.2d 1330, 1333, 200 USPQ 132, 137 (CCPA 1978)
("[E]ach invention must be evaluated as claimed; yet semantogenic
considerations preclude a determination based solely on words appearing
in the claims. In the final analysis under Sec. 101, the claimed
invention, as a whole, must be evaluated for what it is.") (quoted
with approval in Abele, 684 F.2d at 907, 214 USPQ at 687).
See also In re Johnson, 589 F.2d 1070, 1077, 200 USPQ 199,
206 (CCPA 1978) ("form of the claim is often an exercise in
drafting"). Thus, nonstatutory music is not a computer component and
it does not become statutory by merely recording it on a compact disk.
Protection for this type of work is provided under the copyright law.
When nonfunctional descriptive material is recorded on some
computer-readable medium, in a computer or on an electromagnetic
carrier signal, it is not statutory and should be rejected under 35
U.S.C. Sec. 101. In addition, the examiner should inquire whether there
should be a rejection under 35 U.S.C. Sec. 102 or 103. The examiner
should determine whether the claimed nonfunctional descriptive material
be given patentable weight. The USPTO must consider all claim
limitations when determining patentability of an invention over the
prior art. In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401,
403-04 (Fed. Cir. 1983). The USPTO may not disregard claim limitations
comprised of printed matter. See Gulack, 703 F.2d at 1384,
217 USPQ at 403; see also Diehr, 450 U.S. at 191, 209 USPQ
at 10. However, the examiner need not give patentable weight to printed
matter absent a new and unobvious functional relationship between the
printed matter and the substrate. See In re Lowry, 32 F.3d
1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re
Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004).
(a) Functional Descriptive Material: "Data Structures"
Representing Descriptive Material Per Se or Computer Programs
Representing Computer Listings Per Se
Data structures not claimed as embodied in computer-readable
media are descriptive material per se and are not statutory
because they are not capable of causing functional change in the
computer. See, e.g., Warmerdam, 33 F.3d at 1361, 31 USPQ2d
at 1760 (claim to a data structure per se held nonstatutory). Such
claimed data structures do not define any structural and functional
interrelationships between the data structure and other claimed aspects of
the invention which permit the data structure's functionality to be
realized. In contrast, a claimed computer-readable medium encoded with a
data structure defines structural and functional interrelationships between
the data structure and the computer software and hardware components which
permit the data structure's functionality to be realized, and is thus
statutory.
Similarly, computer programs claimed as computer listings per
se, i.e., the descriptions or expressions of the programs, are
not physical "things." They are neither computer components nor
statutory processes, as they are not "acts" being performed. Such
claimed computer programs do not define any structural and functional
interrelationships between the computer program and other claimed
elements of a computer which permit the computer program's
functionality to be realized. In contrast, a claimed computer-readable
medium encoded with a computer program is a computer element which
defines structural and functional interrelationships between the
computer program and the rest of the computer which permit the computer
program's functionality to be realized, and is thus statutory.
See Lowry, 32 F.3d at 1583-84, 32 USPQ2d at 1035. Accordingly, it is
important to distinguish claims that define descriptive material per se
from claims that define statutory inventions.
Computer programs are often recited as part of a claim. USPTO personnel
should determine whether the computer program is being claimed as part
of an otherwise statutory manufacture or machine. In such a case, the
claim remains statutory irrespective of the fact that a computer
program is included in the claim. The same result occurs when a
computer program is used in a computerized process where the computer
executes the instructions set forth in the computer program. Only when
the claimed invention taken as a whole is directed to a mere program
listing, i.e., to only its description or expression, is it descriptive
material per se and hence nonstatutory. Since a computer
program is merely a set of instructions capable of being executed by a
computer, the computer program itself is not a process and USPTO
personnel should treat a claim for a computer program, without the
computer-readable medium needed to realize the computer program's
functionality, as nonstatutory functional descriptive material. When a
computer program is claimed in a process where the computer is
executing the computer program's instructions, USPTO personnel should
treat the claim as a process claim. See paragraph IV.B.2(b), below.
When a computer program is recited in conjunction with a physical
structure, such as a computer memory, USPTO personnel should treat the
claim as a product claim. See paragraph IV.B.2(a), below.
(b) Nonfunctional Descriptive Material
Nonfunctional descriptive material that does not constitute a
statutory process, machine, manufacture or composition of matter and
should be rejected under 35 U.S.C. Sec. 101. Certain types of descriptive
material, such as music, literature, art, photographs and mere
arrangements or compilations of facts or data, without any functional
interrelationship is not a process, machine, manufacture or composition
of matter. USPTO personnel should be prudent in applying the foregoing
guidance. Nonfunctional descriptive material may be claimed in
combination with other functional descriptive multi-media material on a
computer-readable medium to provide the necessary functional and
structural interrelationship to satisfy the requirements of 35 U.S.C.
Sec. 101. The presence of the claimed nonfunctional descriptive material
is not necessarily determinative of nonstatutory subject matter. For
example, a computer that recognizes a particular grouping of musical
notes read from memory and upon recognizing that particular sequence,
causes another defined series of notes to be played, defines a
functional interrelationship among that data and the computing
processes performed when utilizing that data, and as such is statutory
because it implements a statutory process.
(c) Electro-Magnetic Signals
Claims that recite nothing but the physical characteristics of
a form of energy, such as a frequency, voltage, or the strength of a
magnetic field, define energy or magnetism, per se, and as
such are nonstatutory natural phenomena. O'Reilly, 56 U.S.
(15 How.) at 112-14. Moreover, it does not appear that a claim reciting
a signal encoded with functional descriptive material falls within any
of the categories of patentable subject matter set forth in Sec. 101.
First, a claimed signal is clearly not a "process" under Sec. 101
because it is not a series of steps. The other three Sec. 101 classes of
machine, compositions of matter and manufactures "relate to
structural entities and can be grouped as `product' claims in order
to contrast them with process claims." 1 D. Chisum, Patents Sec. 1.02
(1994). The three product classes have traditionally required physical
structure or material.
"The term machine includes every mechanical device or combination of
mechanical device or combination of mechanical powers and devices to
perform some function and produce a certain effect or result."
Corning v. Burden, 56 U.S. (15 How.) 252, 267 (1854). A
modern definition of machine would no doubt include electronic devices
which perform functions. Indeed, devices such as flip-flops and
computers are referred to in computer science as sequential machines. A
claimed signal has no physical structure, does not itself perform any
useful, concrete and tangible result and, thus, does not fit within the
definition of a machine.
A "composition of matter" "covers all compositions of two or more
substances and includes all composite articles, whether they be results
of chemical union, or of mechanical mixture, or whether they be gases,
fluids, powders or solids." Shell Development Co. v.
Watson, 149 F. Supp. 279, 280, 113 USPQ 265, 266 (D.D.C. 1957),
aff'd, 252 F.2d 861, 116 USPQ 428 (D.C. Cir. 1958). A claimed signal is not
matter, but a form of energy, and therefore is not a composition of matter.
The Supreme Court has read the term "manufacture" in accordance
with its dictionary definition to mean "the production of articles
for use from raw or prepared materials by giving to these materials new
forms, qualities, properties, or combinations, whether by hand-labor or
by machinery." Diamond v. Chakrabarty, 447 U.S. 303, 308,
206 USPQ 193, 196-97 (1980) (quoting American Fruit Growers, Inc.
v. Brogdex Co., 283 U.S. 1, 11, 8 USPQ 131, 133 (1931), which, in
turn, quotes the Century Dictionary). Other courts have applied similar
definitions. See American Disappearing Bed Co. v.
Arnaelsteen, 182 F. 324, 325 (9th Cir. 1910), cert.
denied, 220 U.S. 622 (1911). These definitions require physical
substance, which a claimed signal does not have. Congress can be
presumed to be aware of an administrative or judicial interpretation of
a statute and to adopt that interpretation when it re-enacts a statute
without change. Lorillard v. Pons, 434 U.S. 575, 580
(1978). Thus, Congress must be presumed to have been aware of the
interpretation of manufacture in American Fruit Growers
when it passed the 1952 Patent Act.
A manufacture is also defined as the residual class of product.
1 Chisum, Sec. 1.02[3] (citing W. Robinson, The Law of
Patents for Useful Inventions 270 (1890)). A product is a
tangible physical article or object, some form of matter, which a
signal is not. That the other two product classes, machine and
composition of matter, require physical matter is evidence that a
manufacture was also intended to require physical matter. A signal, a
form of energy, does not fall within either of the two definitions of
manufacture. Thus, a signal does not fall within one of the four
statutory classes of Sec. 101.
On the other hand, from a technological standpoint, a signal encoded
with functional descriptive material is similar to a computer-readable
memory encoded with functional descriptive material, in that they both
create a functional interrelationship with a computer. In other words,
a computer is able to execute the encoded functions, regardless of
whether the format is a disk or a signal.
These interim guidelines propose that such signal claims are ineligible
for patent protection because they do not fall within any of the four
statutory classes of Sec. 101. Public comment is sought for further
evaluation of this question.
ANNEX 5
Mathematical Algorithms
Claims to processes that do nothing more than solve
mathematical problems or manipulate abstract ideas or concepts are
complex to analyze and are addressed herein.
If the "acts" of a claimed process manipulate only numbers,
abstract concepts or ideas, or signals representing any of the
foregoing, the acts are not being applied to appropriate subject
matter. Benson, 409 U.S. at 71-72, 175 USPQ at 676. Thus, a
process consisting solely of mathematical operations, i.e., converting
one set of numbers into another set of numbers, does not manipulate
appropriate subject matter and thus cannot constitute a statutory
process.
In practical terms, claims define nonstatutory processes if they:
- consist solely of mathematical operations without some
claimed practical application (i.e., executing a "mathematical
algorithm"); or
- simply manipulate abstract ideas, e.g., a bid (Schrader, 22 F.3d at
293-94, 30 USPQ2d at 1458-59) or a bubble hierarchy (Warmerdam, 33 F.3d at
1360, 31 USPQ2d at 1759), without some claimed practical application.
Cf. Alappat, 33 F.3d at 1543 n.19, 31 USPQ2d at 1556 n.19 in which the
Federal Circuit recognized the confusion:
The Supreme Court has not been clear . . . as to whether such subject
matter is excluded from the scope of Sec. 101 because it represents laws of
nature, natural phenomena, or abstract ideas. See Diehr, 450 U.S. at 186
(viewed mathematical algorithm as a law of nature); Gottschalk v. Benson,
409 U.S. 63, 71-72 (1972) (treated mathematical algorithm as an "idea").
The Supreme Court also has not been clear as to exactly what kind of
mathematical subject matter may not be patented. The Supreme Court has
used, among others, the terms "mathematical algorithm,"
"mathematical formula," and "mathematical equation" to describe
types of mathematical subject matter not entitled to patent protection
standing alone. The Supreme Court has not set forth, however, any
consistent or clear explanation of what it intended by such terms or
how these terms are related, if at all.
Certain mathematical algorithms have been held to be nonstatutory
because they represent a mathematical definition of a law of nature or
a natural phenomenon. For example, a mathematical algorithm representing
the formula E = mc2 is a "law of nature" - it defines a "fundamental
scientific truth" (i.e., the relationship between energy and mass). To
comprehend how the law of nature relates to any object, one invariably has
to perform certain steps (e.g., multiplying a number representing the mass
of an object by the square of a number representing the speed of light).
In such a case, a claimed process which consists solely of the steps that
one must follow to solve the mathematical representation of E = mc2 is
indistinguishable from the law of nature and would "preempt" the law of
nature. A patent cannot be granted on such a process.