| Examination Instructions and Guidelines |
Referenced Items (228, 229, 230, 231, 232, 233, 234, 235, 236, 237, 238, 239, 240, 241, 242, 243, 244, 245, 246, 247, 248) |
(229) 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.
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: Eligibility2019@uspto.gov.
Electronic comments submitted in plain text are preferred, but also may
be submitted in ADOBE® portable document format or MICROSOFT WORD® format.
Comments not submitted electronically should be submitted on paper in a
format that facilitates convenient digital scanning into ADOBE® 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,
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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.
\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)).
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.
\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).
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.
\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.
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.
\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)).
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).
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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\
\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"].
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
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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\
\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).
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\
\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).
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.
\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
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(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.
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\
\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).
(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
\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
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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).
(c) Mental processes - concepts performed in the human mind \14\
(including an observation, evaluation, judgment, opinion).\15\
\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
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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").
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.
\16\ See, e.g., Alice, 573 U.S. at 217 (explaining that "in applying the
§ 101 exception, we must distinguish between patents that claim the
'buildin[g] block[s]' of human ingenuity and those that integrate the
building blocks into something more" (quoting Mayo, 566 U.S. at 89) and
stating that Mayo "set forth a framework for distinguishing patents that
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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
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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 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).
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.
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.
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
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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.
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.
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
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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 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.
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).
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.
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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).
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).
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.
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:
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).
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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).
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.
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
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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:
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
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.
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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).
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 nonetheless be treated as reciting an abstract idea
("tentative abstract idea"), the examiner should evaluate whether the claim
| Top of Notices (229) December 31, 2019 |
US PATENT AND TRADEMARK OFFICE |
1469 CNOG 847 |
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\
\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.
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.
\43\ See MPEP 2103 et seq. and 2106(III).
December 20, 2018 ANDREI IANCU
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
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