[Federal Register Volume 79, Number 241 (Tuesday, December 16, 2014)]
[Rules and Regulations]
[Pages 74618-74633]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2014-29414]
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DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
37 CFR Part 1
[Docket No. PTO-P-2014-0058]
2014 Interim Guidance on Patent Subject Matter Eligibility
AGENCY: United States Patent and Trademark Office, Commerce.
[[Page 74619]]
ACTION: Examination guidance; request for comments.
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SUMMARY: The United States Patent and Trademark Office (USPTO or
Office) has prepared interim guidance (2014 Interim Guidance on Patent
Subject Matter Eligibility, called ``Interim Eligibility Guidance'')
for use by USPTO personnel in determining subject matter eligibility
under 35 U.S.C. 101 in view of recent decisions by the U.S. Supreme
Court (Supreme Court). This Interim Eligibility Guidance supplements
the June 25, 2014, Preliminary Examination Instructions in view of the
Supreme Court decision in Alice Corp. (June 2014 Preliminary
Instructions) and supersedes the March 4, 2014, Procedure For Subject
Matter Eligibility Analysis Of Claims Reciting Or Involving Laws Of
Nature/Natural Principles, Natural Phenomena, And/Or Natural Products
(March 2014 Procedure) issued in view of the Supreme Court decisions in
Myriad and Mayo. The USPTO is seeking public comment on this Interim
Eligibility Guidance along with additional suggestions on claim
examples for explanatory example sets.
DATES: Effective Date: This Interim Eligibility Guidance is effective
on December 16, 2014. This Interim Eligibility Guidance applies to all
applications filed before, on or after December 16, 2014.
Comment Deadline Date: To be ensured of consideration, written
comments must be received on or before March 16, 2015.
ADDRESSES: Comments on this Interim Eligibility Guidance must be sent
by electronic mail message over the Internet addressed to:
[email protected]. Electronic comments submitted in plain
text are preferred, but also may be submitted in ADOBE[supreg] portable
document format or MICROSOFT WORD[supreg] format. The comments will be
available for viewing via the Office's Internet Web site (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: Raul Tamayo, Senior Legal Advisor,
Office of Patent Legal Administration, by telephone at 571-272-7728, or
Michael Cygan, Senior Legal Advisor, Office of Patent Legal
Administration, by telephone at 571-272-7700.
SUPPLEMENTARY INFORMATION: Section 2106 of the Manual of Patent
Examining Procedure (MPEP) sets forth guidance for use by USPTO
personnel in determining subject matter eligibility under 35 U.S.C.
101. See MPEP 2106 (9th ed. 2014). The USPTO has prepared this Interim
Eligibility Guidance for use by USPTO personnel in determining subject
matter eligibility under 35 U.S.C. 101 in view of recent decisions by
the Supreme Court. The following Interim Eligibility Guidance on patent
subject matter eligibility under 35 U.S.C. 101 supplements the June 25,
2014, Preliminary Examination Instructions in view of the Supreme Court
Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et
al.\1\ (June 2014 Preliminary Instructions) and supersedes the March 4,
2014, Procedure For Subject Matter Eligibility Analysis Of Claims
Reciting Or Involving Laws Of Nature/Natural Principles, Natural
Phenomena, And/Or Natural Products (March 2014 Procedure) \2\ issued in
view of the Supreme Court decisions in Association for Molecular
Pathology v. Myriad Genetics, Inc.\3\ and Mayo Collaborative Services
v. Prometheus Laboratories Inc.\4\ Implementation of examination
guidance on eligibility will be an iterative process continuing with
periodic supplements based on developments in patent subject matter
eligibility jurisprudence \5\ and public feedback.
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\1\ Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. _--, 134
S. Ct. 2347 (2014).
\2\ This analysis differs from the March 2014 Procedure in
certain respects. Note, for example, the test for determining
whether a claim is directed to a ``product of nature'' exception is
separated from the analysis of whether the claim includes
significantly more than the exception. Also, the application of the
overall analysis is based on claims directed to judicial exceptions
(defined as claims reciting the exception, i.e., set forth or
described), rather than claims merely ``involving'' an exception.
For instance, process claims that merely use a nature-based product
are not necessarily subject to an analysis for markedly different
characteristics. Additionally, the markedly different analysis
focuses on characteristics that can include a product's structure,
function, and/or other properties as compared to its naturally
occurring counterpart in its natural state.
\3\ Association for Molecular Pathology v. Myriad Genetics,
Inc., 569 U.S. _--, 133 S. Ct. 2107 (2013).
\4\ Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S.
_--, 132 S. Ct. 1289 (2012).
\5\ The Court of Appeals for the Federal Circuit has a number of
pending appeals that could result in further refinements to the
eligibility guidance, including for example, University of Utah
Research Foundation v. Ambry Genetics Corp. (In re BRCA1- & BRCA2-
Based Hereditary Cancer Test Patent Litigation), No. 14-1361 (Fed.
Cir. filed Mar. 18, 2014), and Ariosa Diagnostics, Inc. v. Sequenom,
Inc., No. 14-1139 (Fed. Cir. filed Dec. 4, 2013).
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The USPTO is seeking written comments on this guidance, as well as
additional suggestions for claim examples to use for examiner training.
Further, the USPTO plans to hold a public forum in mid-January 2015 in
order to discuss the guidance and next steps and to receive additional
oral input. When the date and location are finalized, notice of the
forum will be provided on the Office's Internet Web site (http://www.uspto.gov).
This Interim Eligibility Guidance does not constitute substantive
rulemaking and does not have the force and effect of law. This Interim
Eligibility Guidance sets out the Office's interpretation of the
subject matter eligibility requirements of 35 U.S.C. 101 in view of
recent decisions by the Supreme Court and the U.S. Court of Appeals for
the Federal Circuit (Federal Circuit), and advises the public and
Office personnel on how these court decisions impact the provisions of
MPEP 2105, 2106 and 2106.01. This Interim Eligibility Guidance has been
developed as a matter of internal Office management and is not intended
to create any right or benefit, substantive or procedural, enforceable
by any party against the Office. Rejections will continue to be based
upon the substantive law, and it is these rejections that are
appealable. Failure of Office personnel to follow this Interim
Eligibility Guidance is not, in itself, a proper basis for either an
appeal or a petition.
This Interim Eligibility Guidance offers a comprehensive view of
subject matter eligibility in line with Alice Corp, Myriad, Mayo, and
the related body of case law, and is responsive to the public comments
received pertaining to the March 2014 Procedure and the June 2014
Preliminary Instructions (see the Notice of Forum on the Guidance for
Determining Subject Matter Eligibility of Claims Reciting or Involving
Laws of Nature, Natural Phenomena, and Natural Products, 79 FR 21736
(Apr. 17, 2014) and the Request for Comments and Extension of Comment
Period on Examination Instruction and Guidance Pertaining to Patent-
Eligible Subject Matter, 79 FR 36786 (June 30, 2014)). In conjunction
with this Interim Eligibility Guidance, a set of explanatory examples
relating to nature-based products is being released to replace the
prior examples issued with the March 2014 Procedure and the related
training. The explanatory examples relating to nature-based products
address themes raised in the public comments and adopt many suggestions
from the comments. Additional explanatory example sets relating to
claims that do and do not amount to significantly more than a judicial
exception are being developed and will be issued at a future date,
taking into account suggestions already received from the public
comments,
[[Page 74620]]
future public comments, and any further judicial developments.
The June 2014 Preliminary Instructions superseded MPEP sections
2106(II)(A) and 2106(II)(B). MPEP 2105 is also superseded by this
Interim Eligibility Guidance to the extent that it suggests that ``mere
human intervention'' necessarily results in eligible subject matter.
MPEP 2106.01 is additionally now superseded with this interim guidance.
Examiners should continue to follow the MPEP for all other examination
instructions. The following sections pertain to examining for patent
subject matter eligibility with details on determining what applicant
invented and making a rejection under 35 U.S.C. 101 and should be
reviewed closely as they are not duplicated in this Interim Eligibility
Guidance:
MPEP 2103: Patent Examination Process
[ssquf] 2103(I): Determine What Applicant Has Invented and Is
Seeking to Patent
[ssquf] 2103(II): Conduct a Thorough Search of the Prior Art
[ssquf] 2103(III): Determine Whether the Claimed Invention Complies
With 35 U.S.C. 101
[ssquf] 2103(IV): Evaluate Application for Compliance With 35
U.S.C. 112
[ssquf] 2103(V): Determine Whether the Claimed Invention Complies
With 35 U.S.C. 102 and 103
[ssquf] 2103(VI): Clearly Communicate Findings, Conclusions, and
Their Bases
MPEP 2104: Patentable Subject Matter
MPEP 2105: Patentable Subject Matter--Living Subject Matter
\6\
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\6\ To the extent that MPEP 2105 suggests that mere ``human
intervention'' necessarily results in eligible subject matter, it is
superseded by this Interim Eligibility Guidance. As explained
herein, if human intervention has failed to confer markedly
different characteristics on a product derived from nature, that
product is a judicial exception (a product of nature exception). See
generally Myriad; In re Roslin Inst. (Edinburgh), 750 F.3d. 1333
(Fed. Cir. 2014).
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MPEP 2106: Patent Subject Matter Eligibility
[ssquf] 2106(I): The Four Categories of Statutory Subject Matter
[ssquf] 2106(II): Judicial Exceptions to the Four Categories (not
subsections (II)(A) and (II)(B))
[ssquf] 2106(III): Establish on the Record a Prima Facie Case
The current version of the MPEP (9th ed., March 2014) incorporates
patent subject matter eligibility guidance issued as of November 2013.
This Interim Eligibility Guidance is divided into the following
sections:
Flowchart: Eligibility Test for Products and Processes;
Part I: Two-part Analysis for Judicial Exceptions;
Part II: Complete Examination;
Part III: Sample Analysis; and
Part IV: Summaries of Court Decisions Relating to Laws of Nature,
Natural Phenomena, and Abstract Ideas.
The following flowchart illustrates the subject matter eligibility
analysis for products and processes to be used during examination for
evaluating whether a claim is drawn to patent-eligible subject matter.
It is recognized that under the controlling legal precedent there may
be variations in the precise contours of the analysis for subject
matter eligibility that will still achieve the same end result. The
analysis set forth herein promotes examination efficiency and
consistency across all technologies.
[[Page 74621]]
[GRAPHIC] [TIFF OMITTED] TR16DE14.031
2014 Interim Eligibility Guidance: In accordance with the existing
two-step analysis for patent subject matter eligibility under 35 U.S.C.
101 explained in MPEP 2106, the claimed invention (Step 1) ``must be
directed to one of the four statutory categories'' and (Step 2) ``must
not be wholly directed to subject matter encompassing a judicially
recognized exception.'' Referring to the attached flowchart titled
Subject Matter Eligibility Test for Products and Processes, Step 1 is
represented in diamond (1), which is explained in MPEP 2106(I). Step 2
is represented in diamonds (2A) and (2B) and is the subject of this
Interim Eligibility Guidance. Step 2 is the two-part
[[Page 74622]]
analysis from Alice Corp.\7\ (also called the Mayo test) for claims
directed to laws of nature, natural phenomena, and abstract ideas (the
judicially recognized exceptions).
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\7\ Alice Corp., 134 S. Ct. at 2355.
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I. Two-Part Analysis for Judicial Exceptions
A. Flowchart Step 2A (Part 1 Mayo Test)--Determine whether the
claim is directed to a law of nature, a natural phenomenon, or an
abstract idea (judicial exceptions).
After determining what applicant has invented by reviewing the
entire application disclosure and construing the claims in accordance
with their broadest reasonable interpretation (MPEP 2103), determine
whether the claim as a whole is directed to a judicial exception. A
claim to a process, machine, manufacture or composition of matter (Step
1: YES) that is not directed to any judicial exceptions (Step 2A: NO)
is eligible and needs no further eligibility analysis. A claim that is
directed to at least one exception (Step 2A: YES) requires further
analysis to determine whether the claim recites a patent-eligible
application of the exception (Step 2B).
1. Determine What the Claim Is ``Directed to''
A claim is directed to a judicial exception when a law of nature, a
natural phenomenon, or an abstract idea is recited (i.e., set forth or
described) in the claim. Such a claim requires closer scrutiny for
eligibility because of the risk that it will ``tie up'' \8\ the
excepted subject matter and pre-empt others from using the law of
nature, natural phenomenon, or abstract idea. Courts tread carefully in
scrutinizing such claims because at some level all inventions embody,
use, reflect, rest upon, or apply a law of nature, natural phenomenon,
or abstract idea.\9\ To properly interpret the claim, it is important
to understand what the applicant has invented and is seeking to patent.
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\8\ Mayo, 132 S. Ct. at 1301 (``[E]ven though rewarding with
patents those who discover new laws of nature and the like might
well encourage their discovery, those laws and principles,
considered generally, are `the basic tools of scientific and
technological work.' And so there is a danger that the grant of
patents that tie up their use will inhibit future innovation
premised upon them, a danger that becomes acute when a patented
process amounts to no more than an instruction to `apply the natural
law,' or otherwise forecloses more future invention than the
underlying discovery could reasonably justify'' (quoting Gottschalk
v. Benson, 409 U.S. 63, 67 (1972)).
\9\ An invention is not rendered ineligible for patent simply
because it involves an abstract concept. Applications of such
concepts ``to a new and useful end,'' remain eligible for patent
protection. Alice Corp., 134 S.Ct. at 2354 (quoting Benson, 409 U.S.
at 67).
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For claims that may recite a judicial exception, but are directed
to inventions that clearly do not seek to tie up the judicial
exception, see Section I.B.3. regarding a streamlined eligibility
analysis.
2. Identify the Judicial Exception Recited in the Claim
MPEP 2106(II) provides a detailed explanation of the judicial
exceptions and their legal bases. It should be noted that there are no
bright lines between the types of exceptions because many of these
concepts can fall under several exceptions. For example, mathematical
formulas are considered to be an exception as they express a scientific
truth, but have been labelled by the courts as both abstract ideas and
laws of nature. Likewise, ``products of nature'' are considered to be
an exception because they tie up the use of naturally occurring things,
but have been labelled as both laws of nature and natural phenomena.
Thus, it is sufficient for this analysis to identify that the claimed
concept aligns with at least one judicial exception.
Laws of nature and natural phenomena, as identified by the courts,
include naturally occurring principles/substances and substances that
do not have markedly different characteristics compared to what occurs
in nature. See Section I.A.3. for a discussion of the markedly
different characteristics analysis used to determine whether a claim
that includes a nature-based product limitation recites an exception.
The types of concepts courts have found to be laws of nature and
natural phenomena are shown by these cases, which are intended to be
illustrative and not limiting:
An isolated DNA (Myriad: see Section III, Example 2);
a correlation that is the consequence of how a certain
compound is metabolized by the body (Mayo: see Section III, Example 5);
electromagnetism to transmit signals (Morse: \10\ see
Section IV.A.1.); and
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\10\ O'Reilly v. Morse, 56 U.S. 62 (1853).
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the chemical principle underlying the union between fatty
elements and water (Tilghman: \11\ see Section IV.A.2.).
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\11\ Tilghman v. Proctor, 102 U.S. 707 (1881).
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Abstract ideas have been identified by the courts by way of
example, including fundamental economic practices, certain methods of
organizing human activities, an idea `of itself,' and mathematical
relationships/formulas.\12\ The types of concepts courts have found to
be abstract ideas are shown by these cases, which are intended to be
illustrative and not limiting:
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\12\ Alice Corp., 134 S. Ct. at 2355-56.
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Mitigating settlement risk (Alice: see Section III,
Example 6);
hedging (Bilski: \13\ see Section IV.A.5.);
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\13\ Bilski v. Kappos, 561 U.S. 593 (2010).
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creating a contractual relationship (buySAFE: \14\ see
Section IV.C.3.);
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\14\ buySAFE, Inc. v. Google, Inc., __-- F.3d __--, 112 USPQ2d
1093 (Fed. Cir. 2014).
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using advertising as an exchange or currency
(Ultramercial: \15\ see Section IV.C.4.);
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\15\ Ultramercial, LLC v. Hulu, LLC and WildTangent, __-- F.3d
__--, 112 USPQ2d 1750 (Fed. Cir. 2014).
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processing information through a clearinghouse
(Dealertrack: \16\ see Section IV.B.3.);
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\16\ Dealertrack Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012).
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comparing new and stored information and using rules to
identify options (SmartGene: \17\ see Section IV.B.4.);
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\17\ SmartGene, Inc. v. Advanced Biological Labs., SA, 555 Fed.
Appx. 950 (Fed. Cir. 2014) (nonprecedential).
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using categories to organize, store and transmit
information (Cyberfone: \18\ see Section IV.B.5.);
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\18\ Cyberfone Sys. v. CNN Interactive Grp., 558 Fed. Appx. 988
(Fed. Cir. 2014) (nonprecedential).
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organizing information through mathematical correlations
(Digitech: \19\ see Section IV.C.1.);
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\19\ Digitech Image Tech., LLC v. Electronics for Imaging, Inc.,
758 F.3d 1344 (Fed. Cir. 2014).
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managing a game of bingo (Planet Bingo: \20\ see Section
IV.C.2.);
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\20\ Planet Bingo, LLC v. VKGS LLC, __-- Fed. Appx. __-- (Fed.
Cir. 2014) (nonprecedential).
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the Arrhenius equation for calculating the cure time of
rubber (Diehr: \21\ see Section III, Example 3);
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\21\ Diamond v. Diehr, 450 U.S. 175 (1981).
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a formula for updating alarm limits (Flook: \22\ see
Section III, Example 4);
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\22\ Parker v. Flook, 437 U.S. 584 (1978).
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a mathematical formula relating to standing wave phenomena
(Mackay Radio: \23\ see Section IV.A.3.); and
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\23\ Mackay Radio & Tel. Co. v. Radio Corp. of Am., 306 U.S. 86
(1939).
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a mathematical procedure for converting one form of
numerical representation to another (Benson: \24\ see Section IV.A.4.)
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\24\ Benson, 409 U.S. at 63.
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3. Nature-Based Products
a. Determine Whether the Markedly Different Characteristics Analysis Is
Needed To Evaluate a Nature-Based Product Limitation Recited in a Claim
Nature-based products, as used herein, include both eligible and
[[Page 74623]]
ineligible products and merely refer to the types of products subject
to the markedly different characteristics analysis used to identify
``product of nature'' exceptions. Courts have held that naturally
occurring products and some man-made products that are essentially no
different from a naturally occurring product are ``products of nature''
\25\ that fall under the laws of nature or natural phenomena exception.
To determine whether a claim that includes a nature-based product
limitation recites a ``product of nature'' exception, use the markedly
different characteristics analysis to evaluate the nature-based product
limitation (discussed in section I.A.3.b). A claim that recites a
nature-based product limitation that does not exhibit markedly
different characteristics from its naturally occurring counterpart in
its natural state is directed to a ``product of nature'' exception
(Step 2A: YES).
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\25\ Myriad, 133 S. Ct. at 2111.
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Care should be taken not to overly extend the markedly different
characteristics analysis to products that when viewed as a whole are
not nature-based. For claims that recite a nature-based product
limitation (which may or may not be a ``product of nature'' exception)
but are directed to inventions that clearly do not seek to tie up any
judicial exception, see Section I.B.3. regarding a streamlined
eligibility analysis. In such cases, it would not be necessary to
conduct a markedly different characteristics analysis.
A nature-based product can be claimed by itself (e.g., ``a
Lactobacillus bacterium'') or as one or more limitations of a claim
(e.g., ``a probiotic composition comprising a mixture of Lactobacillus
and milk in a container''). The markedly different characteristics
analysis should be applied only to the nature-based product limitations
in the claim to determine whether the nature-based products are
``product of nature'' exceptions. When the nature-based product is
produced by combining multiple components, the markedly different
characteristics analysis should be applied to the resultant nature-
based combination, rather than its component parts. In the example
above, the mixture of Lactobacillus and milk should be analyzed for
markedly different characteristics, rather than the Lactobacillus
separately and the milk separately. The container would not be subject
to the markedly different characteristics analysis as it is not a
nature-based product, but would be evaluated in Step 2B if it is
determined that the mixture of Lactobacillus and milk does not have
markedly different characteristics from any naturally occurring
counterpart and thus is a ``product of nature'' exception.
For a product-by-process claim, the analysis turns on whether the
nature-based product in the claim has markedly different
characteristics from its naturally occurring counterpart. (See MPEP
2113 for product-by-process claims.)
A process claim is not subject to the markedly different analysis
for nature-based products used in the process, except in the limited
situation where a process claim is drafted in such a way \26\ that
there is no difference in substance from a product claim (e.g., ``a
method of providing an apple.'').
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\26\ Alice Corp., 134 S. Ct. at 2360.
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b. Markedly Different Characteristics Analysis: Structure, Function
and/or Other Properties \27\
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\27\ This revised analysis represents a change from prior
guidance, because now changes in functional characteristics and
other non-structural properties can evidence markedly different
characteristics, whereas in the March 2014 Procedure only structural
changes were sufficient to show a marked difference.
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The markedly different characteristics analysis compares the
nature-based product limitation to its naturally occurring counterpart
in its natural state. When there is no naturally occurring counterpart
to the nature-based product, the comparison should be made to the
closest naturally occurring counterpart. In the case of a nature-based
combination, the closest counterpart may be the individual nature-based
components that form the combination, i.e., the characteristics of the
claimed nature-based combination are compared to the characteristics of
the components in their natural state.
Markedly different characteristics can be expressed as the
product's structure, function, and/or other properties,\28\ and will be
evaluated based on what is recited in the claim on a case-by-case
basis. As seen by the examples that are being released in conjunction
with this Interim Eligibility Guidance, even a small change can result
in markedly different characteristics from the product's naturally
occurring counterpart. In accordance with this analysis, a product that
is purified or isolated, for example, will be eligible when there is a
resultant change in characteristics sufficient to show a marked
difference from the product's naturally occurring counterpart. If the
claim recites a nature-based product limitation that does not exhibit
markedly different characteristics, the claim is directed to a
``product of nature'' exception (a law of nature or naturally occurring
phenomenon), and the claim will require further analysis to determine
eligibility based on whether additional elements add significantly more
to the exception.
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\28\ To show a marked difference, a characteristic must be
changed as compared to nature, and cannot be an inherent or innate
characteristic of the naturally occurring counterpart. Funk Bros.
Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948) (``[The
inventor did] not create a state of inhibition or of non-inhibition
in the bacteria. Their qualities are the work of nature. Those
qualities are of course not patentable.''); In re Marden, 47 F.2d
958 (CCPA 1931) (eligibility of a claim to ductile vanadium held
ineligible, because the ``ductility or malleability of vanadium is .
. . one of its inherent characteristics and not a characteristic
given to it by virtue of a new combination with other materials or
which characteristic is brought about by some chemical reaction or
agency which changes its inherent characteristics''). Further, a
difference in a characteristic that came about or was produced
independently of any effort or influence by applicant cannot show a
marked difference. Roslin, 750 F.3d at 1338 (Because ``any
phenotypic differences came about or were produced `quite
independently of any effort of the patentee' '' and were
``uninfluenced by Roslin's efforts'', they ``do not confer
eligibility on their claimed subject matter'' (quoting Funk Bros.)).
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Non-limiting examples of the types of characteristics considered by
the courts when determining whether there is a marked difference
include:
Biological or pharmacological functions or activities;
\29\
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\29\ See, e.g., Funk Bros., 333 U.S. at 130-31 (properties and
functions of bacteria such as a state of inhibition or non-
inhibition and the ability to infect leguminous plants); Diamond v.
Chakrabarty, 447 U.S. 303, 310 (1980) (genetically modified
bacterium's ability to degrade hydrocarbons); In re King, 107 F.2d
618 (CCPA 1939) (the ability of vitamin C to prevent and treat
scurvy); Myriad, 133 S. Ct. at 2111, 2116-17 (the protein-encoding
information of a nucleic acid).
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Chemical and physical properties; \30\
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\30\ See, e.g., Parke-Davis & Co. v. H.K. Mulford Co., 189 F.
95, 103-04 (S.D.N.Y. 1911) (the alkalinity of a chemical compound);
Marden, 47 F.2d at 958 (the ductility or malleability of metals);
Funk Bros., 333 U.S. at 130 (``The qualities of these bacteria, like
the heat of the sun, electricity, or the qualities of metals, are
part of the store-house of knowledge of all men. They are
manifestations of laws of nature, free to all men and reserved
exclusively to none.'').
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Phenotype, including functional and structural
characteristics; \31\ and
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\31\ See, e.g., Roslin, 750 F.3d at 1338 (phenotype, including
functional and structural characteristics, e.g., the shape, size,
color, and behavior of an organism).
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Structure and form, whether chemical, genetic or
physical.\32\
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\32\ See, e.g., Chakrabarty, 447 U.S. at 305 and n.1 (the
physical presence of plasmids in a bacterial cell); Parke-Davis, 189
F. at 100, 103 (claimed chemical was a ``nonsalt'' and a
``crystalline substance''); Myriad, 133 S. Ct. at 2116, 2119
(nucleotide sequence of DNA); Roslin, 750 F.3d at 1338-39 (the
genetic makeup (genotype) of a cell or organism).
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If the claim includes a nature-based product that has markedly
different characteristics, the claim does not recite a ``product of
nature'' exception and is eligible (Step 2A: NO) unless the claim
[[Page 74624]]
recites another exception (such as a law of nature or abstract idea, or
a different natural phenomenon). If the claim includes a product having
no markedly different characteristics from the product's naturally
occurring counterpart in its natural state, the claim is directed to an
exception (Step 2A: YES), and the eligibility analysis must proceed to
Step 2B to determine if any additional elements in the claim add
significantly more to the exception. For claims that are to a single
nature-based product, once a markedly different characteristic in that
product is shown, no further analysis would be necessary for
eligibility because no ``product of nature'' exception is recited
(i.e., Step 2B is not necessary because the answer to Step 2A is NO).
This is a change from prior guidance because the inquiry as to whether
the claim amounts to significantly more than a ``product of nature''
exception is not relevant to claims that do not recite an exception.
Thus, a claim can be found eligible based solely on a showing that the
nature-based product in the claim has markedly different
characteristics and thus is not a ``product of nature'' exception, when
no other exception is recited in the claim.
If a rejection under 35 U.S.C. 101 is ultimately made, the
rejection should identify the exception as it is recited (i.e., set
forth or described) in the claim, and explain why it is an exception
providing reasons why the product does not have markedly different
characteristics from its naturally occurring counterpart in its natural
state.
B. Flowchart Step 2B (Part 2 Mayo test)--Determine whether any
element, or combination of elements, in the claim is sufficient to
ensure that the claim amounts to significantly more than the judicial
exception.
A claim directed to a judicial exception must be analyzed to
determine whether the elements of the claim, considered both
individually and as an ordered combination, are sufficient to ensure
that the claim as a whole amounts to significantly more than the
exception itself--this has been termed a search for an ``inventive
concept.'' \33\ To be patent-eligible, a claim that is directed to a
judicial exception must include additional features to ensure that the
claim describes a process or product that applies the exception in a
meaningful way, such that it is more than a drafting effort designed to
monopolize the exception. It is important to consider the claim as
whole. Individual elements viewed on their own may not appear to add
significantly more to the claim, but when combined may amount to
significantly more than the exception. Every claim must be examined
individually, based on the particular elements recited therein, and
should not be judged to automatically stand or fall with similar claims
in an application.
---------------------------------------------------------------------------
\33\ Alice Corp., 134 S. Ct. at 2357.
---------------------------------------------------------------------------
1. ``Significantly More''
The Supreme Court has identified a number of considerations for
determining whether a claim with additional elements amounts to
significantly more than the judicial exception itself. The following
are examples of these considerations, which are not intended to be
exclusive or limiting. Limitations that may be enough to qualify as
``significantly more'' when recited in a claim with a judicial
exception include:
Improvements to another technology or technical field;
\34\
---------------------------------------------------------------------------
\34\ Alice Corp., 134 S. Ct. at 2359 (citing Diehr, 450 U.S. at
177-78) (a mathematical formula applied in a specific rubber molding
process).
---------------------------------------------------------------------------
Improvements to the functioning of the computer itself;
\35\
---------------------------------------------------------------------------
\35\ Id., at 2359.
---------------------------------------------------------------------------
Applying the judicial exception with, or by use of, a
particular machine; \36\
---------------------------------------------------------------------------
\36\ Bilski, 130 S. Ct. at 3227 (``The Court's precedents
establish that the machine-or-transformation test is a useful and
important clue, an investigative tool, for determining whether some
claimed inventions are processes under Sec. 101.'').
---------------------------------------------------------------------------
Effecting a transformation or reduction of a particular
article to a different state or thing; \37\
---------------------------------------------------------------------------
\37\ Diehr, 450 U.S. at 184 (``That respondents' claims [to a
specific rubber molding process] involve the transformation of an
article, in this case raw, uncured synthetic rubber, into a
different state or thing cannot be disputed.''). See also Benson,
409 U.S. at 70 (``Transformation and reduction of an article `to a
different state or thing' is the clue to the patentability of a
process claim that does not include particular machines. So it is
that a patent in the process of `manufacturing fat acids and
glycerine from fatty bodies by the action of water at a high
temperature and pressure' was sustained in Tilghman, 102 U.S. at
721'').
---------------------------------------------------------------------------
Adding a specific limitation other than what is well-
understood, routine and conventional in the field, or adding
unconventional steps that confine the claim to a particular useful
application; \38\ or
---------------------------------------------------------------------------
\38\ Mayo, 132 S. Ct. at 1299, 1302 (claim ineligible because
the recited ``instructions add nothing specific to the laws of
nature other than what is well-understood, routine, conventional
activity, previously engaged in by those in the field,'' which was
``[u]nlike, say, a typical patent on a new drug or a new way of
using an existing drug'').
---------------------------------------------------------------------------
Other meaningful limitations beyond generally linking the
use of the judicial exception to a particular technological
environment.\39\
---------------------------------------------------------------------------
\39\ Alice Corp., 134 S. Ct. at 2360 (noting that none of the
hardware recited ``offers a meaningful limitation beyond generally
linking `the use of the [method] to a particular technological
environment,' that is, implementation via computers'' (citing
Bilski, 561 U.S. at 610, 611)).
---------------------------------------------------------------------------
Limitations that were found not to be enough to qualify as
``significantly more'' when recited in a claim with a judicial
exception include:
Adding the words ``apply it'' (or an equivalent) with the
judicial exception, or mere instructions to implement an abstract idea
on a computer; \40\
---------------------------------------------------------------------------
\40\ Id. at 2358 (simply implementing a mathematical principle
on a physical machine, namely a computer (citing Mayo, 132 S. Ct. at
1301)).
---------------------------------------------------------------------------
Simply appending well-understood, routine and conventional
activities previously known to the industry, specified at a high level
of generality, to the judicial exception, e.g., a claim to an abstract
idea requiring no more than a generic computer to perform generic
computer functions that are well-understood, routine and conventional
activities previously known to the industry; \41\
---------------------------------------------------------------------------
\41\ Id. at 2359 (using a computer to obtain data, adjust
account balances, and issue automated instructions); Mayo, 132 S.
Ct. at 1300 (telling a doctor to measure metabolite levels in the
blood using any known process).
---------------------------------------------------------------------------
Adding insignificant extrasolution activity to the
judicial exception, e.g., mere data gathering in conjunction with a law
of nature or abstract idea; \42\ or
---------------------------------------------------------------------------
\42\ Mayo, 132 S. Ct. at 1297-98 (measuring metabolites of a
drug administered to a patient); Flook, 437 U.S. at 589-90 (1978)
(adjusting an alarm limit variable to a figure computed according to
a mathematical formula).
---------------------------------------------------------------------------
Generally linking the use of the judicial exception to a
particular technological environment or field of use.\43\
---------------------------------------------------------------------------
\43\ Mayo, 132 S. Ct. at 1300-01 (citing Bilski, 130 S. Ct.
3223-24) (limiting hedging to use in commodities and energy
markets); Flook, 437 U.S. at 589-90.
---------------------------------------------------------------------------
Section III provides examples of claims analyzed under this
framework.
If the claim as a whole does recite significantly more than the
exception itself, the claim is eligible (Step 2B: YES), and the
eligibility analysis is complete. If there are no meaningful
limitations in the claim that transform the exception into a patent-
eligible application, such that the claim does not amount to
significantly more than the exception itself, the claim is not patent-
eligible (Step 2B: NO) and should be rejected under 35 U.S.C. 101. In
the rejection, identify the exception by referring to where it is
recited (i.e., set forth or described) in the claim and explain why it
is considered an exception. Then, if the claim includes additional
elements, identify the elements in the rejection and explain why they
do not add significantly more to the exception. Also see MPEP
[[Page 74625]]
2103(VI) and 2106(III) for instructions on making the rejection.
2. A Claim Reciting a Plurality of Exceptions
For a claim that is directed to a plurality of exceptions, conduct
the eligibility analysis for one of the exceptions. If the claim
recites an element or combination of elements that amount to
significantly more than that exception, consider whether those
additional elements also amount to significantly more for the other
claimed exception(s), which ensures that the claim does not have a pre-
emptive effect with respect to any of the recited exceptions.
Additional elements that satisfy Step 2B for one exception will likely
satisfy Step 2B for all exceptions in a claim. On the other hand, if
the claim fails under Step 2B for one exception, the claim is
ineligible, and no further eligibility analysis is needed.
3. Streamlined Eligibility Analysis
For purposes of efficiency in examination, a streamlined
eligibility analysis can be used for a claim that may or may not recite
a judicial exception but, when viewed as a whole, clearly does not seek
to tie up any judicial exception such that others cannot practice it.
Such claims do not need to proceed through the full analysis herein as
their eligibility will be self-evident. However, if there is doubt as
to whether the applicant is effectively seeking coverage for a judicial
exception itself, the full analysis should be conducted to determine
whether the claim recites significantly more than the judicial
exception.
For instance, a claim directed to a complex manufactured industrial
product or process that recites meaningful limitations along with a
judicial exception may sufficiently limit its practical application so
that a full eligibility analysis is not needed. As an example, a
robotic arm assembly having a control system that operates using
certain mathematical relationships is clearly not an attempt to tie up
use of the mathematical relationships and would not require a full
analysis to determine eligibility. Also, a claim that recites a nature-
based product, but clearly does not attempt to tie up the nature-based
product, does not require a markedly different characteristics analysis
to identify a ``product of nature'' exception. As an example, a claim
directed to an artificial hip prosthesis coated with a naturally
occurring mineral is not an attempt to tie up the mineral. Similarly,
claimed products that merely include ancillary nature-based components,
such as a claim that is directed to a cellphone with an electrical
contact made of gold or a plastic chair with wood trim, would not
require analysis of the nature-based component to identify a ``product
of nature'' exception because such claims do not attempt to improperly
tie up the nature-based product.
II. Complete Examination
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. See MPEP 2103 et seq. and 2106(III).
III. Sample Analyses
The following examples, based upon Supreme Court decisions, use the
Interim Eligibility Guidance and flowchart to analyze claims for
subject matter eligibility.
Example 1. Diamond v. Chakrabarty \44\ (U.S. Patent No. 4,259,444)
---------------------------------------------------------------------------
\44\ Chakrabarty, 447 U.S. at 303.
---------------------------------------------------------------------------
Background: Stable energy-generating plasmids that provide
hydrocarbon degradative pathways exist within certain bacteria in
nature. Different plasmids provide the ability to degrade different
hydrocarbons, e.g., one plasmid provides the ability to degrade
camphor, and a different plasmid provides the ability to degrade
octane. Pseudomonas bacteria are naturally occurring bacteria.
Naturally occurring Pseudomonas bacteria containing one stable energy-
generating plasmid and capable of degrading a single type of
hydrocarbon are known.
Representative Claim:
A bacterium from the genus Pseudomonas containing therein at
least two stable energy-generating plasmids, each of said plasmids
providing a separate hydrocarbon degradative pathway.
Analysis: The claim is directed to a statutory category, e.g., a
manufacture or composition of matter (Step 1: YES) and recites a
nature-based product (a bacterium). To determine whether the claim is
directed to a ``product of nature'' exception, the nature-based product
is analyzed using the markedly different characteristics analysis.
The claimed bacterium has a different functional characteristic
from naturally occurring Pseudomonas bacteria, i.e., it is able to
degrade at least two different hydrocarbons as compared to naturally
occurring Pseudomonas bacteria that can only degrade a single
hydrocarbon. The claimed bacterium also has a different structural
characteristic, i.e., it was genetically modified to include more
plasmids than are found in a single naturally occurring Pseudomonas
bacterium. The bacterium is new with markedly different characteristics
from any found in nature, due to the additional plasmids and resultant
capacity for degrading multiple hydrocarbon components of oil. These
different functional and structural characteristics rise to the level
of a marked difference, and accordingly the claimed bacterium is not a
``product of nature'' exception. Thus, the claim is not directed to an
exception (Step 2A: NO). The claim is eligible.
Example 2. Association for Molecular Pathology v. Myriad Genetics, Inc.
(U.S. Patent No. 5,747,282)
Background: A human gene is a naturally occurring segment of DNA
that codes for a protein. In nature, human genes are linked together by
covalent bonds to form long chains of DNA called chromosomes. The
inventors discovered the location and nucleotide sequence of a
naturally occurring human gene called BRCA1. The BRCA1 gene encodes a
polypeptide called BRCA1, which helps repair damaged DNA and prevent
tumor formation. There are many naturally-occurring mutations in the
BRCA1 gene. Some mutations are harmless, but others can dramatically
increase a person's risk of developing breast and ovarian cancer.
Knowledge of the location and nucleotide sequence of the BRCA1 gene
allows it to be isolated so that it can be studied, manipulated, or
used. Isolated genes can be made in two different ways. The first way
is to physically remove the gene from its natural location on the human
chromosome by breaking two covalent bonds--one on each end of the
gene--that connect the gene with the rest of the chromosome in nature.
The second way is to synthesize the gene in a laboratory, e.g., by
linking together nucleotides to form the naturally occurring sequence
of the gene. Both ways result in a gene that is ``isolated'' from its
natural environment, i.e., removed from the chromosome in which it
occurs in nature.
The BRCA1 gene is about 80,000 nucleotides long, including several
introns and several exons. In nature, the BRCA1 polypeptide is produced
from the BRCA1 gene through an intermediate product called an mRNA. The
natural creation of the BRCA1 mRNA in human cells involves splicing
(removal) of the introns, and results in an exons-only molecule. The
inventors used the mRNA to create an exons-only
[[Page 74626]]
molecule called a complementary DNA (cDNA), which contains the same
protein-encoding information as the BRCA1 gene, but omits the non-
coding portions (introns) of the gene. The nucleotide sequence of this
cDNA was disclosed as SEQ ID NO:1, and the amino acid sequence of the
BRCA1 polypeptide as SEQ ID NO:2.
Representative Claims:
Claim 1. An isolated DNA coding for a BRCA1 polypeptide, said
polypeptide having the amino acid sequence set forth in SEQ ID NO:2.
Claim 2. The isolated DNA of claim 1, wherein said DNA has the
nucleotide sequence set forth in SEQ ID NO:1.
Analysis: The claims are directed to a statutory category, e.g., a
composition of matter (Step 1: YES), and recite nature-based products
(a DNA). Thus, the markedly different analysis is used to determine if
that nature-based product is a ``product of nature'' exception.
Claim 1: The claim encompasses isolated DNA that has the same
nucleotide sequence as the naturally occurring BRCA1 gene. The
isolation of the claimed DNA results in a different structural
characteristic than the natural gene, because the natural gene has
covalent bonds on the ends that connect the gene to the chromosome
which the claimed DNA lacks. However, the claimed DNA is otherwise
structurally identical to the natural gene, e.g., it has the same
genetic structure and nucleotide sequence as the BRCA1 gene in nature.
The claimed DNA has no different functional characteristics, i.e., it
encodes the same protein as the natural gene. Under the holding of
Myriad, this isolated but otherwise unchanged DNA is not eligible
because it is not different enough from what exists in nature to avoid
improperly tying up the future use and study of the naturally occurring
BRCA1 gene. In other words, the claimed DNA is different, but not
markedly different, from its naturally occurring counterpart (BRCA 1
gene), and thus is directed to a ``product of nature'' exception (Step
2A: YES).
A claim directed to an exception should be analyzed to determine
whether any element, or combination of elements, in the claim is
sufficient to ensure that the claim amounts to significantly more than
the exception. Claim 1 does not include any additional features that
could add significantly more to the exception (Step 2B: NO). The claim
is not eligible and should be rejected under 35 U.S.C. 101.
Claim 2: The claim is limited to a DNA having the nucleotide
sequence of SEQ ID NO: 1. As disclosed in the specification, SEQ ID NO:
1 is an exons-only sequence of a cDNA created by the inventors. The
claimed DNA therefore has different structural characteristics than the
naturally occurring BRCA1 gene, e.g., in addition to lacking covalent
bonds on its ends, it has a different nucleotide sequence (SEQ ID NO: 1
includes only exons, as compared to the natural sequence containing
both exons and introns). The claimed DNA has no different functional
characteristics, i.e., it encodes the same protein as the natural gene.
Here, the differences in structural characteristics between the claimed
DNA and the natural gene are significant, e.g., they are enough to
ensure that the claim is not improperly tying up the future use of the
BRCA1 gene. Thus, they rise to the level of a marked difference, and
the claimed DNA is not a ``product of nature'' exception. Thus, the
claim is not directed to an exception (Step 2A: NO). The claim is
eligible.
Example 3. Diamond v. Diehr (U.S. Patent No. 4,344,142)
Background: The claimed invention is a process for molding raw,
uncured synthetic rubber into cured precision products. The process
uses a mold for precisely shaping the uncured material under heat and
pressure and then curing the synthetic rubber in the mold so that the
product will retain its shape and be functionally operative after the
molding is completed. Achieving the perfect cure depends upon several
factors including the thickness of the article to be molded, the
temperature of the molding process, and the amount of time that the
article is allowed to remain in the press. It is possible to calculate
when to open the press and remove the cured product using well-known
time, temperature, and cure relationships by means of the Arrhenius
equation. The inventors characterize their invention as the process of
constantly measuring the actual temperature inside the mold, and
automatically feeding these temperature measurements into a computer
that repeatedly recalculates the cure time by use of the Arrhenius
equation. When the recalculated time equals the actual time that has
elapsed since the press was closed, the computer signals a device to
open the press.
Representative Claim:
Claim 1. A method of operating a rubber-molding press for
precision molded compounds with the aid of a digital computer,
comprising:
providing said computer with a data base for said press
including at least, natural logarithm conversion data (ln), the
activation energy constant (C) unique to each batch of said compound
being molded, and a constant (x) dependent upon the geometry of the
particular mold of the press,
initiating an interval timer in said computer upon the closure
of the press for monitoring the elapsed time of said closure,
constantly determining the temperature (Z) of the mold at a
location closely adjacent to the mold cavity in the press during
molding,
constantly providing the computer with the temperature (Z),
repetitively calculating in the computer, at frequent intervals
during each cure, the Arrhenius equation for reaction time during
the cure, which is ln v = CZ+x, where v is the total required cure
time, repetitively comparing in the computer at said frequent
intervals during the cure each said calculation of the total
required cure time calculated with the Arrhenius equation and said
elapsed time, and
opening the press automatically when a said comparison indicates
equivalence.
Analysis: The claim is directed to a statutory category, i.e., a
process (Step 1: YES). The claim recites the Arrhenius equation, which
is the mathematical formula: ln v = CZ+x. The court noted that an
algorithm, or mathematical formula, is like a law of nature, which
cannot be the subject of a patent. The claimed process when viewed as a
whole focuses on the use of the Arrhenius equation to cure synthetic
rubber. Thus, the claim is directed to an exception (Step 2A: YES).
Next, the claim as a whole is analyzed to determine whether any
element, or combination of elements, is sufficient to ensure that the
claim amounts to significantly more than the exception. The
specifically disclosed and claimed constant measurement of temperature
at a mold cavity of a rubber-molding press and the claimed repetitive
computer recalculation of the appropriate cure time using the
constantly updated measurements are additional elements that provide
``something more'' than mere computer implementation of calculation of
the Arrhenius equation. Further, the claimed steps act in concert to
transform raw, uncured rubber to cured molded rubber. The combination
of steps recited in addition to the mathematical formula show that the
claim is not to the formula in isolation, but rather that the steps
impose meaningful limits that apply the formula to improve an existing
technological process. Thus, the claim amounts to significantly more
than the judicial exception (Step 2B: YES). The claim is eligible.
Note: The Supreme Court has also characterized mathematical
formulas as abstract ideas. As noted, all claims that are directed
to a judicial exception, regardless of what the exception is called,
are subject to the same analysis.
[[Page 74627]]
Example 4. Parker v. Flook
Background: The invention is a method of updating alarm limits
using a mathematical formula. An ``alarm limit'' is a number. During
catalytic conversion processes, operating conditions such as
temperature, pressure, and flow rates are constantly monitored. When
any of these ``process variables'' exceeds a predetermined alarm limit,
an alarm may signal the presence of an abnormal condition indicating
either inefficiency or perhaps danger. The formula for updating alarm
limits is used in a catalytic conversion processing system; however,
there is no disclosure relating to that system, such as the chemical
processes at work, the monitoring of process conditions, the
determination of variables in the formula from process conditions, or
the means of setting off an alarm or adjusting an alarm system.
Representative Claim:
Claim 1. A method for updating the value of at least one alarm
limit on at least one process variable involved in a process
comprising the catalytic chemical conversion of hydrocarbons wherein
said alarm limit has a current value of Bo+K wherein
Bo is the current alarm base and K is a predetermined
alarm offset which comprises:
(1) Determining the present value of said process variable, said
present value being defined as PVL;
(2) Determining a new alarm base B1, using the
following equation: B1=Bo(1.0-F) + PVL(F)
where F is a predetermined number greater than zero and less than
1.0;
(3) Determining an updated alarm limit which is defined as
B1+GK; and thereafter;
(4) Adjusting said alarm limit to said updated alarm limit
value.
Analysis: The claim is directed to a statutory category, i.e., a
process (Step 1: YES). The claim recites the mathematical formula
``B1=Bo(1.0-F) + PVL(F)''. The claimed invention
focuses on the calculation of the number representing the alarm limit
value using the mathematical formula. Thus, the claim is directed to a
mathematical formula, which is like a law of nature that falls within
the exceptions to patent-eligible subject matter (Step 2A: YES).
A process is not unpatentable simply because it contains a law of
nature or mathematical algorithm. The claim as a whole must be analyzed
to determine what additional elements are recited in the claim. The
claimed formula is limited by the steps of gathering the input
variables and carrying out the calculation to update the number
describing the alarm limit, and by the field of technology for which it
is to be used. The determination of chemical process variables, and the
use of a generic computer to calculate values, is routine and
conventional in the field of chemical processing. Adjusting the alarm
limit based on the solution to the mathematical formula is merely post-
solution activity that could be attached to almost any formula.
Limiting the claim to petrochemical and oil-refining industries, such
that the claim does not seek to wholly preempt the mathematical
formula, is a field-of-use limitation that does not impose meaningful
limits on the mathematical formula. Moreover, when considered as an
ordered combination, the claim is nothing more than a purely
conventional computerized implementation of applicant's formula.
Therefore, the claim as a whole does not provide significantly more
than a generic computer upon which the claimed formula is calculated.
Thus, the claim does not amount to significantly more than the judicial
exception itself (Step 2B: NO). The claim is not eligible and should be
rejected under 35 U.S.C. 101.
Example 5. Mayo v. Prometheus (U.S. Patent No. 6,355,623)
Background: The invention is a method of assisting doctors who use
thiopurine drugs to treat patients with autoimmune diseases. The method
helps doctors determine whether a given dosage level is too low or too
high, based on the relationship between the concentration in the blood
of a thiopurine metabolite (6-thioguanine) and the likelihood that the
drug dosage will be ineffective or induce harmful side-effects. The
relationship is a natural consequence of the ways in which thiopurine
compounds are metabolized by the body, even though human action is
needed to trigger a manifestation of the relationship.
Representative Claim:
Claim 1. A method of optimizing therapeutic efficacy for
treatment of an immune-mediated gastrointestinal disorder,
comprising:
(a) administering a drug providing 6-thioguanine to a subject
having said immune-mediated gastrointestinal disorder; and
(b) determining the level of 6-thioguanine in said subject
having said immune-mediated gastrointestinal disorder,
wherein the level of 6-thioguanine less than about 230 pmol per
8x10\8\ red blood cells indicates a need to increase the amount of
said drug subsequently administered to said subject and wherein the
level of 6-thioguanine greater than about 400 pmol per 8x10\8\ red
blood cells indicates a need to decrease the amount of said drug
subsequently administered to said subject.
Analysis: The claim is directed to a statutory category, i.e., a
process (Step 1: YES). The claim sets forth relationships between
concentrations of certain metabolites in the blood and the likelihood
that a dosage of a thiopurine drug will prove ineffective or cause
harm. While it takes a human action (the administration of a thiopurine
drug) to trigger a manifestation of this relation in a particular
person, the relation itself exists in principle apart from any human
action. The claim recites that relation and, thus, is directed towards
a natural law (Step 2A: YES).
Next, the claim as a whole is analyzed to determine whether any
element, or combination of elements, is sufficient to ensure that the
claim amounts to significantly more than the exception. The
``administering'' step simply refers to the relevant audience, namely
doctors who treat patients with certain diseases with thiopurine drugs.
That audience is a pre-existing audience; doctors used thiopurine drugs
to treat patients suffering from autoimmune disorders long before
anyone asserted these claims. The ``wherein'' clauses simply tell a
doctor about the relevant natural laws, at most adding a suggestion
that the doctor should take those laws into account when treating the
patient. The ``determining'' step tells the doctor to determine the
level of the relevant metabolites in the blood, through whatever
process the doctor or the laboratory wishes to use. The claims inform a
relevant audience about certain laws of nature; any additional steps
consist of well understood, routine, conventional activity already
engaged in by the scientific community; and those steps, when viewed as
a whole, add nothing significant beyond the sum of their parts taken
separately. Even though the laws of nature at issue are narrow laws
that may have limited applications, the claim does not amount to
significantly more than the natural law itself (Step 2B: NO). The claim
is not eligible and should be rejected under 35 U.S.C. 101.
Example 6. Alice Corp. v. CLS Bank (U.S. Patent Nos. 5,970,479 and
7,725,375)
Background: The claims at issue relate to a computerized scheme for
mitigating ``settlement risk''; i.e., the risk that only one party to
an agreed-upon financial exchange will satisfy its obligation. In
particular, the claims are designed to facilitate the exchange of
financial obligations between two parties by using a computer system as
a third-party intermediary. The intermediary creates ``shadow'' credit
and debit records (i.e., account ledgers) that mirror the balances in
the parties' real-world accounts at ``exchange institutions'' (e.g.,
banks). The
[[Page 74628]]
intermediary updates the shadow records in real time as transactions
are entered, allowing only those transactions for which the parties'
updated shadow records indicate sufficient resources to satisfy their
mutual obligations. At the end of the day, the intermediary instructs
the relevant financial institutions to carry out the ``permitted''
transactions in accordance with the updated shadow records, thus
mitigating the risk that only one party will perform the agreed-upon
exchange. The invention is claimed in the form of a computer-
implemented process, a system enabling that process, and a computer-
readable medium enabling that process to be performed by a computer.
Representative Method Claim (U.S. Patent No. 5,970,479)
Claim 33. A method of exchanging obligations as between parties,
each party holding a credit record and a debit record with an
exchange institution, the credit records and debit records for
exchange of predetermined obligations, the method comprising the
steps of:
(a) creating a shadow credit record and a shadow debit record
for each stakeholder party to be held independently by a supervisory
institution from the exchange institutions;
(b) obtaining from each exchange institution a start-of-day
balance for each shadow credit record and shadow debit record;
(c) for every transaction resulting in an exchange obligation,
the supervisory institution adjusting each respective party's shadow
credit record or shadow debit record, allowing only these
transactions that do not result in the value of the shadow debit
record being less than the value of the shadow credit record at any
time, each said adjustment taking place in chronological order; and
(d) at the end-of-day, the supervisory institution instructing
one of the exchange institutions to exchange credits or debits to
the credit record and debit record of the respective parties in
accordance with the adjustments of the said permitted transactions,
the credits and debits being irrevocable, time invariant obligations
placed on the exchange institutions.\45\
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\45\ In Alice Corp., the parties stipulated that the method was
performed by a computer, despite the lack of a computer recitation
in the representative method claim.
Analysis: The claim is directed to a statutory category, i.e., a
process (Step 1: YES). The claim recites the concept of managing
settlement risk through an intermediary, i.e., intermediated
settlement. The claimed invention describes the procedures an
intermediary should take in managing settlement risk between two
parties, i.e., specific details of intermediating settlement.
Intermediated settlement, like risk hedging in Bilski, is not a
preexisting fundamental truth but rather is a longstanding commercial
practice (a method of organizing human activity). The concept of
intermediated settlement is a fundamental economic practice long
prevalent in our system of commerce, which is in the realm of abstract
ideas identified by the Supreme Court. Thus, the claim is directed to
the abstract idea of intermediated settlement (Step 2A: YES).
Next, the claim as a whole is analyzed to determine whether any
element, or combination of elements, is sufficient to ensure that the
claim amounts to significantly more than the exception. Although a
computer acts as the intermediary in the claimed method, the claims do
no more than implement the abstract idea of intermediated settlement on
a generic computer. Using a computer to create and maintain ``shadow''
accounts amounts to electronic recordkeeping, which is one of the most
basic functions of a computer. The same is true with respect to the use
of a computer to obtain data, adjust account balances, and issue
automated instructions. All of these computer functions are ``well-
understood, routine, conventional activit[ies]'' previously known to
the industry. Each step does no more than require a generic computer to
perform generic computer functions. Considered as an ordered
combination, the computer components of the method add nothing that is
not already present when the steps are considered separately, and thus
simply recite the concept of intermediated settlement as performed by a
generic computer. The claims do not purport to improve the functioning
of the computer itself, or to improve any other technology or technical
field. Use of an unspecified, generic computer does not transform an
abstract idea into a patent-eligible invention. Thus, the claim does
not amount to significantly more than the abstract idea itself (Step
2B: NO). The claim is not eligible and should be rejected under 35
U.S.C. 101.
Representative System Claim (U.S. Patent No. 7,725,375)
Claim 26. A data processing system to enable the exchange of an
obligation between parties, the system comprising:
a communications controller,
a first party device, coupled to said communications controller,
a data storage unit having stored therein
(a) information about a first account for a first party,
independent from a second account maintained by a first exchange
institution, and
(b) information about a third account for a second party,
independent from a fourth account maintained by a second exchange
institution; and
a computer, coupled to said data storage unit and said
communications controller, that is configured to
(a) receive a transaction from said first party device via said
communications controller;
(b) electronically adjust said first account and said third
account in order to effect an exchange obligation arising from said
transaction between said first party and said second party after
ensuring that said first party and/or said second party have
adequate value in said first account and/or said third account,
respectively; and
(c) generate an instruction to said first exchange institution
and/or said second exchange institution to adjust said second
account and/or said fourth account in accordance with the adjustment
of said first account and/or third account, wherein said instruction
being an irrevocable, time invariant obligation placed on said first
exchange institution and/or said second exchange institution.
Analysis: The claim is directed to a statutory category, i.e., a
machine (Step 1: YES). As discussed for the method claim, the claim
recites the concept of intermediated settlement and is directed to an
abstract idea (Step 2A: YES).
Looking again to see what additional features are recited in the
claim, the system includes a communications controller, a first party
device, a data storage device, and a computer. The claimed hardware is
generic hardware that nearly every computer will include. None of the
hardware offers a meaningful limitation beyond generally linking the
system to a particular technological environment, that is,
implementation via computers. Put another way, the system claims are no
different from the method claims in substance; the method claims recite
the abstract idea implemented on a generic computer, while the system
claims recite a handful of generic computer components configured to
implement the same idea. The claim does not amount to significantly
more than the underlying abstract idea (Step 2B: NO). The claim is not
eligible and should be rejected under 35 U.S.C. 101.
IV. Summaries of Court Decisions Relating to Laws of Nature, Natural
Phenomena, and Abstract Ideas
The following brief summaries are taken from decisions from the
Supreme Court and the Federal Circuit in which claims were analyzed
with respect to judicial exceptions to determine subject matter
eligibility. Along with the examples in section III, these decisions
demonstrate the various terms used by the courts to describe the
exceptions
[[Page 74629]]
and are provided simply to illustrate some of the different types of
concepts found to fall within the exceptions. It should be noted that
the courts' analyses in these decisions do not necessarily follow the
eligibility framework explained in this Interim Eligibility Guidance as
most of the cases were decided prior to Alice Corp. Therefore, instead
of applying the eligibility analysis set forth in this Interim
Eligibility Guidance to the facts of the decisions, a short description
of the court's decision is provided for background purposes only. When
considering these decisions, it is important to remember that the mere
presence of an exception does not necessarily render a claim
ineligible.
Part A presents several decisions from the Supreme Court, Part B
presents several decisions from the Federal Circuit from 2010--2014
that dealt with abstract ideas, and Part C presents decisions from the
Federal Circuit relating to abstract ideas since the Alice Corp.
decision. Although the very small set of decisions from the Federal
Circuit since Alice Corp. have resulted in findings of ineligibility,
it should be recognized that the Supreme Court did not create a per se
excluded category of subject matter, such as software or business
methods, nor did it impose any special requirements for eligibility of
software or business methods.
A. Supreme Court Decisions
1. O'Reilly v. Morse (U.S. Reissue Patent No. RE 117)
Claim 6. The claim was interpreted by the Supreme Court as a
system of signs (signals) by closing a galvanic circuit rapidly for
telegraphing, combined with machinery to record the signs.
Claim 8. I do not propose to limit myself to the specific
machinery, or parts of machinery, . . . the essence of my invention
being the use of the motive power of the electric or galvanic
current, which I call electro-magnetism, however developed, for
making or printing intelligible characters, signs, or letters, at
any distances, being a new application of that power. . .
The claims are to the process of using electromagnetism to produce
distinguishable signs for telegraphy, and in particular to print
intelligible characters at any distance. While the format of the claims
is outdated, it can be seen that claim 6 recites the system of signs in
combination with the machinery for recording, which was found eligible.
In contrast, claim 8 recites the use of electromagnetism without limits
on the machinery for recording, which was found ineligible. The
discovery of electromagnetism, which is a natural phenomenon, is not
patentable by itself.
2. Tilghman v. Proctor (U.S. Patent No. 11,766)
The claim was interpreted by the Supreme Court as the process of
subjecting to a high degree of heat a mixture continually kept up,
of nearly equal quantities of fat and water in a convenient vessel
strong enough to resist the effort of the mixture to convert itself
into steam.
The claim is founded upon the chemical principle or scientific fact
that the elements of neutral fat require that they be severally united
with an atomic equivalent of water in order to separate from each other
and become free. Although the claim recites the chemical union between
the fatty elements and water, it is not directed to the mere principle.
The claim is directed instead to a particular mode of bringing about
the desired chemical union, i.e., by heating the water under such
pressure that the water does not become steam, and accordingly was
found eligible.
3. Mackay Radio & Telegraph Co. v. Radio Corp. of America (U.S. Patent
No. 1,974,387)
Claim 15. An antenna comprising a pair of relatively long
conductors disposed with respect to each other at an angle
substantially equal to twice 50.9(l/[lambda])-\0.513\
degrees, l being the length of the wire and [lambda] the operating
wave length in like units, and means in circuit with said antenna
for exciting the conductors in phase opposition whereby standing
waves of opposite instantaneous polarity are formed on the
conductors throughout their length.
The claim is to an antenna system utilizing standing wave
phenomena. To obtain the best directional radio propagation by a V type
antenna, a mathematical formula is used to arrange the angle of the
wires, their length, and the length of the wave propagated. The claim
practically applies the mathematical formula to configure a particular
antenna and thus was found eligible.
4. Gottschalk v. Benson
Claim 8. The method of converting signals from binary coded
decimal form into binary which comprises the steps of:
(1) storing the binary coded decimal signals in a reentrant
shift register,
(2) shifting the signals to the right by at least three places,
until there is a binary `1' in the second position of said register,
(3) masking out said binary `1' in said second position of said
register,
(4) adding a binary `1' to the first position of said register,
(5) shifting the signals to the left by two positions,
(6) adding a `1' to said first position, and
(7) shifting the signals to the right by at least three
positions in preparation for a succeeding binary `1' in the second
position of said register.
The claim recites a process for converting binary-coded-decimal
(BCD) numerals into pure binary numerals. The procedures set forth in
the claim are a generalized formulation for programs to solve
mathematical problems of converting one form of numerical
representation to another. The mathematical procedures can be carried
out in existing computers long in use or can be performed without a
computer. The end use is unlimited. The process claim was found to be
so abstract and sweeping that it covered both known and unknown uses of
the BCD to pure binary conversion. The mathematical formula in the
claim has no substantial practical application except in connection
with a digital computer, and thus the court found the claim ineligible
as it would in effect be a patent on the algorithm itself.
5. Bilski v. Kappos
Claim 1. A method for managing the consumption risk costs of a
commodity sold by a commodity provider at a fixed price comprising
the steps of:
(a) initiating a series of transactions between said commodity
provider and consumers of said commodity wherein said consumers
purchase said commodity at a fixed rate based upon historical
averages, said fixed rate corresponding to a risk position of said
consumer;
(b) identifying market participants for said commodity having a
counter-risk position to said consumers; and
(c) initiating a series of transactions between said commodity
provider and said market participants at a second fixed rate such
that said series of market participant transactions balances the
risk position of said series of consumer transactions.
The claim explains the basic concept of hedging, or protecting
against risk. The court found that the concept of hedging is an
unpatentable abstract idea, just like the algorithms at issue in Benson
and Flook. A dependent claim that narrows the concept to a mathematical
formula was similarly found to be an abstract idea. The other dependent
claims are broad examples of how hedging can be used in commodities and
energy markets. Limiting an abstract idea to one field of use or adding
token postsolution components does not make the concept patentable. The
claims were found ineligible.
[[Page 74630]]
B. Abstract Idea Decisions From the Federal Circuit Prior to Alice
Corp. (2010-2014)
1. SiRF Technology v. ITC \46\ (U.S. Patent No. 6,417,801)
---------------------------------------------------------------------------
\46\ SiRF Tech. v. ITC, 601 F.3d 1319 (Fed. Cir. 2010).
Claim 1. A method for calculating an absolute position of a GPS
receiver and an absolute time of reception of satellite signals
comprising:
providing pseudoranges that estimate the range of the GPS
receiver to a plurality of GPS satellites;
providing an estimate of an absolute time of reception of a
plurality of satellite signals;
providing an estimate of a position of the GPS receiver;
providing satellite ephemeris data;
computing absolute position and absolute time using said
pseudoranges by updating said estimate of an absolute time and the
estimate of position of the GPS receiver.
GPS is a satellite navigation system comprising satellites orbiting
the Earth that permits a GPS-enabled receiver to detect signals from at
least four satellites and use that information to calculate its
distance from each satellite and thus its precise position on Earth
through trilateration. The claim sets forth the steps of calculating
the absolute position, which is a mathematical concept. The court
interpreted the claim such that the method could not be performed
without a GPS receiver, noting that the preamble expressly states
``calculating an absolute position of a GPS receiver'' and that a GPS
receiver is required to generate pseudoranges and to determine its
position. With this interpretation, the presence of the GPS receiver in
the claim places a meaningful limit on the scope of the claim. It is
essential to the operation of the claimed method and plays a
significant part in permitting the claimed method to be performed. As
such, although performance of the claim requires calculations, the
claim was found eligible.
2. Research Corp. Tech. v. Microsoft Corp.\47\ (U.S. Patent No.
5,111,310)
---------------------------------------------------------------------------
\47\ Research Corp. Tech. v. Microsoft Corp., 627 F.3d 859 (Fed.
Cir. 2010).
---------------------------------------------------------------------------
Claim 1. A method for the halftoning of gray scale images by
utilizing a pixel-by-pixel comparison of the image against a blue
noise mask in which the blue noise mask is comprised of a random
non-deterministic, non-white noise single valued function which is
designed to produce visually pleasing dot profiles when thresholded
at any level of said gray scale images.
The claim is to digital image halftoning. Halftoning techniques
allow computers to present many shades and color tones with a limited
number of pixels, which allows computer displays and printers to render
an approximation of an image by using fewer colors or shades of gray
than the original image. One method of generating a digital halftoned
image is called ``thresholding'' that uses a two-dimensional array
called a ``mask.'' The claimed method incorporates algorithms and
formulas that control the masks and halftoning, but apply them in a
technique that improves the generated digital halftoned image. The
invention presents functional and palpable applications in the field of
computer technology with specific applications or improvements to
technologies in the marketplace. So, although the claimed method uses
algorithms and formulas, the claim was found eligible.
3. Dealertrack Inc. v. Huber (U.S. Patent No. 7,181,427)
Claim 1. A computer aided method of managing a credit
application, the method comprising the steps of:
[A] receiving credit application data from a remote application
entry and display device;
[B] selectively forwarding the credit application data to remote
funding source terminal devices;
[C] forwarding funding decision data from at least one of the
remote funding source terminal devices to the remote application
entry and display device;
[D] wherein the selectively forwarding the credit application
data step further comprises:
[D1] sending at least a portion of a credit application to more
than one of said remote funding sources substantially at the same
time;
[D2] sending at least a portion of a credit application to more
than one of said remote funding sources sequentially until a finding
source returns a positive funding decision;
[D3] sending at least a portion of a credit application to a
first one of said remote funding sources, and then, after a
predetermined time, sending to at least one other remote funding
source, until one of the finding sources returns a positive funding
decision or until all funding sources have been exhausted; or,
[D4] sending the credit application from a first remote funding
source to a second remote finding source if the first funding source
declines to approve the credit application.
The court reduced the claim to its most basic concept which was
characterized as receiving data from one source (step A), selectively
forwarding the data (step B, performed according to step D), and
forwarding reply data to the first source (step C). This basic concept
of processing information through a clearinghouse was found to be an
abstract idea, similar to Bilski's basic concept of hedging. The court
held that simply adding a ``computer-aided'' limitation to a claim
covering an abstract concept, without more, does not sufficiently limit
the claim. The claim was found ineligible.
4. SmartGene, Inc. v. Advanced Biological Laboratories, SA (U.S. Patent
No. 6,081,786)
Claim 1. A method for guiding the selection of a therapeutic
treatment regimen for a patient with a known disease or medical
condition, said method comprising:
(a) providing patient information to a computing device
comprising:
a first knowledge base comprising a plurality of different
therapeutic treatment regimens for said disease or medical
condition;
a second knowledge base comprising a plurality of expert rules
for evaluating and selecting a therapeutic treatment regimen for
said disease or medical condition;
a third knowledge base comprising advisory information useful
for the treatment of a patient with different constituents of said
different therapeutic treatment regimens; and
(b) generating in said computing device a ranked listing of
available therapeutic treatment regimens for said patient; and
(c) generating in said computing device advisory information for
one or more therapeutic treatment regimens in said ranked listing
based on said patient information and said expert rules.
The claims set forth the steps of comparing new and stored
information and using rules to identify medical options. Claim 1 does
no more than call on a ``computing device'' with basic functionality
for comparing stored and input data and rules, to do what doctors do
routinely. The court concluded that these are familiar mental steps
performed by or with a computer, and as such the claim was found
ineligible.
5. Cyberfone Systems v. CNN Interactive Group (U.S. Patent No.
8,019,060)
Claim 1. A method, comprising:
obtaining data transaction information entered on a telephone
from a single transmission from said telephone;
forming a plurality of different exploded data transactions for
the single transmission, said plurality of different exploded data
transaction indicative of a single data transaction, each of said
exploded data transactions having different data that is intended
for a different destination that is included as part of the exploded
data transactions, and each of said exploded data transactions
formed based on said data transaction information from said single
transmission, so that different data from the single data
transmission is separated and sent to different destinations; and
sending said different exploded data transactions over a channel
to said different destinations, all based on said data transaction
information entered in said single transmission.
Using categories to organize, store, and transmit information is
well-
[[Page 74631]]
established. Here, the well-known concept of categorical data storage,
i.e., the idea of collecting information in classified form, then
separating and transmitting that information according to its
classification, is an abstract idea. The claim was found ineligible.
C. Abstract Idea Decisions From the Federal Circuit Since Alice Corp.
1. Digitech Image Tech., LLC v. Electronics for Imaging, Inc. (U.S.
Patent No. 6,128,415)
Claim 10. A method of generating a device profile that describes
properties of a device in a digital image reproduction system for
capturing, transforming or rendering an image, said method
comprising:
generating first data for describing a device dependent
transformation of color information content of the image to a device
independent color space through use of measured chromatic stimuli
and device response characteristic functions;
generating second data for describing a device dependent
transformation of spatial information content of the image in said
device independent color space through use of spatial stimuli and
device response characteristic functions;
and combining said first and second data into the device
profile.
The court found the claim to be an abstract idea because it
describes a process of organizing information through mathematical
correlations and is not tied to a specific structure or machine. The
claim recites the process of taking two data sets and combining them
into a single data set, the device profile. The two data sets are
generated by taking existing information--i.e., measured chromatic
stimuli, spatial stimuli, and device response characteristic
functions--and organizing this information into a new form. The claim
language does not expressly tie the method to an image processor. It
generically recites a process of combining two data sets into the
device profile; it does not claim the processor's use of that profile
in the capturing, transforming, or rendering of a digital image.
Without additional limitations, a process that employs mathematical
algorithms to manipulate existing information to generate additional
information is not patent eligible. All of the claims were found
ineligible.
2. Planet Bingo, LLC v. VKGS LLC (U.S. Patent No. 6,398,646)
Claim 1. A system for managing a game of Bingo which comprises:
(a) a computer with a central processing unit (CPU) and with a
memory and with a printer connected to the CPU;
(b) an input and output terminal connected to the CPU and memory
of the computer; and
(c) a program in the computer enabling:
(i) input of at least two sets of Bingo numbers which are
preselected by a player to be played in at least one selected game
of Bingo in a future period of time;
(ii) storage of the sets of Bingo numbers which are preselected
by the player as a group in the memory of the computer;
(iii) assignment by the computer of a player identifier unique
to the player for the group having the sets of Bingo numbers which
are preselected by the player wherein the player identifier is
assigned to the group for multiple sessions of Bingo;
(iv) retrieval of the group using the player identifier;
(v) selection from the group by the player of at least one of
the sets of Bingo numbers preselected by the player and stored in
the memory of the computer as the group for play in a selected game
of Bingo in a specific session of Bingo wherein a number of sets of
Bingo numbers selected for play in the selected game of Bingo is
less than a total number of sets of Bingo numbers in the group;
(vi) addition by the computer of a control number for each set
of Bingo numbers selected for play in the selected game of Bingo;
(vii) output of a receipt with the control number, the set of
Bingo numbers which is preselected and selected by the player, a
price for the set of Bingo numbers which is preselected, a date of
the game of Bingo and optionally a computer identification number;
and
(viii) output for verification of a winning set of Bingo numbers
by means of the control number which is input into the computer by a
manager of the game of Bingo.
The court found the claims to be directed to the abstract idea of
solving a tampering problem and also minimizing other security risks
during bingo ticket purchases. The claims relate to managing a bingo
game while allowing a player to repeatedly play the same sets of
numbers in multiple sessions. Managing the game of bingo consists
solely of mental steps which can be carried out by a human using pen
and paper. The claims do not impose any requirements that would make
the invention impossible to carry out manually. Although not drawn to
the same subject matter at issue in Bilski and Alice Corp., the court
found managing a game of bingo to be similar to the kind of organizing
human activity at issue in Alice Corp. The claims recite a generic
computer implementation of the abstract idea and a program that is used
for the generic functions of storing, retrieving, and verifying a
chosen set of bingo numbers against a winning set of bingo numbers.
There is no inventive concept sufficient to transform the claimed
subject matter into a patent-eligible application. The court found no
meaningful distinction between the method and system claims. All of the
claims were found ineligible.
3. buySAFE, Inc. v. Google, Inc. (U.S. Patent No. 7,644,019)
Claim 1. A method, comprising:
receiving, by at least one computer application program running
on a computer of a safe transaction service provider, a request from
a first party for obtaining a transaction performance guaranty
service with respect to an online commercial transaction following
closing of the online commercial transaction;
processing, by at least one computer application program running
on the safe transaction service provider computer, the request by
underwriting the first party in order to provide the transaction
performance guaranty service to the first party,
wherein the computer of the safe transaction service provider
offers, via a computer network, the transaction performance guaranty
service that binds a transaction performance guaranty to the online
commercial transaction involving the first party to guarantee the
performance of the first party following closing of the online
commercial transaction.
Claim 14. The method according to claim 1, wherein the
transaction performance guaranty is provided in one form of: a
surety bond; a specialized bank guaranty; a specialized insurance
policy; and a safe transaction guaranty provided by the safe
transaction service provider.
Relying on Bilski in which an abstract idea was found in certain
arrangements involving contractual relations, the court found the
claims to be squarely about creating a contractual relationship--a
``transaction performance guaranty''--that is beyond question of
ancient lineage. The claims' invocation of computers adds no inventive
concept, with the computer functionality being generic. The
transactions being performed online, at best, limits the use of the
abstract guaranty idea to a particular technological environment.
Although, dependent claim 14 narrows the abstract idea to particular
types of relationships, that does not change the analysis because it
does not make the idea non-abstract. The claims to the computer
readable medium encoded with instructions to carry out the method were
treated in the same way. All of the claims were found ineligible.
4. Ultramercial, LLC v. Hulu, LLC and WildTangent (U.S. Patent No.
7,346,545)
Claim 1: A method for distribution of products over the Internet
via a facilitator, said method comprising the steps of:
a first step of receiving, from a content provider, media
products that are covered by intellectual-property rights protection
and are available for purchase, wherein each said media product
being comprised of at least one of text data, music data, and video
data;
a second step of selecting a sponsor message to be associated
with the media product, said sponsor message being selected
[[Page 74632]]
from a plurality of sponsor messages, said second step including
accessing an activity log to verify that the total number of times
which the sponsor message has been previously presented is less than
the number of transaction cycles contracted by the sponsor of the
sponsor message;
a third step of providing the media product for sale at an
Internet Web site;
a fourth step of restricting general public access to said media
product;
a fifth step of offering to a consumer access to the media
product without charge to the consumer on the precondition that the
consumer views the sponsor message;
a sixth step of receiving from the consumer a request to view
the sponsor message, wherein the consumer submits said request in
response to being offered access to the media product;
a seventh step of, in response to receiving the request from the
consumer, facilitating the display of a sponsor message to the
consumer;
an eighth step of, if the sponsor message is not an interactive
message, allowing said consumer access to said media product after
said step of facilitating the display of said sponsor message;
a ninth step of, if the sponsor message is an interactive
message, presenting at least one query to the consumer and allowing
said consumer access to said media product after receiving a
response to said at least one query;
a tenth step of recording the transaction event to the activity
log, said tenth step including updating the total number of times
the sponsor message has been presented; and
an eleventh step of receiving payment from the sponsor of the
sponsor message displayed.
Using the Alice Corp. framework, the court first determined whether
the claims at issue are directed to a patent-ineligible concept. The
court found that the ordered combination of the eleven steps recites
``an abstraction--an idea, having no particular concrete or tangible
form'' noting that the majority of limitations describe only the
abstract idea of showing an advertisement before delivering content.
The court then turned to the next step of the analysis to determine
whether the claims do significantly more than simply describe the
abstract method. The court explained that consulting and updating an
activity log represent insignificant ``data-gathering steps,''
restricting public access represents only insignificant ``[pre]-
solution activity,'' and narrowing the idea to the Internet is an
attempt to limit the use of the abstract idea ``to a particular
technological environment.'' Viewed both individually and as an ordered
combination, the claimed steps were found insufficient to supply an
inventive concept because the steps are conventional and specified at a
high level of generality. The court concluded that the claim
limitations do not transform the abstract idea that they recite into
patent-eligible subject matter because ``the claims simply instruct the
practitioner to implement the abstract idea with routine, conventional
activity.'' All of the claims were found ineligible.
5. DDR Holdings, LLC v. Hotels.com, L.P. (U.S. Patent No. 7,818,399)
Claim 19: A system useful in an outsource provider serving Web
pages offering commercial opportunities, the system comprising:
(a) a computer store containing data, for each of a plurality of
first Web pages, defining a plurality of visually perceptible
elements, which visually perceptible elements correspond to the
plurality of first Web pages;
(i) wherein each of the first Web pages belongs to one of a
plurality of Web page owners;
(ii) wherein each of the first Web pages displays at least one
active link associated with a commerce object associated with a
buying opportunity of a selected one of a plurality of merchants;
and
(iii) wherein the selected merchant, the outsource provider, and
the owner of the first Web page displaying the associated link are
each third parties with respect to one other;
(b) a computer server at the outsource provider, which computer
server is coupled to the computer store and programmed to:
(i) receive from the web browser of a computer user a signal
indicating activation of one of the links displayed by one of the
first Web pages;
(ii) automatically identify as the source page the one of the
first Web pages on which the link has been activated;
(iii) in response to identification of the source page,
automatically retrieve the stored data corresponding to the source
page; and
(iv) using the data retrieved, automatically generate and
transmit to the web browser a second Web page that displays: (A)
Information associated with the commerce object associated with the
link that has been activated, and (B) the plurality of visually
perceptible elements visually corresponding to the source page.
The court found the claim patent eligible under the Alice Corp.
framework. First, the court noted that, while in some instances
abstract ideas are plainly identifiable and divisible from generic
computer limitations recited by the remainder of a claim, in this case,
identifying the precise nature of the abstract idea is not as
straightforward. The court considered several proposed
characterizations of the abstract idea, including ```making two Web
pages look the same,' `syndicated commerce on the computer using the
Internet' and `making two e-commerce Web pages look alike by using
licensed trademarks, logos, color schemes and layouts,''' and ``that an
online merchant's sales can be increased if two Web pages have the same
`look and feel.''' The court did not clearly indicate whether the claim
was directed to one or more of these proposed abstract ideas, but
stated that ``under any of these characterizations of the abstract
idea, the `399 patent's claims satisfy Mayo/Alice step two.''
The court then explained its analysis of the second Mayo/Alice
step, where it determined that the claim amounted to an inventive
concept and thus was patent eligible. In particular, the claim
addresses the problem of retaining Web site visitors from being
diverted from a host's Web site to an advertiser's Web site, for which
``the claimed solution is necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of
computer networks.'' The claim includes additional elements including
``1) stor[ing] `visually perceptible elements' corresponding to
numerous host Web sites in a database, with each of the host Web sites
displaying at least one link associated with a product or service of a
third-party merchant, 2) on activation of this link by a Web site
visitor, automatically identif[ying] the host, and 3) instruct[ing] an
Internet web server of an `outsource provider' to construct and serve
to the visitor a new, hybrid Web page that merges content associated
with the products of the third-party merchant with the stored `visually
perceptible elements' from the identified host Web site.'' The court
held that, unlike in Ultramercial, the claim does not generically
recite ``use the Internet'' to perform a business practice, but instead
recites a specific way to automate the creation of a composite Web page
by an outsource provider that incorporates elements from multiple
sources in order to solve a problem faced by Web sites on the Internet.
Therefore, the court held that the claim is patent eligible.
Guidelines for Written Comments
It would be helpful to the USPTO if written comments include
information about: (1) The name and affiliation of the individual
responding; and (2) an indication of whether comments offered represent
views of the respondent's organization or are the respondent's personal
views. Information provided in response to this request for comments
will be made part of a public record and may be available via the
Internet. In view of this, parties should not submit information that
they do not wish to be publicly disclosed or made electronically
accessible. Parties who would like to rely on confidential information
to illustrate a point are requested to summarize or otherwise
[[Page 74633]]
submit the information in a way that will permit its public disclosure.
Dated: December 10, 2014.
Michelle K. Lee,
Deputy Under Secretary of Commerce for Intellectual Property and Deputy
Director of the United States Patent and Trademark Office.
[FR Doc. 2014-29414 Filed 12-15-14; 8:45 am]
BILLING CODE 3510-16-P