Patent Office Guidlines for Examiners Post-Myriad

I have been kicking this can down the road since February of this year.
Here are the guidelines for Examiners:


[3510-16-P]
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.
ACTION: Examination guidance; request for comments.
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
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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 [Insert
date of publication in the FEDERAL REGISTER]. This Interim Eligibility Guidance
applies to all applications filed before, on or after [Insert date of publication in the
FEDERAL REGISTER].
COMMENT DEADLINE DATE: To be ensured of consideration, written comments
must be received on or before [Insert date 90 days after the date of publication in the
FEDERAL REGISTER].
ADDRESSES: Comments on this Interim Eligibility Guidance must be sent by
electronic mail message over the Internet addressed to:
2014_interim_guidance@uspto.gov. Electronic comments submitted in plain text are
preferred, but also may be submitted in ADOBE® portable document format or
MICROSOFT WORD® 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,
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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
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).
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of examination guidance on eligibility will be an iterative process continuing with
periodic supplements based on developments in patent subject matter eligibility
jurisprudence5 and public feedback.
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,
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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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, future public comments, and any further judicial
developments.
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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
􀂃 2103(I): Determine What Applicant Has Invented and Is Seeking to Patent
􀂃 2103(II): Conduct a Thorough Search of the Prior Art
􀂃 2103(III): Determine Whether the Claimed Invention Complies with 35 U.S.C
101
􀂃 2103(IV): Evaluate Application for Compliance with 35 U.S.C. 112
􀂃 2103(V): Determine Whether the Claimed Invention Complies with 35 U.S.C.
102 and 103
􀂃 2103(VI): Clearly Communicate Findings, Conclusions, and Their Bases
• MPEP 2104: Patentable Subject Matter
• MPEP 2105: Patentable Subject Matter – Living Subject Matter6
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
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• MPEP 2106: Patent Subject Matter Eligibility
􀂃 2106(I): The Four Categories of Statutory Subject Matter
􀂃 2106(II): Judicial Exceptions to the Four Categories (not subsections (II)(A) and
(II)(B))
􀂃 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.
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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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.
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10
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 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).
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
7 Alice Corp., 134 S. Ct. at 2355.
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(Step 2A: YES) requires further analysis to determine whether the claim recites a patenteligible
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.
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.
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)).
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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);
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).
13
• 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
• the chemical principle underlying the union between fatty elements and water
(Tilghman:11 see Section IV.A.2.).
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:
• mitigating settlement risk (Alice: see Section III, Example 6);
• hedging (Bilski:13 see Section IV.A.5.);
• creating a contractual relationship (buySAFE:14 see Section IV.C.3.);
• using advertising as an exchange or currency (Ultramercial:15 see Section
IV.C.4.);
10 O’Reilly v. Morse, 56 U.S. 62 (1853).
11 Tilghman v. Proctor, 102 U.S. 707 (1881).
12 Alice Corp., 134 S. Ct. at 2355-56.
13 Bilski v. Kappos, 561 U.S. 593 (2010).
14
• processing information through a clearinghouse (Dealertrack:16 see Section
IV.B.3.);
• comparing new and stored information and using rules to identify options
(SmartGene:17 see Section IV.B.4.);
• using categories to organize, store and transmit information (Cyberfone:18 see
Section IV.B.5.);
• organizing information through mathematical correlations (Digitech:19 see Section
IV.C.1.);
• managing a game of bingo (Planet Bingo:20 see Section IV.C.2.);
• the Arrhenius equation for calculating the cure time of rubber (Diehr:21 see
Section III, Example 3);
• a formula for updating alarm limits (Flook:22 see Section III, Example 4);
• a mathematical formula relating to standing wave phenomena (Mackay Radio:23
see Section IV.A.3.); and
14 buySAFE, Inc. v. Google, Inc., ___ F.3d ___, 112 USPQ2d 1093 (Fed. Cir. 2014).
15 Ultramercial, LLC v. Hulu, LLC and WildTangent, ___ F.3d ___, 112 USPQ2d 1750 (Fed. Cir. 2014).
16 Dealertrack Inc. v. Huber, 674 F.3d 1315 (Fed. Cir. 2012).
17 SmartGene, Inc. v. Advanced Biological Labs., SA, 555 Fed. Appx. 950 (Fed. Cir. 2014)
(nonprecedential).
18 Cyberfone Sys. v. CNN Interactive Grp., 558 Fed. Appx. 988 (Fed. Cir. 2014) (nonprecedential).
19 Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014).
20 Planet Bingo, LLC v. VKGS LLC, ___ Fed. Appx.___ (Fed. Cir. 2014) (nonprecedential).
15
• a mathematical procedure for converting one form of numerical representation to
another (Benson:24 see Section IV.A.4.)
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 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).
21 Diamond v. Diehr, 450 U.S. 175 (1981).
22 Parker v. Flook, 437 U.S. 584 (1978).
23 Mackay Radio & Tel. Co. v. Radio Corp. of Am., 306 U.S. 86 (1939).
24 Benson, 409 U.S. at 63.
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 naturebased
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.
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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 way26 that there is no difference in substance from a product claim (e.g.,
“a method of providing an apple.”).
b. Markedly Different Characteristics Analysis: Structure, Function and/or
Other Properties27
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.
26 Alice Corp., 134 S. Ct. at 2360.
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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.
Non-limiting examples of the types of characteristics considered by the courts when
determining whether there is a marked difference include:
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.
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 noninhibition
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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• Biological or pharmacological functions or activities;29
• Chemical and physical properties;30
• Phenotype, including functional and structural characteristics;31 and
• Structure and form, whether chemical, genetic or physical.32
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 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
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).
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.”).
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).
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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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 naturebased
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
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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.
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
• Improvements to the functioning of the computer itself;35
• Applying the judicial exception with, or by use of, a particular machine;36
33 Alice Corp., 134 S. Ct. at 2357.
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).
35 Id., at 2359.
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 § 101.”).
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• Effecting a transformation or reduction of a particular article to a different state or
thing;37
• 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
• Other meaningful limitations beyond generally linking the use of the judicial
exception to a particular technological environment.39
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
• 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
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”).
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”).
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)).
23
computer to perform generic computer functions that are well-understood, routine
and conventional activities previously known to the industry;41
• 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
• Generally linking the use of the judicial exception to a particular technological
environment or field of use.43
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
40 Id. at 2358 (simply implementing a mathematical principle on a physical machine, namely a computer
(citing Mayo, 132 S. Ct. at 1301)).
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).
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).
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.
24
explain why they do not add significantly more to the exception. Also see MPEP
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
25
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:
26
35 U.S.C. 102, 103, 112, and 101 (utility, inventorship and double patenting) and nonstatutory
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. Chakrabarty44 (U.S. Patent No. 4,259,444)
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.
44 Chakrabarty, 447 U.S. at 303.
27
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 naturebased
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
28
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 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
29
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
30
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.
31
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,
32
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
33
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.
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:
34
(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 oilrefining
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
35
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 immunemediated
gastrointestinal disorder,
wherein the level of 6-thioguanine less than about 230 pmol per 8x108 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
36
about 400 pmol per 8x108 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
37
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 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.
38
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
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
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.
39
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.
40
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
41
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 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
42
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
43
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.
44
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/λ)-0.513
degrees, l being the length of the wire and λ 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
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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
46
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.
B. Abstract Idea Decisions from the Federal Circuit prior to Alice Corp. (2010 –
2014)
1. SiRF Technology v. ITC46 (U.S. Patent No. 6,417,801)
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
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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)
Claim 1. A method for the halftoning of gray scale images by utilizing a pixelby-
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
46 SiRF Tech. v. ITC, 601 F.3d 1319 (Fed. Cir. 2010).
47 Research Corp. Tech. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010).
48
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
49
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.
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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-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
51
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;
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(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
53
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
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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 nonabstract.
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 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 website;
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.
55
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
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(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.”
57
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 website visitors from being
diverted from a host’s website to an advertiser’s website, 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
websites in a database, with each of the host websites displaying at least one link
associated with a product or service of a third-party merchant, 2) on activation of this link
by a website 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 website.” 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 websites 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
58
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
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.
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[FR Doc. 2014-29414 Filed 12/15/2014 at 8:45 am; Publication Date: 12/16/2014]