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2106

2106 Patent Subject Matter Eligibility [R-6]

I.   THE FOUR CATEGORIES OF STATUTORY SUBJECT MATTER

BENSON

"Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work." Benson, 409 U.S. at 67. In re Bilski, 545 F.3d 943, 952 (Fed. Cir. 2008) (footnote omitted).

Funk Bros. Seed Co.

Such fundamental principles [as "laws of nature, natural phenomena, and abstract ideas”] are "part of the storehouse of knowledge of all men . . . free to all men and reserved exclusively to none." Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948);

GOTTSCHALK

Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“[M]ental processes, and abstract intellectual concepts are not patentable.”); see also id. at 71 (“It is conceded that one may not patent an idea.”).
 
Le Roy

see also Le Roy v. Tatham, 55 U.S. (14 How.) 156, 175 (1852) ("A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.").

II.   JUDICIAL EXCEPTIONS TO THE FOUR CATEGORIES

A.   Practical Application of Machines, Manufactures, and Compositions of Matter (Products)

Diehr

[T]he Court has held that a claim is not a patent-eligible "process" if it claims "laws of nature, natural phenomena, [or] abstract ideas." Diamond v. Diehr, 450 U.S. 175, 185 (1981) (citing Flook, 437 U.S. at 589, and Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
 
The Supreme Court has held that “[e]xcluded from such patent protection are laws of nature, natural phenomena, and abstract ideas.” Diamond v. Diehr, 450 U.S. 175, 185 (1981). “An idea of itself is not patentable.’” Id. at 185 (quoting Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 507, 22 L.Ed. 410 (1874);
 
E-Pass Techs., Inc.

The challenge is to interpret claims in view of the specification without unnecessarily importing limitations from the specification into the claims. See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). Limitations appearing in the specification but not recited in the claim are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003).

B.   Practical Application of Processes (Methods)

1.   Factors To Be Considered in an Abstract Idea Determination of a Method Claim

(a)   Whether the method involves or is executed by a particular machine or apparatus

ABELE


CYBERSOURCE

Our reviewing court in In re Abele, 684 F.2d 902 (CCPA 1982) held that a claim directed to the steps of calculating and displaying was not statutory stating that “[t]his claim presents no more than the calculation of a number and display of the result, albeit in a particular format” (Id. at 908-09). Appellants’ claim 1 does not even include the displaying step recited in Abele’s rejected claim. See also CyberSource Corp. v. Retail Decision Inc., 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) (“[t]he mere collection and organization of data regarding credit card numbers and Internet addresses is insufficient to meet the transformation prong of the test” and that “mere ‘[data-gathering] step[s] cannot make an otherwise nonstatutory claim statutory.’”)

(b)   Whether performance of the claimed method results in or otherwise involves a transformation of a particular article

ABELE

CYBERSOURCE

Our reviewing court in In re Abele, 684 F.2d 902 (CCPA 1982) held that a claim directed to the steps of calculating and displaying was not statutory stating that “[t]his claim presents no more than the calculation of a number and display of the result, albeit in a particular format” (Id. at 908-09). Appellants’ claim 1 does not even include the displaying step recited in Abele’s rejected claim. See also CyberSource Corp. v. Retail Decision Inc., 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) (“[t]he mere collection and organization of data regarding credit card numbers and Internet addresses is insufficient to meet the transformation prong of the test” and that “mere ‘[data-gathering] step[s] cannot make an otherwise nonstatutory claim statutory.’”)


(c)   Whether performance of the claimed method involves an application of a law of nature, even in the absence of a particular machine, apparatus, or transformation

(d)   Whether a general concept (which could also be recognized in such terms as a principle, theory, plan or scheme) is involved in executing the steps of the method

2.   Making the Determination of Eligibility

III.   Establish on the Record a Prima Facie Case

Brana

[T]he PTO has the initial burden of challenging a presumptively correct assertion of utility in the disclosure. Only after the PTO provides evidence showing that one of ordinary skill in the art would reasonably doubt the asserted utility does the burden shift to the applicant to provide rebuttal evidence sufficient to convince such a person of the invention’s asserted utility. In re Brana, 51 F.3d 1560, 1566 (Fed. Cir. 1995) (citation omitted).

“Enablement, or utility, is determined as of the application filing date.” Id. at 1567 n.19. However, post-filing evidence “can be used to substantiate any doubts as to the asserted utility [when it] pertains to the accuracy of a statement already in the specification.” Id.

IV. DETERMINE WHETHER THE CLAIMED INVENTION COMPLIES WITH 35 U.S.C. 101

A. Consider the Breadth of 35 U.S.C. 101 Under Controlling Law
 

B. Determine Whether the Claimed Invention Falls Within An Enumerated Statutory Category
 
C. Determine Whether the Claimed Invention Falls Within 35 U.S.C. 101 Judicial Exceptions - Laws of Nature, Natural Phenomena and Abstract Ideas
 

Diehr

[T]he Court has held that a claim is not a patent-eligible "process" if it claims "laws of nature, natural phenomena, [or] abstract ideas." Diamond v. Diehr, 450 U.S. 175, 185 (1981) (citing Flook, 437 U.S. at 589, and Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
 
The Supreme Court has held that “[e]xcluded from such patent protection are laws of nature, natural phenomena, and abstract ideas.” Diamond v. Diehr, 450 U.S. 175, 185 (1981). “An idea of itself is not patentable.’” Id. at 185 (quoting Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 507, 22 L.Ed. 410 (1874);
 
FLOOK
 
A claim reciting insignificant post solution activity does not transform an unpatentable principle into a patentable process. Parker v. Flook, 437 U.S. 584, 590 (1978).
 
Funk Bros. Seed Co.

Such fundamental principles [as "laws of nature, natural phenomena, and abstract ideas”] are "part of the storehouse of knowledge of all men . . . free to all men and reserved exclusively to none." Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 (1948); 
 
Le Roy

see also Le Roy v. Tatham, 55 U.S. (14 How.) 156, 175 (1852) ("A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.").

1. Determine Whether the Claimed Invention Covers Either a 35 U.S.C. 101 Judicial Exception or a Practical Application of a 35 U.S.C. 101 Judicial Exception
 
BENSON

"Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work." Benson, 409 U.S. at 67. In re Bilski, 545 F.3d 943, 952 (Fed. Cir. 2008) (footnote omitted).
 
Corning

“The Supreme Court has defined the term “machine” as “a concrete thing, consisting of parts, or of certain devices and combination of devices.” Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570 (1863). This “includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.” Corning v. Burden, 56 U.S. 252, 267 (1853).”
 
Diehr

[T]he Court has held that a claim is not a patent-eligible "process" if it claims "laws of nature, natural phenomena, [or] abstract ideas." Diamond v. Diehr, 450 U.S. 175, 185 (1981) (citing Flook, 437 U.S. at 589, and Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
 
The Supreme Court has held that “[e]xcluded from such patent protection are laws of nature, natural phenomena, and abstract ideas.” Diamond v. Diehr, 450 U.S. 175, 185 (1981). “An idea of itself is not patentable.’” Id. at 185 (quoting Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 507, 22 L.Ed. 410 (1874);

FLOOK
 
A claim reciting insignificant post solution activity does not transform an unpatentable principle into a patentable process. Parker v. Flook, 437 U.S. 584, 590 (1978).

2. Determine Whether the Claimed Invention is a Practical Application of an Abstract Idea, Law of Nature, or Natural Phenomenon (35 U.S.C. 101 Judicial Exceptions)
 
BENSON

"Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work." Benson, 409 U.S. at 67. In re Bilski, 545 F.3d 943, 952 (Fed. Cir. 2008) (footnote omitted).
 
Diehr

[T]he Court has held that a claim is not a patent-eligible "process" if it claims "laws of nature, natural phenomena, [or] abstract ideas." Diamond v. Diehr, 450 U.S. 175, 185 (1981) (citing Flook, 437 U.S. at 589, and Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
 
The Supreme Court has held that “[e]xcluded from such patent protection are laws of nature, natural phenomena, and abstract ideas.” Diamond v. Diehr, 450 U.S. 175, 185 (1981). “An idea of itself is not patentable.’” Id. at 185 (quoting Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 507, 22 L.Ed. 410 (1874);

(1) Practical Application by Physical Transformation

(2) Practical Application That Produces a Useful, Concrete, and Tangible Result
 
"USEFUL RESULT"
 
Fisher

Section 101 requires a utility that is both substantial and specific. A substantial utility requires:
show[ing] that an invention is useful to the public as disclosed in its current form, not that it may prove useful at some future date after further research. Simply put, to satisfy the “substantial” utility requirement, an asserted use must show that that claimed invention has a significant and presently available benefit to the public.
In re Fisher, 421 F.3d 1365, 1371 (Fed. Cir. 2005).

A specific utility is “a use which is not so vague as to be meaningless.” Id. In other words, “in addition to providing a ‘substantial’ utility, an asserted use must also show that [the] claimed invention can be used to provide a well-defined and particular benefit to the public.” Id. In addition, “[i]t is well established that the enablement requirement of § 112 incorporates the utility requirement of § 101.” In re Fisher, 421 F.3d at 1378.

In order to satisfy the utility requirement of 35 U.S.C. § 101, the disclosed utility must be both substantial and specific. In re Fisher, 421 F.3d 1365, 1371 (Fed. Cir. 2005). A substantial utility requires showing that the claimed invention “has a significant and presently available benefit to the public.” Id. A specific utility requires showing that “the claimed invention can be used to provide a well-defined and particular benefit to the public.” Id.

[A]n application must show that an invention is useful to the public as disclosed in its current form, not that it may prove useful at some future date after further research. Simply put, to satisfy the “substantial” utility requirement, an asserted use must show that that claimed invention has a significant and presently available benefit to the public. . . . in addition to providing a “substantial” utility, an asserted use must also show that the claimed invention can be used to provide a well-defined and particular benefit to the public. In re Fisher, 421 F.3d 1365, 1371 (Fed. Cir. 2005).

"TANGIBLE RESULT"
 
BENSON

"Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work." Benson, 409 U.S. at 67. In re Bilski, 545 F.3d 943, 952 (Fed. Cir. 2008) (footnote omitted).
 
Corning

“The Supreme Court has defined the term “machine” as “a concrete thing, consisting of parts, or of certain devices and combination of devices.” Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570 (1863). This “includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.” Corning v. Burden, 56 U.S. 252, 267 (1853).”
Diehr

[T]he Court has held that a claim is not a patent-eligible "process" if it claims "laws of nature, natural phenomena, [or] abstract ideas." Diamond v. Diehr, 450 U.S. 175, 185 (1981) (citing Flook, 437 U.S. at 589, and Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
 
The Supreme Court has held that “[e]xcluded from such patent protection are laws of nature, natural phenomena, and abstract ideas.” Diamond v. Diehr, 450 U.S. 175, 185 (1981). “An idea of itself is not patentable.’” Id. at 185 (quoting Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 507, 22 L.Ed. 410 (1874);

"CONCRETE RESULT"

3. Determine Whether the Claimed Invention Preempts a 35 U.S.C. 101 Judicial Exception (Abstract Idea, Law of Nature, or Natural Phenomenon)
 
BENSON

"Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work." Benson, 409 U.S. at 67. In re Bilski, 545 F.3d 943, 952 (Fed. Cir. 2008) (footnote omitted).
 
Diehr

[T]he Court has held that a claim is not a patent-eligible "process" if it claims "laws of nature, natural phenomena, [or] abstract ideas." Diamond v. Diehr, 450 U.S. 175, 185 (1981) (citing Flook, 437 U.S. at 589, and Gottschalk v. Benson, 409 U.S. 63, 67 (1972)).
 
The Supreme Court has held that “[e]xcluded from such patent protection are laws of nature, natural phenomena, and abstract ideas.” Diamond v. Diehr, 450 U.S. 175, 185 (1981). “An idea of itself is not patentable.’” Id. at 185 (quoting Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 507, 22 L.Ed. 410 (1874);

D. Establish on the Record a Prima Facie Case
 


V. EVALUATE APPLICATION FOR COMPLIANCE WITH 35 U.S.C. 112

A. Determine Whether the Claimed Invention Complies with 35 U.S.C. 112, Second Paragraph Requirements (MPEP § 2171)

B. Determine Whether the Claimed Invention Complies with 35 U.S.C. 112, First Paragraph Requirements

1. Adequate Written Description

2. Enabling Disclosure
 
3. Best Mode (MPEP § 2165)
 
VI. DETERMINE WHETHER THE CLAIMED INVENTION COMPLIES WITH 35 U.S.C. 102 AND 103

VII. CLEARLY COMMUNICATE FINDINGS, CONCLUSIONS AND THEIR BASES

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2106.01    ** > Subject Matter Eligibility Analysis of Process Claims Involving Laws of Nature [R-9]

I.   SUMMARY

II.   ESSENTIAL INQUIRIES FOR SUBJECT MATTER ELIGIBILITY UNDER 35 U.S.C. 101

III.   DETAILED GUIDANCE FOR USING THE INQUIRIES

IV.  SAMPLE ANALYSIS


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