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);

BURR, DIAMOND, DIGITECH

As noted supra, Section 101 of the Patent Act permits the patenting of “any new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. Our reviewing Court has found:

For all categories except process claims, the eligible subject matter must exist in some physical or tangible form. To qualify as a machine under section 101, the claimed invention must be a “concrete thing, consisting of parts, or of certain devices and combination of devices.” Burr v. Duryee, 68 U.S. 531, 570 . . . (1863). To qualify as a manufacture, the invention must be a tangible article that is given a new form, quality, property, or combination through man-made or artificial means. Diamond v. Chakrabarty, 447 U.S. 303, 308 . . . (1980). Likewise, a composition of matter requires the combination of two or more substances and includes all composite articles. Id.

Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1348–49 (Fed. Cir. 2014).

Information collection and analysis, including when limited to particular content, is within the realm of abstract ideas. See, e.g., Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); and CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011).

The Federal Circuit’s recent decision in Natural Alternatives Int’l v.Creative Compounds, LLC, 918 F.3d 1338 (Fed. Cir. 2019) is illustrative. Reply Br. 7. In Natural Alternatives, one of the product claims at issue recited “A human dietary supplement, comprising a beta-alanine in a unit dosage of between about 0.4 grams to 16 grams, wherein the supplement provides a unit dosage of beta-alanine.” Natural Alternatives Int’l, 918 F.3d at 1348. The court explained the test for evaluating eligibility of claims made form a natural product as follows: “[a] claim to a manufacture or composition of matter made from a natural product is not directed to the natural product where it has different characteristics and ‘the potential for significant utility.’” Id. (quoting Diamond v. Chakrabarty, 447 U.S. 303, 310 (1980)). Based on this test, our reviewing court determined that although “beta-alanine is a natural product, the Product Claims are not directed to beta-alanine.” Id. 

FERGUSON

“[A] machine is a ‘concrete thing, consisting of parts, or of certain devices and combination of devices.’ This ‘includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.’” In re Ferguson, 558 F.3d 1359, 1364 (Fed. Cir. 2009) (internal citations omitted).

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.”).

Gottschalk v. Benson, 409 U.S. 63, 70 (1972) (“A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.” (emphasis added) (quoting Cochrane v.

Deener, 94 U.S. 780, 788 (1876))).

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.").

Nuijten

“If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007).

"Our reviewing court has recently held that transitory, propagating signals, such as carrier waves, are not within any of the four statutory categories (process, machine, manufacture or composition of matter). Therefore, a claim directed to computer instructions embodied in a signal is not statutory under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) "

See In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007) ("If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful."). "Manufactures" are tangible articles or commodities. Id. at 1356. Thus, a "signal" cannot be patentable subject matter because it is not within any of the four categories. Id. at 1357. Similarly, a "paradigm" does not fit within any of the four categories. In re Ferguson, 558 F.3d 1359, 1366 (Fed. Cir. 2009).

“If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007). “A transitory, propagating signal . . . is not a ‘process, machine, manufacture, or composition of matter’ [under 35 U.S.C. § 101]” and therefore does not constitute patentable subject matter under § 101. Id. at 1357.

“A transitory, propagating signal is not a ‘process, machine, manufacture, or composition of matter.’ Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101.” In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007), “If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.” Id. at 1354, reh’g en banc denied, 515 F.3d 1361 (Fed. Cir. 2008), cert. denied, __ U.S. __, 127 S. Ct. 70 (2008).

A computer data signal embodied in a carrier wave is a transitory, propagating signal not within any of the four statutory categories and, therefore, non-statutory. See In re Nuijten, 500 F.3d at 1357.

MILLER

See In re Russell, 48 F.2d 668 (CCPA 1931) (affirming rejection and stating "[t]he mere arrangement of printed matter on a sheet or sheets of paper, in book form or otherwise, does not constitute 'any new and useful art, machine, manufacture, or composition of matter,' or 'any new or useful improvements thereof'" (quoting former 35 U.S.C. 31)); see also In re Ockman, 833 F.2d 1023 (Fed. Cir 1987) (unpublished) (affirming rejection of plans or drawings used in construction projects because "[i]nsofar as the claims involve no more that printed matter, gathering data and forwarding information to others, those claims are non-statutory under 101") (citing In re Miller, 418 F.2d 1392, 1396 (CCPA 1969) and Russel)); Miller, 418 F.2d at 1396 (discussing, in dicta, that "[t]he fact that printed matter by itself is not patentable subject matter, because non-statutory, is no reason for ignoring it when the claim is directed to a combination").

cf In re Miller, 418 F.2d 1392, 1396 (CCPA 1969) (finding a functional relationship between a measuring receptacle and volumetric indicia thereon).

MYRIAD

We agree with the Examiner that claim 1 is not patent-eligible subject matter. Claim 1 is directed to a peptide that is made up of a fragment of the naturally occurring matriptase protein. Thus, the Supreme Court opinion in Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107 (2013), is controlling. In Myriad, the Court considered claims directed to isolated DNA encoding the BRCA1 polypeptide and fragments of at least 15 nucleotides of that DNA. Id. at 2113.

The Court held that “Myriad did not create anything. To be sure, it found an important and useful gene, but separating that gene from its surrounding genetic material is not an act of invention.” Id. at 2117. “Myriad found the location of the BRCA1 and BRCA2 genes, but that discovery, by itself, does not render the BRCA genes ‘new . . . composition[s] of matter,’ § 101, that are patent eligible.” Id. “Nor are Myriad’s claims saved by the fact that isolating DNA from the human genome severs chemical bonds and thereby creates a nonnaturally occurring molecule.” Id. at 2118.

...

Given this broad disclosure, even if claim 1 did not foreclose certain combinations of cytokines and autoantibodies at present, the draftsperson may pursue these combinations through future claims, thus expanding the preemptive reach of Appellants’ invention drawn to the natural law.10 Cf. In re BRCA1- and BRCA2-Based Hereditary Cancer Test Patent Litig., 774 F.3d 755, 764 n. 4 (Fed. Cir. 2014) (“The preemptive nature of the claims is not ameliorated even if we accept Myriad’s argument that other methods of comparison exist. If the combination of certain routine steps were patent eligible, so too would different combinations of other routine steps.”)

ROSLIN

Natural phenomena, including naturally occurring organisms, are not patentable. In re Roslin Institute (Edinburgh), 750 F.3d 1333, 1335—1336 (Fed. Cir. 2014).

II. ELIGIBILITY STEP 1: WHETHER A CLAIM IS TO A STATUTORY CATEGORY

2106.04 Eligibility Step 2: Whether a Claim is Directed to a Judicial Exception [R-08.2017]

I. JUDICIAL EXCEPTIONS

II. ELIGIBILITY STEP 2A: WHETHER A CLAIM IS DIRECTED TO A JUDICIAL EXCEPTION

2106.04(a) Abstract Ideas [R-08.2017]

I. CLAIMS THAT ARE DIRECTED TO IMPROVEMENTS IN COMPUTER FUNCTIONALITY OR OTHER TECHNOLOGY ARE NOT ABSTRACT

II. MORE INFORMATION ON CLAIMS THAT ARE, AND ARE NOT, DIRECTED TO ABSTRACT IDEAS

2106.04(a)(1) Examples of Claims That Are Not Directed To Abstract Ideas [R-08.2017]

I. IF A CLAIM IS BASED ON OR INVOLVES AN ABSTRACT IDEA, BUT DOES NOT RECITE IT, THEN THE CLAIM IS NOT DIRECTED TO AN ABSTRACT IDEA

II. IF A CLAIM RECITES AN ABSTRACT IDEA, BUT THE CLAIM AS A WHOLE IS DIRECTED TO AN IMPROVEMENT OR OTHERWISE CLEARLY DOES NOT SEEK TO TIE UP THE ABSTRACT IDEA, THEN THE CLAIM IS NOT DIRECTED TO AN ABSTRACT IDEA

2106.04(a)(2) Examples of Concepts The Courts Have Identified As Abstract Ideas [R-08.2017]

I. "FUNDAMENTAL ECONOMIC PRACTICES"

A. Concepts relating to agreements between people or performance of financial transactions

B. Concepts relating to mitigating risks

II. "CERTAIN METHODS OF ORGANIZING HUMAN ACTIVITY"

A. Concepts relating to managing relationships or transactions between people, or satisfying or avoiding a legal obligation

BSG

On the other hand, “[i]f a claim’s only ‘inventive concept’ is the application of an abstract idea using conventional and well-understood techniques, the claim has not been transformed into a patent-eligible application of an abstract idea.” BSG Tech, 899 F.3d at 1290–91 (citing Berkheimer v. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir. 2018)). “[I]t is irrelevant whether [the claimed abstract idea] may have been non-routine or unconventional as a factual matter . . . narrowing or reformulating an abstract idea does not add ‘significantly more’ to it.” BSG Tech, 899 F.3d at 1291.

B. Concepts relating to advertising, marketing, and sales activities or behaviors

C. Concepts relating to managing human behavior

D. Concepts relating to tracking or organizing information

III. "AN IDEA 'OF ITSELF'"

A. Concepts relating to data comparisons that can be performed mentally or are analogous to human mental work

CLASSEN

These limitations integrate the results of collecting and comparing data into a specific and tangible method that results in the method “moving from abstract scientific principle to specific application,” and imposing a meaningful limit on the judicial exception. Classen Immunotherapies Inc. v. Biogen IDEC, 659 F.3d 1057, 1068 (Fed. Cir. 2011). 

MORTGAGE

Although the ultimate determination of eligibility is a question of law, our reviewing court recently held “[t]he patent eligibility inquiry may contain underlying issues of fact.” Berkheimer v. HP Inc., No. 2017-1437, 2018 WL 774096, at *6 (Fed. Cir. Feb. 8, 2018) (quoting Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016) (“[t]he § 101 inquiry ‘may contain underlying factual issues’”)). The court in Berkheimer also held “[w]hen there is no genuine issue of material fact regarding whether the claim element or claimed combination is well-understood, routine, conventional to a skilled artisan in the relevant field, this issue can be decided on summary judgment as a matter of law.” Berkheimer, 2018 WL 774096, at *13. Thus, evidence may be helpful where, for instance, facts are in dispute, but evidence is not always necessary. 

The patent eligibility inquiry may contain underlying issues of fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact." Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). 

...

As additional support for their argument, Appellant (Reply Br. 5) also cites to the new examination procedure published online by the USPTO on April 19, 2018, entitled "Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)" (hereinafter "USPTO Memorandum").

B. Concepts relating to organizing or analyzing information in a way that can be performed mentally or is analogous to human mental work

C. Concepts described as ideas having no particular concrete or tangible form

IV. “MATHEMATICAL RELATIONSHIPS/FORMULAS”

A. Concepts relating to a mathematical relationship or formula

B. Concepts relating to performing mathematical calculations

2106.04(b) Laws of Nature, Natural Phenomena & Products of Nature [R-08.2017]

I. LAWS OF NATURE AND NATURAL PHENOMENA, GENERALLY

II. PRODUCTS OF NATURE

2106.04(c) The Markedly Different Characteristics Analysis [R-08.2017]

ALICE

The Supreme Court

set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, [] determine whether the claims at issue are directed to one of those patent-ineligible concepts. [] If so, we then ask, "[ w ]hat else is there in the claims before us? [] To answer that question, [] consider the elements of each claim both individually and "as an ordered combination" to determine whether the additional elements "transform the nature of the claim" into a patent-eligible application. [The Court] described step two of this analysis as a search for an "'inventive concept'"-i.e., an element or combination of elements that is "sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself."

Alice Corp., Pty. Ltd. v CLS Bank Intl, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)).

We note, “[a]t some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws of nature,  natural phenomena, or abstract ideas,’” and whether one takes a macroscopic or microscopic view of a claim may be determinative on the issue. Alice, 134 S. Ct. at 2354 (quoting Mayo, 132 S. Ct. at 1293); and see Amdocs (Israel) Ltd. v. Openet Telecom, Inc., — F.3d — ,2016 WL 6440387 *9 (Fed. Cir. Nov. 1, 2016).

Adding generic computer parts and functions to a container does not elevate the claims to eligibility. Rather, we find that the steps of the claims, taken both individually and as an ordered combination, do not transform the nature of the claim into a patent-eligible application. See Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (citing Alice, 134 S. Ct. at 2358; Mayo, 132 S. Ct. at 1294) (“Limiting the field of use of the abstract idea to a particular existing technological environment does not render any claims any less abstract.”)

BUYSAFE

Specifically, these networking operations are not steps of a real-world economic practice or other similar abstract idea performed in a computer network. See, e.g., BuySafe, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (noting that the "claims [in that case] are squarely about creating a contractual relationship"—an abstract idea). Instead, the present claims expressly limit the settings to a subscriber to a network and requires processing these settings in a particular way to affect the network's service. It is a challenge particular to networking.

MORSE

The abstract idea exception prevents patenting a result where “it matters not by what process or machinery the result is accomplished.” O’Reilly v. Morse, 56 U.S. 62, 113 (1853). 

Analysis Of Subject Matter Eligibility

MAYO

Section 101 states that "[w]hoever invents or discovers any new and useful process ... may obtain a patent therefor." However, the "Court has long held that this provision contains an important implicit exception. '[L]aws of nature, natural phenomena, and abstract ideas' are not patentable.' Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012). In addition, "to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words 'apply it."' Id. at 1294. Furthermore, a "'new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made."' Id. at 1298 (quoting Diamond v. Diehr, 450 U.S. 175, 188 (1981)).

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);

Diehr, 450 U.S. at 187 (“A claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.”).

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.’”)

ALLAPPAT, ULTRAMERCIAL

We agree with Appellant that the claim language requiring programs that enable a processor to carry out specific functions defines structural limitations, and is not merely a recitation of intended use. See Ultramercial,Inc. v. Hulu, LLC, 722 F.3d 1335, 1348 (Fed. Cir. 2013) (“[P]rogramming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.”) (quoting In re Alappat, 33 F.3d 1526, 1544 (Fed. Cir. 1994)).

See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. Nov. 14, 2014) (holding that although the machine-or-transformation test is not the sole test governing § 101 analyses, it “can provide a ‘useful clue’ in the second step of the Alice framework”).

2106.04(d) Integration of a Judicial Exception Into A Practical Application [R-10.2019]

I. RELEVANT CONSIDERATIONS FOR EVALUATING WHETHER ADDITIONAL ELEMENTS INTEGRATE A JUDICIAL EXCEPTION INTO A PRACTICAL APPLICATION 

II. HOW TO EVALUATE WHETHER THE ADDITIONAL ELEMENTS INTEGRATE THE JUDICIAL EXCEPTION INTO A PRACTICAL APPLICATION 

III. EXAMPLES OF HOW THE OFFICE EVALUATES WHETHER THE CLAIM AS A WHOLE INTEGRATES THE JUDICIAL EXCEPTION INTO A PRACTICAL APPLICATION 

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

2106.04(d)(1) Evaluating Improvements in the Functioning of a Computer, or an Improvement to Any Other Technology or Technical Field in Step 2A Prong Two [R-10.2019]

I. EVALUATING WHETHER THE ADDITIONAL ELEMENTS ARE WELL-UNDERSTOOD, ROUTINE, CONVENTIONAL ACTIVITY 

II. ELEMENTS THAT THE COURTS HAVE RECOGNIZED AS WELL-UNDERSTOOD, ROUTINE, CONVENTIONAL ACTIVITY IN PARTICULAR FIELDS 

2106.04(d)(2) Particular Treatment and Prophylaxis in Step 2A Prong Two

• a. The Particularity Or Generality Of The Treatment Or Prophylaxis

• b. Whether The Limitation(s) Have More Than A Nominal Or Insignificant Relationship To The Exception(s)

2106.05 Eligibility Step 2B: Whether a Claim Amounts to Significantly More [R-10.2019]

I. THE SEARCH FOR AN INVENTIVE CONCEPT 

A. Relevant Considerations For Evaluating Whether Additional Elements Amount To An Inventive Concept 

B. Examples Of How Courts Conduct The Search For An Inventive Concept 

2106.05(a) Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field [R-10.2019]

I. IMPROVEMENTS TO COMPUTER FUNCTIONALITY 

II. IMPROVEMENTS TO ANY OTHER TECHNOLOGY OR TECHNICAL FIELD 

2106.05(b) Particular Machine [R-10.2019]

I. THE PARTICULARITY OR GENERALITY OF THE ELEMENTS OF THE MACHINE OR APPARATUS 

“In cases involving a computer-implemented invention in which the inventor has invoked means-plus-function claiming, [the Federal Circuit] has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor.” EON Corp. IP Holdings LLC v. AT & T Mobility LLC, 785 F.3d 616, 621 (Fed. Cir. 2015) (quotation omitted). In other words, an algorithm is required to provide sufficient structure unless the function can be performed by any general purpose computer with no special programming. Id. 

II. WHETHER THE MACHINE OR APPARATUS IMPLEMENTS THE STEPS OF THE METHOD 

III. WHETHER ITS INVOLVEMENT IS EXTRA-SOLUTION ACTIVITY OR A FIELD-OF-USE 

2106.05(c) Particular Transformation [R-10.2019]

2106.05(d) Well-Understood, Routine, Conventional Activity [R-10.2019]

2106.05(e) Other Meaningful Limitations [R-10.2019]

2106.05(f) Mere Instructions To Apply An Exception [R-10.2019]

2106.05(g) Insignificant Extra-Solution Activity [R-10.2019]

2106.05(h) Field of Use and Technological Environment [R-10.2019]

2106.06 Streamlined Analysis [R-10.2019]

2106.06(a) Eligibility is Self Evident [R-08.2017]

2106.06(b) Clear Improvement to a Technology or to Computer Functionality [R-08.2017]

2106.07 Formulating and Supporting Rejections For Lack Of Subject Matter Eligibility [R-10.2019]

2106.07(a) Formulating a Rejection For Lack of Subject Matter Eligibility [R-10.2019]

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);

Diehr, 450 U.S. at 187 (“A claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.”).

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);

Diehr, 450 U.S. at 187 (“A claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.”).

(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);

Diehr, 450 U.S. at 187 (“A claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.”).

"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);

Diehr, 450 U.S. at 187 (“A claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.”).

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

MAYO, ALICE

The collection of a blood sample from a patient is a “well-understood, routine, conventional activity previously engaged in by researcher in the field” that is insufficient to transform an abstract idea into an eligible concept. See Mayo Collaborative Servs. v. Prometheus Labs, Inc., 132 S.Ct. at 1294-1298 (“Purely conventional or obvious‟ '[pre]-solution activity' is normally not sufficient to transform an unpatentable law of nature into a patent-eligible application of such a law.”); accord Perkinelmer, Inc. v. Intema Ltd., 2012 WL 5861658, *5 (Fed. Cir. 2012) (purely conventional “measuring” steps insufficient to make the claims reciting mental processes and natural laws patent-eligible).

In judging whether claim 12 falls within the excluded category of abstract ideas, we are guided in our analysis by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296–97 (2012)). In accordance with that framework, we first determine whether the claim is “directed to” a patent-ineligible abstract idea. If so, we then consider the elements of the claim — both individually and as an ordered combination — to assess whether the additional elements transform the nature of the claim into a patent-eligible application of the abstract idea. Id. This is a search for an “inventive concept” — an element or combination of elements sufficient to ensure that the claim amounts to “significantly more” than the abstract idea itself. Id.

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

III.   DETAILED GUIDANCE FOR USING THE INQUIRIES

IV.  SAMPLE ANALYSIS