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2106

2106 Patent Subject Matter Eligibility [R-6]

I.   THE FOUR CATEGORIES OF STATUTORY SUBJECT MATTER


Step 1: Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of 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).
 
BILSKI
 
The claim does not involve the use of any machine or apparatus. Further, the claim does not involve the transformation of any physical objects or substances. As the court in Bilski noted, “[p]urported transformations or manipulations simply of public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances.” 545 F.3d at 963.
 
“[The Supreme] 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. The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible ‘process.’” See Bilski v. Kappos, No. 08-964, 2010 WL 2555192, at *8 (June 28, 2010) (majority slip op. at Part–II–B1).
    
The law in the area of patent-eligible subject matter for process claims has recently been clarified by the Supreme Court in Bilski v. Kappos, 130 S. Ct. 3218, No. 08-964, 2010 WL 2555192 (U.S. June 28, 2010). The Court held that the term “process” as used in § 101, does not categorically exclude business methods. Id. at *9.

The Court is unaware of any argument that the “ordinary, contemporary, common meaning,”
Diehr, supra, at 182, of “method” excludes business methods. Nor is it clear how far a prohibition on business patents would reach, and whether it would exclude technologies for conducting a business more efficiently.
 
“At the same time, some business method patents raise special problems in terms of vagueness and suspect validity.” Id. (citing eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 397 (2006)) (Kennedy, J., concurring).

In searching for a limiting principle, this Court’s precedents on the unpatentibility of abstract ideas provide useful tools. See infra 12-15. Indeed, if the Court of Appeals were to succeed in defining a narrower category or class of patent applications that claim to instruct how business should be conducted, and then rule that the category is unpatentable because, for instance, it represents an attempt to patent abstract ideas, this conclusion might well be in accord with controlling precedent.
Id.
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).

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.”).
 
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").

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.   JUDICIAL EXCEPTIONS TO THE FOUR CATEGORIES

Step 2: Does the claim wholly embrace a judicially recognized exception, which includes laws of nature, natural phenomena, and abstract ideas? 

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.

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);
 
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”).

(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

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


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