Patent Subject Matter Eligibility

I.

TWO CRITERIA FOR SUBJECT MATTER ELIGIBILITY

First, the claimed invention must be to one of the four

statutory categories.

35 U.S.C. 101

defines the four categories of invention that

Congress deemed to be the appropriate subject matter of a patent: processes, machines,

manufactures and compositions of matter. The latter three categories define “things” or

“products” while the first category defines “actions” (i.e., inventions that consist of

a series of steps or acts to be performed). See

35 U.S.C. 100(b)

(“The term

‘process’ means process, art, or method, and includes a new use of a known process,

machine, manufacture, composition of matter, or material.”). See

MPEP §

2106.03

for detailed information on the four categories.

Second, the claimed invention also must qualify as

patent-eligible subject matter, i.e., the claim must not be directed to a judicial

exception unless the claim as a whole includes additional limitations amounting to

significantly more than the exception. The judicial exceptions (also called “judicially

recognized exceptions” or simply “exceptions”) are subject matter that the courts have

found to be outside of, or exceptions to, the four statutory categories of invention,

and are limited to abstract ideas, laws of nature and natural phenomena (including

products of nature).

Alice Corp. Pty. Ltd. v. CLS Bank Int'l,

573

U.S. 208, 216, 110 USPQ2d 1976, 1980 (2014) (citing

Ass'n for Molecular

Pathology v. Myriad Genetics, Inc.,

569 U.S. 576, 589, 106 USPQ2d 1972,

1979 (2013). See

MPEP § 2106.04

for detailed information

on the judicial exceptions.

Because abstract ideas, laws of nature, and natural

phenomenon "are the basic tools of scientific and technological work", the Supreme Court

has expressed concern that monopolizing these tools by granting patent rights may impede

innovation rather than promote it. See

Alice Corp.,

573 U.S. at 216,

110 USPQ2d at 1980;

Mayo Collaborative Servs. v. Prometheus Labs.,

Inc.,

566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012)

ideas, laws of nature, and natural

phenomenon "are the basic tools of scientific and technological work", the Supreme Court

has expressed concern that monopolizing these tools by granting patent rights may impede

innovation rather than promote it. See

Alice Corp.,

573 U.S. at 216,

110 USPQ2d at 1980;

Mayo Collaborative Servs. v. Prometheus Labs.,

Inc.,

566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012). However, the Court has

also emphasized that an invention is not considered to be ineligible for patenting

simply because it involves a judicial exception.

Alice Corp.,

573

U.S. at 217, 110 USPQ2d at 1980-81 (citing

Diamond v. Diehr,

450 U.S.

175, 187, 209 USPQ 1, 8 (1981)). See also

Thales Visionix Inc. v. United

States,

850 F.3d. 1343, 1349, 121 USPQ2d 1898, 1902 (Fed. Cir. 2017) (“That

a mathematical equation is required to complete the claimed method and system does not

doom the claims to abstraction.”). Accordingly, the Court has said that integration of

an abstract idea, law of nature or natural phenomenon into a practical application may

be eligible for patent protection. See,

e.g., Alice,

573 U.S. at 217,

110 USPQ2d at 1981 (explaining that “in applying the

§101

exception, we must distinguish

between patents that claim the ‘buildin[g] block[s]’ of human ingenuity and those that

integrate the building blocks into something more” (quoting

Mayo,

566

U.S. at 89, 110 USPQ2d at 1971) and stating that

Mayo

“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”);

Mayo,

566 U.S. at 80, 84, 101 USPQ2d at 1969, 1971 (noting that

the Court in

Diamond v. Diehr

found “the overall process patent

eligible because of the way the additional steps of the process integrated the equation

into the process as a whole,” but the Court in

Gottschalk v

aws of nature, natural phenomena, and

abstract ideas from those that claim patent-eligible applications of those concepts”);

Mayo,

566 U.S. at 80, 84, 101 USPQ2d at 1969, 1971 (noting that

the Court in

Diamond v. Diehr

found “the overall process patent

eligible because of the way the additional steps of the process integrated the equation

into the process as a whole,” but the Court in

Gottschalk v. Benson

“held that simply implementing a mathematical principle on a physical machine, namely a

computer, was not a patentable application of that principle”);

Bilski v.

Kappos,

561 U.S. 593, 611, 95 USPQ2d 1001, 1010 (2010)

(“

Diehr

explained that while an abstract idea, law of nature, or

mathematical formula could not be patented, ‘an application of a law of nature or

mathematical formula to a known structure or process may well be deserving of patent

protection.’” (quoting

Diamond v. Diehr,

450 U.S. 175, 187, 209 USPQ

1, 8 (1981)) (emphasis in original));

Diehr,

450 U.S. at 187, 192

n.14, 209 USPQ at 10 n.14 (explaining that the process in

Parker v.

Flook

was ineligible not because it contained a mathematical formula, but

because it did not provide an application of the formula). See

Diamond v.

Diehr,

450 U.S. 175, 209 USPQ 1 (1981);

Gottschalk v.

Benson,

409 U.S. 63, 175 USPQ 673 (1972);

Parker v.

Flook,

437 U.S. 584, 198 USPQ 193 (1978).

The Supreme Court in

Mayo

laid out a

framework for determining whether an applicant is seeking to patent a judicial exception

itself, or a patent-eligible application of the judicial exception. See

Alice

Corp.,

573 U.S. at 217-18, 110 USPQ2d at 1981 (citing

Mayo

, 566 U.S. 66, 101 USPQ2d 1961). This framework, which is

referred to as the

Mayo

test or the

Alice/Mayo

test, is discussed in further detail in subsection III, below. The first part of the

Mayo

test is to determine whether the claims are directed to an

abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception).

Id

Corp.,

573 U.S. at 217-18, 110 USPQ2d at 1981 (citing

Mayo

, 566 U.S. 66, 101 USPQ2d 1961). This framework, which is

referred to as the

Mayo

test or the

Alice/Mayo

test, is discussed in further detail in subsection III, below. The first part of the

Mayo

test is to determine whether the claims are directed to an

abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception).

Id.

If the claims are directed to a judicial exception, the second

part of the

Mayo

test is to determine whether the claim recites

additional elements that amount to significantly more than the judicial exception.

Id.

citing

Mayo,

566 U.S. at 72-73, 101 USPQ2d

at 1966). The Supreme Court has described the second part of the test as the "search for

an 'inventive concept'".

Alice Corp.,

573 U.S. at 217-18, 110 USPQ2d

at 1981 (citing

Mayo

, 566 U.S. at 72-73, 101 USPQ2d at 1966).

The

Alice/Mayo

two-part test is the

only test that should be used to evaluate the eligibility of claims under examination.

While the machine-or-transformation test is an important clue to eligibility, it should

not be used as a separate test for eligibility. Instead it should be considered as part

of the "integration" determination or "significantly more" determination articulated in

the

Alice/Mayo

test.

Bilski v. Kappos,

561 U.S.

593, 605, 95 USPQ2d 1001, 1007 (2010). See

MPEP §

2106.04(d)

for more information about evaluating whether a

claim reciting a judicial exception is integrated into a practical application and

MPEP §

2106.05(b)

and

MPEP §

2106.05(c)

for more information about how the

machine-or-transformation test fits into the

Alice/Mayo

two-part

framework. Likewise, eligibility should not be evaluated based on whether the claim

recites a "useful, concrete, and tangible result,"

State Street Bank

,

149 F.3d 1368, 1374, 47 USPQ2d 1596, 1602 (Fed. Cir. 1998) (quoting

In re

Alappat,

33 F.3d 1526, 1544, 31 USPQ2d 1545, 1557 (Fed. Cir. 1994)), as

this test has been superseded.

In re Bilski,

545 F.3d 943, 959-60, 88

USPQ2d 1385, 1394-95 (Fed

art

framework. Likewise, eligibility should not be evaluated based on whether the claim

recites a "useful, concrete, and tangible result,"

State Street Bank

,

149 F.3d 1368, 1374, 47 USPQ2d 1596, 1602 (Fed. Cir. 1998) (quoting

In re

Alappat,

33 F.3d 1526, 1544, 31 USPQ2d 1545, 1557 (Fed. Cir. 1994)), as

this test has been superseded.

In re Bilski,

545 F.3d 943, 959-60, 88

USPQ2d 1385, 1394-95 (Fed. Cir. 2008) (

en banc

), aff'd by

Bilski v. Kappos,

561 U.S. 593, 95 USPQ2d 1001 (2010). See also

TLI Communications LLC v. AV Automotive LLC,

823 F.3d 607, 613,

118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (“It is well-settled that mere recitation of

concrete, tangible components is insufficient to confer patent eligibility to an

otherwise abstract idea”). The programmed computer or “special purpose computer” test of

In re Alappat

, 33 F.3d 1526, 31 USPQ2d 1545 (Fed. Cir. 1994)

(

i.e.

, the rationale that an otherwise ineligible algorithm or

software could be made patent-eligible by merely adding a generic computer to the claim

for the “special purpose” of executing the algorithm or software) was also superseded by

the Supreme Court’s

Bilski

and

Alice Corp.

decisions.

Eon Corp. IP Holdings LLC v. AT&T Mobility LLC,

785

F.3d 616, 623, 114 USPQ2d 1711, 1715 (Fed. Cir. 2015) (“[W]e note that

Alappat

has been superseded by

Bilski,

561 U.S.

at 605–06, and

Alice Corp. v. CLS Bank Int’l,

573 U.S. 208, 110

USPQ2d 1976 (2014)”);

Intellectual Ventures I LLC v. Capital One Bank (USA),

N.A.,

792 F.3d 1363, 1366, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015) (“An

abstract idea does not become nonabstract by limiting the invention to a particular

field of use or technological environment, such as the Internet [or] a computer”).

Lastly, eligibility should not be evaluated based on whether the claimed invention has

utility, because “[u]tility is not the test for patent-eligible subject matter.”

Genetic Techs. Ltd. v. Merial LLC,

818 F.3d 1369, 1380, 118 USPQ2d

1541, 1548 (Fed. Cir. 2016).

Examiners are reminded that

35 U.S.C

to a particular

field of use or technological environment, such as the Internet [or] a computer”).

Lastly, eligibility should not be evaluated based on whether the claimed invention has

utility, because “[u]tility is not the test for patent-eligible subject matter.”

Genetic Techs. Ltd. v. Merial LLC,

818 F.3d 1369, 1380, 118 USPQ2d

1541, 1548 (Fed. Cir. 2016).

Examiners are reminded that

35 U.S.C. 101

is

not the sole tool for determining patentability;

35 U.S.C. 112

,

35 U.S.C. 102

, and

35 U.S.C.

103

will provide additional tools for ensuring that the claim

meets the conditions for patentability. As the Supreme Court made clear in

Bilski,

561 U.S. at 602, 95 USPQ2d at 1006:

The

§ 101

patent-eligibility inquiry

is only a threshold test. Even if an invention qualifies as a process, machine,

manufacture, or composition of matter, in order to receive the Patent Act’s

protection the claimed invention must also satisfy ‘‘the conditions and requirements

of this title.’’

§

101

. Those requirements include that the invention be novel,

see

§

102

, nonobvious, see

§ 103

, and fully and particularly

described, see

§

112

.

II.

ESTABLISH BROADEST REASONABLE INTERPRETATION OF CLAIM AS A WHOLE

It is essential that the broadest reasonable interpretation

(BRI) of the claim be established prior to examining a claim for eligibility. The BRI

sets the boundaries of the coverage sought by the claim and will influence whether the

claim seeks to cover subject matter that is beyond the four statutory categories or

encompasses subject matter that falls within the exceptions. See

MyMail, Ltd.

v. ooVoo, LLC,

934 F.3d 1373, 1379, 2019 USPQ2d 305789 (Fed. Cir. 2019)

(“Determining patent eligibility requires a full understanding of the basic character of

the claimed subject matter”), citing

Bancorp Servs., LLC v. Sun Life Assurance

Co. of Can. (U.S.),

687 F.3d 1266, 1273-74, 103 USPQ2d 1425, 1430 (Fed.

Cir. 2012);

In re Bilski,

545 F.3d 943, 951, 88 USPQ2d 1385, 1388

(Fed. Cir. 2008) (

en banc

), aff'd by

Bilski v.

Kappos,

561 U.S

SPQ2d 305789 (Fed. Cir. 2019)

(“Determining patent eligibility requires a full understanding of the basic character of

the claimed subject matter”), citing

Bancorp Servs., LLC v. Sun Life Assurance

Co. of Can. (U.S.),

687 F.3d 1266, 1273-74, 103 USPQ2d 1425, 1430 (Fed.

Cir. 2012);

In re Bilski,

545 F.3d 943, 951, 88 USPQ2d 1385, 1388

(Fed. Cir. 2008) (

en banc

), aff'd by

Bilski v.

Kappos,

561 U.S. 593, 95 USPQ2d 1001 (2010) (“claim construction … is an

important first step in a

§ 101

analysis”). Evaluating

eligibility based on the BRI also ensures that patent eligibility under

35 U.S.C.

101

does not depend simply on the draftsman’s art.

Alice,

573 U.S. 208, 224, 110 USPQ2d at 1984, 1985 (citing

Parker v. Flook,

437 U.S. 584, 593, 198 USPQ 193, 198 (1978) and

Mayo,

566 U.S. at 72, 101 USPQ2d at 1966). See

MPEP §

2111

for more information about determining the BRI.

Claim interpretation affects the evaluation of both

criteria for eligibility. For example, in

Mentor Graphics v. EVE-USA,

Inc.,

851 F.3d 1275, 112 USPQ2d 1120 (Fed. Cir. 2017), claim interpretation

was crucial to the court’s determination that claims to a “machine-readable medium” were

not to a statutory category. In

Mentor Graphics,

the court

interpreted the claims in light of the specification, which expressly defined the medium

as encompassing “any data storage device” including random-access memory and carrier

waves. Although random-access memory and magnetic tape are statutory media, carrier

waves are not because they are signals similar to the transitory, propagating signals

held to be non-statutory in

Nuijten

. 851 F.3d at 1294, 112 USPQ2d at

1133 (citing

In re Nuijten,

500 F.3d 1346, 84 USPQ2d 1495 (Fed. Cir.

2007)). Accordingly, because the BRI of the claims covered both subject matter that

falls within a statutory category (the random-access memory), as well as subject matter

that does not (the carrier waves), the claims as a whole were not to a statutory

category and thus failed the first criterion for eligibility

94, 112 USPQ2d at

1133 (citing

In re Nuijten,

500 F.3d 1346, 84 USPQ2d 1495 (Fed. Cir.

2007)). Accordingly, because the BRI of the claims covered both subject matter that

falls within a statutory category (the random-access memory), as well as subject matter

that does not (the carrier waves), the claims as a whole were not to a statutory

category and thus failed the first criterion for eligibility.

With regard to the second criterion for eligibility, the

Alice/Mayo

test, claim interpretation can affect the first part of

the test (whether the claims are directed to a judicial exception). For example, the

patentee in

Synopsys

argued that the claimed methods of logic circuit

design were intended to be used in conjunction with computer-based design tools, and

were thus not mental processes.

Synopsys, Inc. v. Mentor Graphics

Corp.,

839 F.3d 1138, 1147-49, 120 USPQ2d 1473, 1480-81 (Fed. Cir. 2016).

The court disagreed, because it interpreted the claims as encompassing nothing other

than pure mental steps (and thus falling within an abstract idea grouping) because the

claims did not include any limitations requiring computer implementation. In contrast,

the patentee in

Enfish

argued that its claimed self-referential table

for a computer database was an improvement in an existing technology and thus not

directed to an abstract idea.

Enfish, LLC v. Microsoft Corp.,

822

F.3d 1327, 1336-37, 118 USPQ2d 1684, 1689-90 (Fed. Cir. 2016). The court agreed with the

patentee, based on its interpretation of the claimed “means for configuring” under

35 U.S.C.

112(f)

as requiring a four-step algorithm that achieved the

improvements, as opposed to merely any form of storing tabular data. See also

McRO, Inc. v. Bandai Namco Games America, Inc.

837 F.3d 1299,

1314, 120 USPQ2d 1091, 1102 (Fed. Cir. 2016) (the claim’s construction incorporated

rules of a particular type that improved an existing technological process)

“means for configuring” under

35 U.S.C.

112(f)

as requiring a four-step algorithm that achieved the

improvements, as opposed to merely any form of storing tabular data. See also

McRO, Inc. v. Bandai Namco Games America, Inc.

837 F.3d 1299,

1314, 120 USPQ2d 1091, 1102 (Fed. Cir. 2016) (the claim’s construction incorporated

rules of a particular type that improved an existing technological process). Claim

interpretation can also affect the second part of the

Alice/Mayo

test

(whether the claim recites additional elements that amount to significantly more than

the judicial exception). For example, in

Amdocs (Israel) Ltd. v. Openet

Telecom, Inc.,

where the court relied on the construction of the term

“enhance” (to require application of a number of field enhancements in a distributed

fashion) to determine that the claim entails an unconventional technical solution to a

technological problem. 841 F.3d 1288, 1300-01, 120 USPQ2d 1527, 1537 (Fed. Cir. 2016).

III.

SUMMARY OF ANALYSIS AND FLOWCHART

Examiners should determine whether a claim satisfies the

criteria for subject matter eligibility by evaluating the claim in accordance with the

following flowchart. The flowchart illustrates the steps of the subject matter

eligibility analysis for products and processes that are 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.

As shown in the flowchart, Step 1 relates to the

statutory categories and ensures that the first criterion is met by confirming that the

claim falls within one of the four statutory categories of invention. See

MPEP §

2106.03

for more information on Step 1

will still achieve

the same end result. The analysis set forth herein promotes examination efficiency and

consistency across all technologies.

As shown in the flowchart, Step 1 relates to the

statutory categories and ensures that the first criterion is met by confirming that the

claim falls within one of the four statutory categories of invention. See

MPEP §

2106.03

for more information on Step 1. Step 2, which is the

Supreme Court’s

Alice/Mayo

test, is a two-part test to identify

claims that are directed to a judicial exception (Step 2A) and to then evaluate if

additional elements of the claim provide an inventive concept (Step 2B) (also called

"significantly more" than the recited judicial exception). See

MPEP §

2106.04

for more information on Step 2A and

MPEP §

2106.05

for more information on Step 2B.

The flowchart also shows three pathways (A, B, and C) to

eligibility:

Pathway A: Claims taken as a whole that fall within

a statutory category (Step 1: YES) and, which may or may not recite a judicial

exception, but whose eligibility is self-evident can be found eligible at Pathway

A using a streamlined analysis. See

MPEP §

2106.06

for more information on this pathway and on

self-evident eligibility.

Pathway B: Claims taken as a whole that fall within

a statutory category (Step 1: YES) and are not directed to a judicial exception

(Step 2A: NO) are eligible at Pathway B. These claims do not need to go to Step

2B. See

MPEP § 2106.04

for more

information about this pathway and Step 2A.

Pathway C: Claims taken as a whole that fall

within a statutory category (Step 1: YES), are directed to a judicial exception

(Step 2A: YES), and recite additional elements either individually or in an

ordered combination that amount to significantly more than the judicial exception

(Step 2B: YES) are eligible at Pathway C. See

MPEP §

2106.05

for more information about this pathway and Step

2B

2A.

Pathway C: Claims taken as a whole that fall

within a statutory category (Step 1: YES), are directed to a judicial exception

(Step 2A: YES), and recite additional elements either individually or in an

ordered combination that amount to significantly more than the judicial exception

(Step 2B: YES) are eligible at Pathway C. See

MPEP §

2106.05

for more information about this pathway and Step

2B.

Claims that could have been found eligible at Pathway A

(streamlined analysis), but are subjected to further analysis at Steps 2A or Step 2B,

will ultimately be found eligible at Pathways B or C. Thus, if the examiner is uncertain

about whether a streamlined analysis is appropriate, the examiner is encouraged to

conduct a full eligibility analysis. However, if the claim is not found eligible at any

of Pathways A, B or C, the claim is patent ineligible and should be rejected under

35 U.S.C.

101

.

Regardless of whether a rejection under

35 U.S.C. 101

is

made, a complete examination should be made for every claim under each of the other

patentability requirements:

35 U.S.C. 102

,

103

,

112

, and

101

(utility, inventorship and

double patenting) and non-statutory double patenting.

MPEP §

2103

.