Eligibility Step 2A: Whether a Claim is Directed to a Judicial Exception

I.

JUDICIAL EXCEPTIONS

Determining that a claim falls within one of the four

enumerated categories of patentable subject matter recited in

35 U.S.C. 101

(i.e., process, machine, manufacture, or composition of matter) in Step 1 does not

end the eligibility analysis, because claims directed to nothing more than abstract

ideas (such as a mathematical formula or equation), natural phenomena, and laws of

nature are not eligible for patent protection.

Diamond v. Diehr,

450 U.S. 175, 185, 209 USPQ 1, 7 (1981).

Alice Corp. Pty. Ltd. v. CLS Bank

Int'l,

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

Association for Molecular Pathology v. Myriad Genetics, Inc.,

569 U.S. 576, 589, 106 USPQ2d 1972, 1979 (2013));

Diamond v.

Chakrabarty,

447 U.S. 303, 309, 206 USPQ 193, 197 (1980);

Parker v. Flook,

437 U.S. 584, 589, 198 USPQ 193, 197 (1978);

Gottschalk v. Benson,

409 U.S. 63, 67-68, 175 USPQ 673, 675

(1972). See also

Bilski v. Kappos,

561 U.S. 593, 601, 95 USPQ2d

1001, 1005-06 (2010) (“The Court’s precedents provide three specific exceptions to

§

101's

broad patent-eligibility principles: ‘laws of nature,

physical phenomena, and abstract ideas’”) (quoting

Chakrabarty,

447 U.S. at 309, 206 USPQ at 197 (1980)).

In addition to the terms “laws of nature,” “natural

phenomena,” and “abstract ideas,” judicially recognized exceptions have been

described using various other terms, including “physical phenomena,” “products of

nature,” “scientific principles,” “systems that depend on human intelligence alone,”

“disembodied concepts,” “mental processes,” and “disembodied mathematical algorithms

and formulas.” It should be noted that there are no bright lines between the types of

exceptions, and that many of the concepts identified by the courts as exceptions can

fall under several exceptions. For example, mathematical formulas are considered to

be a judicial exception as they express a scientific truth, but have been labelled by

the courts as both abstract ideas and laws of nature

rithms

and formulas.” It should be noted that there are no bright lines between the types of

exceptions, and that many of the concepts identified by the courts as exceptions can

fall under several exceptions. For example, mathematical formulas are considered to

be a judicial exception as they express a scientific truth, but have been labelled by

the courts as both abstract ideas and laws of nature. Likewise, “products of nature”

are considered to be an exception because they tie up the use of naturally occurring

things, but have been labelled as both laws of nature and natural phenomena. Thus, it

is sufficient for this analysis for the examiner to identify that the claimed concept

(the specific claim limitation(s) that the examiner believes may recite an exception)

aligns with at least one judicial exception.

The Supreme Court has explained that the judicial

exceptions reflect the Court’s view that abstract ideas, laws of nature, and natural

phenomena are “the basic tools of scientific and technological work”, and are thus

excluded from patentability because “monopolization of those tools through the grant

of a patent might tend to impede innovation more than it would tend to promote it.”

Alice Corp.,

573 U.S. at 216, 110 USPQ2d at 1980 (quoting

Myriad,

569 U.S. at 589, 106 USPQ2d at 1978 and

Mayo

Collaborative Servs. v. Prometheus Labs. Inc.,

566 U.S. 66, 71, 101

USPQ2d 1961, 1965 (2012)). The Supreme Court’s concern that drives this “exclusionary

principle” is pre-emption.

Alice Corp.,

573 U.S. at 216, 110

USPQ2d at 1980. The Court has held that a claim may not preempt abstract ideas, laws

of nature, or natural phenomena, even if the judicial exception is narrow (e.g., a

particular mathematical formula such as the Arrhenius equation). See,

e.g.,

Mayo,

566 U.S. at 79-80, 86-87, 101 USPQ2d at 1968-69, 1971 (claims

directed to “narrow laws that may have limited applications” held ineligible);

Flook,

437 U.S

d at 1980. The Court has held that a claim may not preempt abstract ideas, laws

of nature, or natural phenomena, even if the judicial exception is narrow (e.g., a

particular mathematical formula such as the Arrhenius equation). See,

e.g.,

Mayo,

566 U.S. at 79-80, 86-87, 101 USPQ2d at 1968-69, 1971 (claims

directed to “narrow laws that may have limited applications” held ineligible);

Flook,

437 U.S. at 589-90, 198 USPQ at 197 (claims that did not

“wholly preempt the mathematical formula” held ineligible). This is because such a

patent would “in practical effect [] be a patent on the [abstract idea, law of nature

or natural phenomenon] itself.”

Benson,

409 U.S. at 71- 72, 175

USPQ at 676. The concern over preemption was expressed as early as 1852. See

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.”).

While preemption is the concern underlying the

judicial exceptions, it is not a standalone test for determining eligibility.

Rapid Litig. Mgmt. v. CellzDirect, Inc.,

827 F.3d 1042, 1052,

119 USPQ2d 1370, 1376 (Fed. Cir. 2016). Instead, questions of preemption are inherent

in and resolved by the two-part framework from

Alice Corp. and

Mayo

(the

Alice/Mayo

test referred to by the Office

as Steps 2A and 2B).

Synopsys, Inc. v. Mentor Graphics Corp.,

839

F.3d 1138, 1150, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016);

Ariosa Diagnostics,

Inc. v. Sequenom, Inc.,

788 F.3d 1371, 1379, 115 USPQ2d 1152, 1158 (Fed.

Cir. 2015). It is necessary to evaluate eligibility using the

Alice/Mayo

test, because while a preemptive claim may be

ineligible, the absence of complete preemption does not demonstrate that a claim is

eligible.

Diamond v. Diehr,

450 U.S. 175, 191-92 n.14, 209 USPQ 1,

10-11 n.14 (1981) (“We rejected in

Flook

the argument that because

all possible uses of the mathematical formula were not pre-empted, the claim should

be eligible for patent protection”)

g the

Alice/Mayo

test, because while a preemptive claim may be

ineligible, the absence of complete preemption does not demonstrate that a claim is

eligible.

Diamond v. Diehr,

450 U.S. 175, 191-92 n.14, 209 USPQ 1,

10-11 n.14 (1981) (“We rejected in

Flook

the argument that because

all possible uses of the mathematical formula were not pre-empted, the claim should

be eligible for patent protection”). See also

Synopsys v. Mentor

Graphics,

839 F.3d at 1150, 120 USPQ2d at 1483;

FairWarning IP,

LLC v. Iatric Sys., Inc.,

839 F.3d 1089, 1098, 120 USPQ2d 1293, 1299

(Fed. Cir. 2016);

Intellectual Ventures I LLC v. Symantec Corp.,

838 F.3d 1307, 1320-21, 120 USPQ2d 1353, 1362 (Fed. Cir. 2016);

Sequenom,

788 F.3d at 1379, 115 USPQ2d at 1158. Several Federal

Circuit decisions, however, have noted the absence of preemption when finding claims

eligible under the

Alice/Mayo

test.

McRO, Inc. v. Bandai

Namco Games Am. Inc.,

837 F.3d 1299, 1315, 120 USPQ2d 1091, 1102-03

(Fed. Cir. 2016);

Rapid Litig. Mgmt. v. CellzDirect, Inc.,

827

F.3d 1042, 1052, 119 USPQ2d 1370, 1376 (Fed. Cir. 2016);

BASCOM Global

Internet v. AT&T Mobility, LLC,

827 F.3d 1341, 1350-52, 119 USPQ2d

1236, 1243-44 (Fed. Cir. 2016).

The Supreme Court’s decisions make it clear that

judicial exceptions need not be old or long-prevalent, and that even newly discovered

or novel judicial exceptions are still exceptions. For example, the mathematical

formula in

Flook,

the laws of nature in

Mayo,

and the isolated DNA in

Myriad

were all novel or newly discovered,

but nonetheless were considered by the Supreme Court to be judicial exceptions

because they were “‘basic tools of scientific and technological work’ that lie beyond

the domain of patent protection.”

Myriad,

569 U.S. 576, 589, 106

USPQ2d at 1976, 1978 (noting that

Myriad

discovered the BRCA1 and

BRCA1 genes and quoting

Mayo,

566 U.S. 71, 101 USPQ2d at 1965);

Flook,

437 U.S. at 591-92, 198 USPQ2d at 198 (“the novelty of

the mathematical algorithm is not a determining factor at all”);

Mayo,

566 U.S

asic tools of scientific and technological work’ that lie beyond

the domain of patent protection.”

Myriad,

569 U.S. 576, 589, 106

USPQ2d at 1976, 1978 (noting that

Myriad

discovered the BRCA1 and

BRCA1 genes and quoting

Mayo,

566 U.S. 71, 101 USPQ2d at 1965);

Flook,

437 U.S. at 591-92, 198 USPQ2d at 198 (“the novelty of

the mathematical algorithm is not a determining factor at all”);

Mayo,

566 U.S. 73-74, 78, 101 USPQ2d 1966, 1968 (noting that

the claims embody the researcher's discoveries of laws of nature). The Supreme

Court’s cited rationale for considering even “just discovered” judicial exceptions as

exceptions stems from the concern that “without this exception, there would be

considerable danger that the grant of patents would ‘tie up’ the use of such tools

and thereby ‘inhibit future innovation premised upon them.’”

Myriad,

569 U.S. at 589, 106 USPQ2d at 1978-79 (quoting

Mayo,

566 U.S. at 86, 101 USPQ2d at 1971). See also

Myriad,

569 U.S. at 591, 106 USPQ2d at 1979 (“Groundbreaking,

innovative, or even brilliant discovery does not by itself satisfy the

§101

inquiry.”). The Federal Circuit has also applied this

principle, for example, when holding a concept of using advertising as an exchange or

currency to be an abstract idea, despite the patentee’s arguments that the concept

was “new”.

Ultramercial, Inc. v. Hulu, LLC,

772 F.3d 709, 714-15,

112 USPQ2d 1750, 1753-54 (Fed. Cir. 2014).

Cf. Synopsys, Inc. v. Mentor

Graphics Corp.,

839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir.

2016) (“a

new

abstract idea is still an abstract

idea”) (emphasis in original).

For a detailed discussion of abstract ideas, see

MPEP

§ 2106.04(a)

; for a detailed discussion of laws of nature,

natural phenomena and products of nature, see

MPEP §

2106.04(b)

.

II

USPQ2d 1750, 1753-54 (Fed. Cir. 2014).

Cf. Synopsys, Inc. v. Mentor

Graphics Corp.,

839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir.

2016) (“a

new

abstract idea is still an abstract

idea”) (emphasis in original).

For a detailed discussion of abstract ideas, see

MPEP

§ 2106.04(a)

; for a detailed discussion of laws of nature,

natural phenomena and products of nature, see

MPEP §

2106.04(b)

.

II.

ELIGIBILITY STEP 2A: WHETHER A CLAIM

IS DIRECTED TO A JUDICIAL EXCEPTION

As described in

MPEP § 2106

,

subsection III, Step 2A of the Office’s eligibility analysis is the first part of the

Alice/Mayo

test,

i.e.,

the Supreme Court’s

“framework for distinguishing patents that claim laws of nature, natural phenomena,

and abstract ideas from those that claim patent-eligible applications of those

concepts.”

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

573 U.S. 208,

217-18, 110 USPQ2d 1976, 1981 (2014) (citing

Mayo,

566 U.S. at

77-78, 101 USPQ2d at 1967-68). Like the other steps in the eligibility analysis,

evaluation of this step should be made after determining what the inventor has

invented by reviewing the entire application disclosure and construing the claims in

accordance with their broadest reasonable interpretation. See

MPEP § 2106

,

subsection II for more information about the importance of understanding what has

been invented, and

MPEP § 2111

for more information about the broadest

reasonable interpretation.

Step 2A asks: Is the claim directed to a law of

nature, a natural phenomenon (product of nature) or an abstract idea? In the context

of the flowchart in

MPEP § 2106

, subsection III, Step 2A determines whether:

• The claim as a whole is not directed to a

judicial exception (Step 2A: NO) and thus is eligible at Pathway B, thereby

concluding the eligibility analysis; or

• The claim as a whole is directed to a

judicial exception (Step 2A: YES) and thus requires further analysis at Step 2B

to determine if the claim as a whole amounts to significantly more than the

exception itself.

A

p 2A determines whether:

• The claim as a whole is not directed to a

judicial exception (Step 2A: NO) and thus is eligible at Pathway B, thereby

concluding the eligibility analysis; or

• The claim as a whole is directed to a

judicial exception (Step 2A: YES) and thus requires further analysis at Step 2B

to determine if the claim as a whole amounts to significantly more than the

exception itself.

A.

Step 2A Is a Two-Prong Inquiry

Step 2A is a two-prong inquiry, in which examiners

determine in Prong One whether a claim recites a judicial exception, and if so, then

determine in Prong Two if the recited judicial exception is integrated into a

practical application of that exception. Together, these prongs represent the first

part of the

Alice/Mayo

test, which determines whether a claim is

directed to a judicial exception.

The flowchart below depicts the two-prong analysis

that is performed in order to answer the Step 2A inquiry.

1.

Prong One

Prong One asks does the claim recite an abstract

idea, law of nature, or natural phenomenon? In Prong One examiners evaluate

whether the claim recites a judicial exception, i.e. whether a law of nature,

natural phenomenon, or abstract idea is

set forth

or

described

in the claim. While the terms "set forth" and

"described" are thus both equated with "recite", their different language is

intended to indicate that there are two ways in which an exception can be recited

in a claim. For instance, the claims in

Diehr,

450 U.S. at 178

n. 2, 179 n.5, 191-92, 209 USPQ at 4-5 (1981), clearly stated a mathematical

equation in the repetitively calculating step, and the claims in

Mayo,

566 U.S. 66, 75-77, 101 USPQ2d 1961, 1967-68 (2012),

clearly stated laws of nature in the wherein clause, such that the claims “set

forth” an identifiable judicial exception. Alternatively, the claims in

Alice Corp.,

573 U.S

s in

Diehr,

450 U.S. at 178

n. 2, 179 n.5, 191-92, 209 USPQ at 4-5 (1981), clearly stated a mathematical

equation in the repetitively calculating step, and the claims in

Mayo,

566 U.S. 66, 75-77, 101 USPQ2d 1961, 1967-68 (2012),

clearly stated laws of nature in the wherein clause, such that the claims “set

forth” an identifiable judicial exception. Alternatively, the claims in

Alice Corp.,

573 U.S. at 218, 110 USPQ2d at 1982, described

the concept of intermediated settlement without ever explicitly using the words

“intermediated” or “settlement.”

The Supreme Court has held that Section 101

contains an implicit exception for ‘‘[l]aws of nature, natural phenomena, and

abstract ideas,’’ which are ‘‘the basic tools of scientific and technological

work.’’

Alice Corp.,

573 U.S. at 216, 110 USPQ2d at 1980

(citing

Mayo,

566 US at 71, 101 USPQ2d at 1965). Yet, the Court

has explained that ‘‘[a]t some level, all inventions embody, use, reflect, rest

upon, or apply laws of nature, natural phenomena, or abstract ideas,’’ and has

cautioned ‘‘to tread carefully in construing this exclusionary principle lest it

swallow all of patent law.’’

Id.

See also

Enfish, LLC

v. Microsoft Corp.,

822 F.3d 1327, 1335, 118 USPQ2d 1684, 1688 (Fed.

Cir. 2016) (“The ‘directed to’ inquiry, therefore, cannot simply ask whether the

claims involve a patent-ineligible concept, because essentially every routinely

patent-eligible claim involving physical products and actions involves a law of

nature and/or natural phenomenon”). Examiners should accordingly be careful to

distinguish claims that

recite

an exception (which require further

eligibility analysis) and claims that merely

involve

an exception

(which are eligible and do not require further eligibility analysis).

An example of a claim that recites a judicial

exception is “A machine comprising elements that operate in accordance with F=ma.”

This claim sets forth the principle that force equals mass times acceleration

(F=ma) and therefore recites a law of nature exception

er

eligibility analysis) and claims that merely

involve

an exception

(which are eligible and do not require further eligibility analysis).

An example of a claim that recites a judicial

exception is “A machine comprising elements that operate in accordance with F=ma.”

This claim sets forth the principle that force equals mass times acceleration

(F=ma) and therefore recites a law of nature exception. Because F=ma represents a

mathematical formula, the claim could alternatively be considered as reciting an

abstract idea. Because this claim recites a judicial exception, it requires

further analysis in Prong Two in order to answer the Step 2A inquiry. An example

of a claim that merely involves, or is based on, an exception is a claim to “A

teeter-totter comprising an elongated member pivotably attached to a base member,

having seats and handles attached at opposing sides of the elongated member.” This

claim is based on the concept of a lever pivoting on a fulcrum, which involves the

natural principles of mechanical advantage and the law of the lever. However, this

claim does not recite these natural principles and therefore is not directed to a

judicial exception (Step 2A: NO). Thus, the claim is eligible at Pathway B without

further analysis.

If the claim recites a judicial exception

(

i.e.,

an abstract idea enumerated in

MPEP §

2106.04(a)

, a law of nature, or a natural phenomenon),

the claim requires further analysis in Prong Two. If the claim does not recite a

judicial exception (a law of nature, natural phenomenon, or abstract idea), then

the claim cannot be directed to a judicial exception (Step 2A: NO), and thus the

claim is eligible at Pathway B without further analysis.

For more information how to determine if a claim

recites an abstract idea, see

MPEP §

2106.04(a)

. For more information on how to determine if

a claim recites a law of nature or natural phenomenon, see

MPEP §

2106.04(b)

. For more information on how to determine if

a claim recites a product of nature, see

MPEP §

2106.04(c)

.

2

, and thus the

claim is eligible at Pathway B without further analysis.

For more information how to determine if a claim

recites an abstract idea, see

MPEP §

2106.04(a)

. For more information on how to determine if

a claim recites a law of nature or natural phenomenon, see

MPEP §

2106.04(b)

. For more information on how to determine if

a claim recites a product of nature, see

MPEP §

2106.04(c)

.

2.

Prong Two

Prong Two asks does the claim recite additional

elements that integrate the judicial exception into a practical application? In

Prong Two, examiners evaluate whether the claim as a whole integrates the

exception into a practical application of that exception. If the additional

elements in the claim integrate the recited exception into a practical application

of the exception, then the claim is not directed to the judicial exception (Step

2A: NO) and thus is eligible at Pathway B. This concludes the eligibility

analysis. If, however, the additional elements do not integrate the exception into

a practical application, then the claim is directed to the recited judicial

exception (Step 2A: YES), and requires further analysis under Step 2B (where it

may still be eligible if it amounts to an ‘‘inventive concept’’). For more

information on how to evaluate whether a judicial exception is integrated into a

practical application, see

MPEP § 2106.04(d)(2)

.

The mere inclusion of a judicial exception such as

a mathematical formula (which is one of the mathematical concepts identified as an

abstract idea in

MPEP § 2106.04(a)

) in a claim

means that the claim “recites” a judicial exception under Step 2A Prong One.

However, mere recitation of a judicial exception does not mean that the claim is

“directed to” that judicial exception under Step 2A Prong Two. Instead, under

Prong Two, a claim that recites a judicial exception is not directed to that

judicial exception, if the claim as a whole integrates the recited judicial

exception into a practical application of that exception

eption under Step 2A Prong One.

However, mere recitation of a judicial exception does not mean that the claim is

“directed to” that judicial exception under Step 2A Prong Two. Instead, under

Prong Two, a claim that recites a judicial exception is not directed to that

judicial exception, if the claim as a whole integrates the recited judicial

exception into a practical application of that exception. Prong Two thus

distinguishes claims that are “directed to” the recited judicial exception from

claims that are not “directed to” the recited judicial exception.

Because a judicial exception is not eligible

subject matter,

Bilski,

561 U.S. at 601, 95 USPQ2d at 1005-06

(quoting

Chakrabarty,

447 U.S. at 309, 206 USPQ at 197 (1980)),

if there are no additional claim elements besides the judicial exception, or if

the additional claim elements merely recite another judicial exception, that is

insufficient to integrate the judicial exception into a practical application.

See,

e.g., RecogniCorp, LLC v. Nintendo Co.,

855 F.3d 1322,

1327, 122 USPQ2d 1377 (Fed. Cir. 2017) (“Adding one abstract idea (math) to

another abstract idea (encoding and decoding) does not render the claim

non-abstract”);

Genetic Techs. Ltd. v. Merial LLC,

818 F.3d

1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility “cannot be

furnished by the unpatentable law of nature (or natural phenomenon or abstract

idea) itself.”). For a claim reciting a judicial exception to be eligible, the

additional elements (if any) in the claim must “transform the nature of the claim”

into a patent-eligible application of the judicial exception,

Alice

Corp.,

573 U.S. at 217, 110 USPQ2d at 1981, either at Prong Two or in

Step 2B. If there are no additional elements in the claim, then it cannot be

eligible

on or abstract

idea) itself.”). For a claim reciting a judicial exception to be eligible, the

additional elements (if any) in the claim must “transform the nature of the claim”

into a patent-eligible application of the judicial exception,

Alice

Corp.,

573 U.S. at 217, 110 USPQ2d at 1981, either at Prong Two or in

Step 2B. If there are no additional elements in the claim, then it cannot be

eligible. In such a case, after making the appropriate rejection (see

MPEP § 2106.07

for more information on formulating a

rejection for lack of eligibility), it is a best practice for the examiner to

recommend an amendment, if possible, that would resolve eligibility of the claim.

B.

Evaluating Claims Reciting Multiple Judicial

Exceptions

A claim may recite multiple judicial exceptions.

For example, claim 4 at issue in

Bilski v. Kappos,

561 U.S.

593, 95 USPQ2d 1001 (2010) recited two abstract ideas, and the claims at issue in

Mayo Collaborative Servs. v. Prometheus Labs. Inc.,

566 U.S.

66, 101 USPQ2d 1961 (2012) recited two laws of nature. However, these claims were

analyzed by the Supreme Court in the same manner as claims reciting a single

judicial exception, such as those in

Alice Corp.,

573 U.S. 208,

110 USPQ2d 1976.

During examination, examiners should apply the

same eligibility analysis to all claims regardless of the number of exceptions

recited therein. Unless it is clear that a claim recites distinct exceptions, such

as a law of nature and an abstract idea, care should be taken not to parse the

claim into multiple exceptions, particularly in claims involving abstract ideas.

Accordingly, if possible examiners should treat the claim for Prong Two and Step

2B purposes as containing a single judicial exception.

In some claims, the multiple exceptions are

distinct from each other,

e.g.,

a first limitation describes a

law of nature, and a second limitation elsewhere in the claim recites an abstract

idea

multiple exceptions, particularly in claims involving abstract ideas.

Accordingly, if possible examiners should treat the claim for Prong Two and Step

2B purposes as containing a single judicial exception.

In some claims, the multiple exceptions are

distinct from each other,

e.g.,

a first limitation describes a

law of nature, and a second limitation elsewhere in the claim recites an abstract

idea. In these cases, for purposes of examination efficiency, examiners should

select one of the exceptions and conduct the eligibility analysis for that

selected exception. If the analysis indicates that the claim recites an additional

element or combination of elements that integrate the selected exception into a

practical application or that amount to significantly more than the selected

exception, then the claim should be considered patent eligible. On the other hand,

if the claim does not recite any additional element or combination of elements

that integrate the selected exception into a practical application, and also does

not recite any additional element or combination of elements that amounts to

significantly more than the selected exception, then the claim should be

considered ineligible.

University of Utah Research Foundation v. Ambry

Genetics,

774 F.3d 755, 762, 113 USPQ2d 1241, 1246 (Fed. Cir. 2014)

(because claims did not amount to significantly more than the recited abstract

idea, court “need not decide” if claims also recited a law of nature).

In other claims, multiple abstract ideas, which

may fall in the same or different groupings, or multiple laws of nature may be

recited. In these cases, examiners should not parse the claim. For example, in a

claim that includes a series of steps that recite mental steps as well as a

mathematical calculation, an examiner should identify the claim as reciting both a

mental process and a mathematical concept for Step 2A Prong One to make the

analysis clear on the record

different groupings, or multiple laws of nature may be

recited. In these cases, examiners should not parse the claim. For example, in a

claim that includes a series of steps that recite mental steps as well as a

mathematical calculation, an examiner should identify the claim as reciting both a

mental process and a mathematical concept for Step 2A Prong One to make the

analysis clear on the record. However, if possible, the examiner should consider

the limitations together as a single abstract idea for Step 2A Prong Two and Step

2B (if necessary) rather than as a plurality of separate abstract ideas to be

analyzed individually.