Abstract Ideas

The abstract idea exception has deep roots in the

Supreme Court’s jurisprudence. See

Bilski v. Kappos,

561 U.S. 593,

601-602, 95 USPQ2d 1001, 1006 (2010) (citing

Le Roy v. Tatham,

55

U.S. (14 How.) 156, 174–175 (1853)). Despite this long history, the courts have

declined to define abstract ideas. However, it is clear from the body of judicial

precedent that software and business methods are not excluded categories of subject

matter. For example, the Supreme Court concluded that business methods are not

“categorically outside of

§ 101's

scope,” stating that “a

business method is simply one kind of ‘method’ that is, at least in some

circumstances, eligible for patenting under

§ 101

.”

Bilski,

561 U.S. at 607, 95 USPQ2d at 1008 (2010). See also

Content Extraction and Transmission, LLC v. Wells Fargo Bank,

776 F.3d 1343, 1347, 113 USPQ2d 1354, 1357 (Fed. Cir. 2014) (“there is no categorical

business-method exception”). Likewise, software is not automatically an abstract

idea, even if performance of a software task involves an underlying mathematical

calculation or relationship. See,

e.g., Thales Visionix, Inc. v. United

States,

850 F.3d 1343, 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.”);

McRO, Inc. v. Bandai Namco Games Am.

Inc.,

837 F.3d 1299, 1316, 120 USPQ2d 1091, 1103 (Fed. Cir. 2016)

(methods of automatic lip synchronization and facial expression animation using

computer-implemented rules were not directed to an abstract idea);

Enfish,

822 F.3d 1327, 1336, 118 USPQ2d 1684, 1689 (Fed. Cir. 2016) (claims to

self-referential table for a computer database were not directed to an abstract

idea).

To facilitate examination, the Office has set forth an

approach to identifying abstract ideas that distills the relevant case law into

enumerated groupings of abstract ideas

er-implemented rules were not directed to an abstract idea);

Enfish,

822 F.3d 1327, 1336, 118 USPQ2d 1684, 1689 (Fed. Cir. 2016) (claims to

self-referential table for a computer database were not directed to an abstract

idea).

To facilitate examination, the Office has set forth an

approach to identifying abstract ideas that distills the relevant case law into

enumerated groupings of abstract ideas. The enumerated groupings are firmly rooted in

Supreme Court precedent as well as Federal Circuit decisions interpreting that

precedent, as is explained in

MPEP § 2106.04(a)(2)

. This approach

represents a shift from the former case-comparison approach that required examiners

to rely on individual judicial cases when determining whether a claim recites an

abstract idea. By grouping the abstract ideas, the examiners’ focus has been shifted

from relying on individual cases to generally applying the wide body of case law

spanning all technologies and claim types.

The enumerated groupings of abstract ideas are

defined as:

1) Mathematical concepts – mathematical

relationships, mathematical formulas or equations, mathematical calculations

(see

MPEP § 2106.04(a)(2)

,

subsection I);

2) Certain methods of organizing human activity –

fundamental economic principles or practices (including hedging, insurance,

mitigating risk); commercial or legal interactions (including agreements in the

form of contracts; legal obligations; advertising, marketing or sales

activities or behaviors; business relations); managing personal behavior or

relationships or interactions between people (including social activities,

teaching, and following rules or instructions) (see

MPEP §

2106.04(a)(2)

, subsection II); and

3) Mental processes – concepts performed in the

human mind (including an observation, evaluation, judgment, opinion) (see

MPEP § 2106.04(a)(2)

, subsection III)

ties or behaviors; business relations); managing personal behavior or

relationships or interactions between people (including social activities,

teaching, and following rules or instructions) (see

MPEP §

2106.04(a)(2)

, subsection II); and

3) Mental processes – concepts performed in the

human mind (including an observation, evaluation, judgment, opinion) (see

MPEP § 2106.04(a)(2)

, subsection III).

Examiners should determine whether a claim recites an

abstract idea by (1) identifying the specific limitation(s) in the claim under

examination that the examiner believes recites an abstract idea, and (2) determining

whether the identified limitations(s) fall within at least one of the groupings of

abstract ideas listed above. The groupings of abstract ideas, and their relationship

to the body of judicial precedent, are further discussed in

MPEP §

2106.04(a)(2)

.

If the identified limitation(s) falls within at least

one of the groupings of abstract ideas, it is reasonable to conclude that the claim

recites an abstract idea in Step 2A Prong One. The claim then requires further

analysis in Step 2A Prong Two, to determine whether any additional elements in the

claim integrate the abstract idea into a practical application, see

MPEP

§ 2106.04(d)

.

If the identified limitation(s) do not fall within

any of the groupings of abstract ideas, it is reasonable to find that the claim does

not recite an abstract idea. This concludes the abstract idea judicial exception

eligibility analysis, except in the rare circumstance discussed in

MPEP

§ 2106.04(a)(3)

, below. The claim is thus eligible at

Pathway B unless the claim recites, and is directed to, another exception (such as a

law of nature or natural phenomenon).

If the claims recites another judicial exception (i.e.

law of nature or natural phenomenon), see

MPEP §§

2106.04(b)

and

2106.04(c)

for more information on Step 2A analysis

except in the rare circumstance discussed in

MPEP

§ 2106.04(a)(3)

, below. The claim is thus eligible at

Pathway B unless the claim recites, and is directed to, another exception (such as a

law of nature or natural phenomenon).

If the claims recites another judicial exception (i.e.

law of nature or natural phenomenon), see

MPEP §§

2106.04(b)

and

2106.04(c)

for more information on Step 2A analysis.

MPEP § 2106.04(a)(1)

provides

examples of claims that do not recite abstract ideas (or other judicial exceptions)

and thus are eligible at Step 2A Prong One.

MPEP § 2106.04(a)(2)

provides

further explanation on the abstract idea groupings. It should be noted that these

groupings are not mutually exclusive, i.e., some claims recite limitations that fall

within more than one grouping or sub-grouping. For example, a claim reciting

performing mathematical calculations using a formula that could be practically

performed in the human mind may be considered to fall within the mathematical

concepts grouping and the mental process grouping. Accordingly, examiners should

identify at least one abstract idea grouping, but preferably identify all groupings

to the extent possible, if a claim limitation(s) is determined to fall within

multiple groupings and proceed with the analysis in Step 2A Prong Two.