2019 Revised Patent Subject Matter Eligibility Guidance, 50-57 [2018-28282]
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Federal Register
Vol. 84, No. 4
Monday, January 7, 2019
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DEPARTMENT OF COMMERCE
United States Patent and Trademark
Office
[Docket No. PTO–P–2018–0053]
2019 Revised Patent Subject Matter
Eligibility Guidance
United States Patent and
Trademark Office, Commerce.
ACTION: Examination Guidance; Request
for comments.
AGENCY:
The United States Patent and
Trademark Office (USPTO) has prepared
revised guidance (2019 Revised Patent
Subject Matter Eligibility Guidance) for
use by USPTO personnel in evaluating
subject matter eligibility. The 2019
Revised Patent Subject Matter Eligibility
Guidance revises the procedures for
determining whether a patent claim or
patent application claim is directed to a
judicial exception (laws of nature,
natural phenomena, and abstract ideas)
under Step 2A of the USPTO’s Subject
Matter Eligibility Guidance in two ways.
First, the 2019 Revised Patent Subject
Matter Eligibility Guidance explains
that abstract ideas can be grouped as,
e.g., mathematical concepts, certain
methods of organizing human activity,
and mental processes. Second, this
guidance explains that a patent claim or
patent application claim that recites a
judicial exception is not ‘‘directed to’’
the judicial exception if the judicial
exception is integrated into a practical
application of the judicial exception. A
claim that recites a judicial exception,
but is not integrated into a practical
application, is directed to the judicial
exception under Step 2A and must then
be evaluated under Step 2B (inventive
concept) to determine the subject matter
eligibility of the claim. The USPTO is
seeking public comment on its subject
matter eligibility guidance, and
particularly the 2019 Revised Patent
Subject Matter Eligibility Guidance.
DATES:
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SUMMARY:
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Applicable Date: The 2019 Revised
Patent Subject Matter Eligibility
Guidance is effective on January 7,
2019. The 2019 Revised Patent Subject
Matter Eligibility Guidance applies to
all applications, and to all patents
resulting from applications, filed before,
on, or after January 7, 2019.
Comment Deadline Date: Written
comments must be received on or before
March 8, 2019.
ADDRESSES: Comments must be sent by
electronic mail message over the
internet addressed to: Eligibility2019@
uspto.gov.
Electronic comments submitted in
plain text are preferred, but also may be
submitted in ADOBE® portable
document format or MICROSOFT
WORD® format. Comments not
submitted electronically should be
submitted on paper in a format that
facilitates convenient digital scanning
into ADOBE® portable document
format. The comments will be available
for viewing via the USPTO’s internet
website (https://www.uspto.gov). Because
comments will be made available for
public inspection, information that the
submitter does not desire to make
public, such as an address or phone
number, should not be included in the
comments.
FOR FURTHER INFORMATION CONTACT: June
E. Cohan, Senior Legal Advisor, at 571–
272–7744 or Carolyn Kosowski, Senior
Legal Advisor, at 571–272–7688, both
with the Office of Patent Legal
Administration.
Patent
subject matter eligibility under 35
U.S.C. 101 has been the subject of much
attention over the past decade. Recently,
much of that attention has focused on
how to apply the U.S. Supreme Court’s
framework for evaluating eligibility
(often called the Alice/Mayo test).1
Properly applying the Alice/Mayo test in
a consistent manner has proven to be
difficult, and has caused uncertainty in
this area of the law. Among other things,
it has become difficult in some cases for
inventors, businesses, and other patent
stakeholders to reliably and predictably
determine what subject matter is patenteligible. The legal uncertainty
surrounding Section 101 poses unique
SUPPLEMENTARY INFORMATION:
1 Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S.
208, 217–18 (2014) (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66
(2012)).
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challenges for the USPTO, which must
ensure that its more than 8500 patent
examiners and administrative patent
judges apply the Alice/Mayo test in a
manner that produces reasonably
consistent and predictable results across
applications, art units and technology
fields.
Since the Alice/Mayo test was
announced and began to be extensively
applied, the courts and the USPTO have
tried to consistently distinguish
between patent-eligible subject matter
and subject matter falling within a
judicial exception. Even so, patent
stakeholders have expressed a need for
more clarity and predictability in its
application. In particular, stakeholders
have expressed concern with the proper
scope and application of the ‘‘abstract
idea’’ exception. Some courts share
these concerns, for example as
demonstrated by several recent
concurrences and dissents in the U.S.
Court of Appeals for the Federal Circuit
(‘‘Federal Circuit’’) calling for changes
in the application of Section 101
jurisprudence.2 Many stakeholders,
judges, inventors, and practitioners
across the spectrum have argued that
something needs to be done to increase
clarity and consistency in how Section
101 is currently applied.
To address these and other concerns,
the USPTO is revising its examination
procedure with respect to the first step
of the Alice/Mayo test 3 (Step 2A of the
USPTO’s Subject Matter Eligibility
Guidance as incorporated into the
Manual of Patent Examining Procedure
(‘‘MPEP’’) 2106) 4 by: (1) Providing
groupings of subject matter that is
considered an abstract idea; and (2)
clarifying that a claim is not ‘‘directed
to’’ a judicial exception if the judicial
exception is integrated into a practical
application of that exception.
2 See, e.g., Interval Licensing LLC, v. AOL, Inc.,
896 F.3d 1335, 1348 (Fed. Cir. 2018) (Plager, J.,
concurring in part and dissenting in part); Smart
Sys. Innovations, LLC v. Chicago Transit Auth., 873
F.3d 1364, 1377 (Fed. Cir. 2017) (Linn, J., dissenting
in part and concurring in part); Berkheimer v. HP
Inc., 890 F.3d 1369, 1376 (Fed. Cir. 2018) (Lourie,
J., joined by Newman, J., concurring in denial of
rehearing en banc).
3 The first step of the Alice/Mayo test is to
determine whether the claims are ‘‘directed to’’ a
judicial exception. Alice, 573 U.S. at 217 (citing
Mayo, 566 U.S. at 77).
4 All references to the MPEP in the 2019 Revised
Patent Subject Matter Eligibility Guidance are to the
Ninth Edition, Revision 08–2017 (rev. Jan. 2018),
unless otherwise indicated.
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Section I of this 2019 Revised Patent
Subject Matter Eligibility Guidance
explains that the judicial exceptions are
for subject matter that has been
identified as the ‘‘basic tools of
scientific and technological work,’’ 5
which includes ‘‘abstract ideas’’ such as
mathematical concepts, certain methods
of organizing human activity, and
mental processes; as well as laws of
nature and natural phenomena. Only
when a claim recites a judicial
exception does the claim require further
analysis in order to determine its
eligibility. The groupings of abstract
ideas contained in this guidance enable
USPTO personnel to more readily
determine whether a claim recites
subject matter that is an abstract idea.
Section II explains that the USPTO
has set forth a revised procedure, rooted
in Supreme Court caselaw, to determine
whether a claim is ‘‘directed to’’ a
judicial exception under the first step of
the Alice/Mayo test (USPTO Step 2A).
Section III explains the revised
procedure that will be applied by the
USPTO. The procedure focuses on two
aspects of Revised Step 2A: (1) Whether
the claim recites a judicial exception;
and (2) whether a recited judicial
exception is integrated into a practical
application. Only when a claim recites
a judicial exception and fails to
integrate the exception into a practical
application, is the claim ‘‘directed to’’ a
judicial exception, thereby triggering the
need for further analysis pursuant to the
second step of the Alice/Mayo test
(USPTO Step 2B). Finally, if further
analysis at Step 2B is needed (for
example to determine whether the claim
merely recites well-understood, routine,
conventional activity), this 2019
Revised Patent Subject Matter Eligibility
Guidance explains that the examiner or
administrative patent judge will proceed
in accordance with existing USPTO
guidance as modified in April 2018.6
The USPTO is seeking public
comment on its subject matter eligibility
guidance, and particularly the 2019
Revised Patent Subject Matter Eligibility
Guidance. The USPTO is determined to
continue its mission to provide
predictable and reliable patent rights in
5 Mayo, 566 U.S. at 71 (‘‘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’’ (quoting Gottschalk v. Benson,
409 U.S. 63, 67 (1972)).
6 USPTO Memorandum of April 19, 2018,
‘‘Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)’’ (Apr.
19, 2018), available at https://www.uspto.gov/sites/
default/files/documents/memo-berkheimer20180419.PDF [hereinafter ‘‘USPTO Berkheimer
Memorandum’’].
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accordance with this rapidly evolving
area of the law. The USPTO’s ultimate
goal is to draw distinctions between
claims to principles in the abstract and
claims that integrate those principles
into a practical application. To that end,
the USPTO may issue further guidance,
or modify the current guidance, in the
future based on its review of the
comments received, further experience
of the USPTO and its stakeholders, and
additional judicial actions.
Implementation of examination
guidance on eligibility is an iterative
process and may continue with periodic
supplements. The USPTO invites the
public to submit suggestions on
eligibility-related topics to address in
future guidance supplements as part of
their comments on the USPTO’s subject
matter eligibility guidance.
Impact on Examination Procedure
and Prior Examination Guidance: This
2019 Revised Patent Subject Matter
Eligibility Guidance supersedes MPEP
2106.04(II) (Eligibility Step 2A: Whether
a Claim Is Directed to a Judicial
Exception) to the extent it equates
claims ‘‘reciting’’ a judicial exception
with claims ‘‘directed to’’ a judicial
exception, along with any other portion
of the MPEP that conflicts with this
guidance. A chart identifying portions
of the MPEP that are affected by this
guidance will be available for viewing
via the USPTO’s internet website
(https://www.uspto.gov). This 2019
Revised Patent Subject Matter Eligibility
Guidance also supersedes all versions of
the USPTO’s ‘‘Eligibility Quick
Reference Sheet Identifying Abstract
Ideas’’ (first issued in July 2015 and
updated most recently in July 2018).
Eligibility-related guidance issued prior
to the Ninth Edition, R–08.2017, of the
MPEP (published Jan. 2018) should not
be relied upon. However, any claim
considered patent eligible under prior
guidance should be considered patent
eligible under this guidance.
This guidance does not constitute
substantive rulemaking and does not
have the force and effect of law. The
guidance sets out agency policy with
respect to the USPTO’s interpretation of
the subject matter eligibility
requirements of 35 U.S.C. 101 in view
of decisions by the Supreme Court and
the Federal Circuit. The guidance was
developed as a tool for internal USPTO
management and does not create any
right or benefit, substantive or
procedural, enforceable by any party
against the USPTO. Rejections will
continue to be based upon the
substantive law, and it is those
rejections that are appealable to the
Patent Trial and Appeal Board (PTAB)
and the courts. All USPTO personnel
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51
are, as a matter of internal agency
management, expected to follow the
guidance. Failure of USPTO personnel
to follow the guidance, however, is not,
in itself, a proper basis for either an
appeal or a petition.
I. Groupings of Abstract Ideas
The Supreme Court has held that the
patent eligibility statute, 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.’’ 7 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.’’ 8
Since the Alice case, courts have been
‘‘compare[ing] claims at issue to those
claims already found to be directed to
an abstract idea in previous cases.’’ 9
Likewise, the USPTO has issued
guidance to the patent examining corps
about Federal Circuit decisions applying
the Alice/Mayo test, for instance
describing the subject matter claimed in
the patent in suit and noting whether or
not certain subject matter has been
identified as an abstract idea.10
7 Alice Corp., 573 U.S. at 216 (internal citation
and quotation marks omitted); Mayo, 566 U.S. at 71.
8 Id. (internal citation and quotation marks
omitted).
9 See Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1334 (Fed. Cir. 2016); see also Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1294 (Fed. Cir. 2016) (‘‘[T]he decisional mechanism
courts now apply [to identify an abstract idea] is to
examine earlier cases in which a similar or parallel
descriptive nature can be seen—what prior cases
were about, and which way they were decided.’’).
10 See, e.g., 2014 Interim Guidance on Subject
Matter Eligibility, 79 FR 74618, 74628–32 (Dec. 16,
2014) (discussing concepts identified as abstract
ideas); July 2015 Update: Subject Matter Eligibility
(Jul. 30, 2015), at 3–5, available at https://
www.uspto.gov/sites/default/files/documents/iegjuly-2015-update.pdf (same); USPTO Memorandum
of May 19, 2016, ‘‘Recent Subject Matter Eligibility
Decisions (Enfish, LLC v. Microsoft Corp. and TLI
Communications LLC v. A.V. Automotive, LLC),’’ at
2 (May 19, 2016), available at https://
www.uspto.gov/sites/default/files/documents/iegmay-2016_enfish_memo.pdf [hereinafter, ‘‘USPTO
Enfish Memorandum’’] (discussing the abstract idea
in TLI Communications LLC v. A.V. Automotive,
LLC, 823 F.3d 607 (Fed. Cir. 2016)); USPTO
Memorandum of November 2, 2016, ‘‘Recent
Subject Matter Eligibility Decisions,’’ at 2 (Nov. 2,
2016), available at https://www.uspto.gov/sites/
default/files/documents/McRo-Bascom-Memo.pdf
[hereinafter, ‘‘USPTO McRo Memorandum’’]
(discussing how the claims in McRO, Inc. v. Bandai
Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016), were directed to an improvement instead
of an abstract idea); USPTO Memorandum of April
2, 2018, ‘‘Recent Subject Matter Eligibility
Decisions’’ (Apr. 2, 2018), available at https://
www.uspto.gov/sites/default/files/documents/
memo-recent-sme-ctdec-20180402.PDF [hereinafter
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While that approach was effective
soon after Alice was decided, it has
since become impractical. The Federal
Circuit has now issued numerous
decisions identifying subject matter as
abstract or non-abstract in the context of
specific cases, and that number is
continuously growing. In addition,
similar subject matter has been
described both as abstract and not
abstract in different cases.11 The
growing body of precedent has become
increasingly more difficult for
examiners to apply in a predictable
manner, and concerns have been raised
that different examiners within and
between technology centers may reach
inconsistent results.
The USPTO, therefore, aims to clarify
the analysis. In accordance with judicial
precedent and in an effort to improve
consistency and predictability, the 2019
Revised Patent Subject Matter Eligibility
Guidance extracts and synthesizes key
concepts identified by the courts as
abstract ideas to explain that the
abstract idea exception includes the
following groupings of subject matter,
when recited as such in a claim
limitation(s) (that is, when recited on
their own or per se):
‘‘USPTO Finjan Memorandum’’] (discussing how
the claims in Finjan Inc. v. Blue Coat Systems, Inc.,
879 F.3d 1299 (Fed. Cir. 2018), and Core Wireless
Licensing, S.A.R.L. v. LG Electronics, Inc., 880 F.3d
1356 (Fed. Cir. 2018), were directed to
improvements instead of abstract ideas); USPTO
Berkheimer Memorandum at 2 (discussing the
abstract idea in Berkheimer); MPEP 2106.04(a)
(reviewing cases that did and did not identify
abstract ideas).
11 E.g., compare TLI Commc’ns, 823 F.3d at 611,
with Enfish, 822 F.3d at 1335, and Visual Memory
LLC v. NVIDIA Corp., 867 F.3d 1253, 1258 (Fed. Cir.
2017). While computer operations such as ‘‘output
of data analysis . . . can be abstract,’’ Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d
1044, 1056 (Fed. Cir. 2017), ‘‘software-based
innovations can [also] make ‘non-abstract
improvements to computer technology’ and be
deemed patent-eligible subject matter at step 1 [of
the Mayo/Alice test],’’ Finjan, 879 F.3d at 1304
(quoting Enfish, 822 F.3d at 1335). Indeed, the
Federal Circuit has held that ‘‘improvements in
computer-related technology’’ and ‘‘claims directed
to software’’ are not ‘‘inherently abstract.’’ Enfish,
822 F.3d at 1335; see also Visual Memory, 867 F.3d
at 1258. These developments in the caselaw can
create complications for the patent-examination
process. For example, claims in one application
could be deemed to be abstract, whereas slightly
different claims directed to the same or similar
subject matter could be determined to reflect a
patent eligible ‘‘improvement.’’ Alternatively,
claims in one application could be found to be
abstract, whereas claims to the same or similar
subject matter in another application, containing
additional or different embodiments in the
specification, could be deemed eligible as not
directed to an abstract idea. In other words, the
finding that the subject matter claimed in a prior
patent was ‘‘abstract’’ as claimed may not determine
whether similar subject matter in another
application, claimed somewhat differently or
supported by a different disclosure, is directed to
an abstract idea and therefore patent ineligible.
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(a) Mathematical concepts—
mathematical relationships,
mathematical formulas or equations,
mathematical calculations; 12
(b) 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); 13 and
12 Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(‘‘The concept of hedging . . . reduced to a
mathematical formula . . . is an unpatentable
abstract idea[.]’’); Diamond v. Diehr, 450 U.S. 175,
191 (1981) (‘‘A mathematical formula as such is not
accorded the protection of our patent laws’’) (citing
Benson, 409 U.S. 63); Parker v. Flook, 437 U.S. 584,
594 (1978) (‘‘[T]he discovery of [a mathematical
formula] cannot support a patent unless there is
some other inventive concept in its application.’’);
Benson, 409 U.S. at 71–72 (concluding that
permitting a patent on the claimed invention
‘‘would wholly pre-empt the mathematical formula
and in practical effect would be a patent on the
algorithm itself’’); Mackay Radio & Telegraph Co. v.
Radio Corp. of Am., 306 U.S. 86, 94 (1939) (‘‘[A]
scientific truth, or the mathematical expression of
it, is not patentable invention[.]’’); SAP America,
Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir.
2018) (holding that claims to a ‘‘series of
mathematical calculations based on selected
information’’ are directed to abstract ideas);
Digitech Image Techs., LLC v. Elecs. for Imaging,
Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (holding
that claims to a ‘‘process of organizing information
through mathematical correlations’’ are directed to
an abstract idea); Bancorp Servs., LLC v. Sun Life
Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1280
(Fed. Cir. 2012) (identifying the concept of
‘‘managing a stable value protected life insurance
policy by performing calculations and manipulating
the results’’ as an abstract idea).
13 Alice, 573 U.S. at 219–20 (concluding that use
of a third party to mediate settlement risk is a
‘‘fundamental economic practice’’ and thus an
abstract idea); id. (describing the concept of risk
hedging identified as an abstract idea in Bilski as
‘‘a method of organizing human activity’’); Bilski,
561 U.S. at 611–612 (concluding that hedging is a
‘‘fundamental economic practice’’ and therefore an
abstract idea); Bancorp, 687 F.3d at 1280
(concluding that ‘‘managing a stable value protected
life insurance policy by performing calculations
and manipulating the results’’ is an abstract idea);
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.,
876 F.3d 1372, 1378–79 (Fed. Cir. 2017) (holding
that concept of ‘‘local processing of payments for
remotely purchased goods’’ is a ‘‘fundamental
economic practice, which Alice made clear is,
without more, outside the patent system.’’); OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362–63 (Fed. Cir. 2015) (concluding that claimed
concept of ‘‘offer-based price optimization’’ is an
abstract idea ‘‘similar to other ‘fundamental
economic concepts’ found to be abstract ideas by
the Supreme Court and this court’’); buySAFE, Inc.
v. Google, Inc., 765 F.3d. 1350, 1355 (Fed. Cir. 2014)
(holding that concept of ‘‘creating a contractual
relationship—a ‘transaction performance
guaranty’ ’’ is an abstract idea); In re Comiskey, 554
F.3d 967, 981 (Fed. Cir. 2009) (claims directed to
‘‘resolving a legal dispute between two parties by
the decision of a human arbitrator’’ are ineligible);
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(c) Mental processes—concepts
performed in the human mind 14
(including an observation, evaluation,
judgment, opinion).15
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed Cir. 2014) (holding that claim ‘‘describe[ing]
only the abstract idea of showing an advertisement
before delivering free content’’ is patent ineligible);
In re Ferguson, 558 F.3d 1359, 1364 (Fed Cir. 2009)
(holding methods ‘‘directed to organizing business
or legal relationships in the structuring of a sales
force (or marketing company)’’ to be ineligible);
Credit Acceptance, 859 F.3d 1044 at 1054 (‘‘The
Board determined that the claims are directed to the
abstract idea of ‘processing an application for
financing a purchase.’ . . . We agree.’’); Interval
Licensing, 896 F.3d at 1344–45 (concluding that
‘‘[s]tanding alone, the act of providing someone an
additional set of information without disrupting the
ongoing provision of an initial set of information is
an abstract idea,’’ observing that the district court
‘‘pointed to the nontechnical human activity of
passing a note to a person who is in the middle of
a meeting or conversation as further illustrating the
basic, longstanding practice that is the focus of the
[patent ineligible] claimed invention.’’); Voter
Verified, Inc. v. Election Systems & Software, LLC,
887 F.3d 1376, 1385 (Fed. Cir. 2018) (finding the
concept of ‘‘voting, verifying the vote, and
submitting the vote for tabulation,’’ a ‘‘fundamental
activity’’ that humans have performed for hundreds
of years, to be an abstract idea); In re Smith, 815
F.3d 816, 818 (Fed. Cir. 2016) (concluding that
‘‘[a]pplicants’ claims, directed to rules for
conducting a wagering game’’ are abstract).
14 If a claim, under its broadest reasonable
interpretation, covers performance in the mind but
for the recitation of generic computer components,
then it is still in the mental processes category
unless the claim cannot practically be performed in
the mind. See Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir.
2016) (‘‘[W]ith the exception of generic computerimplemented steps, there is nothing in the claims
themselves that foreclose them from being
performed by a human, mentally or with pen and
paper.’’); Mortg. Grader, Inc. v. First Choice Loan
Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016)
(holding that computer-implemented method for
‘‘anonymous loan shopping’’ was an abstract idea
because it could be ‘‘performed by humans without
a computer’’); Versata Dev. Grp. v. SAP Am., Inc.,
793 F.3d 1306, 1335 (Fed. Cir. 2015) (‘‘Courts have
examined claims that required the use of a
computer and still found that the underlying,
patent-ineligible invention could be performed via
pen and paper or in a person’s mind.’’);
CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding that
the incidental use of ‘‘computer’’ or ‘‘computer
readable medium’’ does not make a claim otherwise
directed to process that ‘‘can be performed in the
human mind, or by a human using a pen and
paper’’ patent eligible); id. at 1376 (distinguishing
Research Corp. Techs. v. Microsoft Corp., 627 F.3d
859 (Fed. Cir. 2010), and SiRF Tech., Inc. v. Int’l
Trade Comm’n, 601 F.3d 1319 (Fed. Cir. 2010), as
directed to inventions that ‘‘could not, as a practical
matter, be performed entirely in a human’s mind’’).
Likewise, performance of a claim limitation using
generic computer components does not necessarily
preclude the claim limitation from being in the
mathematical concepts grouping, Benson, 409 U.S.
at 67, or the certain methods of organizing human
activity grouping, Alice, 573 U.S. at 219–20.
15 Mayo, 566 U.S. at 71 (‘‘ ‘[M]ental processes[ ]
and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific
and technological work’ ’’ (quoting Benson, 409 U.S.
at 67)); Flook, 437 U.S. at 589 (same); Benson, 409
U.S. at 67, 65 (noting that the claimed ‘‘conversion
of [binary-coded decimal] numerals to pure binary
numerals can be done mentally,’’ i.e., ‘‘as a person
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Claims that do not recite matter that
falls within these enumerated groupings
of abstract ideas should not be treated
as reciting abstract ideas, except as
follows: In the rare circumstance in
which a USPTO employee believes a
claim limitation that does not fall
within the enumerated groupings of
abstract ideas should nonetheless be
treated as reciting an abstract idea, the
procedure described in Section III.C for
analyzing the claim should be followed.
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II. ‘‘Directed To’’ a Judicial Exception
The Supreme Court has long
distinguished between principles
themselves (which are not patent
eligible) and the integration of those
principles into practical applications
(which are patent eligible).16 Similarly,
would do it by head and hand.’’); Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1139, (Fed.
Cir. 2016) (holding that claims to the mental
process of ‘‘translating a functional description of
a logic circuit into a hardware component
description of the logic circuit’’ are directed to an
abstract idea, because the claims ‘‘read on an
individual performing the claimed steps mentally
or with pencil and paper’’); Mortg. Grader, 811
F.3d. at 1324 (concluding that concept of
‘‘anonymous loan shopping’’ is an abstract idea
because it could be ‘‘performed by humans without
a computer’’); In re BRCA1 & BRCA2-Based
Hereditary Cancer Test Patent Litig., 774 F.3d 755,
763 (Fed. Cir. 2014) (concluding that concept of
‘‘comparing BRCA sequences and determining the
existence of alterations’’ is an ‘‘abstract mental
process’’); In re Brown, 645 F. App’x. 1014, 1017
(Fed. Cir. 2016) (non-precedential) (claim
limitations ‘‘encompass the mere idea of applying
different known hair styles to balance one’s head.
Identifying head shape and applying hair designs
accordingly is an abstract idea capable, as the Board
notes, of being performed entirely in one’s mind’’).
16 See, e.g., Alice, 573 U.S. at 217 (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) 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 (noting that the
Court in 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 Benson ‘‘held that
simply implementing a mathematical principle on
a physical machine, namely a computer, was not a
patentable application of that principle’’); Bilski,
561 U.S. at 611 (‘‘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 Diehr, 450 U.S. at 187)
(emphasis in original)); Diehr, 450 U.S. at 187, 192
n.14 (explaining that the process in Flook was
ineligible not because it contained a mathematical
formula, but because it did not provide an
application of the formula); Mackay Radio, 306 U.S.
at 94 (‘‘While a scientific truth, or the mathematical
expression of it, is not patentable invention, a novel
and useful structure created with the aid of
knowledge of scientific truth may be.’’); Le Roy v.
Tatham, 55 U.S. (14 How.) 156, 175 (1852) (‘‘The
elements of the [natural phenomena] exist; the
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in a growing body of decisions, the
Federal Circuit has distinguished
between claims that are ‘‘directed to’’ a
judicial exception (which require
further analysis to determine their
eligibility) and those that are not (which
are therefore patent eligible).17 For
example, an improvement in the
functioning of a computer or other
technology or technological field may
render a claim patent eligible at step one
of the Alice/Mayo test even if it recites
an abstract idea, law of nature, or
natural phenomenon.18 Moreover,
recent Federal Circuit jurisprudence has
indicated that eligible subject matter can
often be identified either at the first or
the second step of the Alice/Mayo test.19
invention is not in discovering them, but in
applying them to useful objects.’’).
17 See, e.g., MPEP 2106.06(b) (summarizing
Enfish, McRO, and other cases that were eligible as
improvements to technology or computer
functionality instead of abstract ideas); USPTO
Finjan Memorandum (discussing Finjan, and Core
Wireless); USPTO Memorandum of June 7, 2018,
‘‘Recent Subject Matter Eligibility Decision: Vanda
Pharmaceuticals Inc. v. West-Ward
Pharmaceuticals,’’ available at https://
www.uspto.gov/sites/default/files/documents/
memo-vanda-20180607.PDF [hereinafter ‘‘USPTO
Vanda Memorandum’’]; BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1352 (Fed. Cir. 2016) (concluding that claims could
be eligible if ordered combination of limitations
‘‘transform the abstract idea . . . into a particular,
practical application of that abstract idea.’’);
Arrhythmia Research Tech., Inc. v. Corazonix
Corp., 958 F.2d 1053, 1056–57 (Fed. Cir. 1992) (‘‘As
the jurisprudence developed, inventions that were
implemented by the mathematically-directed
performance of computers were viewed in the
context of the practical application to which the
computer-generated data were put.’’); CLS Bank
Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1315
(Fed. Cir. 2013) (Moore, J., joined by Rader, C.J., and
Linn and O’Malley, JJ., dissenting in part) (‘‘The key
question is thus whether a claim recites a
sufficiently concrete and practical application of an
abstract idea to qualify as patent-eligible.’’), aff’d,
573 U.S. 208 (2014).
18 See, e.g., McRO, 837 F.3d at 1316; Enfish, 822
F.3d at 1336; Core Wireless, 880 F.3d at 1362.
19 See, e.g., Vanda Pharm. Inc. v. West-Ward
Pharm. Int’l Ltd., 887 F.3d 1117, 1134 (Fed. Cir.
2018) (‘‘If the claims are not directed to a patent
ineligible concept at step one, we need not address
step two of the inquiry.’’); Rapid Litig. Mgmt. Ltd.
v. CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir.
2016) (holding that claimed invention is patent
eligible because it is not directed to a patentineligible concept under step one or is an inventive
application of the patent-ineligible concept under
step two); Enfish, 822 F.3d at 1339 (noting that
eligibility determination can be reached either
because claims not directed to an abstract idea
under step one or recite a concrete improvement
under step two); McRO, 837 F.3d at 1313
(recognizing that the ‘‘court must look to the claims
as an ordered combination’’ in determining
patentability ‘‘[w]hether at step one or step two of
the Alice test’’); Amdocs, 841 F.3d at 1294
(observing that recent cases ‘‘suggest that there is
considerable overlap between step one and step
two, and in some situations [the inventive concept]
analysis could be accomplished without going
beyond step one’’). See also Ancora Techs. v. HTC
Am., 908 F.3d 1343, 1349 (Fed. Cir. 2018) (noting,
in accord with the ‘‘recognition of overlaps between
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53
These revised patent examination
procedures are designed to more
accurately and consistently identify
claims that recite a practical application
of a judicial exception (and thus are not
‘‘directed to’’ a judicial exception),
thereby increasing predictability and
consistency in the patent eligibility
analysis. This analysis is performed at
USPTO Step 2A, and incorporates
certain considerations that have been
applied by the courts at step one and at
step two of the Alice/Mayo framework,
given the recognized overlap in the
steps depending on the facts of any
given case.
In accordance with judicial precedent,
and to increase consistency in
examination practice, the 2019 Revised
Patent Subject Matter Eligibility
Guidance sets forth a procedure to
determine whether a claim is ‘‘directed
to’’ a judicial exception under USPTO
Step 2A. Under the procedure, if a claim
recites a judicial exception (a law of
nature, a natural phenomenon, or an
abstract idea as grouped in Section I,
above), it must then be analyzed to
determine whether the recited judicial
exception is integrated into a practical
application of that exception. A claim is
not ‘‘directed to’’ a judicial exception,
and thus is patent eligible, if the claim
as a whole integrates the recited judicial
exception into a practical application of
that exception. A claim that integrates a
judicial exception into a practical
application will apply, rely on, or use
the judicial exception in a manner that
imposes a meaningful limit on the
judicial exception, such that the claim
is more than a drafting effort designed
to monopolize the judicial exception.
III. Instructions for Applying Revised
Step 2A During Examination
Examiners should determine whether
a claim satisfies the criteria for subject
matter eligibility by evaluating the claim
in accordance with the criteria
discussed in MPEP 2106, i.e., whether
the claim is to a statutory category (Step
1) and the Alice/Mayo test for judicial
exceptions (Steps 2A and 2B). The
procedure set forth herein (referred to as
‘‘revised Step 2A’’) changes how
examiners should apply the first step of
the Alice/Mayo test, which determines
whether a claim is ‘‘directed to’’ a
judicial exception.
As before, Step 1 of the USPTO’s
eligibility analysis entails considering
whether the claimed subject matter falls
within the four statutory categories of
some step one and step two considerations,’’ that
its conclusion of eligibility at step one is ‘‘indirectly
reinforced by some of [its] prior holdings under step
two’’).
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patentable subject matter identified by
35 U.S.C. 101: Process, machine,
manufacture, or composition of matter.
The 2019 Revised Patent Subject Matter
Eligibility Guidance does not change
Step 1 or the streamlined analysis,
which are discussed in MPEP 2106.03
and 2106.06, respectively. Examiners
may continue to use a streamlined
analysis (Pathway A) when the patent
eligibility of a claim is self-evident.
Step 2A of the 2019 Revised Patent
Subject Matter Eligibility Guidance is a
two-prong inquiry. In Prong One,
examiners evaluate whether the claim
recites a judicial exception.20 This
prong is similar to procedures in prior
guidance except that when determining
if a claim recites an abstract idea,
examiners now refer to the subject
matter groupings of abstract ideas in
Section I instead of comparing the
claimed concept to the USPTO’s prior
‘‘Eligibility Quick Reference Sheet
Identifying Abstract Ideas.’’
• If the claim recites a judicial
exception (i.e., an abstract idea
enumerated in Section I of the 2019
Revised Patent Subject Matter Eligibility
Guidance, 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 subject matter
within the enumerated groupings of
abstract ideas in Section I), then the
claim is eligible at Prong One of revised
Step 2A. This concludes the eligibility
analysis, except in the rare circumstance
described below.21
• In the rare circumstance in which
an examiner believes a claim limitation
that does not fall within the enumerated
groupings of abstract ideas should
nonetheless be treated as reciting an
abstract idea, the procedure described in
Section III.C for analyzing the claim
should be followed.
In Prong Two, examiners evaluate
whether the claim recites additional
elements that integrate the exception
into a practical application of that
20 This notice does not change the type of claim
limitations that are considered to recite a law of
nature or natural phenomenon. For more
information about laws of nature and natural
phenomena, including products of nature, see
MPEP 2106.04(b) and (c).
21 Even if a claim is determined to be patent
eligible under section 101, this or any other step of
the eligibility analysis does not end the inquiry.
The claims must also satisfy the other conditions
and requirements for patentability, for example,
under section 102 (novelty), 103 (nonobviousness),
or 112 (enablement, written description,
definiteness). Bilski, 561 U.S. at 602. Examiners
should take care not to confuse or intermingle
patentability requirements of these separate
sections with patent eligibility analysis under
section 101.
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exception. This prong adds a more
detailed eligibility analysis to step one
of the Alice/Mayo test (USPTO Step 2A)
than was required under prior guidance.
• If the recited exception is integrated
into a practical application of the
exception, then the claim is eligible at
Prong Two of revised Step 2A. 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, and requires further analysis
under Step 2B (where it may still be
eligible if it amounts to an ‘‘inventive
concept’’).22
The following discussion provides
additional detail on this revised
procedure.
A. Revised Step 2A
1. Prong One: Evaluate Whether the
Claim Recites a Judicial Exception
In Prong One, examiners should
evaluate whether the claim recites a
judicial exception, i.e., an abstract idea,
a law of nature, or a natural
phenomenon. If the claim does not
recite a judicial exception, it is not
directed to a judicial exception (Step
2A: NO) and is eligible. This concludes
the eligibility analysis. If the claim does
recite a judicial exception, then it
requires further analysis in Prong Two
of Revised Step 2A to determine
whether it is directed to the recited
exception, as explained in Section
III.A.2 of the 2019 Revised Patent
Subject Matter Eligibility Guidance.
For abstract ideas, Prong One
represents a change as compared to
prior guidance. To determine whether a
claim recites an abstract idea in Prong
One, examiners are now to: (a) Identify
the specific limitation(s) in the claim
under examination (individually or in
combination) that the examiner believes
recites an abstract idea; and (b)
determine whether the identified
limitation(s) falls within the subject
matter groupings of abstract ideas
enumerated in Section I of the 2019
Revised Patent Subject Matter Eligibility
Guidance. If the identified limitation(s)
falls within the subject matter groupings
of abstract ideas enumerated in Section
I, analysis should proceed to Prong Two
in order to evaluate whether the claim
integrates the abstract idea into a
22 See, e.g., Amdocs, 841 F.3d at 1300, 1303;
BASCOM, 827 F.3d at 1349–52; DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed.
Cir. 2014); USPTO Berkheimer Memorandum; see
also Rapid Litig., 827 F.3d at 1050 (holding that
claimed invention is patent eligible because it is not
directed to a patent-ineligible concept under step
one or is an inventive application of the patentineligible concept under step two).
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practical application. When evaluating
Prong One, examiners are no longer to
use the USPTO’s ‘‘Eligibility Quick
Reference Sheet Identifying Abstract
Ideas,’’ which has been superseded by
this document.
In the rare circumstance in which an
examiner believes a claim limitation
that does not fall within the enumerated
groupings of abstract ideas should
nonetheless be treated as reciting an
abstract idea, the procedure described in
Section III.C for analyzing the claim
should be followed.
For laws of nature and natural
phenomena, Prong One does not
represent a change. Examiners should
continue to follow existing guidance to
identify whether a claim recites one of
these exceptions,23 and if it does,
proceed to Prong Two of the 2019
Revised Patent Subject Matter Eligibility
Guidance in order to evaluate whether
the claim integrates the law of nature or
natural phenomenon into a practical
application.
2. Prong Two: If the Claim Recites a
Judicial Exception, Evaluate Whether
the Judicial Exception Is Integrated Into
a Practical Application
In Prong Two, examiners should
evaluate whether the claim as a whole
integrates the recited judicial exception
into a practical application of the
exception. A claim that integrates a
judicial exception into a practical
application will apply, rely on, or use
the judicial exception in a manner that
imposes a meaningful limit on the
judicial exception, such that the claim
is more than a drafting effort designed
to monopolize the judicial exception.
When the exception is so integrated,
then the claim is not directed to a
judicial exception (Step 2A: NO) and is
eligible. This concludes the eligibility
analysis. If the additional elements do
not integrate the exception into a
practical application, then the claim is
directed to the 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), as explained in Section III.B of
the 2019 Revised Patent Subject Matter
Eligibility Guidance.
Prong Two represents a change from
prior guidance. The analysis under
Prong Two is the same for all claims
reciting a judicial exception, whether
the exception is an abstract idea, a law
of nature, or a natural phenomenon.
Examiners evaluate integration into a
practical application by: (a) Identifying
whether there are any additional
elements recited in the claim beyond
23 See
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the judicial exception(s); and (b)
evaluating those additional elements
individually and in combination to
determine whether they integrate the
exception into a practical application,
using one or more of the considerations
laid out by the Supreme Court and the
Federal Circuit, for example those listed
below. While some of the considerations
listed below were discussed in prior
guidance in the context of Step 2B,
evaluating them in revised Step 2A
promotes early and efficient resolution
of patent eligibility, and increases
certainty and reliability. Examiners
should note, however, that revised Step
2A specifically excludes consideration
of whether the additional elements
represent well-understood, routine,
conventional activity. Instead, analysis
of well-understood, routine,
conventional activity is done in Step 2B.
Accordingly, in revised Step 2A
examiners should ensure that they give
weight to all additional elements,
whether or not they are conventional,
when evaluating whether a judicial
exception has been integrated into a
practical application.
In the context of revised Step 2A, the
following exemplary considerations are
indicative that an additional element (or
combination of elements) 24 may have
integrated the exception into a practical
application:
• An additional element reflects an
improvement in the functioning of a
computer, or an improvement to other
technology or technical field; 25
• an additional element that applies
or uses a judicial exception to effect a
particular treatment or prophylaxis for a
disease or medical condition; 26
24 USPTO guidance uses the term ‘‘additional
elements’’ to refer to claim features, limitations,
and/or steps that are recited in the claim beyond the
identified judicial exception. Again, whether an
additional element or combination of elements
integrate the exception into a practical application
should be evaluated on the claim as a whole.
25 For example, a modification of internet
hyperlink protocol to dynamically produce a dualsource hybrid web page. See MPEP 2106.05(a) for
more information concerning improvements in the
functioning of a computer or to any other
technology or technical field, including a
discussion of the exemplar provided herein, which
is based on DDR Holdings, 773 F.3d at 1258–59. See
also USPTO Finjan Memorandum (discussing
Finjan and Core Wireless).
26 For example, an immunization step that
integrates an abstract idea into a specific process of
immunizing that lowers the risk that immunized
patients will later develop chronic immunemediated diseases. See, e.g., Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d
1057, 1066–68 (Fed. Cir. 2011). See also Vanda
Pharm. Inc. v. West-Ward Pharm. Int’l Ltd., 887
F.3d 1117, 1135 (Fed. Cir. 2018) (holding claims to
the practical application of the natural relationships
between iloperidone, CYP2D6 metabolism, and QTc
prolongation to treat schizophrenia, not merely the
recognition of those relationships, to be patent
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• an additional element implements a
judicial exception with, or uses a
judicial exception in conjunction with,
a particular machine or manufacture
that is integral to the claim; 27
• an additional element effects a
transformation or reduction of a
particular article to a different state or
thing; 28 and
• an additional element applies or
uses the judicial exception in some
other meaningful way beyond generally
linking the use of the judicial exception
to a particular technological
environment, such that the claim as a
whole is more than a drafting effort
designed to monopolize the exception.29
This is not an exclusive list, and there
may be other examples of integrating the
exception into a practical application.
The courts have also identified
examples in which a judicial exception
has not been integrated into a practical
application:
• An additional element merely
recites the words ‘‘apply it’’ (or an
equivalent) with the judicial exception,
or merely includes instructions to
implement an abstract idea on a
computer, or merely uses a computer as
a tool to perform an abstract idea; 30
eligible at Mayo/Alice step 1 (USPTO Step 2A)), and
USPTO Vanda Memorandum (discussing Vanda).
27 For example, a Fourdrinier machine (which is
understood in the art to have a specific structure
comprising a headbox, a paper-making wire, and a
series of rolls) that is arranged in a particular way
that uses gravity to optimize the speed of the
machine while maintaining quality of the formed
paper web. See MPEP 2106.05(b) for more
information concerning use of a judicial exception
with, or in conjunction with, a particular machine
or manufacture, including a discussion of the
exemplar provided herein, which is based on Eibel
Process Co. v. Minnesota & Ontario Paper Co., 261
U.S. 45, 64–65 (1923).
28 For example, a process that transforms raw,
uncured synthetic rubber into precision-molded
synthetic rubber products by using a mathematical
formula to control operation of the mold. See MPEP
2106.05(c) for more information concerning
transformation or reduction of a particular article to
a different state or thing, including a discussion of
the exemplar provided herein, which is based on
Diehr, 450 U.S. at 184.
29 For example, a combination of steps including
installing rubber in a press, closing the mold,
constantly measuring the temperature in the mold,
and automatically opening the press at the proper
time, all of which together meaningfully limited the
use of a mathematical equation to a practical
application of molding rubber products. See MPEP
2106.05(e) for more information on this
consideration, including a discussion of the
exemplar provided herein, which is based on Diehr,
450 U.S. at 184, 187. See also USPTO Finjan
Memorandum (discussing Finjan and Core
Wireless).
30 For example, a limitation indicating that a
particular function such as creating and
maintaining electronic records is performed by a
computer, without specifying how. See MPEP
2106.05(f) for more information concerning mere
instructions to apply a judicial exception, including
a discussion of the exemplar provided herein,
which is based on Alice, 573 U.S. at 222–26. See
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55
• an additional element adds
insignificant extra-solution activity to
the judicial exception; 31 and
• an additional element does no more
than generally link the use of a judicial
exception to a particular technological
environment or field of use.32
It is critical that examiners consider
the claim as a whole when evaluating
whether the judicial exception is
meaningfully limited by integration into
a practical application of the exception.
Some elements may be enough on their
own to meaningfully limit an exception,
but other times it is the combination of
elements that provide the practical
application. When evaluating whether
an element (or combination of elements)
integrates an exception into a practical
application, examiners should give
careful consideration to both the
element and how it is used or arranged
in the claim as a whole. Because revised
Step 2A does not evaluate whether an
additional element is well-understood,
routine, conventional activity,
examiners are reminded that a claim
that includes conventional elements
may still integrate an exception into a
practical application, thereby satisfying
the subject matter eligibility
requirement of Section 101.33
also Benson, 409 U.S. 63 (holding that merely
implementing a mathematical principle on a
general purpose computer is a patent ineligible
abstract idea); Credit Acceptance Corp. v. Westlake
Services, 859 F.3d 1044 (Fed. Cir. 2017) (using a
computer as a tool to process an application for
financing a purchase).
31 For example, a mere data gathering such as a
step of obtaining information about credit card
transactions so that the information can be analyzed
in order to detect whether the transactions were
fraudulent. See MPEP 2106.05(g) for more
information concerning insignificant extra-solution
activity, including a discussion of the exemplar
provided herein, which is based on CyberSource,
654 F.3d at 1375. See also Mayo, 566 U.S. at 79
(concluding that additional element of measuring
metabolites of a drug administered to a patient was
insignificant extra-solution activity, which was
insufficient to confer patent eligibility); Flook, 437
U.S. at 590 (step of adjusting an alarm limit based
on the output of a mathematical formula was ‘‘postsolution activity’’ and did not render method patent
eligible).
32 For example, a claim describing how the
abstract idea of hedging could be used in the
commodities and energy markets, or a claim
limiting the use of a mathematical formula to the
petrochemical and oil-refining fields. See MPEP
2106.05(h) concerning generally linking use of a
judicial exception to a particular technological
environment or field of use, including a discussion
of the exemplars provided herein, which are based
on Bilski, 561 U.S. at 612, and Flook, 437 U.S. at
588–90. Thus, the mere application of an abstract
method of organizing human activity in a particular
field is not sufficient to integrate the judicial
exception into a practical application.
33 Of course, such claims must also satisfy the
other conditions and requirements of patentability,
for example, under section 102 (novelty), 103
(nonobviousness), and 112 (enablement, written
description, definiteness). Bilski, 561 U.S. at 602.
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B. Step 2B: If the Claim Is Directed to
a Judicial Exception, Evaluate Whether
the Claim Provides an Inventive
Concept
It is possible that a claim that does not
‘‘integrate’’ a recited judicial exception
is nonetheless patent eligible. For
example the claim may recite additional
elements that render the claim patent
eligible even though a judicial exception
is recited in a separate claim element.34
Along these lines, the Federal Circuit
has held claims eligible at the second
step of the Alice/Mayo test (USPTO Step
2B) because the additional elements
recited in the claims provided
‘‘significantly more’’ than the recited
judicial exception (e.g., because the
additional elements were
unconventional in combination).35
Therefore, if a claim has been
determined to be directed to a judicial
exception under revised Step 2A,
examiners should then evaluate the
additional elements individually and in
combination under Step 2B to
determine whether they provide an
inventive concept (i.e., whether the
additional elements amount to
significantly more than the exception
itself). If the examiner determines that
the element (or combination of
elements) amounts to significantly more
than the exception itself (Step 2B: YES),
the claim is eligible, thereby concluding
the eligibility analysis. If the examiner
determines that the element and
combination of elements does not
amount to significantly more than the
exception itself, the claim is ineligible
(Step 2B: NO) and the examiner should
reject the claim for lack of subject matter
eligibility.
While many considerations in Step
2A need not be reevaluated in Step 2B,
examiners should continue to consider
in Step 2B whether an additional
element or combination of elements:
• Adds a specific limitation or
combination of limitations that are not
well-understood, routine, conventional
activity in the field, which is indicative
that an inventive concept may be
present; or
• simply appends well-understood,
routine, conventional activities
previously known to the industry,
34 See, e.g., Diehr, 450 U.S. at 187 (‘‘Our earlier
opinions lend support to our present conclusion
that a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply
because it uses a mathematical formula, computer
program, or digital computer.’’); id. at 185 (‘‘Our
conclusion regarding respondents’ claims is not
altered by the fact that in several steps of the
process a mathematical equation and a programmed
digital computer are used.’’).
35 See, e.g., Amdocs, 841 F.3d at 1300, 1303;
BASCOM, 827 F.3d at 1349–52; DDR Holdings, 773
F.3d at 1257–59.
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specified at a high level of generality, to
the judicial exception, which is
indicative that an inventive concept
may not be present.36
For this reason, if an examiner had
previously concluded under revised
Step 2A that, e.g., an additional element
was insignificant extra-solution activity,
they should reevaluate that conclusion
in Step 2B. If such reevaluation
indicates that the element is
unconventional or otherwise more than
what is well-understood, routine,
conventional activity in the field, this
finding may indicate that an inventive
concept is present and that the claim is
thus eligible.37 For example, when
evaluating a claim reciting an abstract
idea such as a mathematical equation
and a series of data gathering steps that
collect a necessary input for the
equation, an examiner might consider
the data gathering steps to be
insignificant extra-solution activity in
revised Step 2A, and therefore find that
the judicial exception is not integrated
into a practical application.38 However,
when the examiner reconsiders the data
gathering steps in Step 2B, the examiner
could determine that the combination of
steps gather data in an unconventional
way and therefore include an ‘‘inventive
concept,’’ rendering the claim eligible at
Step 2B.39 Likewise, a claim that does
36 In accordance with existing guidance, an
examiner’s conclusion that an additional element
(or combination of elements) is well understood,
routine, conventional activity must be supported
with a factual determination. For more information
concerning evaluation of well-understood, routine,
conventional activity, see MPEP 2106.05(d), as
modified by the USPTO Berkheimer Memorandum.
37 Mayo, 566 U.S. at 82 (‘‘[S]imply appending
conventional steps, specified at a high level of
generality, to laws of nature, natural phenomena,
and abstract ideas cannot make those laws,
phenomena, and ideas patentable.’’); but see id. at
85 (‘‘[T]he claimed process included not only a law
of nature but also several unconventional steps
(such as inserting the receptacle, applying heat to
the receptacle externally, and blowing the air into
the furnace) that confined the claims to a particular,
useful application of the principle.’’ (discussing the
old English case, Neilson v. Harford, Webster’s
Patent Cases 295 (1841))).
38 See supra note 34; see also OIP Techs., 788
F.3d at 1363 (finding that gathering statistics
generated based on customer testing for input to a
pricing calculation ‘‘fail[s] to ‘transform’ the
claimed abstract idea into a patent-eligible
invention’’).
39 Compare Flook, 437 U.S. at 585–86 (holding
claimed method of updating alarm limits to be
ineligible because: ‘‘In essence, the method consists
of three steps: an initial step which merely
measures the present value of the process variable
(e.g., the temperature); an intermediate step which
uses an algorithm to calculate an updated alarmlimit value; and a final step in which the actual
alarm limit is adjusted to the updated value. The
only difference between the conventional methods
of changing alarm limits and that described in
respondent’s application rests in the second step—
the mathematical algorithm or formula.’’); with
Exergen Corp. v. Kaz USA, Inc., 725 F. App’x 959,
PO 00000
Frm 00007
Fmt 4703
Sfmt 4703
not meaningfully integrate a judicial
exception into a practical application of
the exception sufficient to pass muster
at Step 2A, may nonetheless include
additional subject matter that is
unconventional and thus an ‘‘inventive
concept’’ at Step 2B.40
C. Treating a Claim Limitation That
Does Not Fall Within the Enumerated
Groupings of Abstract Ideas as Reciting
an Abstract Idea
In the rare circumstance in which an
examiner believes a claim limitation
that does not fall within the enumerated
groupings of abstract ideas should
966 (Fed. Cir. 2018) (holding claimed body
temperature detector to be eligible because: ‘‘Here,
the patent is directed to the measurement of a
natural phenomenon (core body temperature). Even
if the concept of such measurement is directed to
a natural phenomenon and is abstract at step one,
the measurement method here was not
conventional, routine, and well-understood.
Following years and millions of dollars of testing
and development, the inventor determined for the
first time the coefficient representing the
relationship between temporal-arterial temperature
and core body temperature and incorporated that
discovery into an unconventional method of
temperature measurement.’’).
40 Compare Berkheimer, 881 F.3d at 1370
(holding independent claim 1 to be ineligible at
Alice step 2: ‘‘The[ ] conventional limitations of
claim 1, combined with limitations of analyzing
and comparing data and reconciling differences
between the data, fail to transform the abstract idea
into a patent-eligible invention. The limitations
amount to no more than performing the abstract
idea of parsing and comparing data with
conventional computer components’’) (internal
quotation marks and citation omitted); with id.
(concluding that dependent claims 4–7 may be
eligible: ‘‘Claims 4–7, in contrast, contain
limitations directed to the arguably unconventional
inventive concept described in the specification.
Claim 4 recites ‘storing a reconciled object structure
in the archive without substantial redundancy.’ The
specification states that storing object structures in
the archive without substantial redundancy
improves system operating efficiency and reduces
storage costs. It also states that known asset
management systems did not archive documents in
this manner. Claim 5 depends on claim 4 and
further recites ‘selectively editing an object
structure, linked to other structures to thereby effect
a one-to-many change in a plurality of archived
items.’ The specification states one-to-many editing
substantially reduces effort needed to update files
because a single edit can update every document in
the archive linked to that object structure. This oneto-many functionality is more than ‘editing data in
a straightforward copy-and-paste fashion,’ as
characterized by the district court. According to the
specification, conventional digital asset
management systems cannot perform one-to-many
editing because they store documents with
numerous instances of redundant elements, rather
than eliminate redundancies through the storage of
linked object structures. Claims 6–7 depend from
claim 5 and accordingly contain the same
limitations. These claims recite a specific method
of archiving that, according to the specification,
provides benefits that improve computer
functionality. . . . [T]here is at least a genuine
issue of material fact in light of the specification
regarding whether claims 4–7 archive documents in
an inventive manner that improves these aspects of
the disclosed archival system.’’) (internal quotation
marks and citations omitted).
E:\FR\FM\07JAN1.SGM
07JAN1
Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019 / Notices
nonetheless be treated as reciting an
abstract idea (‘‘tentative abstract idea’’),
the examiner should evaluate whether
the claim as a whole integrates the
recited tentative abstract idea into a
practical application as explained in
Section III.A.2. If the claim as a whole
integrates the recited tentative abstract
idea into a practical application, the
claim is not directed to a judicial
exception (Step 2A: NO) and is eligible
(thus concluding the eligibility
analysis). If the claim as a whole does
not integrate the recited tentative
abstract idea into a practical
application, then the examiner should
evaluate the additional elements
individually and in combination to
determine whether they provide an
inventive concept as explained in
Section III.B. If an additional element or
combination of additional elements
provides an inventive concept as
explained in Section III.B (Step 2B:
YES), the claim is eligible (thus
concluding the eligibility analysis). If
the additional element or combination
of additional elements does not provide
an inventive concept as explained in
Section III.B (Step 2B: NO), the
examiner should bring the application
to the attention of the Technology
Center Director. Any rejection in which
a claim limitation, which does not fall
within the enumerated abstract ideas
(tentative abstract idea), is nonetheless
treated as reciting an abstract idea must
be approved by the Technology Center
Director (which approval will be
indicated in the file record of the
application), and must provide a
justification 41 for why such claim
limitation is being treated as reciting an
abstract idea.42
khammond on DSK30JT082PROD with NOTICES
D. Compact Prosecution
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.43
Compact prosecution, however, does
not mandate that the patentability
41 Such justification may include, for example, an
explanation of why the element contains subject
matter that, per se, invokes eligibility concerns
similar to those expressed by the Supreme Court
with regard to the judicial exceptions. See supra
note 5.
42 Similarly, in the rare circumstance in which a
panel of administrative patent judges (or panel
majority) believes that a claim reciting a tentative
abstract idea should be treated as reciting an
abstract idea, the matter should be brought to the
attention of the PTAB leadership by a written
request for clearance.
43 See MPEP 2103 et seq. and 2106(III).
VerDate Sep<11>2014
18:34 Jan 04, 2019
Jkt 247001
requirements be analyzed in any
particular order.
Dated: December 20, 2018.
Andrei Iancu,
Under Secretary of Commerce for Intellectual
Property and Director of the United States
Patent and Trademark Office.
[FR Doc. 2018–28282 Filed 1–4–19; 8:45 am]
BILLING CODE 3510–16–P
DEPARTMENT OF COMMERCE
United States Patent and Trademark
Office
[Docket No. PTO–P–2018–0059]
Examining Computer-Implemented
Functional Claim Limitations for
Compliance With 35 U.S.C. 112
United States Patent and
Trademark Office, Commerce.
ACTION: Examination guidance; request
for comments.
AGENCY:
This guidance will assist
United States Patent and Trademark
Office (USPTO) personnel in the
examination of claims in patent
applications that contain functional
language, particularly patent
applications where functional language
is used to claim computer-implemented
inventions. Part I of this guidance
addresses issues related to the
examination of computer-implemented
functional claims having means-plusfunction limitations. Part II of this
guidance addresses written description
and enablement issues related to the
examination of computer-implemented
functional claims that recite only the
idea of a solution or outcome to a
problem but fail to recite details of how
the solution or outcome is
accomplished.
SUMMARY:
DATES:
Applicable Date: The ComputerImplemented Functional Claim
Limitations Guidance is effective on
January 7, 2019. The ComputerImplemented Functional Claim
Limitations Guidance applies to all
applications, and to all patents resulting
from applications, filed before, on or
after January 7, 2019.
Comment Deadline Date: Written
comments must be received on or before
March 8, 2019.
ADDRESSES: Comments must be sent by
electronic mail message over the
internet addressed to:
112Guidance2019@uspto.gov.
Electronic comments submitted in
plain text are preferred, but also may be
submitted in ADOBE® portable
document format or MICROSOFT
PO 00000
Frm 00008
Fmt 4703
Sfmt 4703
57
WORD® format. Comments not
submitted electronically should be
submitted on paper in a format that
facilitates convenient digital scanning
into ADOBE® portable document
format. The comments will be available
for viewing via the USPTO’s internet
website (https://www.uspto.gov). Because
comments will be made available for
public inspection, information that the
submitter does not desire to make
public, such as an address or phone
number, should not be included in the
comments.
FOR FURTHER INFORMATION CONTACT:
Nicole D. Haines, Senior Legal Advisor,
at 571–272–7717 or Jeffrey R. West,
Senior Legal Advisor, at 571–272–2226,
both with the Office of Patent Legal
Administration.
SUPPLEMENTARY INFORMATION: The patent
examination process must ensure that:
(1) The claims of an application have
proper written description and
enablement support under 35 U.S.C.
112(a) 1 in the disclosure of the
application, and (2) functional
limitations (i.e., claim limitations that
define an element in terms of the
function it performs without reciting the
structure, materials, or acts that perform
the function) are properly treated as
means (or step) plus function
limitations under 35 U.S.C. 112(f), and
are sufficiently definite under 35 U.S.C.
112(b), as appropriate. These
requirements are particularly relevant to
computer-implemented functional
claims.
The U.S. Court of Appeals for the
Federal Circuit (‘‘Federal Circuit’’) has
recognized a problem with broad
functional claiming without adequate
structural support in the specification.
Williamson v. Citrix Online, LLC, 792
F.3d 1339, 1349 (Fed. Cir. 2015) (en
banc) (overruling the Federal Circuit’s
previous application of a ‘‘strong’’
presumption that claim limitations
lacking the word ‘‘means’’ are not
subject to § 112(f) to address the
resulting ‘‘proliferation of functional
claiming untethered to [§ 112(f)] and
free of the strictures set forth in the
statute’’); Function Media, LLC v.
Google, Inc., 708 F.3d 1310, 1319 (Fed.
Cir. 2013) (‘‘ ‘Section [112(f)] is intended
1 Section 4 of the Leahy-Smith America Invents
Act (AIA) designated pre-AIA 35 U.S.C. 112, ¶ ¶ 1
through 6, as 35 U.S.C. 112(a) through (f), effective
as to applications filed on or after September 16,
2012. See Public Law 112–29, 4(c), 125 Stat. 284,
296 (2011). AIA 35 U.S.C. 112(a) and pre-AIA 35
U.S.C. 112, ¶ 1 are collectively referred to in this
notice as 35 U.S.C. 112(a); AIA 35 U.S.C. 112(b) and
pre-AIA 35 U.S.C. 112, ¶ 2 are collectively referred
to in this notice as 35 U.S.C. 112(b); and AIA 35
U.S.C. 112(f) and pre-AIA 35 U.S.C. 112, ¶ 6 are
collectively referred to in this notice as 35 U.S.C.
112(f).
E:\FR\FM\07JAN1.SGM
07JAN1
]]>Agencies
[Federal Register Volume 84, Number 4 (Monday, January 7, 2019)]
[Notices]
[Pages 50-57]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2018-28282]
========================================================================
Notices
Federal Register
________________________________________________________________________
This section of the FEDERAL REGISTER contains documents other than rules
or proposed rules that are applicable to the public. Notices of hearings
and investigations, committee meetings, agency decisions and rulings,
delegations of authority, filing of petitions and applications and agency
statements of organization and functions are examples of documents
appearing in this section.
========================================================================
Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019 /
Notices
[[Page 50]]
DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No. PTO-P-2018-0053]
2019 Revised Patent Subject Matter Eligibility Guidance
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Examination Guidance; Request for comments.
-----------------------------------------------------------------------
SUMMARY: The United States Patent and Trademark Office (USPTO) has
prepared revised guidance (2019 Revised Patent Subject Matter
Eligibility Guidance) for use by USPTO personnel in evaluating subject
matter eligibility. The 2019 Revised Patent Subject Matter Eligibility
Guidance revises the procedures for determining whether a patent claim
or patent application claim is directed to a judicial exception (laws
of nature, natural phenomena, and abstract ideas) under Step 2A of the
USPTO's Subject Matter Eligibility Guidance in two ways. First, the
2019 Revised Patent Subject Matter Eligibility Guidance explains that
abstract ideas can be grouped as, e.g., mathematical concepts, certain
methods of organizing human activity, and mental processes. Second,
this guidance explains that a patent claim or patent application claim
that recites a judicial exception is not ``directed to'' the judicial
exception if the judicial exception is integrated into a practical
application of the judicial exception. A claim that recites a judicial
exception, but is not integrated into a practical application, is
directed to the judicial exception under Step 2A and must then be
evaluated under Step 2B (inventive concept) to determine the subject
matter eligibility of the claim. The USPTO is seeking public comment on
its subject matter eligibility guidance, and particularly the 2019
Revised Patent Subject Matter Eligibility Guidance.
DATES:
Applicable Date: The 2019 Revised Patent Subject Matter Eligibility
Guidance is effective on January 7, 2019. The 2019 Revised Patent
Subject Matter Eligibility Guidance applies to all applications, and to
all patents resulting from applications, filed before, on, or after
January 7, 2019.
Comment Deadline Date: Written comments must be received on or
before March 8, 2019.
ADDRESSES: Comments must be sent by electronic mail message over the
internet addressed to: Eligibility2019@uspto.gov.
Electronic comments submitted in plain text are preferred, but also
may be submitted in ADOBE[supreg] portable document format or MICROSOFT
WORD[supreg] format. Comments not submitted electronically should be
submitted on paper in a format that facilitates convenient digital
scanning into ADOBE[supreg] portable document format. The comments will
be available for viewing via the USPTO's internet website (https://www.uspto.gov). Because comments will be made available for public
inspection, information that the submitter does not desire to make
public, such as an address or phone number, should not be included in
the comments.
FOR FURTHER INFORMATION CONTACT: June E. Cohan, Senior Legal Advisor,
at 571-272-7744 or Carolyn Kosowski, Senior Legal Advisor, at 571-272-
7688, both with the Office of Patent Legal Administration.
SUPPLEMENTARY INFORMATION: Patent subject matter eligibility under 35
U.S.C. 101 has been the subject of much attention over the past decade.
Recently, much of that attention has focused on how to apply the U.S.
Supreme Court's framework for evaluating eligibility (often called the
Alice/Mayo test).\1\ Properly applying the Alice/Mayo test in a
consistent manner has proven to be difficult, and has caused
uncertainty in this area of the law. Among other things, it has become
difficult in some cases for inventors, businesses, and other patent
stakeholders to reliably and predictably determine what subject matter
is patent-eligible. The legal uncertainty surrounding Section 101 poses
unique challenges for the USPTO, which must ensure that its more than
8500 patent examiners and administrative patent judges apply the Alice/
Mayo test in a manner that produces reasonably consistent and
predictable results across applications, art units and technology
fields.
---------------------------------------------------------------------------
\1\ Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217-
18 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66 (2012)).
---------------------------------------------------------------------------
Since the Alice/Mayo test was announced and began to be extensively
applied, the courts and the USPTO have tried to consistently
distinguish between patent-eligible subject matter and subject matter
falling within a judicial exception. Even so, patent stakeholders have
expressed a need for more clarity and predictability in its
application. In particular, stakeholders have expressed concern with
the proper scope and application of the ``abstract idea'' exception.
Some courts share these concerns, for example as demonstrated by
several recent concurrences and dissents in the U.S. Court of Appeals
for the Federal Circuit (``Federal Circuit'') calling for changes in
the application of Section 101 jurisprudence.\2\ Many stakeholders,
judges, inventors, and practitioners across the spectrum have argued
that something needs to be done to increase clarity and consistency in
how Section 101 is currently applied.
---------------------------------------------------------------------------
\2\ See, e.g., Interval Licensing LLC, v. AOL, Inc., 896 F.3d
1335, 1348 (Fed. Cir. 2018) (Plager, J., concurring in part and
dissenting in part); Smart Sys. Innovations, LLC v. Chicago Transit
Auth., 873 F.3d 1364, 1377 (Fed. Cir. 2017) (Linn, J., dissenting in
part and concurring in part); Berkheimer v. HP Inc., 890 F.3d 1369,
1376 (Fed. Cir. 2018) (Lourie, J., joined by Newman, J., concurring
in denial of rehearing en banc).
---------------------------------------------------------------------------
To address these and other concerns, the USPTO is revising its
examination procedure with respect to the first step of the Alice/Mayo
test \3\ (Step 2A of the USPTO's Subject Matter Eligibility Guidance as
incorporated into the Manual of Patent Examining Procedure (``MPEP'')
2106) \4\ by: (1) Providing groupings of subject matter that is
considered an abstract idea; and (2) clarifying that a claim is not
``directed to'' a judicial exception if the judicial exception is
integrated into a practical application of that exception.
---------------------------------------------------------------------------
\3\ The first step of the Alice/Mayo test is to determine
whether the claims are ``directed to'' a judicial exception. Alice,
573 U.S. at 217 (citing Mayo, 566 U.S. at 77).
\4\ All references to the MPEP in the 2019 Revised Patent
Subject Matter Eligibility Guidance are to the Ninth Edition,
Revision 08-2017 (rev. Jan. 2018), unless otherwise indicated.
---------------------------------------------------------------------------
[[Page 51]]
Section I of this 2019 Revised Patent Subject Matter Eligibility
Guidance explains that the judicial exceptions are for subject matter
that has been identified as the ``basic tools of scientific and
technological work,'' \5\ which includes ``abstract ideas'' such as
mathematical concepts, certain methods of organizing human activity,
and mental processes; as well as laws of nature and natural phenomena.
Only when a claim recites a judicial exception does the claim require
further analysis in order to determine its eligibility. The groupings
of abstract ideas contained in this guidance enable USPTO personnel to
more readily determine whether a claim recites subject matter that is
an abstract idea.
---------------------------------------------------------------------------
\5\ Mayo, 566 U.S. at 71 (``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'' (quoting Gottschalk v. Benson, 409 U.S. 63, 67
(1972)).
---------------------------------------------------------------------------
Section II explains that the USPTO has set forth a revised
procedure, rooted in Supreme Court caselaw, to determine whether a
claim is ``directed to'' a judicial exception under the first step of
the Alice/Mayo test (USPTO Step 2A).
Section III explains the revised procedure that will be applied by
the USPTO. The procedure focuses on two aspects of Revised Step 2A: (1)
Whether the claim recites a judicial exception; and (2) whether a
recited judicial exception is integrated into a practical application.
Only when a claim recites a judicial exception and fails to integrate
the exception into a practical application, is the claim ``directed
to'' a judicial exception, thereby triggering the need for further
analysis pursuant to the second step of the Alice/Mayo test (USPTO Step
2B). Finally, if further analysis at Step 2B is needed (for example to
determine whether the claim merely recites well-understood, routine,
conventional activity), this 2019 Revised Patent Subject Matter
Eligibility Guidance explains that the examiner or administrative
patent judge will proceed in accordance with existing USPTO guidance as
modified in April 2018.\6\
---------------------------------------------------------------------------
\6\ USPTO Memorandum of April 19, 2018, ``Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject
Matter Eligibility Decision (Berkheimer v. HP, Inc.)'' (Apr. 19,
2018), available at https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-20180419.PDF [hereinafter ``USPTO
Berkheimer Memorandum''].
---------------------------------------------------------------------------
The USPTO is seeking public comment on its subject matter
eligibility guidance, and particularly the 2019 Revised Patent Subject
Matter Eligibility Guidance. The USPTO is determined to continue its
mission to provide predictable and reliable patent rights in accordance
with this rapidly evolving area of the law. The USPTO's ultimate goal
is to draw distinctions between claims to principles in the abstract
and claims that integrate those principles into a practical
application. To that end, the USPTO may issue further guidance, or
modify the current guidance, in the future based on its review of the
comments received, further experience of the USPTO and its
stakeholders, and additional judicial actions. Implementation of
examination guidance on eligibility is an iterative process and may
continue with periodic supplements. The USPTO invites the public to
submit suggestions on eligibility-related topics to address in future
guidance supplements as part of their comments on the USPTO's subject
matter eligibility guidance.
Impact on Examination Procedure and Prior Examination Guidance:
This 2019 Revised Patent Subject Matter Eligibility Guidance supersedes
MPEP 2106.04(II) (Eligibility Step 2A: Whether a Claim Is Directed to a
Judicial Exception) to the extent it equates claims ``reciting'' a
judicial exception with claims ``directed to'' a judicial exception,
along with any other portion of the MPEP that conflicts with this
guidance. A chart identifying portions of the MPEP that are affected by
this guidance will be available for viewing via the USPTO's internet
website (https://www.uspto.gov). This 2019 Revised Patent Subject Matter
Eligibility Guidance also supersedes all versions of the USPTO's
``Eligibility Quick Reference Sheet Identifying Abstract Ideas'' (first
issued in July 2015 and updated most recently in July 2018).
Eligibility-related guidance issued prior to the Ninth Edition, R-
08.2017, of the MPEP (published Jan. 2018) should not be relied upon.
However, any claim considered patent eligible under prior guidance
should be considered patent eligible under this guidance.
This guidance does not constitute substantive rulemaking and does
not have the force and effect of law. The guidance sets out agency
policy with respect to the USPTO's interpretation of the subject matter
eligibility requirements of 35 U.S.C. 101 in view of decisions by the
Supreme Court and the Federal Circuit. The guidance was developed as a
tool for internal USPTO management and does not create any right or
benefit, substantive or procedural, enforceable by any party against
the USPTO. Rejections will continue to be based upon the substantive
law, and it is those rejections that are appealable to the Patent Trial
and Appeal Board (PTAB) and the courts. All USPTO personnel are, as a
matter of internal agency management, expected to follow the guidance.
Failure of USPTO personnel to follow the guidance, however, is not, in
itself, a proper basis for either an appeal or a petition.
I. Groupings of Abstract Ideas
The Supreme Court has held that the patent eligibility statute,
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.'' \7\ 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.'' \8\
---------------------------------------------------------------------------
\7\ Alice Corp., 573 U.S. at 216 (internal citation and
quotation marks omitted); Mayo, 566 U.S. at 71.
\8\ Id. (internal citation and quotation marks omitted).
---------------------------------------------------------------------------
Since the Alice case, courts have been ``compare[ing] claims at
issue to those claims already found to be directed to an abstract idea
in previous cases.'' \9\ Likewise, the USPTO has issued guidance to the
patent examining corps about Federal Circuit decisions applying the
Alice/Mayo test, for instance describing the subject matter claimed in
the patent in suit and noting whether or not certain subject matter has
been identified as an abstract idea.\10\
---------------------------------------------------------------------------
\9\ See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334
(Fed. Cir. 2016); see also Amdocs (Israel) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (``[T]he decisional
mechanism courts now apply [to identify an abstract idea] is to
examine earlier cases in which a similar or parallel descriptive
nature can be seen--what prior cases were about, and which way they
were decided.'').
\10\ See, e.g., 2014 Interim Guidance on Subject Matter
Eligibility, 79 FR 74618, 74628-32 (Dec. 16, 2014) (discussing
concepts identified as abstract ideas); July 2015 Update: Subject
Matter Eligibility (Jul. 30, 2015), at 3-5, available at https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-update.pdf
(same); USPTO Memorandum of May 19, 2016, ``Recent Subject Matter
Eligibility Decisions (Enfish, LLC v. Microsoft Corp. and TLI
Communications LLC v. A.V. Automotive, LLC),'' at 2 (May 19, 2016),
available at https://www.uspto.gov/sites/default/files/documents/ieg-may-2016_enfish_memo.pdf [hereinafter, ``USPTO Enfish
Memorandum''] (discussing the abstract idea in TLI Communications
LLC v. A.V. Automotive, LLC, 823 F.3d 607 (Fed. Cir. 2016)); USPTO
Memorandum of November 2, 2016, ``Recent Subject Matter Eligibility
Decisions,'' at 2 (Nov. 2, 2016), available at https://www.uspto.gov/sites/default/files/documents/McRo-Bascom-Memo.pdf
[hereinafter, ``USPTO McRo Memorandum''] (discussing how the claims
in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299
(Fed. Cir. 2016), were directed to an improvement instead of an
abstract idea); USPTO Memorandum of April 2, 2018, ``Recent Subject
Matter Eligibility Decisions'' (Apr. 2, 2018), available at https://www.uspto.gov/sites/default/files/documents/memo-recent-sme-ctdec-20180402.PDF [hereinafter ``USPTO Finjan Memorandum''] (discussing
how the claims in Finjan Inc. v. Blue Coat Systems, Inc., 879 F.3d
1299 (Fed. Cir. 2018), and Core Wireless Licensing, S.A.R.L. v. LG
Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018), were directed to
improvements instead of abstract ideas); USPTO Berkheimer Memorandum
at 2 (discussing the abstract idea in Berkheimer); MPEP 2106.04(a)
(reviewing cases that did and did not identify abstract ideas).
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[[Page 52]]
While that approach was effective soon after Alice was decided, it
has since become impractical. The Federal Circuit has now issued
numerous decisions identifying subject matter as abstract or non-
abstract in the context of specific cases, and that number is
continuously growing. In addition, similar subject matter has been
described both as abstract and not abstract in different cases.\11\ The
growing body of precedent has become increasingly more difficult for
examiners to apply in a predictable manner, and concerns have been
raised that different examiners within and between technology centers
may reach inconsistent results.
---------------------------------------------------------------------------
\11\ E.g., compare TLI Commc'ns, 823 F.3d at 611, with Enfish,
822 F.3d at 1335, and Visual Memory LLC v. NVIDIA Corp., 867 F.3d
1253, 1258 (Fed. Cir. 2017). While computer operations such as
``output of data analysis . . . can be abstract,'' Credit Acceptance
Corp. v. Westlake Servs., 859 F.3d 1044, 1056 (Fed. Cir. 2017),
``software-based innovations can [also] make `non-abstract
improvements to computer technology' and be deemed patent-eligible
subject matter at step 1 [of the Mayo/Alice test],'' Finjan, 879
F.3d at 1304 (quoting Enfish, 822 F.3d at 1335). Indeed, the Federal
Circuit has held that ``improvements in computer-related
technology'' and ``claims directed to software'' are not
``inherently abstract.'' Enfish, 822 F.3d at 1335; see also Visual
Memory, 867 F.3d at 1258. These developments in the caselaw can
create complications for the patent-examination process. For
example, claims in one application could be deemed to be abstract,
whereas slightly different claims directed to the same or similar
subject matter could be determined to reflect a patent eligible
``improvement.'' Alternatively, claims in one application could be
found to be abstract, whereas claims to the same or similar subject
matter in another application, containing additional or different
embodiments in the specification, could be deemed eligible as not
directed to an abstract idea. In other words, the finding that the
subject matter claimed in a prior patent was ``abstract'' as claimed
may not determine whether similar subject matter in another
application, claimed somewhat differently or supported by a
different disclosure, is directed to an abstract idea and therefore
patent ineligible.
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The USPTO, therefore, aims to clarify the analysis. In accordance
with judicial precedent and in an effort to improve consistency and
predictability, the 2019 Revised Patent Subject Matter Eligibility
Guidance extracts and synthesizes key concepts identified by the courts
as abstract ideas to explain that the abstract idea exception includes
the following groupings of subject matter, when recited as such in a
claim limitation(s) (that is, when recited on their own or per se):
(a) Mathematical concepts--mathematical relationships, mathematical
formulas or equations, mathematical calculations; \12\
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\12\ Bilski v. Kappos, 561 U.S. 593, 611 (2010) (``The concept
of hedging . . . reduced to a mathematical formula . . . is an
unpatentable abstract idea[.]''); Diamond v. Diehr, 450 U.S. 175,
191 (1981) (``A mathematical formula as such is not accorded the
protection of our patent laws'') (citing Benson, 409 U.S. 63);
Parker v. Flook, 437 U.S. 584, 594 (1978) (``[T]he discovery of [a
mathematical formula] cannot support a patent unless there is some
other inventive concept in its application.''); Benson, 409 U.S. at
71-72 (concluding that permitting a patent on the claimed invention
``would wholly pre-empt the mathematical formula and in practical
effect would be a patent on the algorithm itself''); Mackay Radio &
Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939) (``[A]
scientific truth, or the mathematical expression of it, is not
patentable invention[.]''); SAP America, Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018) (holding that claims to a ``series
of mathematical calculations based on selected information'' are
directed to abstract ideas); Digitech Image Techs., LLC v. Elecs.
for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (holding
that claims to a ``process of organizing information through
mathematical correlations'' are directed to an abstract idea);
Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687
F.3d 1266, 1280 (Fed. Cir. 2012) (identifying the concept of
``managing a stable value protected life insurance policy by
performing calculations and manipulating the results'' as an
abstract idea).
---------------------------------------------------------------------------
(b) 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); \13\ and
---------------------------------------------------------------------------
\13\ Alice, 573 U.S. at 219-20 (concluding that use of a third
party to mediate settlement risk is a ``fundamental economic
practice'' and thus an abstract idea); id. (describing the concept
of risk hedging identified as an abstract idea in Bilski as ``a
method of organizing human activity''); Bilski, 561 U.S. at 611-612
(concluding that hedging is a ``fundamental economic practice'' and
therefore an abstract idea); Bancorp, 687 F.3d at 1280 (concluding
that ``managing a stable value protected life insurance policy by
performing calculations and manipulating the results'' is an
abstract idea); Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.,
876 F.3d 1372, 1378-79 (Fed. Cir. 2017) (holding that concept of
``local processing of payments for remotely purchased goods'' is a
``fundamental economic practice, which Alice made clear is, without
more, outside the patent system.''); OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) (concluding that
claimed concept of ``offer-based price optimization'' is an abstract
idea ``similar to other `fundamental economic concepts' found to be
abstract ideas by the Supreme Court and this court''); buySAFE, Inc.
v. Google, Inc., 765 F.3d. 1350, 1355 (Fed. Cir. 2014) (holding that
concept of ``creating a contractual relationship--a `transaction
performance guaranty' '' is an abstract idea); In re Comiskey, 554
F.3d 967, 981 (Fed. Cir. 2009) (claims directed to ``resolving a
legal dispute between two parties by the decision of a human
arbitrator'' are ineligible); Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 715 (Fed Cir. 2014) (holding that claim ``describe[ing]
only the abstract idea of showing an advertisement before delivering
free content'' is patent ineligible); In re Ferguson, 558 F.3d 1359,
1364 (Fed Cir. 2009) (holding methods ``directed to organizing
business or legal relationships in the structuring of a sales force
(or marketing company)'' to be ineligible); Credit Acceptance, 859
F.3d 1044 at 1054 (``The Board determined that the claims are
directed to the abstract idea of `processing an application for
financing a purchase.' . . . We agree.''); Interval Licensing, 896
F.3d at 1344-45 (concluding that ``[s]tanding alone, the act of
providing someone an additional set of information without
disrupting the ongoing provision of an initial set of information is
an abstract idea,'' observing that the district court ``pointed to
the nontechnical human activity of passing a note to a person who is
in the middle of a meeting or conversation as further illustrating
the basic, longstanding practice that is the focus of the [patent
ineligible] claimed invention.''); Voter Verified, Inc. v. Election
Systems & Software, LLC, 887 F.3d 1376, 1385 (Fed. Cir. 2018)
(finding the concept of ``voting, verifying the vote, and submitting
the vote for tabulation,'' a ``fundamental activity'' that humans
have performed for hundreds of years, to be an abstract idea); In re
Smith, 815 F.3d 816, 818 (Fed. Cir. 2016) (concluding that
``[a]pplicants' claims, directed to rules for conducting a wagering
game'' are abstract).
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(c) Mental processes--concepts performed in the human mind \14\
(including an observation, evaluation, judgment, opinion).\15\
---------------------------------------------------------------------------
\14\ If a claim, under its broadest reasonable interpretation,
covers performance in the mind but for the recitation of generic
computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the
mind. See Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d
1307, 1318 (Fed. Cir. 2016) (``[W]ith the exception of generic
computer-implemented steps, there is nothing in the claims
themselves that foreclose them from being performed by a human,
mentally or with pen and paper.''); Mortg. Grader, Inc. v. First
Choice Loan Servs. Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016)
(holding that computer-implemented method for ``anonymous loan
shopping'' was an abstract idea because it could be ``performed by
humans without a computer''); Versata Dev. Grp. v. SAP Am., Inc.,
793 F.3d 1306, 1335 (Fed. Cir. 2015) (``Courts have examined claims
that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen
and paper or in a person's mind.''); CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375, 1372 (Fed. Cir. 2011) (holding
that the incidental use of ``computer'' or ``computer readable
medium'' does not make a claim otherwise directed to process that
``can be performed in the human mind, or by a human using a pen and
paper'' patent eligible); id. at 1376 (distinguishing Research Corp.
Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), and SiRF
Tech., Inc. v. Int'l Trade Comm'n, 601 F.3d 1319 (Fed. Cir. 2010),
as directed to inventions that ``could not, as a practical matter,
be performed entirely in a human's mind''). Likewise, performance of
a claim limitation using generic computer components does not
necessarily preclude the claim limitation from being in the
mathematical concepts grouping, Benson, 409 U.S. at 67, or the
certain methods of organizing human activity grouping, Alice, 573
U.S. at 219-20.
\15\ Mayo, 566 U.S. at 71 (`` `[M]ental processes[ ] and
abstract intellectual concepts are not patentable, as they are the
basic tools of scientific and technological work' '' (quoting
Benson, 409 U.S. at 67)); Flook, 437 U.S. at 589 (same); Benson, 409
U.S. at 67, 65 (noting that the claimed ``conversion of [binary-
coded decimal] numerals to pure binary numerals can be done
mentally,'' i.e., ``as a person would do it by head and hand.'');
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, (Fed.
Cir. 2016) (holding that claims to the mental process of
``translating a functional description of a logic circuit into a
hardware component description of the logic circuit'' are directed
to an abstract idea, because the claims ``read on an individual
performing the claimed steps mentally or with pencil and paper'');
Mortg. Grader, 811 F.3d. at 1324 (concluding that concept of
``anonymous loan shopping'' is an abstract idea because it could be
``performed by humans without a computer''); In re BRCA1 & BRCA2-
Based Hereditary Cancer Test Patent Litig., 774 F.3d 755, 763 (Fed.
Cir. 2014) (concluding that concept of ``comparing BRCA sequences
and determining the existence of alterations'' is an ``abstract
mental process''); In re Brown, 645 F. App'x. 1014, 1017 (Fed. Cir.
2016) (non-precedential) (claim limitations ``encompass the mere
idea of applying different known hair styles to balance one's head.
Identifying head shape and applying hair designs accordingly is an
abstract idea capable, as the Board notes, of being performed
entirely in one's mind'').
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[[Page 53]]
Claims that do not recite matter that falls within these enumerated
groupings of abstract ideas should not be treated as reciting abstract
ideas, except as follows: In the rare circumstance in which a USPTO
employee believes a claim limitation that does not fall within the
enumerated groupings of abstract ideas should nonetheless be treated as
reciting an abstract idea, the procedure described in Section III.C for
analyzing the claim should be followed.
II. ``Directed To'' a Judicial Exception
The Supreme Court has long distinguished between principles
themselves (which are not patent eligible) and the integration of those
principles into practical applications (which are patent eligible).\16\
Similarly, in a growing body of decisions, the Federal Circuit has
distinguished between claims that are ``directed to'' a judicial
exception (which require further analysis to determine their
eligibility) and those that are not (which are therefore patent
eligible).\17\ For example, an improvement in the functioning of a
computer or other technology or technological field may render a claim
patent eligible at step one of the Alice/Mayo test even if it recites
an abstract idea, law of nature, or natural phenomenon.\18\ Moreover,
recent Federal Circuit jurisprudence has indicated that eligible
subject matter can often be identified either at the first or the
second step of the Alice/Mayo test.\19\ These revised patent
examination procedures are designed to more accurately and consistently
identify claims that recite a practical application of a judicial
exception (and thus are not ``directed to'' a judicial exception),
thereby increasing predictability and consistency in the patent
eligibility analysis. This analysis is performed at USPTO Step 2A, and
incorporates certain considerations that have been applied by the
courts at step one and at step two of the Alice/Mayo framework, given
the recognized overlap in the steps depending on the facts of any given
case.
---------------------------------------------------------------------------
\16\ See, e.g., Alice, 573 U.S. at 217 (explaining that ``in
applying the Sec. 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) 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
(noting that the Court in 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 Benson ``held that simply implementing a mathematical principle
on a physical machine, namely a computer, was not a patentable
application of that principle''); Bilski, 561 U.S. at 611 (``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 Diehr, 450
U.S. at 187) (emphasis in original)); Diehr, 450 U.S. at 187, 192
n.14 (explaining that the process in Flook was ineligible not
because it contained a mathematical formula, but because it did not
provide an application of the formula); Mackay Radio, 306 U.S. at 94
(``While a scientific truth, or the mathematical expression of it,
is not patentable invention, a novel and useful structure created
with the aid of knowledge of scientific truth may be.''); Le Roy v.
Tatham, 55 U.S. (14 How.) 156, 175 (1852) (``The elements of the
[natural phenomena] exist; the invention is not in discovering them,
but in applying them to useful objects.'').
\17\ See, e.g., MPEP 2106.06(b) (summarizing Enfish, McRO, and
other cases that were eligible as improvements to technology or
computer functionality instead of abstract ideas); USPTO Finjan
Memorandum (discussing Finjan, and Core Wireless); USPTO Memorandum
of June 7, 2018, ``Recent Subject Matter Eligibility Decision: Vanda
Pharmaceuticals Inc. v. West-Ward Pharmaceuticals,'' available at
https://www.uspto.gov/sites/default/files/documents/memo-vanda-20180607.PDF [hereinafter ``USPTO Vanda Memorandum'']; BASCOM Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352
(Fed. Cir. 2016) (concluding that claims could be eligible if
ordered combination of limitations ``transform the abstract idea . .
. into a particular, practical application of that abstract
idea.''); Arrhythmia Research Tech., Inc. v. Corazonix Corp., 958
F.2d 1053, 1056-57 (Fed. Cir. 1992) (``As the jurisprudence
developed, inventions that were implemented by the mathematically-
directed performance of computers were viewed in the context of the
practical application to which the computer-generated data were
put.''); CLS Bank Int'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269,
1315 (Fed. Cir. 2013) (Moore, J., joined by Rader, C.J., and Linn
and O'Malley, JJ., dissenting in part) (``The key question is thus
whether a claim recites a sufficiently concrete and practical
application of an abstract idea to qualify as patent-eligible.''),
aff'd, 573 U.S. 208 (2014).
\18\ See, e.g., McRO, 837 F.3d at 1316; Enfish, 822 F.3d at
1336; Core Wireless, 880 F.3d at 1362.
\19\ See, e.g., Vanda Pharm. Inc. v. West-Ward Pharm. Int'l
Ltd., 887 F.3d 1117, 1134 (Fed. Cir. 2018) (``If the claims are not
directed to a patent ineligible concept at step one, we need not
address step two of the inquiry.''); Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 2016) (holding
that claimed invention is patent eligible because it is not directed
to a patent-ineligible concept under step one or is an inventive
application of the patent-ineligible concept under step two);
Enfish, 822 F.3d at 1339 (noting that eligibility determination can
be reached either because claims not directed to an abstract idea
under step one or recite a concrete improvement under step two);
McRO, 837 F.3d at 1313 (recognizing that the ``court must look to
the claims as an ordered combination'' in determining patentability
``[w]hether at step one or step two of the Alice test''); Amdocs,
841 F.3d at 1294 (observing that recent cases ``suggest that there
is considerable overlap between step one and step two, and in some
situations [the inventive concept] analysis could be accomplished
without going beyond step one''). See also Ancora Techs. v. HTC Am.,
908 F.3d 1343, 1349 (Fed. Cir. 2018) (noting, in accord with the
``recognition of overlaps between some step one and step two
considerations,'' that its conclusion of eligibility at step one is
``indirectly reinforced by some of [its] prior holdings under step
two'').
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In accordance with judicial precedent, and to increase consistency
in examination practice, the 2019 Revised Patent Subject Matter
Eligibility Guidance sets forth a procedure to determine whether a
claim is ``directed to'' a judicial exception under USPTO Step 2A.
Under the procedure, if a claim recites a judicial exception (a law of
nature, a natural phenomenon, or an abstract idea as grouped in Section
I, above), it must then be analyzed to determine whether the recited
judicial exception is integrated into a practical application of that
exception. A claim is not ``directed to'' a judicial exception, and
thus is patent eligible, if the claim as a whole integrates the recited
judicial exception into a practical application of that exception. A
claim that integrates a judicial exception into a practical application
will apply, rely on, or use the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the
claim is more than a drafting effort designed to monopolize the
judicial exception.
III. Instructions for Applying Revised Step 2A During Examination
Examiners should determine whether a claim satisfies the criteria
for subject matter eligibility by evaluating the claim in accordance
with the criteria discussed in MPEP 2106, i.e., whether the claim is to
a statutory category (Step 1) and the Alice/Mayo test for judicial
exceptions (Steps 2A and 2B). The procedure set forth herein (referred
to as ``revised Step 2A'') changes how examiners should apply the first
step of the Alice/Mayo test, which determines whether a claim is
``directed to'' a judicial exception.
As before, Step 1 of the USPTO's eligibility analysis entails
considering whether the claimed subject matter falls within the four
statutory categories of
[[Page 54]]
patentable subject matter identified by 35 U.S.C. 101: Process,
machine, manufacture, or composition of matter. The 2019 Revised Patent
Subject Matter Eligibility Guidance does not change Step 1 or the
streamlined analysis, which are discussed in MPEP 2106.03 and 2106.06,
respectively. Examiners may continue to use a streamlined analysis
(Pathway A) when the patent eligibility of a claim is self-evident.
Step 2A of the 2019 Revised Patent Subject Matter Eligibility
Guidance is a two-prong inquiry. In Prong One, examiners evaluate
whether the claim recites a judicial exception.\20\ This prong is
similar to procedures in prior guidance except that when determining if
a claim recites an abstract idea, examiners now refer to the subject
matter groupings of abstract ideas in Section I instead of comparing
the claimed concept to the USPTO's prior ``Eligibility Quick Reference
Sheet Identifying Abstract Ideas.''
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\20\ This notice does not change the type of claim limitations
that are considered to recite a law of nature or natural phenomenon.
For more information about laws of nature and natural phenomena,
including products of nature, see MPEP 2106.04(b) and (c).
---------------------------------------------------------------------------
If the claim recites a judicial exception (i.e., an
abstract idea enumerated in Section I of the 2019 Revised Patent
Subject Matter Eligibility Guidance, 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 subject matter within the enumerated
groupings of abstract ideas in Section I), then the claim is eligible
at Prong One of revised Step 2A. This concludes the eligibility
analysis, except in the rare circumstance described below.\21\
---------------------------------------------------------------------------
\21\ Even if a claim is determined to be patent eligible under
section 101, this or any other step of the eligibility analysis does
not end the inquiry. The claims must also satisfy the other
conditions and requirements for patentability, for example, under
section 102 (novelty), 103 (nonobviousness), or 112 (enablement,
written description, definiteness). Bilski, 561 U.S. at 602.
Examiners should take care not to confuse or intermingle
patentability requirements of these separate sections with patent
eligibility analysis under section 101.
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In the rare circumstance in which an examiner believes a
claim limitation that does not fall within the enumerated groupings of
abstract ideas should nonetheless be treated as reciting an abstract
idea, the procedure described in Section III.C for analyzing the claim
should be followed.
In Prong Two, examiners evaluate whether the claim recites
additional elements that integrate the exception into a practical
application of that exception. This prong adds a more detailed
eligibility analysis to step one of the Alice/Mayo test (USPTO Step 2A)
than was required under prior guidance.
If the recited exception is integrated into a practical
application of the exception, then the claim is eligible at Prong Two
of revised Step 2A. 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, and requires further analysis under
Step 2B (where it may still be eligible if it amounts to an ``inventive
concept'').\22\
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\22\ See, e.g., Amdocs, 841 F.3d at 1300, 1303; BASCOM, 827 F.3d
at 1349-52; DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1257-59 (Fed. Cir. 2014); USPTO Berkheimer Memorandum; see also
Rapid Litig., 827 F.3d at 1050 (holding that claimed invention is
patent eligible because it is not directed to a patent-ineligible
concept under step one or is an inventive application of the patent-
ineligible concept under step two).
---------------------------------------------------------------------------
The following discussion provides additional detail on this revised
procedure.
A. Revised Step 2A
1. Prong One: Evaluate Whether the Claim Recites a Judicial Exception
In Prong One, examiners should evaluate whether the claim recites a
judicial exception, i.e., an abstract idea, a law of nature, or a
natural phenomenon. If the claim does not recite a judicial exception,
it is not directed to a judicial exception (Step 2A: NO) and is
eligible. This concludes the eligibility analysis. If the claim does
recite a judicial exception, then it requires further analysis in Prong
Two of Revised Step 2A to determine whether it is directed to the
recited exception, as explained in Section III.A.2 of the 2019 Revised
Patent Subject Matter Eligibility Guidance.
For abstract ideas, Prong One represents a change as compared to
prior guidance. To determine whether a claim recites an abstract idea
in Prong One, examiners are now to: (a) Identify the specific
limitation(s) in the claim under examination (individually or in
combination) that the examiner believes recites an abstract idea; and
(b) determine whether the identified limitation(s) falls within the
subject matter groupings of abstract ideas enumerated in Section I of
the 2019 Revised Patent Subject Matter Eligibility Guidance. If the
identified limitation(s) falls within the subject matter groupings of
abstract ideas enumerated in Section I, analysis should proceed to
Prong Two in order to evaluate whether the claim integrates the
abstract idea into a practical application. When evaluating Prong One,
examiners are no longer to use the USPTO's ``Eligibility Quick
Reference Sheet Identifying Abstract Ideas,'' which has been superseded
by this document.
In the rare circumstance in which an examiner believes a claim
limitation that does not fall within the enumerated groupings of
abstract ideas should nonetheless be treated as reciting an abstract
idea, the procedure described in Section III.C for analyzing the claim
should be followed.
For laws of nature and natural phenomena, Prong One does not
represent a change. Examiners should continue to follow existing
guidance to identify whether a claim recites one of these
exceptions,\23\ and if it does, proceed to Prong Two of the 2019
Revised Patent Subject Matter Eligibility Guidance in order to evaluate
whether the claim integrates the law of nature or natural phenomenon
into a practical application.
---------------------------------------------------------------------------
\23\ See MPEP 2106.04(b)-(c).
---------------------------------------------------------------------------
2. Prong Two: If the Claim Recites a Judicial Exception, Evaluate
Whether the Judicial Exception Is Integrated Into a Practical
Application
In Prong Two, examiners should evaluate whether the claim as a
whole integrates the recited judicial exception into a practical
application of the exception. A claim that integrates a judicial
exception into a practical application will apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception. When the exception is so
integrated, then the claim is not directed to a judicial exception
(Step 2A: NO) and is eligible. This concludes the eligibility analysis.
If the additional elements do not integrate the exception into a
practical application, then the claim is directed to the 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),
as explained in Section III.B of the 2019 Revised Patent Subject Matter
Eligibility Guidance.
Prong Two represents a change from prior guidance. The analysis
under Prong Two is the same for all claims reciting a judicial
exception, whether the exception is an abstract idea, a law of nature,
or a natural phenomenon.
Examiners evaluate integration into a practical application by: (a)
Identifying whether there are any additional elements recited in the
claim beyond
[[Page 55]]
the judicial exception(s); and (b) evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application, using one or more of the
considerations laid out by the Supreme Court and the Federal Circuit,
for example those listed below. While some of the considerations listed
below were discussed in prior guidance in the context of Step 2B,
evaluating them in revised Step 2A promotes early and efficient
resolution of patent eligibility, and increases certainty and
reliability. Examiners should note, however, that revised Step 2A
specifically excludes consideration of whether the additional elements
represent well-understood, routine, conventional activity. Instead,
analysis of well-understood, routine, conventional activity is done in
Step 2B. Accordingly, in revised Step 2A examiners should ensure that
they give weight to all additional elements, whether or not they are
conventional, when evaluating whether a judicial exception has been
integrated into a practical application.
In the context of revised Step 2A, the following exemplary
considerations are indicative that an additional element (or
combination of elements) \24\ may have integrated the exception into a
practical application:
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\24\ USPTO guidance uses the term ``additional elements'' to
refer to claim features, limitations, and/or steps that are recited
in the claim beyond the identified judicial exception. Again,
whether an additional element or combination of elements integrate
the exception into a practical application should be evaluated on
the claim as a whole.
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An additional element reflects an improvement in the
functioning of a computer, or an improvement to other technology or
technical field; \25\
---------------------------------------------------------------------------
\25\ For example, a modification of internet hyperlink protocol
to dynamically produce a dual-source hybrid web page. See MPEP
2106.05(a) for more information concerning improvements in the
functioning of a computer or to any other technology or technical
field, including a discussion of the exemplar provided herein, which
is based on DDR Holdings, 773 F.3d at 1258-59. See also USPTO Finjan
Memorandum (discussing Finjan and Core Wireless).
---------------------------------------------------------------------------
an additional element that applies or uses a judicial
exception to effect a particular treatment or prophylaxis for a disease
or medical condition; \26\
---------------------------------------------------------------------------
\26\ For example, an immunization step that integrates an
abstract idea into a specific process of immunizing that lowers the
risk that immunized patients will later develop chronic immune-
mediated diseases. See, e.g., Classen Immunotherapies, Inc. v.
Biogen IDEC, 659 F.3d 1057, 1066-68 (Fed. Cir. 2011). See also Vanda
Pharm. Inc. v. West-Ward Pharm. Int'l Ltd., 887 F.3d 1117, 1135
(Fed. Cir. 2018) (holding claims to the practical application of the
natural relationships between iloperidone, CYP2D6 metabolism, and
QTc prolongation to treat schizophrenia, not merely the recognition
of those relationships, to be patent eligible at Mayo/Alice step 1
(USPTO Step 2A)), and USPTO Vanda Memorandum (discussing Vanda).
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an additional element implements a judicial exception
with, or uses a judicial exception in conjunction with, a particular
machine or manufacture that is integral to the claim; \27\
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\27\ For example, a Fourdrinier machine (which is understood in
the art to have a specific structure comprising a headbox, a paper-
making wire, and a series of rolls) that is arranged in a particular
way that uses gravity to optimize the speed of the machine while
maintaining quality of the formed paper web. See MPEP 2106.05(b) for
more information concerning use of a judicial exception with, or in
conjunction with, a particular machine or manufacture, including a
discussion of the exemplar provided herein, which is based on Eibel
Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 64-65
(1923).
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an additional element effects a transformation or
reduction of a particular article to a different state or thing; \28\
and
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\28\ For example, a process that transforms raw, uncured
synthetic rubber into precision-molded synthetic rubber products by
using a mathematical formula to control operation of the mold. See
MPEP 2106.05(c) for more information concerning transformation or
reduction of a particular article to a different state or thing,
including a discussion of the exemplar provided herein, which is
based on Diehr, 450 U.S. at 184.
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an additional element applies or uses the judicial
exception in some other meaningful way beyond generally linking the use
of the judicial exception to a particular technological environment,
such that the claim as a whole is more than a drafting effort designed
to monopolize the exception.\29\
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\29\ For example, a combination of steps including installing
rubber in a press, closing the mold, constantly measuring the
temperature in the mold, and automatically opening the press at the
proper time, all of which together meaningfully limited the use of a
mathematical equation to a practical application of molding rubber
products. See MPEP 2106.05(e) for more information on this
consideration, including a discussion of the exemplar provided
herein, which is based on Diehr, 450 U.S. at 184, 187. See also
USPTO Finjan Memorandum (discussing Finjan and Core Wireless).
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This is not an exclusive list, and there may be other examples of
integrating the exception into a practical application.
The courts have also identified examples in which a judicial
exception has not been integrated into a practical application:
An additional element merely recites the words ``apply
it'' (or an equivalent) with the judicial exception, or merely includes
instructions to implement an abstract idea on a computer, or merely
uses a computer as a tool to perform an abstract idea; \30\
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\30\ For example, a limitation indicating that a particular
function such as creating and maintaining electronic records is
performed by a computer, without specifying how. See MPEP 2106.05(f)
for more information concerning mere instructions to apply a
judicial exception, including a discussion of the exemplar provided
herein, which is based on Alice, 573 U.S. at 222-26. See also
Benson, 409 U.S. 63 (holding that merely implementing a mathematical
principle on a general purpose computer is a patent ineligible
abstract idea); Credit Acceptance Corp. v. Westlake Services, 859
F.3d 1044 (Fed. Cir. 2017) (using a computer as a tool to process an
application for financing a purchase).
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an additional element adds insignificant extra-solution
activity to the judicial exception; \31\ and
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\31\ For example, a mere data gathering such as a step of
obtaining information about credit card transactions so that the
information can be analyzed in order to detect whether the
transactions were fraudulent. See MPEP 2106.05(g) for more
information concerning insignificant extra-solution activity,
including a discussion of the exemplar provided herein, which is
based on CyberSource, 654 F.3d at 1375. See also Mayo, 566 U.S. at
79 (concluding that additional element of measuring metabolites of a
drug administered to a patient was insignificant extra-solution
activity, which was insufficient to confer patent eligibility);
Flook, 437 U.S. at 590 (step of adjusting an alarm limit based on
the output of a mathematical formula was ``post-solution activity''
and did not render method patent eligible).
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an additional element does no more than generally link the
use of a judicial exception to a particular technological environment
or field of use.\32\
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\32\ For example, a claim describing how the abstract idea of
hedging could be used in the commodities and energy markets, or a
claim limiting the use of a mathematical formula to the
petrochemical and oil-refining fields. See MPEP 2106.05(h)
concerning generally linking use of a judicial exception to a
particular technological environment or field of use, including a
discussion of the exemplars provided herein, which are based on
Bilski, 561 U.S. at 612, and Flook, 437 U.S. at 588-90. Thus, the
mere application of an abstract method of organizing human activity
in a particular field is not sufficient to integrate the judicial
exception into a practical application.
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It is critical that examiners consider the claim as a whole when
evaluating whether the judicial exception is meaningfully limited by
integration into a practical application of the exception. Some
elements may be enough on their own to meaningfully limit an exception,
but other times it is the combination of elements that provide the
practical application. When evaluating whether an element (or
combination of elements) integrates an exception into a practical
application, examiners should give careful consideration to both the
element and how it is used or arranged in the claim as a whole. Because
revised Step 2A does not evaluate whether an additional element is
well-understood, routine, conventional activity, examiners are reminded
that a claim that includes conventional elements may still integrate an
exception into a practical application, thereby satisfying the subject
matter eligibility requirement of Section 101.\33\
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\33\ Of course, such claims must also satisfy the other
conditions and requirements of patentability, for example, under
section 102 (novelty), 103 (nonobviousness), and 112 (enablement,
written description, definiteness). Bilski, 561 U.S. at 602.
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[[Page 56]]
B. Step 2B: If the Claim Is Directed to a Judicial Exception, Evaluate
Whether the Claim Provides an Inventive Concept
It is possible that a claim that does not ``integrate'' a recited
judicial exception is nonetheless patent eligible. For example the
claim may recite additional elements that render the claim patent
eligible even though a judicial exception is recited in a separate
claim element.\34\ Along these lines, the Federal Circuit has held
claims eligible at the second step of the Alice/Mayo test (USPTO Step
2B) because the additional elements recited in the claims provided
``significantly more'' than the recited judicial exception (e.g.,
because the additional elements were unconventional in
combination).\35\ Therefore, if a claim has been determined to be
directed to a judicial exception under revised Step 2A, examiners
should then evaluate the additional elements individually and in
combination under Step 2B to determine whether they provide an
inventive concept (i.e., whether the additional elements amount to
significantly more than the exception itself). If the examiner
determines that the element (or combination of elements) amounts to
significantly more than the exception itself (Step 2B: YES), the claim
is eligible, thereby concluding the eligibility analysis. If the
examiner determines that the element and combination of elements does
not amount to significantly more than the exception itself, the claim
is ineligible (Step 2B: NO) and the examiner should reject the claim
for lack of subject matter eligibility.
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\34\ See, e.g., Diehr, 450 U.S. at 187 (``Our earlier opinions
lend support to our present conclusion that a claim drawn to subject
matter otherwise statutory does not become nonstatutory simply
because it uses a mathematical formula, computer program, or digital
computer.''); id. at 185 (``Our conclusion regarding respondents'
claims is not altered by the fact that in several steps of the
process a mathematical equation and a programmed digital computer
are used.'').
\35\ See, e.g., Amdocs, 841 F.3d at 1300, 1303; BASCOM, 827 F.3d
at 1349-52; DDR Holdings, 773 F.3d at 1257-59.
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While many considerations in Step 2A need not be reevaluated in
Step 2B, examiners should continue to consider in Step 2B whether an
additional element or combination of elements:
Adds a specific limitation or combination of limitations
that are not well-understood, routine, conventional activity in the
field, which is indicative that an inventive concept may be present; or
simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level
of generality, to the judicial exception, which is indicative that an
inventive concept may not be present.\36\
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\36\ In accordance with existing guidance, an examiner's
conclusion that an additional element (or combination of elements)
is well understood, routine, conventional activity must be supported
with a factual determination. For more information concerning
evaluation of well-understood, routine, conventional activity, see
MPEP 2106.05(d), as modified by the USPTO Berkheimer Memorandum.
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For this reason, if an examiner had previously concluded under
revised Step 2A that, e.g., an additional element was insignificant
extra-solution activity, they should reevaluate that conclusion in Step
2B. If such reevaluation indicates that the element is unconventional
or otherwise more than what is well-understood, routine, conventional
activity in the field, this finding may indicate that an inventive
concept is present and that the claim is thus eligible.\37\ For
example, when evaluating a claim reciting an abstract idea such as a
mathematical equation and a series of data gathering steps that collect
a necessary input for the equation, an examiner might consider the data
gathering steps to be insignificant extra-solution activity in revised
Step 2A, and therefore find that the judicial exception is not
integrated into a practical application.\38\ However, when the examiner
reconsiders the data gathering steps in Step 2B, the examiner could
determine that the combination of steps gather data in an
unconventional way and therefore include an ``inventive concept,''
rendering the claim eligible at Step 2B.\39\ Likewise, a claim that
does not meaningfully integrate a judicial exception into a practical
application of the exception sufficient to pass muster at Step 2A, may
nonetheless include additional subject matter that is unconventional
and thus an ``inventive concept'' at Step 2B.\40\
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\37\ Mayo, 566 U.S. at 82 (``[S]imply appending conventional
steps, specified at a high level of generality, to laws of nature,
natural phenomena, and abstract ideas cannot make those laws,
phenomena, and ideas patentable.''); but see id. at 85 (``[T]he
claimed process included not only a law of nature but also several
unconventional steps (such as inserting the receptacle, applying
heat to the receptacle externally, and blowing the air into the
furnace) that confined the claims to a particular, useful
application of the principle.'' (discussing the old English case,
Neilson v. Harford, Webster's Patent Cases 295 (1841))).
\38\ See supra note 34; see also OIP Techs., 788 F.3d at 1363
(finding that gathering statistics generated based on customer
testing for input to a pricing calculation ``fail[s] to `transform'
the claimed abstract idea into a patent-eligible invention'').
\39\ Compare Flook, 437 U.S. at 585-86 (holding claimed method
of updating alarm limits to be ineligible because: ``In essence, the
method consists of three steps: an initial step which merely
measures the present value of the process variable (e.g., the
temperature); an intermediate step which uses an algorithm to
calculate an updated alarm-limit value; and a final step in which
the actual alarm limit is adjusted to the updated value. The only
difference between the conventional methods of changing alarm limits
and that described in respondent's application rests in the second
step--the mathematical algorithm or formula.''); with Exergen Corp.
v. Kaz USA, Inc., 725 F. App'x 959, 966 (Fed. Cir. 2018) (holding
claimed body temperature detector to be eligible because: ``Here,
the patent is directed to the measurement of a natural phenomenon
(core body temperature). Even if the concept of such measurement is
directed to a natural phenomenon and is abstract at step one, the
measurement method here was not conventional, routine, and well-
understood. Following years and millions of dollars of testing and
development, the inventor determined for the first time the
coefficient representing the relationship between temporal-arterial
temperature and core body temperature and incorporated that
discovery into an unconventional method of temperature
measurement.'').
\40\ Compare Berkheimer, 881 F.3d at 1370 (holding independent
claim 1 to be ineligible at Alice step 2: ``The[ ] conventional
limitations of claim 1, combined with limitations of analyzing and
comparing data and reconciling differences between the data, fail to
transform the abstract idea into a patent-eligible invention. The
limitations amount to no more than performing the abstract idea of
parsing and comparing data with conventional computer components'')
(internal quotation marks and citation omitted); with id.
(concluding that dependent claims 4-7 may be eligible: ``Claims 4-7,
in contrast, contain limitations directed to the arguably
unconventional inventive concept described in the specification.
Claim 4 recites `storing a reconciled object structure in the
archive without substantial redundancy.' The specification states
that storing object structures in the archive without substantial
redundancy improves system operating efficiency and reduces storage
costs. It also states that known asset management systems did not
archive documents in this manner. Claim 5 depends on claim 4 and
further recites `selectively editing an object structure, linked to
other structures to thereby effect a one-to-many change in a
plurality of archived items.' The specification states one-to-many
editing substantially reduces effort needed to update files because
a single edit can update every document in the archive linked to
that object structure. This one-to-many functionality is more than
`editing data in a straightforward copy-and-paste fashion,' as
characterized by the district court. According to the specification,
conventional digital asset management systems cannot perform one-to-
many editing because they store documents with numerous instances of
redundant elements, rather than eliminate redundancies through the
storage of linked object structures. Claims 6-7 depend from claim 5
and accordingly contain the same limitations. These claims recite a
specific method of archiving that, according to the specification,
provides benefits that improve computer functionality. . . . [T]here
is at least a genuine issue of material fact in light of the
specification regarding whether claims 4-7 archive documents in an
inventive manner that improves these aspects of the disclosed
archival system.'') (internal quotation marks and citations
omitted).
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C. Treating a Claim Limitation That Does Not Fall Within the Enumerated
Groupings of Abstract Ideas as Reciting an Abstract Idea
In the rare circumstance in which an examiner believes a claim
limitation that does not fall within the enumerated groupings of
abstract ideas should
[[Page 57]]
nonetheless be treated as reciting an abstract idea (``tentative
abstract idea''), the examiner should evaluate whether the claim as a
whole integrates the recited tentative abstract idea into a practical
application as explained in Section III.A.2. If the claim as a whole
integrates the recited tentative abstract idea into a practical
application, the claim is not directed to a judicial exception (Step
2A: NO) and is eligible (thus concluding the eligibility analysis). If
the claim as a whole does not integrate the recited tentative abstract
idea into a practical application, then the examiner should evaluate
the additional elements individually and in combination to determine
whether they provide an inventive concept as explained in Section
III.B. If an additional element or combination of additional elements
provides an inventive concept as explained in Section III.B (Step 2B:
YES), the claim is eligible (thus concluding the eligibility analysis).
If the additional element or combination of additional elements does
not provide an inventive concept as explained in Section III.B (Step
2B: NO), the examiner should bring the application to the attention of
the Technology Center Director. Any rejection in which a claim
limitation, which does not fall within the enumerated abstract ideas
(tentative abstract idea), is nonetheless treated as reciting an
abstract idea must be approved by the Technology Center Director (which
approval will be indicated in the file record of the application), and
must provide a justification \41\ for why such claim limitation is
being treated as reciting an abstract idea.\42\
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\41\ Such justification may include, for example, an explanation
of why the element contains subject matter that, per se, invokes
eligibility concerns similar to those expressed by the Supreme Court
with regard to the judicial exceptions. See supra note 5.
\42\ Similarly, in the rare circumstance in which a panel of
administrative patent judges (or panel majority) believes that a
claim reciting a tentative abstract idea should be treated as
reciting an abstract idea, the matter should be brought to the
attention of the PTAB leadership by a written request for clearance.
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D. Compact Prosecution
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.\43\ Compact prosecution, however, does not mandate that the
patentability requirements be analyzed in any particular order.
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\43\ See MPEP 2103 et seq. and 2106(III).
Dated: December 20, 2018.
Andrei Iancu,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2018-28282 Filed 1-4-19; 8:45 am]
BILLING CODE 3510-16-P
