Patentable Subject Matter and Judicial Exceptions
See January 4. 2019 Updated Guidlines
What is Patentable?
35 U.S.C. 101 defines Patentable Subject Matter as a processes (a series of steps), machine (a device with parts that interact), manufacture (articles resulting from manufacturing) and compositions of matter (new materials or formulations). The courts have further identified subject matter within these categories that is not patentable. These are the judicial exceptions. Most notably abstract ideas and products of nature or natural phenomenon. A 2 step analysis and flow chart for determining patentable subject matter has been incorporated into the Manual of Patent Examining Procedure (MPEP 2106) and is reproduced here.
The analysis begins with the "Broadest reasonable interpretation of the claim." If your claim can possibly include any material that is outside of the specified boundaries, it will fail the test. Step 1 is applied to determine whether the claim falls into one of the four statutory categories of patentable subject matter. If so, step 2A is applied to determine if the claim is directed to a judicial exception, meaning an abstract idea or law of nature. If it is not, it is eligible subject matter for a patent. If the claim is directed to an abstract idea or law of nature, step 2B is applied to determine whether there is an inventive concept, or additional elements that amount to significantly more, for the claim to qualify as eligible subject matter. Since most inventions involve an abstract idea or a law of nature in one way or another, how does one determine if the claim is directed to a judicial exception in 2A and requires further eligibility analysis in 2B? The USPTO provides some general examples. (MPEP 2106.04)
"A machine which operates according to F=MA"
A broadest reasonable interpretation would include any machine which operates according to F=MA and would tie up F=MA entirely. The claim is directed to a judicial exception.
“A teeter-totter comprising an elongated member pivotably attached to a base member, having seats and handles attached at opposing sides of the elongated member.”
The claim is directed to a specific device which involves levers and gravity, but ties up neither. The claim is not directed to a judicial exception and would be patent eligible.
January 4, 2019: If the claim is determined to be directed to a judicial exception (step 2A Prong 1), it must be determined if the judicial exception is intergraded into the claim so as to impose a meaningful limitation, (step 2a Prong 2, see January 4, 2019 Updated Guidlines) If the answer is yes, the claim is patent eligible. The annalist is no, then it must then be determined if there are additional elements that amount to significantly more (step 2B).In making this determination, the examiners should look at the claim “as a whole.” The claim should be evaluated “as an ordered combination, without ignoring the requirements of the individual steps.” (USPTO: July 2017 - Interim Eligibility Guidance)
The USPTO gives examples of significantly more in MPEP 2106.05.
A process in which the Arrhenius equation is used to improve a process of controlling the operation of a mold in curing rubber parts.
A GPS receiver that uses a mathematical formula executed by software to improve its operation in weak signal environments.
The USPTO also gives examples of what is not significantly more.
A claim that recites an abstract idea and instructions to "apply it" using a generic computer. Alice Corp. v. CLS Bank
A claim that recites a process for converting binary‐coded‐decimal numerals into binary numbers. Gottschalk v. Benson
Note that in the first two examples, the claims are limited to specific applications, the molding of rubber products and the improved operation of a GPS. Whereas in the examples of not significantly more, the claims if allowed, would tie up these abstract ideas or processes across multiple technical fields.
