[3510-16-P]
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`DEPARTMENT OF COMMERCE
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`United States Patent and Trademark Office
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`[Docket No. PTO-P-2018-0053]
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`2019 Revised Patent Subject Matter Eligibility Guidance
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`AGENCY: United States Patent and Trademark Office, Commerce.
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`ACTION: Examination Guidance; Request for comments.
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`SUMMARY: The United States Patent and Trademark Office (USPTO) has prepared revised
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`guidance (2019 Revised Patent Subject Matter Eligibility Guidance) for use by USPTO
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`personnel in evaluating subject matter eligibility. The 2019 Revised Patent Subject Matter
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`Eligibility Guidance revises the procedures for determining whether a patent claim or patent
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`application claim is directed to a judicial exception (laws of nature, natural phenomena, and
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`abstract ideas) under Step 2A of the USPTO’s Subject Matter Eligibility Guidance in two ways.
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`First, the 2019 Revised Patent Subject Matter Eligibility Guidance explains that abstract ideas
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`can be grouped as, e.g., mathematical concepts, certain methods of organizing human activity,
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`and mental processes. Second, this guidance explains that a patent claim or patent application
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`claim that recites a judicial exception is not “directed to” the judicial exception if the judicial
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`1
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`This document is scheduled to be published in the
`Federal Register on 01/07/2019 and available online at
`https://federalregister.gov/d/2018-28282, and on govinfo.gov
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`exception is integrated into a practical application of the judicial exception. A claim that recites a
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`judicial exception, but is not integrated into a practical application, is directed to the judicial
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`exception under Step 2A and must then be evaluated under Step 2B (inventive concept) to
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`determine the subject matter eligibility of the claim. The USPTO is seeking public comment on
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`its subject matter eligibility guidance, and particularly the 2019 Revised Patent Subject Matter
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`Eligibility Guidance.
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`DATES: APPLICABLE DATE: The 2019 Revised Patent Subject Matter Eligibility Guidance is
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`effective on [INSERT DATE OF PUBLICATION IN THE FEDERAL REGISTER]. The 2019
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`Revised Patent Subject Matter Eligibility Guidance applies to all applications, and to all patents
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`resulting from applications, filed before, on, or after [INSERT DATE OF PUBLICATION IN
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`THE FEDERAL REGISTER].
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`COMMENT DEADLINE DATE: Written comments must be received on or before [INSERT
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`DATE 60 DAYS AFTER PUBLICATION IN THE FEDERAL REGISTER].
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`ADDRESSES: Comments must be sent by electronic mail message over the Internet addressed
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`to: Eligibility2019@uspto.gov.
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`Electronic comments submitted in plain text are preferred, but also may be submitted in
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`ADOBE® portable document format or MICROSOFT WORD® format. Comments not
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`submitted electronically should be submitted on paper in a format that facilitates convenient
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`digital scanning into ADOBE® portable document format. The comments will be available for
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`viewing via the USPTO’s Internet Web site (http://www.uspto.gov). Because comments will be
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`made available for public inspection, information that the submitter does not desire to make
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`public, such as an address or phone number, should not be included in the comments.
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`FOR FURTHER INFORMATION CONTACT: June E. Cohan, Senior Legal Advisor, at 571-
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`272-7744 or Carolyn Kosowski, Senior Legal Advisor, at 571–272–7688, both with the Office of
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`Patent Legal Administration.
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`SUPPLEMENTARY INFORMATION: Patent subject matter eligibility under 35 U.S.C. 101
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`has been the subject of much attention over the past decade. Recently, much of that attention has
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`focused on how to apply the U.S. Supreme Court’s framework for evaluating eligibility (often
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`called the Alice/Mayo test).1 Properly applying the Alice/Mayo test in a consistent manner has
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`proven to be difficult, and has caused uncertainty in this area of the law. Among other things, it
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`has become difficult in some cases for inventors, businesses, and other patent stakeholders to
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`reliably and predictably determine what subject matter is patent-eligible. The legal uncertainty
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`surrounding Section 101 poses unique challenges for the USPTO, which must ensure that its
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`more than 8500 patent examiners and administrative patent judges apply the Alice/Mayo test in a
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`manner that produces reasonably consistent and predictable results across applications, art units
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`and technology fields.
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`Since the Alice/Mayo test was announced and began to be extensively applied, the courts and the
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`USPTO have tried to consistently distinguish between patent-eligible subject matter and subject
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`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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`matter falling within a judicial exception. Even so, patent stakeholders have expressed a need for
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`more clarity and predictability in its application. In particular, stakeholders have expressed
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`concern with the proper scope and application of the “abstract idea” exception. Some courts
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`share these concerns, for example as demonstrated by several recent concurrences and dissents in
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`the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) calling for changes in the
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`application of Section 101 jurisprudence.2 Many stakeholders, judges, inventors, and
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`practitioners across the spectrum have argued that something needs to be done to increase clarity
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`and consistency in how Section 101 is currently applied.
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`To address these and other concerns, the USPTO is revising its examination procedure with
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`respect to the first step of the Alice/Mayo test3 (Step 2A of the USPTO’s Subject Matter
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`Eligibility Guidance as incorporated into the Manual of Patent Examining Procedure (“MPEP”)
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`2106)4 by: (1) providing groupings of subject matter that is considered an abstract idea; and (2)
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`clarifying that a claim is not “directed to” a judicial exception if the judicial exception is
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`integrated into a practical application of that exception.
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`Section I of this 2019 Revised Patent Subject Matter Eligibility Guidance explains that the
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`judicial exceptions are for subject matter that has been identified as the “basic tools of scientific
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`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); Berk heimer 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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`and technological work,”5 which includes “abstract ideas” such as mathematical concepts,
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`certain methods of organizing human activity, and mental processes; as well as laws of nature
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`and natural phenomena. Only when a claim recites a judicial exception does the claim require
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`further analysis in order to determine its eligibility. The groupings of abstract ideas contained in
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`this guidance enable USPTO personnel to more readily determine whether a claim recites subject
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`matter that is an abstract idea.
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`Section II explains that the USPTO has set forth a revised procedure, rooted in Supreme Court
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`caselaw, to determine whether a claim is “directed to” a judicial exception under the first step of
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`the Alice/Mayo test (USPTO Step 2A).
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`Section III explains the revised procedure that will be applied by the USPTO. The procedure
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`focuses on two aspects of Revised Step 2A: (1) whether the claim recites a judicial exception;
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`and (2) whether a recited judicial exception is integrated into a practical application. Only when
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`a claim recites a judicial exception and fails to integrate the exception into a practical
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`application, is the claim “directed to” a judicial exception, thereby triggering the need for further
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`analysis pursuant to the second step of the Alice/Mayo test (USPTO Step 2B). Finally, if further
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`analysis at Step 2B is needed (for example to determine whether the claim merely recites well-
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`understood, routine, conventional activity), this 2019 Revised Patent Subject Matter Eligibility
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`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)).
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`Guidance explains that the examiner or administrative patent judge will proceed in accordance
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`with existing USPTO guidance as modified in April 2018.6
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`The USPTO is seeking public comment on its subject matter eligibility guidance, and
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`particularly the 2019 Revised Patent Subject Matter Eligibility Guidance. The USPTO is
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`determined to continue its mission to provide predictable and reliable patent rights in accordance
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`with this rapidly evolving area of the law. The USPTO’s ultimate goal is to draw distinctions
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`between claims to principles in the abstract and claims that integrate those principles into a
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`practical application. To that end, the USPTO may issue further guidance, or modify the current
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`guidance, in the future based on its review of the comments received, further experience of the
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`USPTO and its stakeholders, and additional judicial actions. Implementation of examination
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`guidance on eligibility is an iterative process and may continue with periodic supplements. The
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`USPTO invites the public to submit suggestions on eligibility-related topics to address in future
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`guidance supplements as part of their comments on the USPTO’s subject matter eligibility
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`guidance.
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`Impact on Examination Procedure and Prior Examination Guidance: This 2019 Revised
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`Patent Subject Matter Eligibility Guidance supersedes MPEP 2106.04(II) (Eligibility Step 2A:
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`Whether a Claim Is Directed to a Judicial Exception) to the extent it equates claims “reciting” a
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`judicial exception with claims “directed to” a judicial exception, along with any other portion of
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`the MPEP that conflicts with this guidance. A chart identifying portions of the MPEP that are
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`6 USPTO Memorandum of April 19, 2018, “Changes in Examination Procedure Pertaining to Subject Matter
`Eligibility, Recent Subject Matter Eligibility Decision (Berk heimer v. HP, Inc.)” (Apr. 19, 2018), available at
`https://www.uspto.gov/sites/default/files/documents/memo -berkheimer-20180419.PDF [hereinafter “USPTO
`Berk heimer Memorandum”].
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`affected by this guidance will be available for viewing via the USPTO’s Internet Web site
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`(http://www.uspto.gov). This 2019 Revised Patent Subject Matter Eligibility Guidance also
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`supersedes all versions of the USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract
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`Ideas” (first issued in July 2015 and updated most recently in July 2018). Eligibility-related
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`guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP (published Jan. 2018) should
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`not be relied upon. However, any claim considered patent eligible under prior guidance should
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`be considered patent eligible under this guidance.
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`This guidance does not constitute substantive rulemaking and does not have the force and effect
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`of law. The guidance sets out agency policy with respect to the USPTO’s interpretation of the
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`subject matter eligibility requirements of 35 U.S.C. 101 in view of decisions by the Supreme
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`Court and the Federal Circuit. The guidance was developed as a tool for internal USPTO
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`management and does not create any right or benefit, substantive or procedural, enforceable by
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`any party against the USPTO. Rejections will continue to be based upon the substantive law, and
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`it is those rejections that are appealable to the Patent Trial and Appeal Board (PTAB) and the
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`courts. All USPTO personnel are, as a matter of internal agency management, expected to follow
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`the guidance. Failure of USPTO personnel to follow the guidance, however, is not, in itself, a
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`proper basis for either an appeal or a petition.
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`I.
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`GROUPINGS OF ABSTRACT IDEAS
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`The Supreme Court has held that the patent eligibility statute, Section 101, contains an implicit
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`exception for “[l]aws of nature, natural phenomena, and abstract ideas,” which are “the basic
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`tools of scientific and technological work.”7 Yet, the Court has explained that “[a]t some level,
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`all inventions embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or
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`abstract ideas,” and has cautioned “to tread carefully in construing this exclusionary principle
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`lest it swallow all of patent law.”8
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`Since the Alice case, courts have been “compare[ing] claims at issue to those claims already
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`found to be directed to an abstract idea in previous cases.”9 Likewise, the USPTO has issued
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`guidance to the patent examining corps about Federal Circuit decisions applying the Alice/Mayo
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`test, for instance describing the subject matter claimed in the patent in suit and noting whether or
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`not certain subject matter has been identified as an abstract idea.10
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`While that approach was effective soon after Alice was decided, it has since become impractical.
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`The Federal Circuit has now issued numerous decisions identifying subject matter as abstract or
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`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 Fed. Reg. 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 Berk heimer Memorandum at 2 (discussing the abstract
`idea in Berk heimer); MPEP 2106.04(a) (reviewing cases that did and did not identify abstract ideas).
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`non-abstract in the context of specific cases, and that number is continuously growing. In
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`addition, similar subject matter has been described both as abstract and not abstract in different
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`cases.11 The growing body of precedent has become increasingly more difficult for examiners to
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`apply in a predictable manner, and concerns have been raised that different examiners within and
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`between technology centers may reach inconsistent results.
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`The USPTO, therefore, aims to clarify the analysis. In accordance with judicial precedent and in
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`an effort to improve consistency and predictability, the 2019 Revised Patent Subject Matter
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`Eligibility Guidance extracts and synthesizes key concepts identified by the courts as abstract
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`ideas to explain that the abstract idea exception includes the following groupings of subject
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`matter, when recited as such in a claim limitation(s) (that is, when recited on their own or per se):
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`a) Mathematical concepts – mathematical relationships, mathematical formulas or
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`equations, mathematical calculations;12
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`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. Westlak e Servs., 859 F.3d 1044, 1056 (Fed. Cir. 2017), “software-
`based innovations can [also] make ‘non-abstract improvements to computer technolog y’ 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 p rior 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.
`12 Bilsk i 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); Park er 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
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`b) Certain methods of organizing human activity – fundamental economic
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`principles or practices (including hedging, insurance, mitigating risk); commercial
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`or legal interactions (including agreements in the form of contracts; legal
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`obligations; advertising, marketing or sales activities or behaviors; business
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`relations); managing personal behavior or relationships or interactions between
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`people (including social activities, teaching, and following rules or instructions);13
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`and
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`invention “would wholly pre-empt the mathematical formula and in practical effect would be a patent on the
`algorithm itself”); Mack ay 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 insuranc e
`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 Bilsk i as “a method of organizing human activity”); Bilsk i, 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 Comisk ey,
`554 F.3d 967, 981 (Fed Cir. 2009) (claims directed to “resolving a legal dispute bet ween 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 provid ing 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 mind14 (including an
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`observation, evaluation, judgment, opinion).15
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`Claims that do not recite matter that falls within these enumerated groupings of abstract ideas
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`should not be treated as reciting abstract ideas, except as follows: In the rare circumstance in
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`which a USPTO employee believes a claim limitation that does not fall within the enumerated
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`groupings of abstract ideas should nonetheless be treated as reciting an abstract idea, the
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`procedure described in Section III.C for analyzing the claim should be followed.
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`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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`11
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`Patent Owner Gree, Inc.
`Exhibit 2007 - Page 11 of 27
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`II.
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`“DIRECTED TO” A JUDICIAL EXCEPTION
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`The Supreme Court has long distinguished between principles themselves (which are not patent
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`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
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`between claims that are “directed to” a judicial exception (which require further analysis to
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`determine their eligibility) and those that are not (which are therefore patent eligible). 17 For
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`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
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`abstract idea, law of nature, or natural phenomenon.18 Moreover, recent Federal Circuit
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`jurisprudence has indicated that eligible subject matter can often be identified either at the first or
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`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”); Bilsk i, 561 U.S. at 611 (“Diehr
`explained that while an abstract idea, law of nature, o r 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); Mack ay 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 P