AUTHENTICATED
`US. GOVERNMENT,
`INFORMATION
`GPO
`
`50
`
`Notices
`
`Federal Register
`Vol. 84, No. 4
`
`Monday, January 7, 2019
`
`This section of the FEDERAL REGISTER
`contains documents other than rules or
`proposedrules 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.
`
`
`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
`Guidancerevises the proceduresfor
`determining whethera patent claim or
`patent application claim is directed to a
`judicial exception (laws of nature,
`natural phenomena, andabstract ideas)
`underStep 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 groupedas,
`e.g., mathematical concepts, certain
`methodsof organizing human activity,
`and mental processes. Second,this
`guidance explains that a patent claim or
`patent application claim that recites a
`judicial exceptionis 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 underStep 2B (inventive
`concept) to determine the subject matter
`eligibility of the claim. The USPTO is
`seeking public commentonits subject
`matter eligibility guidance, and
`particularly the 2019 Revised Patent
`Subject Matter Eligibility Guidance.
`DATES:
`
`Applicable Date: The 2019 Revised
`Patent Subject Matter Eligibility
`Guidanceis effective on January 7,
`2019. The 2019 Revised Patent Subject
`Matter Eligibility Guidance applies to
`all applications, andto all patents
`resulting from applications,filed before,
`on, or after January 7, 2019.
`CommentDeadline Date: Written
`comments mustbe received on or before
`March8, 2019.
`ADDRESSES: Comments mustbe sent by
`electronic mail message over the
`internet addressedto: 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 formatthat
`facilitates convenient digital scanning
`into ADOBE®portable document
`format. The comments will be available
`for viewing via the USPTO’s internet
`website (hitp://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 includedin 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.
`
`SUPPLEMENTARYINFORMATION: Patent
`subject matter eligibility under 35
`U.S.C. 101 has been the subject of much
`attention over the past decade. Recently,
`muchofthat attention has focused on
`how to apply the U.S. Supreme Court’s
`frameworkfor evaluating eligibility
`(often called the Alice/Mayotest).1
`Properly applying the Alice/Mayotest in
`a consistent mannerhas proven to be
`difficult, and has caused uncertainty in
`this area of the law. Amongotherthings,
`it has becomedifficult in some cases for
`inventors, businesses, and other patent
`stakeholdersto reliably and predictably
`determine what subject matter is patent-
`eligible. The legal uncertainty
`surrounding Section 101 poses unique
`
`1 Alice Corp. Pty. Ltd. v. CLS Bank Int’, 573 U.S.
`208, 217-18 (2014) (citing Mayo Collaborative
`Servs. v. PrometheusLabs., Inc., 566 U.S. 66
`(2012)).
`
`challenges for the USPTO, which must
`ensure that its more than 8500 patent
`examiners and administrative patent
`judges apply the Alice/Mayotest ina
`mannerthat produces reasonably
`consistent and predictable results across
`applications, art units and technology
`fields.
`Since the Alice/Mayo test was
`announcedandbegan to be extensively
`applied, the courts and the USPTO have
`tried to consistently distinguish
`betweenpatent-eligible subject matter
`and subject matter falling within a
`judicial exception. Even so, patent
`stakeholders have expressed a needfor
`more clarity and predictability in its
`application. In particular, stakeholders
`have expressed concern with the proper
`scope andapplication of the “abstract
`idea’ exception. Some courts share
`these concerns, for example as
`demonstrated by several recent
`concurrencesanddissents in the U.S.
`Court of Appeals for the Federal Circuit
`(“Federal Circuit’’) calling for changes
`in the application of Section 101
`jurisprudence.? Many stakeholders,
`judges, inventors, and practitioners
`across the spectrum have arguedthat
`something needs to be doneto increase
`clarity and consistency in how Section
`101 is currently applied.
`To address these and other concerns,
`the USPTOis revising its examination
`procedure with respect to thefirst step
`of the Alice/Mayotest 3 (Step 2A of the
`USPTO’s Subject Matter Eligibility
`Guidanceas incorporatedinto the
`Manual of Patent Examining Procedure
`(“MPEP’’) 2106) 4 by: (1) Providing
`groupings of subject matter thatis
`considered an abstract idea; and (2)
`clarifying that a claim is not ‘‘directed
`to” a judicial exceptionif 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 concurringin 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 Thefirst step of the Alice/Mayotestis to
`determine whetherthe claimsare ‘“‘directed to” a
`judicial exception. Alice, 573 U.S.at 217 (citing
`Mayo, 566 U.S.at 77).
`4 All references to the MPEPin 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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`Federal Register / Vol. 84, No. 4/Monday, January 7, 2019/ Notices
`
`are, as a matter of internal agency
`management, expectedto follow the
`guidance. Failure of USPTO personnel
`to follow the guidance, however, is not,
`in itself, a proper basis for either an
`appealor a petition.
`I. Groupings of Abstract Ideas
`The Supreme Court has held that the
`patenteligibility statute, Section 101,
`contains an implicit exception for
`“(Jaws of nature, natural phenomena,
`and abstract ideas,” whichare ‘“‘the
`basic tools of scientific and
`technological work.” ” Yet, the Court
`has explainedthat ‘“‘[a]t somelevel,all
`inventions embody, use, reflect, rest
`upon,or apply lawsof nature, natural
`phenomena,orabstract ideas,” and has
`cautioned‘‘to tread carefully in
`construing this exclusionary principle
`lest it swallowall 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 previouscases.” 9
`Likewise, the USPTO hasissued
`guidance to the patent examining corps
`about Federal Circuit decisions applying
`the Alice/Mayotest, 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.1°
`
`Section I of this 2019 Revised Patent
`accordancewith this rapidly evolving
`area of the law. The USPTO’s ultimate
`Subject Matter Eligibility Guidance
`explains that the judicial exceptions are
`goal is to draw distinctions between
`claimsto principles in the abstract and
`for subject matter that has been
`identified as the “basic tools of
`claimsthat integrate those principles
`into a practical application. To that end,
`scientific and technological work,”’®
`whichincludes‘‘abstract ideas’’ such as
`the USPTO mayissue further guidance,
`or modify the current guidance, in the
`mathematical concepts, certain methods
`future based on its review of the
`of organizing human activity, and
`comments received, further experience
`mental processes; as well as laws of
`of the USPTO andits stakeholders, and
`nature and natural phenomena. Only
`additional judicial actions.
`when a claim recites a judicial
`Implementation of examination
`exception does the claim require further
`guidance oneligibility is an iterative
`analysis in order to determineits
`process and maycontinue with periodic
`eligibility. The groupingsof abstract
`supplements. The USPTOinvites the
`ideas contained in this guidance enable
`public to submit suggestions on
`USPTO personnel to morereadily
`determine whethera claim recites
`eligibility-related topics to address in
`future guidance supplementsas part of
`subject matter that is an abstract idea.
`their comments on the USPTO’s subject
`Section II explains that the USPTO
`matter eligibility guidance.
`has set forth a revised procedure, rooted
`Impact on Examination Procedure
`in Supreme Court caselaw, to determine
`and Prior Examination Guidance: This
`whethera claim is ‘directed to” a
`2019 Revised Patent Subject Matter
`judicial exception underthefirst step of
`Eligibility Guidance supersedes MPEP
`the Alice/Mayo test (USPTO Step 2A).
`2106.04(ID (Eligibility Step 2A: Whether
`Section III explains the revised
`a Claim Is Directed to a Judicial
`procedurethat will be applied by the
`Exception) to the extent it equates
`USPTO. The procedure focuses on two
`claims“reciting” a judicial exception
`aspects of Revised Step 2A: (1) Whether
`with claims ‘‘directed to” a judicial
`the claim recites a judicial exception;
`exception, along with any other portion
`and (2) whethera recited judicial
`of the MPEPthat conflicts with this
`exception is integrated into a practical
`guidance. A chart identifying portions
`application. Only whena claim recites
`of the MPEPthatare affected by this
`a judicial exception andfails to
`guidancewill be available for viewing
`integrate the exception into a practical
`7 Alice Corp., 573 U.S.at 216 (internal citation
`via the USPTO’s internet website
`application, is the claim “directed to” a
`and quotation marks omitted); Mayo, 566 U.S.at 71.
`(http://www.uspto.gov). This 2019
`judicial exception, thereby triggering the
`8 Id.(internal citation and quotation marks
`Revised Patent Subject Matter Eligibility
`omitted).
`needfor further analysis pursuantto the
`Guidancealso supersedesall versions of
`9 See Enfish, LLC v. Microsoft Corp., 822 F.3d
`secondstep of the Alice/Mayotest
`1327, 1334 (Fed. Cir. 2016); see also Amdocs
`the USPTO’s “Eligibility Quick
`(USPTO Step 2B). Finally, if further
`(Israel) Ltd. v. Openet Telecom,Inc., 841 F.3d 1288,
`Reference Sheet Identifying Abstract
`analysis at Step 2B is needed(for
`1294 (Fed.Cir. 2016) (‘‘[T]he decisional mechanism
`Ideas”’ (first issued in July 2015 and
`example to determine whetherthe claim
`courts now apply [to identify an abstract idea]is to
`updated mostrecently in July 2018).
`examineearlier cases in whichasimilaror parallel
`merely recites well-understood, routine,
`descriptive nature can be seen—whatprior cases
`Eligibility-related guidance issuedprior
`conventionalactivity), this 2019
`wereabout, and which waythey were decided.”’).
`to the Ninth Edition, R-08.2017, of the
`Revised Patent Subject Matter Eligibility
`10 See, e.g., 2014 Interim Guidance on Subject
`MPEP(publishedJan. 2018) should not
`Guidance explains that the examineror
`MatterEligibility, 79 FR 74618, 74628-32 (Dec. 16,
`be relied upon. However, any claim
`2014) (discussing concepts identified as abstract
`administrative patent judge will proceed
`consideredpatenteligible underprior
`ideas); July 2015 Update: Subject Matter Eligibility
`in accordancewith existing USPTO
`(Jul. 30, 2015), at 3-5, available at https://
`guidance should be considered patent
`guidance as modified in April 2018.6
`www.uspto.gov/sites/default/files/documents/ieg-
`eligible under this guidance.
`The USPTOis seeking public
`july-2015-update.pdf (same); USPTO Memorandum
`This guidance doesnot constitute
`of May 19, 2016, “Recent Subject Matter Eligibility
`commenton its subject matter eligibility
`substantive rulemaking and doesnot
`Decisions (Enfish, LLC v. Microsoft Corp. and TLI
`guidance,andparticularly the 2019
`Communications LLC v. A.V. Automotive, LLC),’”’ at
`havethe force and effect of law. The
`Revised Patent Subject Matter Eligibility
`2 (May 19, 2016), available at https://
`guidance sets out agency policy with
`Guidance. The USPTOis determined to
`www.uspto.gov/sites/default/files/documents/ieg-
`respect to the USPTO’s interpretation of
`may-2016_enfish_memo.pdf (hereinafter, “USPTO
`continue its mission to provide
`the subject matter eligibility
`Enfish Memorandum’’] (discussing the abstract idea
`predictable andreliable patent rights in
`in TLI Communications LLC v. A.V. Automotive,
`requirements of 35 U.S.C. 101 in view
`LLC, 823 F.3d 607 (Fed. Cir. 2016)); USPTO
`of decisions by the Supreme Court and
`Memorandum of November2, 2016, ‘‘Recent
`the Federal Circuit. The guidance was
`Subject Matter Eligibility Decisions,” at 2 (Nov.2,
`developedasa tool for internal USPTO
`2016), available at https://www.uspto.gov/sites/
`default/files/documents/McRo-Bascom-Memo.pdf
`management and doesnotcreate any
`(hereinafter, “USPTO McRo Memorandum’’]
`right or benefit, substantive or
`(discussing howthe claims in McRO,Inc. v. Bandai
`procedural, enforceable by any party
`Namco Games America Inc., 837 F.3d 1299 (Fed.
`against the USPTO. Rejections will
`Cir. 2016), were directed to an improvement instead
`of an abstract idea); USPTO MemorandumofApril
`continue to be based upon the
`2, 2018, “Recent Subject Matter Eligibility
`substantive law, andit is those
`Decisions” (Apr. 2, 2018), available at https://
`rejections that are appealable to the
`www.uspto.gov/sites/default/files/documents/
`Patent Trial and Appeal Board (PTAB)
`memo-recent-sme-ctdec-20180402.PDF [hereinafter
`Continued
`and the courts. All USPTO personnel
`
`5 Mayo, 566 U.S.at 71 (“Phenomenaof 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 Memorandumof April 19, 2018,
`“Changes in Examination Procedure Pertaining to
`Subject Matter Eligibility, Recent Subject Matter
`Eligibility Decision (Berkheimerv. HP,Inc.)” (Apr.
`19, 2018), available at https://www.uspto.gov/sites/
`default/files/documents/memo-berkheimer-
`20180419.PDF [hereinafter ‘USPTO Berkheimer
`Memorandum’’].
`
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`
`While that approach waseffective
`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 numberis
`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 moredifficult for
`examinersto apply in a predictable
`manner, and concerns have beenraised
`that different examiners within and
`between technology centers may reach
`inconsistent results.
`The USPTO, therefore, aimsto clarify
`the analysis. In accordance with judicial
`precedent andin an effort to improve
`consistency andpredictability, the 2019
`Revised Patent Subject Matter Eligibility
`Guidanceextracts 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,
`whenrecited as such in a claim
`limitation(s) (that is, when recited on
`their ownorperse):
`
`“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 at2 (discussing the
`abstract idea in Berkheimer); MPEP 2106.04(a)
`(reviewingcases that did and did notidentify
`abstract ideas).
`11 £.g,, compare TLI Commc’ns, 823 F.3dat 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 suchas “‘output
`of data analysis.
`.
`. can be abstract,” Credit
`Acceptance Corp. v. Westlake Servs., 859 F.3d
`1044, 1056 (Fed. Cir. 2017), ‘software-based
`innovationscan [also] make ‘non-abstract
`improvements to computer technology’ and be
`deemedpatent-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 developmentsin the caselaw can
`create complications for the patent-examination
`process. For example, claims in one application
`could be deemedto be abstract, whereasslightly
`different claims directed to the sameor similar
`subject matter could be determinedtoreflect a
`patenteligible “improvement.” Alternatively,
`claims in one application could be found to be
`abstract, whereas claimsto the sameor similar
`subject matter in another application, containing
`additional or different embodiments in the
`specification, could be deemedeligible as not
`directed to an abstract idea. In other words, the
`finding that the subject matter claimedin a prior
`patent was“abstract” as claimed maynot determine
`whethersimilar subject matter in another
`application, claimed somewhatdifferently or
`supported bya different disclosure, is directed to
`an abstract idea and therefore patentineligible.
`
`(a) Mathematical concepts—
`mathematicalrelationships,
`mathematical formulas or equations,
`mathematical calculations; 12
`(b) Certain methodsof organizing
`human activity—fundamental economic
`principles or practices (including
`hedging, insurance, mitigating risk);
`commercialor legal interactions
`(including agreements in the form of
`contracts; legal obligations; advertising,
`marketingorsales activities or
`behaviors; businessrelations); managing
`personal behavioror 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[.]”); Diamondv. Diehr, 450 U.S. 175,
`191 (1981) (“A mathematical formula as such is not
`accordedthe 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
`someother inventive conceptin its application.”’);
`Benson, 409 U.S.at 71-72 (concludingthat
`permitting a patent on the claimed invention
`“would wholly pre-empt the mathematical formula
`andin practical effect would be a patent on the
`algorithm itself’); Mackay Radio & Telegraph Co.v.
`Radio Corp. ofAm., 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 claimsto 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 claimsto a “process of organizing information
`through mathematical correlations” are directed to
`an abstract idea); Bancorp Servs., LLC v. Sun Life
`AssuranceCo. of Can. (U.S.), 687 F.3d 1266, 1280
`(Fed. Cir. 2012) (identifying the concept of
`“managinga 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 settlementrisk is a
`“fundamental economic practice” and thus an
`abstract idea); id. (describing the conceptofrisk
`hedging identified as an abstract idea in Bilski as
`“a methodof 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 “managinga 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 conceptof ‘“‘local processing of payments for
`remotely purchased goods” is a “‘fundamental
`economic practice, which Alice madeclear 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
`conceptof“offer-based price optimization” is an
`abstract idea ‘‘similar to other ‘fundamental
`economic concepts’ foundto be abstract ideas by
`the Supreme Court andthis court’’); buySAFE,Inc.
`v. Google, Inc., 765 F.3d. 1350, 1355 (Fed. Cir. 2014)
`(holding that conceptof ‘“‘creating a contractual
`relationship—a ‘transaction performance
`guaranty’ ”’ is an abstractidea); In re Comiskey, 554
`F.3d 967, 981 (Fed. Cir. 2009) (claims directed to
`“resolving a legal dispute between twoparties by
`the decision of a humanarbitrator” are ineligible);
`
`(c) Mental processes—concepts
`performed in the human mind 14
`(including an observation, evaluation,
`judgment, opinion).1>
`
`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 determinedthat 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 (concludingthat
`“[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 humanactivity of
`passing a note to a person whois 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
`conceptof“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
`“[alpplicants’ claims, directed to rules for
`conducting a wagering game” areabstract).
`14Tf a claim, underits broadest reasonable
`interpretation, covers performancein the mind but
`for the recitation of generic computer components,
`thenit is still in the mental processes category
`unless the claim cannotpractically 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-
`implementedsteps, there is nothing in the claims
`themselvesthat 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 methodfor
`“anonymousloan shopping” wasan abstract idea
`becauseit could be ‘“‘performed by humanswithout
`a computer’); Versata Dev. Grp. v. SAP Am.,Inc.,
`793 F.3d 1306, 1335 (Fed.Cir. 2015) (‘Courts have
`examined claimsthat required the use ofa
`computerandstill found that the underlying,
`patent-ineligible invention could be performed via
`pen and paperor 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 makea claim otherwise
`directed to processthat “can be performedin the
`human mind,or by a humanusing a pen and
`paper” patenteligible); id. at 1376 (distinguishing
`Research Corp. Techs. v. Microsoft Corp., 627 F.3d
`859 (Fed. Cir. 2010), and SiRF Tech., Inc.v. Int’]
`Trade Comm’n,601 F.3d 1319 (Fed. Cir. 2010), as
`directed to inventionsthat ‘“‘could not, as a practical
`matter, be performed entirely in a human’s mind”).
`Likewise, performance of a claim limitation using
`generic computer components doesnot necessarily
`precludethe claim limitation from being in the
`mathematical concepts grouping, Benson, 409 U.S.
`at 67, or the certain methodsof organizing human
`activity grouping, Alice, 573 U.S. at 219-20.
`15 Mayo, 566 U.S. at 71 (“‘[MJental processes| ]
`andabstract intellectual concepts are not
`patentable, as they are the basic tools ofscientific
`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
`
`Patent Owner ONETRUST, LLC - Exhibit 2009 - Page 3
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`Patent Owner ONETRUST, LLC - Exhibit 2009 - Page 3
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`53
`Federal Register / Vol. 84, No. 4/Monday, January 7, 2019/ Notices
`
`Claims that do not recite matter that
`falls within these enumerated groupings
`of abstract ideas should notbe treated
`as reciting abstract ideas, except as
`follows: In the rare circumstance in
`which a USPTO employeebelieves a
`claim limitation that does notfall
`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.
`IL. “Directed To” a Judicial Exception
`The Supreme Court has long
`distinguished betweenprinciples
`themselves (which are not patent
`eligible) and the integration of those
`principles into practical applications
`(which are patenteligible).16 Similarly,
`
`would doit by head and hand.”’); Synopsys,Inc.v.
`Mentor Graphics Corp., 839 F.3d 1138, 1139, (Fed.
`Cir. 2016) (holding that claims to the mental
`processof“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
`“anonymousloan shopping” is an abstract idea
`becauseit could be ‘“‘performed by humanswithout
`a computer’); In re BRCA1 & BRCA2-Based
`Hereditary CancerTest PatentLitig., 774 F.3d 755,
`763 (Fed. Cir. 2014) (concluding that concept of
`“comparing BRCA sequencesand determining the
`existenceofalterations” 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 knownhair 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 performedentirely 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) andstating
`that Mayo “‘set forth a frameworkfor distinguishing
`patents that claim lawsof nature, natural
`phenomena,andabstract 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 maywell 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 becauseit did not provide an
`application of the formula); Mackay Radio, 306 U.S.
`at 94 (“While a scientific truth, or the mathematical
`expression ofit, is not patentable invention, a novel
`and useful structure created with the aid of
`knowledgeofscientific truth may be.’’); Le Roy v.
`Tatham,55 U.S. (14 How.) 156, 175 (1852) (“The
`elements of the [natural phenomena]exist; the
`
`in a growing bodyofdecisions, the
`Federal Circuit has distinguished
`between claimsthat are “directed to” a
`judicial exception (which require
`further analysis to determinetheir
`eligibility) and those that are not (which
`are therefore patent eligible).1” For
`example, an improvementin the
`functioning of a computeror other
`technology or technological field may
`rendera claim patenteligible at step one
`of the Alice/Mayotest evenif it recites
`an abstract idea, law of nature, or
`natural phenomenon.!8 Moreover,
`recent Federal Circuit jurisprudence has
`indicatedthat eligible subject matter can
`often be identified eitherat the first or
`the secondstep of the Alice/Mayotest.19
`
`inventionis not in discovering them, but in
`applying them to useful objects.”’).
`17 See, e.g., MPEP 2106.06(b) (summarizing
`Enfish, McRO, andothercasesthat wereeligible as
`improvements to technology or computer
`functionality instead of abstract ideas); USPTO
`Finjan Memorandum (discussing Finjan, and Core
`Wireless); USPTO MemorandumofJune7, 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
`beeligible if ordered combination oflimitations
`“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 viewedin the
`contextof 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 whethera 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’] Ltd., 887 F.3d 1117, 1134 (Fed.Cir.
`2018)(“If the claims are not directed to a patent
`ineligible conceptat step one, we need not address
`step twoof the inquiry.”’); Rapid Litig. Mgmt. Ltd.
`v. CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed.Cir.
`2016) (holding that claimed invention is patent
`eligible becauseit is not directed to a