`
`October 2019 Update: Subject Matter Eligibility
`
`The 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) published on January 7,
`2019 (84 Fed. Reg. 50), and comments were solicited from the public.1 Numerous comments were
`received, and have been reviewed. Using further explanation and examples, this update responds to
`the five major themes from the comments.2 Note, the feedback received was primarily directed to
`examination procedures and, accordingly, this update focuses on clarifying practice for patent
`examiners. However, all USPTO personnel are expected to follow the guidance.3
`
`In the discussion below, the response to each theme is addressed in a separate section as follows,
`including further explanation on:
`
`(I) evaluating whether a claim recites a judicial exception;
`
`(II) the groupings of abstract ideas enumerated in the 2019 PEG;
`
`(III) evaluating whether a judicial exception is integrated into a practical application;
`(IV) the prima facie case and the role of evidence with respect to eligibility rejections; and
`
`(V) the application of the 2019 PEG in the patent examining corps.
`
`Three appendices are also attached. The first appendix (Appendix 1) provides new examples that
`are illustrative of major themes from the comments. The second appendix (Appendix 2) is a
`comprehensive index of examples for use with the 2019 PEG, including examples issued prior to the
`publication of the 2019 PEG. The third appendix (Appendix 3) lists and discusses selected eligibility
`cases from the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit.
`
`Evaluating Whether A Claim Recites A Judicial Exception At Step 2A Prong One
`
`I.
`The following discussion provides more information about how to determine whether a claim
`recites a judicial exception.
`A. Meaning Of “Recites”
`In Step 2A Prong One, the 2019 PEG instructs examiners to evaluate whether a claim recites a
`judicial exception, i.e., an abstract idea enumerated in Section I of the 2019 PEG, a law of nature, or
`a natural phenomenon. The 2019 PEG did not change the meaning of “recites” from how this term
`is used in the Manual of Patent Examining Procedure (MPEP).4 That is, a claim recites a judicial
`exception when the judicial exception is “set forth” or “described” in the claim. While the terms “set
`forth” and “describe” are thus both equated with “recite,” their different language is intended to
`indicate that there are two ways in which an exception can be recited in a claim. For instance, the
`claims in Diamond v. Diehr clearly stated a mathematical equation in the repetitively calculating
`step, such that the claims “set forth” an identifiable judicial exception, but the claims in Alice Corp.
`v. CLS Bank, “described” the concept of intermediated settlement without ever explicitly using the
`words “intermediated” or “settlement.”
`
`Thus, when determining whether a claim “recites” a judicial exception, examiners should:
`x evaluate the claim to determine whether it sets forth or describes an abstract idea in
`accordance with the examination instructions in the 2019 PEG and the groupings of abstract
`ideas that are further clarified in Section II of this update;
`x evaluate the claim to determine whether it sets forth or describes a product of nature in
`accordance with the guidance in MPEP 2106.04(b) and (c), including the markedly different
`characteristics analysis; and
`
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`x evaluate the claim to determine whether it sets forth or describes a law of nature or a
`natural phenomenon other than a product of nature in accordance with the guidance in
`MPEP 2106.04(b).
`
`Specific examples of how to perform these evaluations of whether a claim sets forth or describes an
`exception under the 2019 PEG are found in Examples 37-43 and 45-46 (abstract ideas), Examples
`43 and 45 (laws of nature), and Examples 43-44 (products of nature). Additional examples of how
`to identify whether a claim recites a law of nature or natural phenomenon are found in the pre-PEG
`examples 9-18 and 28-31.
`B. Multiple Judicial Exceptions Recited In A Claim
`Clarification was requested on how claims reciting multiple judicial exceptions are treated. A claim
`can recite more than one judicial exception (i.e., abstract idea, law of nature, or natural
`phenomenon).5 In some claims, the multiple exceptions are distinct from each other, e.g., a first
`limitation describes a law of nature, and a second limitation elsewhere in the claim recites an
`abstract idea. In these cases, examiners should continue to follow existing guidance in MPEP
`2106.05(II) when analyzing the claims for eligibility.6
`
`Other claims may recite multiple abstract ideas, which may fall in the same or different groupings,
`or multiple laws of nature. In these cases, examiners should not parse the claim. For example, in a
`claim that includes a series of steps that recite mental steps as well as a mathematical calculation,
`an examiner should identify the claim as reciting both a mental process and a mathematical concept
`for Step 2A Prong One to make the analysis clear on the record. However, if possible, the examiner
`should consider the limitations together to be an abstract idea for Step 2A Prong Two and Step 2B
`(if necessary) rather than a plurality of separate abstract ideas to be analyzed individually.7 This is
`illustrated in, e.g., Example 45 (Controller for Injection Mold), and Example 46 (Livestock
`Management).
`
`II. The Groupings Of Abstract Ideas Enumerated In The 2019 PEG
`The 2019 PEG sets forth a test that distills the relevant case law to aid in examination, and does not
`attempt to articulate each and every decision. As further explained in the 2019 PEG, the Office has
`shifted its approach from the case-comparison approach in determining whether a claim recites an
`abstract idea and instead uses enumerated groupings of abstract ideas.8 The enumerated groupings
`are firmly rooted in Supreme Court precedent as well as Federal Circuit decisions interpreting that
`precedent. By grouping the abstract ideas, the 2019 PEG shifts examiners’ focus from relying on
`individual cases to generally applying the wide body of case law spanning all technologies and claim
`types. In sum, the 2019 PEG synthesizes the holdings of various court decisions to facilitate
`examination.
`
`Additional guidance on identifying abstract ideas enumerated in the 2019 PEG and their
`relationship to judicial decisions was requested. The 2019 PEG instructs examiners to refer to the
`groupings of abstract ideas enumerated in Section I of the 2019 PEG (i.e., mathematical concepts,
`certain methods of organizing human activities, and mental processes) in order to identify abstract
`ideas.9 These groupings are not mutually exclusive, i.e., some claims may recite limitations that fall
`within more than one abstract idea grouping or sub-grouping enumerated in the 2019 PEG. For
`example, a claim reciting performing mathematical calculations using a formula that could be
`practically performed in the human mind may be considered to fall within the mathematical
`concepts grouping and the mental process grouping. Examiners should identify at least one abstract
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`idea grouping, but preferably identify all groupings to the extent possible, if a claim limitation(s) is
`determined to fall within multiple groupings, and proceed with the analysis in Step 2A Prong Two.
`This is illustrated in, e.g., Example 45 (Controller for Injection Mold). Under the 2019 PEG, if an
`examiner has an application with a claim limitation that does not fall clearly within the enumerated
`groupings of abstract ideas, but the examiner nonetheless determines, based on a Supreme Court
`or Federal Circuit decision, that the claim limitation should be treated as reciting an abstract idea,
`the examiner should bring the application to the attention of their Technology Center (TC) Director,
`as described below in Section I.D.10 The following discussion is meant to provide more information
`about the enumerated groupings of abstract ideas.
`A. Mathematical Concepts
`The 2019 PEG defines “mathematical concepts” as mathematical relationships, mathematical
`formulas or equations, and mathematical calculations. Clarification was requested about the scope
`of the “mathematical concepts” grouping, and in particular, examples of each type of mathematical
`concept were requested.
`
`Suggestions were made that the Office should distinguish between the types of math recited in
`claims when making an eligibility determination. After consideration, the current “mathematical
`concepts” grouping will be retained because it is consistent with the case law. The courts have
`declined to distinguish between the types of math recited in a claim when evaluating claims for
`eligibility. For example, in Parker v. Flook, the Court found that the claim recited a mathematical
`formula.11 This determination was not altered by the fact that the math was being used to solve an
`engineering problem (i.e., updating an alarm limit during catalytic conversion processes).
`
`When determining whether a claim recites a mathematical concept (i.e., mathematical relationships,
`mathematical formulas or equations, and mathematical calculations), examiners should consider
`whether the claim recites a mathematical concept or merely includes limitations that are based on
`or involve a mathematical concept. A claim does not recite a mathematical concept (i.e., the claim
`limitations do not fall within the mathematical concept grouping), if it is only based on or involves
`a mathematical concept.12 For example, a limitation that is merely based on or involves a
`mathematical concept described in the specification may not be sufficient to fall into this grouping,
`provided the mathematical concept itself is not recited in the claim.13
`
`Specific examples of claims reciting mathematical concepts issued with or after the 2019 PEG are
`found in Example 41 (Cryptographic Communications), Example 43 (Treating Kidney Disease), and
`Example 45 (Controller for Injection Molding).
`i.
`A mathematical relationship is a relationship between variables or numbers. A mathematical
`relationship may be expressed in words or using mathematical symbols. For example, pressure (p)
`can be described as the ratio between the magnitude of the normal force (F) and area of the surface
`on contact (A), or it can be set forth in the form of an equation such as p = F/A.
`
`“Mathematical Relationships”
`
`Examples of mathematical relationships recited in a claim include:
`x a relationship between reaction rate and temperature, which relationship can be expressed
`in the form of a formula called the Arrhenius equation, Diamond v. Diehr;14
`x a conversion between binary-coded decimal and pure binary numerals, Gottschalk v.
`Benson;15 and
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`x a mathematical relationship between enhanced directional radio activity and antenna
`conductor arrangement (i.e., the length of the conductors with respect to the operating wave
`length and the angle between the conductors), Mackay Radio & Tel. Co. v. Radio Corp. of Am.16
`ii.
`A claim that recites a numerical formula or equation will be considered as falling within the
`“mathematical concepts” grouping. In addition, there are instances where a formula or equation is
`written in text format that should also be considered as falling within this grouping. For example,
`the phrase “determining a ratio of A to B” is merely a textual replacement for the particular equation
`(ratio = A/B). Additionally, the phrase “calculating the force of the object by multiplying its mass by
`its acceleration” is a textual replacement for the particular equation (F= ma).
`
`“Mathematical Formulas or Equations”
`
`“Mathematical Calculations”
`
`Examples of mathematical equations or formulas recited in a claim include:
`x a Arrhenius equation, Diamond v. Diehr;17
`x a formula for computing an alarm limit, Parker v. Flook;18 and
`x a mathematical formula for hedging (claim 4), Bilski v. Kappos.19
`iii.
`A claim that recites a mathematical calculation will be considered as falling within the
`“mathematical concepts” grouping. A mathematical calculation is a mathematical operation (such
`as multiplication) or an act of calculating using mathematical methods to determine a variable or
`number, e.g., performing an arithmetic operation such as exponentiation. There is no particular
`word or set of words that indicates a claim recites a mathematical calculation. That is, a claim does
`not have to recite the word “calculating” in order to be considered a mathematical calculation. For
`example, a step of “determining” a variable or number using mathematical methods or “performing”
`a mathematical operation may also be considered mathematical calculations when the broadest
`reasonable interpretation of the claim in light of the specification encompasses a mathematical
`calculation.
`
`Examples of mathematical calculations recited in a claim include:
`x performing a resampled statistical analysis to generate a resampled distribution, SAP Am.,
`Inc. v. InvestPic, LLC; 20
`x calculating a number representing an alarm limit value using the mathematical formula
`‘‘B1=B0 (1.0–F) + PVL(F),’’ Parker v. Flook;21 and
`x using a formula to convert geospatial coordinates into natural numbers, Burnett v. Panasonic
`Corp.22
`
`B. Certain Methods of Organizing Human Activity
`Clarification was requested about the scope of the “certain methods of organizing human activity”
`grouping. In particular, examples of fundamental economic principles or practices, commercial or
`legal interactions, and managing personal behavior, relationships or interactions between people
`were requested.
`
`The term “certain” qualifies the “certain methods of organizing human activity” grouping as a
`reminder of several important points. First, not all methods of organizing human activity are
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`abstract ideas (e.g., “a defined set of steps for combining particular ingredients to create a drug
`formulation” is not a “certain method of organizing human activity”).23 Second, this grouping is
`limited to activity that falls within the enumerated sub-groupings of fundamental economic
`principles or practices, commercial or legal interactions, managing personal behavior, and
`relationships or interactions between people, and is not to be expanded beyond these enumerated
`sub-groupings except in rare circumstances as explained in Section III(C) of the 2019 PEG. Finally,
`the sub-groupings encompass both activity of a single person (for example, a person following a set
`of instructions or a person signing a contract online) and activity that involves multiple people (such
`as a commercial interaction), and thus, certain activity between a person and a computer (for
`example a method of anonymous loan shopping that a person conducts using a mobile phone) may
`fall within the “certain methods of organizing human activity” grouping. The number of people
`involved in the activity is not dispositive as to whether a claim limitation falls within this grouping.
`Instead, the determination should be based on whether the activity itself falls within one of the sub-
`groupings.
`
`“Fundamental Economic Practices or Principles”
`
`i.
`Under the 2019 PEG, “fundamental economic principles or practices,” which describe subject matter
`relating to the economy and commerce, are considered to be a “certain method of organizing human
`activity.” According to the 2019 PEG, “fundamental economic principles or practices” include
`hedging, insurance, and mitigating risk. The term “fundamental” is not used in the sense of
`necessarily being “old” or “well-known,” 24 although being old or well-known may indicate that the
`practice is “fundamental.”25
`
`MPEP 2106.04(a)(2)(I) provides examples of “fundamental economic principles or practices.”
`Additional examples of “fundamental economic practices or principles” not discussed in this MPEP
`section include:
`x
`local processing of payments for remotely purchased goods, Inventor Holdings, LLC v. Bed
`Bath & Beyond, Inc.;26
`x using a marking affixed to the outside of a mail object to communicate information about
`the mail object, i.e., the sender, recipient, and contents of the mail object, Secured Mail
`Solutions LLC v. Universal Wilde, Inc.;27 and
`x placing an order based on displayed market information, Trading Technologies Int’l, Inc. v.
`IBG LLC .28
`ii.
`According to the 2019 PEG, “commercial interactions” or “legal interactions” include subject matter
`relating to agreements in the form of contracts, legal obligations, advertising, marketing or sales
`activities or behaviors, and business relations.
`
`“Commercial or Legal Interactions”
`
`Examples of subject matter where the commercial or legal interaction is an agreement in the form
`of contracts include:
`x a transaction performance guaranty, which is a contractual relationship, buySAFE, Inc. v.
`Google, Inc.;29 and
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`x processing insurance claims for a covered loss or policy event under an insurance policy (i.e.,
`an agreement in the form of a contract), Accenture Global Services GmbH v. Guidewire
`Software, Inc.30
`
`Examples of subject matter where the commercial or legal interaction is a legal obligation include:
`x
`tax-free exchanges of real estate, where the exchange is a legal obligation, Fort Properties,
`Inc. v. American Master Lease LLC;31 and
`x arbitration (i.e., resolving a legal dispute between two parties using an arbitrator), In re
`Comiskey.32
`
`Examples of subject matter where the commercial or legal interaction is advertising, marketing or
`sales activities or behaviors include:
`x using advertising as an exchange or currency, Ultramercial, Inc. v. Hulu, LLC;33
`x offer-based price optimization, which pertains to marketing, OIP Techs., Inc. v. Amazon.com,
`Inc.;34 and
`x structuring of a sales force or marketing company, which pertains to marketing or sales
`activities or behaviors, In re Ferguson.35
`
`Examples of subject matter where the commercial or legal interaction is business relations include:
`x processing a credit application between a customer and dealer, where the business relation
`is the relationship between the customer and the dealer during the vehicle purchase, Credit
`Acceptance Corp. v. Westlake Services;36 and
`x processing information through a clearinghouse, where the business relation is the
`relationship between a party that submitted a credit application (e.g., a car dealer) and
`funding sources (e.g., banks) when processing credit applications, Dealertrack v. Huber.37
`
`For additional discussion and examples of commercial or legal interactions, see MPEP
`2106.04(a)(2)(II)(A)-(B).
`
`“Managing Personal Behavior or Relationships or Interactions Between People”
`
`iii.
`According to the 2019 PEG, “managing personal behavior or relationships or interactions between
`people” includes social activities, teaching, and following rules or instructions. Examples of these
`sub-groupings include subject matter such as:
`x a set of rules for playing a dice game, In re Marco Guldenaar Holding B.V.;38
`x voting, verifying the vote, and submitting the vote for tabulation, Voter Verified, Inc. v.
`Election Systems & Software LLC;39
`x assigning hair designs to balance head shape, In re Brown;40 and
`x a series of instructions of how to hedge risk, Bilski v. Kappos.41
`
`For additional examples relating to managing human behavior, see MPEP 2106.04(a)(2)(II)(C).
`
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`C. Mental Processes
`Under the 2019 PEG, the “mental processes” grouping is defined as concepts performed in the
`human mind, and examples of mental processes include observations, evaluations, judgments, and
`opinions. Because both product and process claims may recite a “mental process,” the phrase
`“mental processes” should be understood as referring to the type of abstract idea, and not to the
`statutory category of the claim.42 Additional information was requested about how an examiner
`evaluates whether a claim recites a mental process. Accordingly, the following discussion is meant
`to guide examiners and provide more information on how to determine whether a claim recites a
`mental process. Examiners should keep in mind the following points when performing this
`evaluation.
`
`i.
`
`A Claim With Limitation(s) That Cannot Practically Be Performed In The Human
`Mind Does Not Recite A Mental Process
`
`Claims do not recite a mental process when they do not contain limitations that can practically be
`performed in the human mind, for instance when the human mind is not equipped to perform the
`claim limitations.43 Examples of claims that do not recite mental processes because they cannot be
`practically performed in the human mind include:
`x a claim to a method for calculating an absolute position of a GPS receiver and an absolute
`time of reception of satellite signals, where the claimed GPS receiver calculated
`pseudoranges that estimated the distance from the GPS receiver to a plurality of satellites,
`SiRF Technology, Inc. v. International Trade Commission;44
`x a claim to detecting suspicious activity by using network monitors and analyzing network
`packets, SRI Int’l, Inc. v. Cisco Systems, Inc.;45
`x a claim to a specific data encryption method for computer communication involving a
`several-step manipulation of data, Synopsys, Inc. v. Mentor Graphics Corp. (distinguishing the
`claims in TQP Development, LLC v. Intuit Inc.);46 and
`x a claim to a method for rendering a halftone image of a digital image by comparing, pixel by
`pixel, the digital image against a blue noise mask, where the method required the
`manipulation of computer data structures (e.g., the pixels of a digital image and a two-
`dimensional array known as a mask) and the output of a modified computer data structure
`(a halftoned digital image), Research Corp. Techs. v. Microsoft Corp.47
`
`Specific examples of claims that do not recite a mental process issued with or after the 2019 PEG
`are found in Example 37 (Relocation of Icons on a Graphical User Interface – claim 2), Example 38
`(Simulating an Analog Audio Mixer), and Example 39 (Method for Training a Neural Network for
`Facial Detection).
`
`In contrast, claims do recite a mental process when they contain limitations that can practically be
`performed in the human mind, including for example, observations, evaluations, judgments, and
`opinions. Examples of claims that recite mental processes include:
`x a claim to “collecting information, analyzing it, and displaying certain results of the collection
`and analysis,” where the data analysis steps are recited at a high level of generality such that
`they could practically be performed in the human mind, Electric Power Group, LLC v. Alstom,
`S.A.;48
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`x claims to “comparing BRCA sequences and determining the existence of alterations,” where
`the claims cover any way of comparing BRCA sequences such that the comparison steps can
`practically be performed in the human mind, University of Utah Research Foundation v. Ambry
`Genetics Corp.;49
`x a claim to collecting and comparing known information (claim 1), which are steps that can
`be practically performed in the human mind, Classen Immunotherapies, Inc. v. Biogen IDEC;50
`and
`x a claim to identifying head shape and applying hair designs, which is a process that can be
`practically performed in the human mind, In re Brown.51
`
`A Claim That Requires A Computer May Still Recite A Mental Process
`
`Specific examples of claims that do recite a mental process issued with or after the 2019 PEG are
`found in Example 37 (Relocation of Icons on a Graphical User Interface – claims 1 and 3), Example
`40 (Adaptive Monitoring of Network Traffic Data), Example 43 (Treating Kidney Disease), Example
`45 (Controller for Injection Molding), and Example 46 (Livestock Management).
`ii.
`Claims can recite a mental process even if they are claimed as being performed on a computer.52
`Suggestions were made that an examiner should determine that a claim, when given its broadest
`reasonable interpretation, recites a mental process only when the claim is performed entirely in
`the human mind. After consideration, this suggestion will not be adopted, and the current “mental
`processes” grouping in the 2019 PEG will be retained, since it is consistent with current case law.
`The courts have found claims requiring a generic computer or nominally reciting a generic
`computer may still recite a mental process even though the claim limitations are not performed
`entirely in the human mind.53
`
`In evaluating whether a claim that requires a generic computer recites a mental process,
`examiners should carefully consider the broadest reasonable interpretation of the claim in light
`of the specification. By way of example, examiners may review the specification to determine if
`the underlying claimed invention is described as a concept that is performed in the human mind
`and applicant is merely claiming that concept performed 1) on a generic computer, 2) in a
`computer environment or 3) is merely using a computer as a tool to perform the concept. In these
`situations, the claim is considered to recite a mental process. For instance, in Voter Verified, Inc.
`v. Election Systems & Software LLC, the Federal Circuit relied upon the specification in explaining
`that the claimed steps of voting, verifying the vote, and submitting the vote for tabulation are
`human cognitive actions that humans have performed for hundreds of years despite the fact that
`the steps in the claim were performed on a computer.54
`
`Furthermore, examiners should keep in mind that both product claims (e.g., computer system,
`computer-readable medium, etc.) and process claims may recite mental processes.55 For example,
`in Mortgage Grader, Inc. v. First Choice Loan Servs., Inc., the patentee claimed a computer-
`implemented system and a method for enabling borrowers to anonymously shop for loan packages
`offered by a plurality of lenders, comprising a database that stores loan package data from the
`lenders, and a computer system providing an interface and a grading module. The Federal Circuit
`held that the computer-implemented system and method for “anonymous loan shopping” was an
`abstract idea because it could be “performed by humans without a computer.”56
`
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`iii.
`
`A Claim That Encompasses A Human Performing The Step(s) Mentally With The
`Aid Of A Pen And Paper Recites A Mental Process
`
`If a claim recites a limitation that can practically be performed in the human mind, the limitation
`falls within the mental processes grouping, and the claim recites an abstract idea.57 The use of a
`physical aid (i.e., the pen and paper) to help perform a mental step (e.g., a mathematical calculation)
`does not negate the mental nature of this limitation.58 For instance, Example 45 (Controller for
`Injection Molding) illustrates how a claim that encompasses a human performing a step mentally
`with a physical aid recites a mental process. CyberSource Corp. v. Retail Decisions, Inc. provides
`another example. In that case, the court determined that the claimed step of “constructing a map of
`credit card numbers” was a limitation that was able to be performed “by writing down a list of credit
`card transactions made from a particular IP address.” In making this determination, the court
`looked to the specification, which disclosed that the claimed map was nothing more than a listing of
`several (e.g., four) credit card transactions. The court determined that this step was able to be
`performed mentally with a pen and paper, and therefore, qualifies as a mental process.59 While a
`claim limitation to a process that “can be performed in the human mind, or by a human using a pen
`and paper” qualifies as a mental process, a claim limitation that “could not, as a practical matter, be
`performed entirely in a human’s mind” (even if aided with pen and paper) would not qualify as a
`mental process.60
`
`D. Tentative Abstract Idea Procedure
`The 2019 PEG sets forth a procedure for handling tentative abstract ideas. Clarification was
`requested about this procedure (e.g., whether the Office will notify the public if the procedure is
`used, whether an interview with a TC director will be granted, etc.), and suggestions were made for
`modifications to this procedure. The following discussion provides additional clarification
`regarding this procedure.
`
`The TC Director will give approval for any subject matter eligibility rejection of a claim including a
`tentative abstract idea using the procedure in the 2019 PEG. The ensuing Office action will identify
`that the claim(s) are directed to a previously non-enumerated abstract idea via form paragraph
`7.05.017 and include the TC Director’s signature. Before signature, the TC Director will inform
`Patents Management that this procedure has been used. Once such an Office action issues, the
`public will be notified, for example, on USPTO.GOV/PatentEligibility.
`
`In response to a rejection based on failure to claim patent-eligible subject matter, an interview with
`the examiner may be conducted, which may help advance prosecution and identify patent eligible
`subject matter.61 For applications in which an abstract idea has been identified using the tentative
`abstract idea procedure, an interview with the TC Director that provided approval is not necessary
`because the examiner retains the authority to withdraw or maintain rejection upon consideration
`of applicant’s reply. The examiner is not required to obtain TC Director approval to withdraw or
`maintain such a § 101 subject matter eligibility rejection.
`
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`III.
`
`Evaluating Whether A Judicial Exception Is Integrated Into A Practical Application At
`Step 2A Prong Two
`A. Integration into a Practical Application
`According to the 2019 PEG, the question of whether a claim is “directed to” a judicial exception in
`Step 2A is now evaluated using a two-prong inquiry. Prong One, which is discussed in Section I of
`this Update, asks if the claim
`“recites” an abstract idea, law of
`nature, or natural phenomenon.
`Under that prong, the mere
`inclusion of a judicial exception
`such as a mathematical formula
`(which is one of the mathematical
`concepts identified as an abstract
`idea in Section I of the PEG) in a
`claim means
`that
`the claim
`“recites” a
`judicial exception.
`However, mere recitation of a
`judicial exception does not mean
`that the claim is “directed to” that
`judicial exception under Step 2A
`Prong Two. Instead, under Prong
`Two, a claim that recites a judicial
`exception is not directed to that
`judicial exception, if the claim as a
`whole “integrates the recited
`judicial exception into a practical
`application of that exception.”62
`Prong Two thus distinguishes
`claims that are “directed to” the
`recited judicial exception from
`claims that are not “directed to”
`the recited judicial exception.
`
`Because the 2019 PEG did not
`change the overall subject matter
`eligibility analysis, no changes
`have been made to the existing
`eligibility
`flowchart
`in MPEP
`2106(III), which is reproduced in
`Figure 1 (at right).
`
`
`
`Gree, Inc.
`Ex. 2005
`Page 10
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`
`October 2019 Update: Subject Matter Eligibility
`
`Instead, a new mini-flowchart
`was created to depict the two-
`prong analysis
`that
`is now
`performed in order to answer the
`Step 2A
`inquiry. This mini-
`flowchart, which was used in
`USPTO training on the 2019 PEG,
`is also reproduced in Figure 2 (at
`right). These figures demonstrate
`how the revised Step 2A analysis
`created by the 2019 PEG fits into
`the overall eligibility analysis set
`forth in the MPEP. As shown in
`Figure 2 and described in the
`2019 PEG at Section III, a claim
`reciting a judicial exception is
`now eligible at revised Step 2A
`unless that exce