50
`Notices
`
`Federal Register
`
`Vol. 84, No. 4
`
`Monday, January 7, 2019
`
`This section of the FEDERAL REGISTER
`contains documents other than rules or
`proposed rules that are applicable to the
`public. Notices of hearings and investigations,
`committee meetings, agency decisions and
`rulings, delegations of authority, filing of
`petitions and applications and agency
`statements of organization and functions are
`examples of documents appearing in this
`section.
`
`DEPARTMENT OF COMMERCE
`
`United States Patent and Trademark
`Office
`[Docket No. PTO–P–2018–0053]
`
`2019 Revised Patent Subject Matter
`Eligibility Guidance
`AGENCY: United States Patent and
`Trademark Office, Commerce.
`ACTION: Examination Guidance; Request
`for comments.
`SUMMARY: The United States Patent and
`Trademark Office (USPTO) has prepared
`revised guidance (2019 Revised Patent
`Subject Matter Eligibility Guidance) for
`use by USPTO personnel in evaluating
`subject matter eligibility. The 2019
`Revised Patent Subject Matter Eligibility
`Guidance revises the procedures for
`determining whether a patent claim or
`patent application claim is directed to a
`judicial exception (laws of nature,
`natural phenomena, and abstract ideas)
`under Step 2A of the USPTO’s Subject
`Matter Eligibility Guidance in two ways.
`First, the 2019 Revised Patent Subject
`Matter Eligibility Guidance explains
`that abstract ideas can be grouped as,
`e.g., mathematical concepts, certain
`methods of organizing human activity,
`and mental processes. Second, this
`guidance explains that a patent claim or
`patent application claim that recites a
`judicial exception is not ‘‘directed to’’
`the judicial exception if the judicial
`exception is integrated into a practical
`application of the judicial exception. A
`claim that recites a judicial exception,
`but is not integrated into a practical
`application, is directed to the judicial
`exception under Step 2A and must then
`be evaluated under Step 2B (inventive
`concept) to determine the subject matter
`eligibility of the claim. The USPTO is
`seeking public comment on its subject
`matter eligibility guidance, and
`particularly the 2019 Revised Patent
`Subject Matter Eligibility Guidance.
`DATES:
`
`Applicable Date: The 2019 Revised
`Patent Subject Matter Eligibility
`Guidance is effective on January 7,
`2019. The 2019 Revised Patent Subject
`Matter Eligibility Guidance applies to
`all applications, and to all patents
`resulting from applications, filed before,
`on, or after January 7, 2019.
`Comment Deadline Date: Written
`comments must be received on or before
`March 8, 2019.
`ADDRESSES: Comments must be sent by
`electronic mail message over the
`internet addressed to: Eligibility2019@
`uspto.gov.
`Electronic comments submitted in
`plain text are preferred, but also may be
`submitted in ADOBE® portable
`document format or MICROSOFT
`WORD® format. Comments not
`submitted electronically should be
`submitted on paper in a format that
`facilitates convenient digital scanning
`into ADOBE® portable document
`format. The comments will be available
`for viewing via the USPTO’s internet
`website (http://www.uspto.gov). Because
`comments will be made available for
`public inspection, information that the
`submitter does not desire to make
`public, such as an address or phone
`number, should not be included in the
`comments.
`FOR FURTHER INFORMATION CONTACT: June
`E. Cohan, Senior Legal Advisor, at 571–
`272–7744 or Carolyn Kosowski, Senior
`Legal Advisor, at 571–272–7688, both
`with the Office of Patent Legal
`Administration.
`SUPPLEMENTARY INFORMATION: Patent
`subject matter eligibility under 35
`U.S.C. 101 has been the subject of much
`attention over the past decade. Recently,
`much of that attention has focused on
`how to apply the U.S. Supreme Court’s
`framework for evaluating eligibility
`(often called the Alice/Mayo test).1
`Properly applying the Alice/Mayo test in
`a consistent manner has proven to be
`difficult, and has caused uncertainty in
`this area of the law. Among other things,
`it has become difficult in some cases for
`inventors, businesses, and other patent
`stakeholders to reliably and predictably
`determine what subject matter is patent-
`eligible. The legal uncertainty
`surrounding Section 101 poses unique
`
`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)).
`
`challenges for the USPTO, which must
`ensure that its more than 8500 patent
`examiners and administrative patent
`judges apply the Alice/Mayo test in a
`manner that produces reasonably
`consistent and predictable results across
`applications, art units and technology
`fields.
`Since the Alice/Mayo test was
`announced and began to be extensively
`applied, the courts and the USPTO have
`tried to consistently distinguish
`between patent-eligible subject matter
`and subject matter falling within a
`judicial exception. Even so, patent
`stakeholders have expressed a need for
`more clarity and predictability in its
`application. In particular, stakeholders
`have expressed concern with the proper
`scope and application of the ‘‘abstract
`idea’’ exception. Some courts share
`these concerns, for example as
`demonstrated by several recent
`concurrences and dissents in the U.S.
`Court of Appeals for the Federal Circuit
`(‘‘Federal Circuit’’) calling for changes
`in the application of Section 101
`jurisprudence.2 Many stakeholders,
`judges, inventors, and practitioners
`across the spectrum have argued that
`something needs to be done to increase
`clarity and consistency in how Section
`101 is currently applied.
`To address these and other concerns,
`the USPTO is revising its examination
`procedure with respect to the first step
`of the Alice/Mayo test 3 (Step 2A of the
`USPTO’s Subject Matter Eligibility
`Guidance as incorporated into the
`Manual of Patent Examining Procedure
`(‘‘MPEP’’) 2106) 4 by: (1) Providing
`groupings of subject matter that is
`considered an abstract idea; and (2)
`clarifying that a claim is not ‘‘directed
`to’’ a judicial exception if the judicial
`exception is integrated into a practical
`application of that exception.
`
`2 See, e.g., Interval Licensing LLC, v. AOL, Inc.,
`896 F.3d 1335, 1348 (Fed. Cir. 2018) (Plager, J.,
`concurring in part and dissenting in part); Smart
`Sys. Innovations, LLC v. Chicago Transit Auth., 873
`F.3d 1364, 1377 (Fed. Cir. 2017) (Linn, J., dissenting
`in part and concurring in part); Berkheimer v. HP
`Inc., 890 F.3d 1369, 1376 (Fed. Cir. 2018) (Lourie,
`J., joined by Newman, J., concurring in denial of
`rehearing en banc).
`3 The first step of the Alice/Mayo test is to
`determine whether the claims are ‘‘directed to’’ a
`judicial exception. Alice, 573 U.S. at 217 (citing
`Mayo, 566 U.S. at 77).
`4 All references to the MPEP in the 2019 Revised
`Patent Subject Matter Eligibility Guidance are to the
`Ninth Edition, Revision 08–2017 (rev. Jan. 2018),
`unless otherwise indicated.
`
`VerDate Sep<11>2014 18:34 Jan 04, 2019 Jkt 247001 PO 00000 Frm 00001 Fmt 4703 Sfmt 4703 E:\FR\FM\07JAN1.SGM 07JAN1
`
`khammond on DSK30JT082PROD with NOTICES
`
`Gree Exhibit 2002
`Supercell Oy v. Gree, Inc.
`PGR2020-00063
`Page 00001
`
`

`

`Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019 / Notices
`
`51
`
`Section I of this 2019 Revised Patent
`Subject Matter Eligibility Guidance
`explains that the judicial exceptions are
`for subject matter that has been
`identified as the ‘‘basic tools of
`scientific and technological work,’’ 5
`which includes ‘‘abstract ideas’’ such as
`mathematical concepts, certain methods
`of organizing human activity, and
`mental processes; as well as laws of
`nature and natural phenomena. Only
`when a claim recites a judicial
`exception does the claim require further
`analysis in order to determine its
`eligibility. The groupings of abstract
`ideas contained in this guidance enable
`USPTO personnel to more readily
`determine whether a claim recites
`subject matter that is an abstract idea.
`Section II explains that the USPTO
`has set forth a revised procedure, rooted
`in Supreme Court caselaw, to determine
`whether a claim is ‘‘directed to’’ a
`judicial exception under the first step of
`the Alice/Mayo test (USPTO Step 2A).
`Section III explains the revised
`procedure that will be applied by the
`USPTO. The procedure focuses on two
`aspects of Revised Step 2A: (1) Whether
`the claim recites a judicial exception;
`and (2) whether a recited judicial
`exception is integrated into a practical
`application. Only when a claim recites
`a judicial exception and fails to
`integrate the exception into a practical
`application, is the claim ‘‘directed to’’ a
`judicial exception, thereby triggering the
`need for further analysis pursuant to the
`second step of the Alice/Mayo test
`(USPTO Step 2B). Finally, if further
`analysis at Step 2B is needed (for
`example to determine whether the claim
`merely recites well-understood, routine,
`conventional activity), this 2019
`Revised Patent Subject Matter Eligibility
`Guidance explains that the examiner or
`administrative patent judge will proceed
`in accordance with existing USPTO
`guidance as modified in April 2018.6
`The USPTO is seeking public
`comment on its subject matter eligibility
`guidance, and particularly the 2019
`Revised Patent Subject Matter Eligibility
`Guidance. The USPTO is determined to
`continue its mission to provide
`predictable and reliable patent rights in
`
`5 Mayo, 566 U.S. at 71 (‘‘Phenomena of nature,
`though just discovered, mental processes, and
`abstract intellectual concepts are not patentable, as
`they are the basic tools of scientific and
`technological work’’ (quoting Gottschalk v. Benson,
`409 U.S. 63, 67 (1972)).
`6 USPTO Memorandum of April 19, 2018,
`‘‘Changes in Examination Procedure Pertaining to
`Subject Matter Eligibility, Recent Subject Matter
`Eligibility Decision (Berkheimer v. HP, Inc.)’’ (Apr.
`19, 2018), available at https://www.uspto.gov/sites/
`default/files/documents/memo-berkheimer-
`20180419.PDF [hereinafter ‘‘USPTO Berkheimer
`Memorandum’’].
`
`accordance with this rapidly evolving
`area of the law. The USPTO’s ultimate
`goal is to draw distinctions between
`claims to principles in the abstract and
`claims that integrate those principles
`into a practical application. To that end,
`the USPTO may issue further guidance,
`or modify the current guidance, in the
`future based on its review of the
`comments received, further experience
`of the USPTO and its stakeholders, and
`additional judicial actions.
`Implementation of examination
`guidance on eligibility is an iterative
`process and may continue with periodic
`supplements. The USPTO invites the
`public to submit suggestions on
`eligibility-related topics to address in
`future guidance supplements as part of
`their comments on the USPTO’s subject
`matter eligibility guidance.
`Impact on Examination Procedure
`and Prior Examination Guidance: This
`2019 Revised Patent Subject Matter
`Eligibility Guidance supersedes MPEP
`2106.04(II) (Eligibility Step 2A: Whether
`a Claim Is Directed to a Judicial
`Exception) to the extent it equates
`claims ‘‘reciting’’ a judicial exception
`with claims ‘‘directed to’’ a judicial
`exception, along with any other portion
`of the MPEP that conflicts with this
`guidance. A chart identifying portions
`of the MPEP that are affected by this
`guidance will be available for viewing
`via the USPTO’s internet website
`(http://www.uspto.gov). This 2019
`Revised Patent Subject Matter Eligibility
`Guidance also supersedes all versions of
`the USPTO’s ‘‘Eligibility Quick
`Reference Sheet Identifying Abstract
`Ideas’’ (first issued in July 2015 and
`updated most recently in July 2018).
`Eligibility-related guidance issued prior
`to the Ninth Edition, R–08.2017, of the
`MPEP (published Jan. 2018) should not
`be relied upon. However, any claim
`considered patent eligible under prior
`guidance should be considered patent
`eligible under this guidance.
`This guidance does not constitute
`substantive rulemaking and does not
`have the force and effect of law. The
`guidance sets out agency policy with
`respect to the USPTO’s interpretation of
`the subject matter eligibility
`requirements of 35 U.S.C. 101 in view
`of decisions by the Supreme Court and
`the Federal Circuit. The guidance was
`developed as a tool for internal USPTO
`management and does not create any
`right or benefit, substantive or
`procedural, enforceable by any party
`against the USPTO. Rejections will
`continue to be based upon the
`substantive law, and it is those
`rejections that are appealable to the
`Patent Trial and Appeal Board (PTAB)
`and the courts. All USPTO personnel
`
`are, as a matter of internal agency
`management, expected to follow the
`guidance. Failure of USPTO personnel
`to follow the guidance, however, is not,
`in itself, a proper basis for either an
`appeal or a petition.
`I. Groupings of Abstract Ideas
`The Supreme Court has held that the
`patent eligibility statute, Section 101,
`contains an implicit exception for
`‘‘[l]aws of nature, natural phenomena,
`and abstract ideas,’’ which are ‘‘the
`basic tools of scientific and
`technological work.’’ 7 Yet, the Court
`has explained that ‘‘[a]t some level, all
`inventions embody, use, reflect, rest
`upon, or apply laws of nature, natural
`phenomena, or abstract ideas,’’ and has
`cautioned ‘‘to tread carefully in
`construing this exclusionary principle
`lest it swallow all of patent law.’’ 8
`Since the Alice case, courts have been
`‘‘compare[ing] claims at issue to those
`claims already found to be directed to
`an abstract idea in previous cases.’’ 9
`Likewise, the USPTO has issued
`guidance to the patent examining corps
`about Federal Circuit decisions applying
`the Alice/Mayo test, for instance
`describing the subject matter claimed in
`the patent in suit and noting whether or
`not certain subject matter has been
`identified as an abstract idea.10
`
`7 Alice Corp., 573 U.S. at 216 (internal citation
`and quotation marks omitted); Mayo, 566 U.S. at 71.
`8 Id. (internal citation and quotation marks
`omitted).
`9 See Enfish, LLC v. Microsoft Corp., 822 F.3d
`1327, 1334 (Fed. Cir. 2016); see also Amdocs
`(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
`1294 (Fed. Cir. 2016) (‘‘[T]he decisional mechanism
`courts now apply [to identify an abstract idea] is to
`examine earlier cases in which a similar or parallel
`descriptive nature can be seen—what prior cases
`were about, and which way they were decided.’’).
`10 See, e.g., 2014 Interim Guidance on Subject
`Matter Eligibility, 79 FR 74618, 74628–32 (Dec. 16,
`2014) (discussing concepts identified as abstract
`ideas); July 2015 Update: Subject Matter Eligibility
`(Jul. 30, 2015), at 3–5, available at https://
`www.uspto.gov/sites/default/files/documents/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
`Continued
`
`VerDate Sep<11>2014 18:34 Jan 04, 2019 Jkt 247001 PO 00000 Frm 00002 Fmt 4703 Sfmt 4703 E:\FR\FM\07JAN1.SGM 07JAN1
`
`khammond on DSK30JT082PROD with NOTICES
`
`PGR2020-00063 Page 00002
`
`

`

`52
`
`Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019 / Notices
`
`While that approach was effective
`soon after Alice was decided, it has
`since become impractical. The Federal
`Circuit has now issued numerous
`decisions identifying subject matter as
`abstract or non-abstract in the context of
`specific cases, and that number is
`continuously growing. In addition,
`similar subject matter has been
`described both as abstract and not
`abstract in different cases.11 The
`growing body of precedent has become
`increasingly more difficult for
`examiners to apply in a predictable
`manner, and concerns have been raised
`that different examiners within and
`between technology centers may reach
`inconsistent results.
`The USPTO, therefore, aims to clarify
`the analysis. In accordance with judicial
`precedent and in an effort to improve
`consistency and predictability, the 2019
`Revised Patent Subject Matter Eligibility
`Guidance extracts and synthesizes key
`concepts identified by the courts as
`abstract ideas to explain that the
`abstract idea exception includes the
`following groupings of subject matter,
`when recited as such in a claim
`limitation(s) (that is, when recited on
`their own or per se):
`
`‘‘USPTO Finjan Memorandum’’] (discussing how
`the claims in Finjan Inc. v. Blue Coat Systems, Inc.,
`879 F.3d 1299 (Fed. Cir. 2018), and Core Wireless
`Licensing, S.A.R.L. v. LG Electronics, Inc., 880 F.3d
`1356 (Fed. Cir. 2018), were directed to
`improvements instead of abstract ideas); USPTO
`Berkheimer Memorandum at 2 (discussing the
`abstract idea in Berkheimer); MPEP 2106.04(a)
`(reviewing cases that did and did not identify
`abstract ideas).
`11 E.g., compare TLI Commc’ns, 823 F.3d at 611,
`with Enfish, 822 F.3d at 1335, and Visual Memory
`LLC v. NVIDIA Corp., 867 F.3d 1253, 1258 (Fed. Cir.
`2017). While computer operations such as ‘‘output
`of data analysis . . . can be abstract,’’ Credit
`Acceptance Corp. v. Westlake Servs., 859 F.3d
`1044, 1056 (Fed. Cir. 2017), ‘‘software-based
`innovations can [also] make ‘non-abstract
`improvements to computer technology’ and be
`deemed patent-eligible subject matter at step 1 [of
`the Mayo/Alice test],’’ Finjan, 879 F.3d at 1304
`(quoting Enfish, 822 F.3d at 1335). Indeed, the
`Federal Circuit has held that ‘‘improvements in
`computer-related technology’’ and ‘‘claims directed
`to software’’ are not ‘‘inherently abstract.’’ Enfish,
`822 F.3d at 1335; see also Visual Memory, 867 F.3d
`at 1258. These developments in the caselaw can
`create complications for the patent-examination
`process. For example, claims in one application
`could be deemed to be abstract, whereas slightly
`different claims directed to the same or similar
`subject matter could be determined to reflect a
`patent eligible ‘‘improvement.’’ Alternatively,
`claims in one application could be found to be
`abstract, whereas claims to the same or similar
`subject matter in another application, containing
`additional or different embodiments in the
`specification, could be deemed eligible as not
`directed to an abstract idea. In other words, the
`finding that the subject matter claimed in a prior
`patent was ‘‘abstract’’ as claimed may not determine
`whether similar subject matter in another
`application, claimed somewhat differently or
`supported by a different disclosure, is directed to
`an abstract idea and therefore patent ineligible.
`
`(a) Mathematical concepts—
`mathematical relationships,
`mathematical formulas or equations,
`mathematical calculations; 12
`(b) Certain methods of organizing
`human activity—fundamental economic
`principles or practices (including
`hedging, insurance, mitigating risk);
`commercial or legal interactions
`(including agreements in the form of
`contracts; legal obligations; advertising,
`marketing or sales activities or
`behaviors; business relations); managing
`personal behavior or relationships or
`interactions between people (including
`social activities, teaching, and following
`rules or instructions); 13 and
`
`12 Bilski v. Kappos, 561 U.S. 593, 611 (2010)
`(‘‘The concept of hedging . . . reduced to a
`mathematical formula . . . is an unpatentable
`abstract idea[.]’’); Diamond v. Diehr, 450 U.S. 175,
`191 (1981) (‘‘A mathematical formula as such is not
`accorded the protection of our patent laws’’) (citing
`Benson, 409 U.S. 63); Parker v. Flook, 437 U.S. 584,
`594 (1978) (‘‘[T]he discovery of [a mathematical
`formula] cannot support a patent unless there is
`some other inventive concept in its application.’’);
`Benson, 409 U.S. at 71–72 (concluding that
`permitting a patent on the claimed invention
`‘‘would wholly pre-empt the mathematical formula
`and in practical effect would be a patent on the
`algorithm itself’’); Mackay Radio & Telegraph Co. v.
`Radio Corp. of Am., 306 U.S. 86, 94 (1939) (‘‘[A]
`scientific truth, or the mathematical expression of
`it, is not patentable invention[.]’’); SAP America,
`Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir.
`2018) (holding that claims to a ‘‘series of
`mathematical calculations based on selected
`information’’ are directed to abstract ideas);
`Digitech Image Techs., LLC v. Elecs. for Imaging,
`Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (holding
`that claims to a ‘‘process of organizing information
`through mathematical correlations’’ are directed to
`an abstract idea); Bancorp Servs., LLC v. Sun Life
`Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1280
`(Fed. Cir. 2012) (identifying the concept of
`‘‘managing a stable value protected life insurance
`policy by performing calculations and manipulating
`the results’’ as an abstract idea).
`13 Alice, 573 U.S. at 219–20 (concluding that use
`of a third party to mediate settlement risk is a
`‘‘fundamental economic practice’’ and thus an
`abstract idea); id. (describing the concept of risk
`hedging identified as an abstract idea in Bilski as
`‘‘a method of organizing human activity’’); Bilski,
`561 U.S. at 611–612 (concluding that hedging is a
`‘‘fundamental economic practice’’ and therefore an
`abstract idea); Bancorp, 687 F.3d at 1280
`(concluding that ‘‘managing a stable value protected
`life insurance policy by performing calculations
`and manipulating the results’’ is an abstract idea);
`Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.,
`876 F.3d 1372, 1378–79 (Fed. Cir. 2017) (holding
`that concept of ‘‘local processing of payments for
`remotely purchased goods’’ is a ‘‘fundamental
`economic practice, which Alice made clear is,
`without more, outside the patent system.’’); OIP
`Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
`1362–63 (Fed. Cir. 2015) (concluding that claimed
`concept of ‘‘offer-based price optimization’’ is an
`abstract idea ‘‘similar to other ‘fundamental
`economic concepts’ found to be abstract ideas by
`the Supreme Court and this court’’); buySAFE, Inc.
`v. Google, Inc., 765 F.3d. 1350, 1355 (Fed. Cir. 2014)
`(holding that concept of ‘‘creating a contractual
`relationship—a ‘transaction performance
`guaranty’ ’’ is an abstract idea); In re Comiskey, 554
`F.3d 967, 981 (Fed. Cir. 2009) (claims directed to
`‘‘resolving a legal dispute between two parties by
`the decision of a human arbitrator’’ are ineligible);
`
`(c) Mental processes—concepts
`performed in the human mind 14
`(including an observation, evaluation,
`judgment, opinion).15
`
`Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
`(Fed Cir. 2014) (holding that claim ‘‘describe[ing]
`only the abstract idea of showing an advertisement
`before delivering free content’’ is patent ineligible);
`In re Ferguson, 558 F.3d 1359, 1364 (Fed Cir. 2009)
`(holding methods ‘‘directed to organizing business
`or legal relationships in the structuring of a sales
`force (or marketing company)’’ to be ineligible);
`Credit Acceptance, 859 F.3d 1044 at 1054 (‘‘The
`Board determined that the claims are directed to the
`abstract idea of ‘processing an application for
`financing a purchase.’ . . . We agree.’’); Interval
`Licensing, 896 F.3d at 1344–45 (concluding that
`‘‘[s]tanding alone, the act of providing someone an
`additional set of information without disrupting the
`ongoing provision of an initial set of information is
`an abstract idea,’’ observing that the district court
`‘‘pointed to the nontechnical human activity of
`passing a note to a person who is in the middle of
`a meeting or conversation as further illustrating the
`basic, longstanding practice that is the focus of the
`[patent ineligible] claimed invention.’’); Voter
`Verified, Inc. v. Election Systems & Software, LLC,
`887 F.3d 1376, 1385 (Fed. Cir. 2018) (finding the
`concept of ‘‘voting, verifying the vote, and
`submitting the vote for tabulation,’’ a ‘‘fundamental
`activity’’ that humans have performed for hundreds
`of years, to be an abstract idea); In re Smith, 815
`F.3d 816, 818 (Fed. Cir. 2016) (concluding that
`‘‘[a]pplicants’ claims, directed to rules for
`conducting a wagering game’’ are abstract).
`14 If a claim, under its broadest reasonable
`interpretation, covers performance in the mind but
`for the recitation of generic computer components,
`then it is still in the mental processes category
`unless the claim cannot practically be performed in
`the mind. See Intellectual Ventures I LLC v.
`Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir.
`2016) (‘‘[W]ith the exception of generic 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
`
`VerDate Sep<11>2014 18:34 Jan 04, 2019 Jkt 247001 PO 00000 Frm 00003 Fmt 4703 Sfmt 4703 E:\FR\FM\07JAN1.SGM 07JAN1
`
`khammond on DSK30JT082PROD with NOTICES
`
`PGR2020-00063 Page 00003
`
`

`

`Federal Register / Vol. 84, No. 4 / Monday, January 7, 2019 / Notices
`
`53
`
`Claims that do not recite matter that
`falls within these enumerated groupings
`of abstract ideas should not be treated
`as reciting abstract ideas, except as
`follows: In the rare circumstance in
`which a USPTO employee believes a
`claim limitation that does not fall
`within the enumerated groupings of
`abstract ideas should nonetheless be
`treated as reciting an abstract idea, the
`procedure described in Section III.C for
`analyzing the claim should be followed.
`II. ‘‘Directed To’’ a Judicial Exception
`The Supreme Court has long
`distinguished between principles
`themselves (which are not patent
`eligible) and the integration of those
`principles into practical applications
`(which are patent eligible).16 Similarly,
`
`would do it by head and hand.’’); Synopsys, Inc. v.
`Mentor Graphics Corp., 839 F.3d 1138, 1139, (Fed.
`Cir. 2016) (holding that claims to the mental
`process of ‘‘translating a functional description of
`a logic circuit into a hardware component
`description of the logic circuit’’ are directed to an
`abstract idea, because the claims ‘‘read on an
`individual performing the claimed steps mentally
`or with pencil and paper’’); Mortg. Grader, 811
`F.3d. at 1324 (concluding that concept of
`‘‘anonymous loan shopping’’ is an abstract idea
`because it could be ‘‘performed by humans without
`a computer’’); In re BRCA1 & BRCA2-Based
`Hereditary Cancer Test Patent Litig., 774 F.3d 755,
`763 (Fed. Cir. 2014) (concluding that concept of
`‘‘comparing BRCA sequences and determining the
`existence of alterations’’ is an ‘‘abstract mental
`process’’); In re Brown, 645 F. App’x. 1014, 1017
`(Fed. Cir. 2016) (non-precedential) (claim
`limitations ‘‘encompass the mere idea of applying
`different known hair styles to balance one’s head.
`Identifying head shape and applying hair designs
`accordingly is an abstract idea capable, as the Board
`notes, of being performed entirely in one’s mind’’).
`16 See, e.g., Alice, 573 U.S. at 217 (explaining that
`‘‘in applying the § 101 exception, we must
`distinguish between patents that claim the
`‘buildin[g] block[s]’ of human ingenuity and those
`that integrate the building blocks into something
`more’’ (quoting Mayo, 566 U.S. at 89) and stating
`that Mayo ‘‘set forth a framework for distinguishing
`patents that claim laws of nature, natural
`phenomena, and abstract ideas from those that
`claim patent-eligible applications of those
`concepts’’); Mayo, 566 U.S. at 80, 84 (noting that the
`Court in Diehr found ‘‘the overall process patent
`eligible because of the way the additional steps of
`the process integrated the equation into the process
`as a whole,’’ but the Court in Benson ‘‘held that
`simply implementing a mathematical principle on
`a physical machine, namely a computer, was not a
`patentable application of that principle’’); Bilski,
`561 U.S. at 611 (‘‘Diehr explained that while an
`abstract idea, law of nature, or mathematical
`formula could not be patented, ‘an application of
`a law of nature or mathematical formula to a known
`structure or process may well be deserving of patent
`protection.’ ’’ (quoting Diehr, 450 U.S. at 187)
`(emphasis in original)); Diehr, 450 U.S. at 187, 192
`n.14 (explaining that the process in Flook was
`ineligible not because it contained a mathematical
`formula, but because it did not provide an
`application of the formula); Mackay Radio, 306 U.S.
`at 94 (‘‘While a scientific truth, or the mathematical
`expression of it, is not patentable invention, a novel
`and useful structure created with the aid of
`knowledge of scientific truth may be.’’); Le Roy v.
`Tatham, 55 U.S. (14 How.) 156, 175 (1852) (‘‘The
`elements of the [natural phenomena] exist; the
`
`in a growing body of decisions, the
`Federal Circuit has distinguished
`between claims that are ‘‘directed to’’ a
`judicial exception (which require
`further analysis to determine their
`eligibility) and those that are not (which
`are therefore patent eligible).17 For
`example, an improvement in the
`functioning of a computer or other
`technology or technological field may
`render a claim patent eligible at step one
`of the Alice/Mayo test even if it recites
`an abstract idea, law of nature, or
`natural phenomenon.18 Moreover,
`recent Federal Circuit jurisprudence has
`indicated that eligible subject matter can
`often be identified either at the first or
`the second step of the Alice/Mayo test.19
`
`invention is not in discovering them, but in
`applying them to useful objects.’’).
`17 See, e.g., MPEP 2106.06(b) (summarizing
`Enfish, McRO, and other cases that were eligible as
`improvements to technology or computer
`functionality instead of abstract ideas); USPTO
`Finjan Memorandum (discussing Finjan, and Core
`Wireless); USPTO Memorandum of June 7, 2018,
`‘‘Recent Subject Matter Eligibility Decision: Vanda
`Pharmaceuticals Inc. v. West-Ward
`Pharmaceuticals,’’ available at https://
`www.uspto.gov/sites/default/files/documents/
`memo-vanda-20180607.PDF [hereinafter ‘‘USPTO
`Vanda Memorandum