Highlights of the New USPTO Section 101 Guidance

As I noted earlier this week, the USPTO has now published new guidance on how to determine patent-eligibility under 35 U.S.C. 101 in view of the opinion by the Supreme Court in Bilski v. Kappos, 561 U.S. ___ (2010).  (USPTO Interim Guidelines for Patent Eligibility) Interestingly, the guidance is specifically for method claims and presumably does apply to the other categories of Section 101 subject matter — machines, manufactures, and compositions of matter:  “This Interim Bilski Guidance provides factors to consider in determining subject matter eligibility of method claims in view of the abstract idea exception.”

In addition, the USPTO notes the guidance “does not constitute substantive rule making and hence does not have the force and effect of law” and that “any perceived failure by Office personnel to follow this guidance is neither appealable nor petitionable.”  As such, rejections will continue to be based upon the substantive law, and it is these rejections that are appealable.

The guidance is fairly extensive and from my point of view a fair and reasonable approach to Section 101 determinations for method claims.  One of the more interesting aspects of the guidance for me were the statements that related to what you might call the antonyms of “abstract” and also what was considered an “abstract idea.”  The guidance states that prior to the guidance the PTO was looking for a “physical instantiation” to establish that the claim did not cover abstract subject matter.  However now (or perhaps prior to Bilski as well), reciting a “real world” application, even if arguably a “physical instantiation,” would not necessarily save the claim.  For instance, the guidance says that “the Bilski claims were said to be drawn to an ‘‘abstract idea’’ despite the fact that they included steps drawn to initiating transactions” and that the ‘‘abstractness’’ of Bilski’s claims was “in the sense that there are no limitations as to the mechanism for entering into the transactions.”  This might suggest that if Bilski were to have recited a software implementation the claims may have at least met the machine test.  However, I note that the question would remain as to whether such a machine would preempt all practical uses of the abstract idea and therefore be ineligible nonetheless.  The guidance also provides some examples of potential abstract ideas that take the form of “general concepts”:

  • Basic economic practices or theories (e.g., hedging, insurance, financial transactions, marketing);
  • Basic legal theories (e.g., contracts, dispute resolution, rules of law);
  • Mathematical concepts (e.g., algorithms, spatial relationships, geometry);
  • Mental activity (e.g., forming a judgment, observation, evaluation, or opinion);
  • Interpersonal interactions or relationships (e.g., conversing, dating);
  • Teaching concepts (e.g., memorization, repetition);
  • Human behavior (e.g., exercising, wearing clothing, following rules or instructions);
  • Instructing ‘‘how business should be conducted,’’ Bilski, slip op. at 12.

 

Following is a number of key quotes from the guidance, with passages I thought were particularly noteworthy highlighted:

  • the Supreme Court has identified three specific exceptions to § 101’s broad patent-eligibility principles: Laws of nature, physical phenomena, and abstract ideas.
  • The Supreme Court stated in Bilski that the machine-or-transformation test is a ‘‘useful and important clue’’ and ‘‘investigative tool’’ for determining whether some claimed methods are statutory processes, but it ‘‘is not the sole test for deciding whether an invention is a patent-eligible ‘process.’ ’’
  • To date, no court, presented with a subject matter eligibility issue, has ever ruled that a method claim that lacked a machine or a transformation was patent-eligible. However, Bilski held open the possibility that some claims that do not meet the machine-or-transformation test might nevertheless be patent-eligible.
  • Prior to adoption of the machine-or-transformation test, the Office had used the ‘‘abstract idea’’ exception in cases where a claimed ‘‘method’’ did not sufficiently recite a physical instantiation. See, e.g., Ex parte Bilski, No. 2002–2257, slip op. at 46–49 (emphasis added)
  • The recitation of some structure, such as a machine, or the recitation of some transformative component will in most cases limit the claim to [a 101-eligible] application.  However, not all such recitations necessarily save the claim.  ‘Flook established that limiting an abstract idea to one field of use or adding token postsolution components did not make the concept patentable.’
  • Moreover, the fact that the steps of a claim might occur in the ‘‘real world’’ does not necessarily save it from a section 101 rejection. Thus, the Bilski claims were said to be drawn to an ‘‘abstract idea’’ despite the fact that they included steps drawn to initiating transactions. The ‘‘abstractness’’ is in the sense that there are no limitations as to the mechanism for entering into the transactions.
  • Court’s disposition of Ferguson makes it likely that the Ferguson claims also run afoul of the abstract idea exception.
  • IV. Evaluating Method Claims for Eligibility: Where the claim is written in the form of a method and is potentially a patentable process, as defined in 35 U.S.C. 100(b), the claim is patent-eligible so long as it is not disqualified as one of the exceptions to § 101’s broad patent-eligibility principles; i.e., laws of nature, physical phenomena, and abstract ideas.
  • Taking into account the following factors, the examiner should determine whether the claimed invention, viewed as a whole, is disqualified as being a claim to an abstract idea.
  • Factors that weigh in favor of patent-eligibility satisfy the criteria of the machine-or-transformation test or provide evidence that the abstract idea has been practically applied.
  • Each case will present different factors, and it is likely that only some of the factors will be present in each application. It would be improper to make a conclusion based on one factor while ignoring other factors.
  • Factors To Be Considered in an Abstract Idea Determination of a Method Claim
    • A. Whether the method involves or is executed by a particular machine or apparatus. If so, the claims are less likely to be drawn to an abstract idea; if not, they are more likely to be so drawn. Where a machine or apparatus is recited or inherent in a patent claim, the following factors are relevant:
      • (1) The particularity or generality of the elements of the machine or apparatus; i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines). Incorporation of a particular machine or apparatus into the claimed method steps weighs toward eligibility.
      • (2) Whether the machine or apparatus implements the steps of the method. Integral use of a machine or apparatus to achieve performance of the method weighs toward eligibility, as compared to where the machine or apparatus is merely an object on which the method operates, which weighs against eligibility.
      • (3) Whether its involvement is extrasolution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the execution of the claimed method steps. Use of a machine or apparatus that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would weigh against eligibility.
    • B. Whether performance of the claimed method results in or otherwise involves a transformation of a particular article. If such a transformation exists, the claims are less likely to be drawn to an abstract idea; if not, they are more likely to be so drawn. Where a transformation occurs, the following factors are relevant:
      • (1) The particularity or generality of the transformation. A more particular transformation would weigh in favor of eligibility.
      • (2) The degree to which the recited article is particular; i.e., can be specifically identified (not any and all articles). A transformation applied to a generically recited article would weigh against eligibility.
      • (3) The nature of the transformation in terms of the type or extent of change in state or thing, for instance by having a different function or use, which would weigh toward eligibility, compared to merely having a different location, which would weigh against eligibility.
      • (4) The nature of the article transformed, i.e., whether it is an object or substance, weighing toward eligibility, compared to a concept such as a contractual obligation or mental judgment, which would weigh against eligibility.
      • (5) Whether its involvement is extrasolution activity or a field-of-use, i.e., the extent to which (or how) the transformation imposes meaningful limits on the execution of the claimed method steps. A transformation that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would weigh against eligibility.
    • C. Whether performance of the claimed method involves an application of a law of nature, even in the absence of a particular machine, apparatus, or transformation. If such an application exists, the claims are less likely to be drawn to an abstract idea; if not, they are more likely to be so drawn. Where such an application is present, the following factors are relevant:
      • (1) The particularity or generality of the application. Application of a law of nature having broad applicability across many fields of endeavor weighs against eligibility, such as where the claim generically recites an effect of the law of nature or claims every mode of accomplishing that effect, such that the claim would monopolize a natural force or patent a scientific fact. (As an example, claiming ‘‘the use of electromagnetism for transmitting signals at a distance.’’)
      • (2) Whether the claimed method recites an application of a law of nature solely involving subjective determinations; e.g., ways to think about the law of nature. Application of a law of nature to a particular way of thinking about, or reacting to, a law of nature would weigh against eligibility.
      • (3) Whether its involvement is extrasolution activity or a field-of-use, i.e., the extent to which (or how) the application imposes meaningful limits on the execution of the claimed method steps. An application of the law of nature that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would weigh against eligibility.
    • D. Whether a general concept (which could also be recognized in such terms as a principle, theory, plan or scheme) is involved in executing the steps of the method. The presence of such a general concept can be a clue that the claim is drawn to an abstract idea. Where a general concept is present, the following factors are relevant:
      • (1) The extent to which use of the concept, as expressed in the method, would preempt its use in other fields; i.e., that the claim would effectively grant a monopoly over the concept.
      • (2) The extent to which the claim is so abstract and sweeping as to cover both known and unknown uses of the concept, and be performed through any existing or future-devised machinery, or even without any apparatus.
      • (3) The extent to which the claim would effectively cover all possible solutions to a particular problem; i.e., that the claim is a statement of the problem versus a description of a particular solution to the problem.
      • (4) Whether the concept is disembodied or whether it is instantiated; i.e., implemented, in some tangible way. Note, however, that limiting an abstract idea to one field of use or adding token postsolution components does not make the concept patentable. A concept that is well-instantiated weighs in favor of eligibility.
      • (5) The mechanism(s) by which the steps are implemented; e.g., whether the performance of the process is observable and verifiable rather than subjective or imperceptible. Steps that are observable and verifiable weigh in favor of eligibility.
      • (6) Examples of general concepts include, but are not limited to:
        • Basic economic practices or theories (e.g., hedging, insurance, financial transactions, marketing);
        • Basic legal theories (e.g., contracts, dispute resolution, rules of law);
        • Mathematical concepts (e.g., algorithms, spatial relationships, geometry);
        • Mental activity (e.g., forming a judgment, observation, evaluation, or opinion);
        • Interpersonal interactions or relationships (e.g., conversing, dating);
        • Teaching concepts (e.g., memorization, repetition);
        • Human behavior (e.g., exercising, wearing clothing, following rules or instructions);
        • Instructing ‘‘how business should be conducted,’’ Bilski, slip op. at 12.
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One Response to “Highlights of the New USPTO Section 101 Guidance”

  1. I am concerned that examiners are being given guidance phrased as “factors that weigh in favor”. In order to be time efficient, examiners and applicants need clear cut tests. Otherwise office actions – responses will degenerate to “is to”, “is not”, “is to”, “is not”…..