The abstract idea exception has deep roots in the Supreme Court’s jurisprudence. See Bilski v. Kappos, 561 U.S. 593, 601-602, 95 USPQ2d 1001, 1006 (2010) (citing Le Roy v. Tatham, 55 U.S. (14 How.) 156, 174–175 (1853)). Despite this long history, the courts have declined to define abstract ideas. Instead, they have often identified abstract ideas by referring to earlier precedent, e.g., by comparing a claimed concept to the concepts previously identified as abstract ideas by the courts. Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294, 120 USPQ2d 1527, 1532 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d. 1327, 1334, 118 USPQ2d 1684, 1688 (Fed. Cir. 2016). For example, in Alice Corp., the Supreme Court identified the claimed systems and methods as describing the concept of intermediated settlement, and then compared this concept to the risk hedging concept identified as an abstract idea in Bilski. Because this comparison revealed “no meaningful distinction between the concept of risk hedging in Bilski and the concept of intermediated settlement at issue here”, the Court concluded that the concept of intermediated settlement was an abstract idea. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2356-57, 110 USPQ2d 1976, 1982 (2014). Similarly, the Federal Circuit in Amdocs compared the claims at issue with “eligible and ineligible claims of a similar nature from past cases” as part of its eligibility analysis. 841 F.3d at 1295-1300, 120 USPQ2d at 1533-1536.
Although the Supreme Court has not delimited the precise contours of the abstract idea exception, it is clear from the body of judicial precedent that software and business methods are not excluded categories of subject matter. For example, the Supreme Court concluded that business methods are not “categorically outside of § 101’s scope,” stating that “a business method is simply one kind of ‘method’ that is, at least in some circumstances, eligible for patenting under § 101.” Bilski, 561 U.S. at 607, 95 USPQ2d at 1008 (2010). See also Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1347, 113 USPQ2d 1354, 1357 (Fed. Cir. 2014) (“there is no categorical business-method exception”). Likewise, software is not automatically an abstract idea, even if performance of a software task involves an underlying mathematical calculation or relationship. See, e.g., Thales Visionix, Inc. v. United States, 850 F.3d 1343, 121 USPQ2d 1898, 1902 (“That a mathematical equation is required to complete the claimed method and system does not doom the claims to abstraction.”); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316, 120 USPQ2d 1091, 1103 (Fed. Cir. 2016) (methods of automatic lip synchronization and facial expression animation using computer-implemented rules were not directed to an abstract idea); Enfish, 822 F.3d at 1336, 118 USPQ2d at 1689 (claims to self-referential table for a computer database were not directed to an abstract idea).
Examiners should determine whether a claim recites an abstract idea by (1) identifying the claimed concept (the specific claim limitation(s) in the claim under examination that the examiner believes may be an abstract idea), and (2) comparing the claimed concept to the concepts previously identified as abstract ideas by the courts to determine if it is similar.
- • If a claimed concept is similar to one or more concepts that were previously identified as abstract ideas by the courts, it is reasonable to conclude that the concept is an abstract idea and find that the claim is directed to an abstract idea exception (Step 2A: YES). The claim then requires further analysis in Step 2B to determine whether any additional elements in the claim add significantly more to the exception.
- • If the claimed concept(s) is not similar to a concept that was previously identified as an abstract idea by the courts and there is no basis for concluding that the concept is an abstract idea, it is reasonable to find that the claim is not directed to an abstract idea exception. The claim is eligible (Step 2A: NO) at Pathway B unless the claim recites another exception (such as a law of nature or natural phenomenon).
I. CLAIMS THAT ARE DIRECTED TO IMPROVEMENTS IN COMPUTER FUNCTIONALITY OR OTHER TECHNOLOGY ARE NOT ABSTRACT
When making the determination of whether a claim is directed to an abstract idea, examiners should keep in mind that some inventions pertaining to improvements in computer functionality or to improvements in other technologies are not abstract when appropriately claimed, and thus may be eligible at Step 2A. Federal Circuit decisions providing examples of such eligible claims include: Enfish, 822 F.3d at 1339, 118 USPQ2d at 1691-92 (claims to a self-referential table for a computer database were directed to an improvement in computer capabilities and not an abstract idea); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315, 120 USPQ2d 1091, 1102-03 (Fed. Cir. 2016) (claims to automatic lip synchronization and facial expression animation were directed to an improvement in computer-related technology and not an abstract idea); and Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253,1259-60, 123 USPQ2d 1712, 1717 (Fed. Cir. 2017) (claims to an enhanced computer memory system were directed to an improvement in computer capabilities and not an abstract idea).
- • In Enfish, the Federal Circuit concluded that claims to a self-referential database were not directed to an abstract idea, but rather an improvement to computer functionality. 822 F.3d at 1336, 118 USPQ2d at 1689. It was the specification’s discussion of the prior art and how the invention improves the way the computer stores and retrieves data in memory in combination with the specific data structure recited in the claims that provided eligibility. 822 F.3d at 1337, 118 USPQ2d at 1690. The claim was not simply the addition of general purpose computers added post-hoc to an abstract idea, but a specific implementation of a solution to a problem in the software arts. 822 F.3d at 1339, 118 USPQ2d at 1691
- • In McRO, the Federal Circuit concluded that the claimed methods of automatic lip synchronization and facial expression animation using computer-implemented rules were not directed to an abstract idea. McRO, 837 F.3d at 1316, 120 USPQ2d at 1103. The basis for the McRO court’s decision was that the claims were directed to an improvement in computer animation and thus did not recite a concept similar to previously identified abstract ideas in Flook, Bilski, and Alice, “where the claimed computer-automated process and the prior [uncomputerized] method were carried out in the same way.” 837 F.3d at 1314-15, 120 USPQ2d at 1102 The court relied on the specification’s explanation of how the claimed rules enabled the automation of specific animation tasks that previously could not be automated. 837 F.3d at 1313, 120 USPQ2d at 1101. The McRO court indicated that the incorporation of the particular claimed rules in computer animation “improved [the] existing technological process”, rather than merely used the computer a “tool to automate conventional activity”. 837 F.3d at 1314, 120 USPQ2d at 1102. The McRO court also noted that the claims at issue described a specific way (use of particular rules to set morph weights and transitions through phonemes) to solve the problem of producing accurate and realistic lip synchronization and facial expressions in animated characters and thus were not directed to an abstract idea. 837 F.3d at 1313, 120 USPQ2d at 1101.
- • In Visual Memory, LLC v. NVIDIA Corp., 867 F.3d 1253, 1254, 123 USPQ2d 1712, 1713 (Fed. Cir. 2017), the Federal Circuit concluded that claims to an enhanced computer memory system were not directed to an abstract idea. The basis for the court’s decision was that the claims focused on a specific asserted improvement in computer capabilities (the use of programmable operational characteristics that are configurable based on the type of processor) and thus were not directed to the abstract idea of categorical data storage. 867 F.2d at 1259-60, 123 USPQ2d at 1717. The court also relied on the specification’s explanation of the multiple benefits flowing from the claimed memory system, such as the claimed system’s outperformance of prior art memory systems and the disclosure of how the claimed system can be used with different types of processors without a tradeoff in processor performance. 867 F.2d at 1259, 123 USPQ2d at 1717.
When finding that a claim is directed to such an improvement, it is critical that examiners give the claim its broadest reasonable interpretation (BRI) and evaluate both the specification and the claim. The specification should disclose sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement, and the claim itself must reflect the improvement in technology. Other important considerations are the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome, and whether the BRI is limited to computer implementation. See MPEP § 2106.05(a) for more information about these principles, and how to determine whether a claim improves the functioning of a computer or any other technology or technical field.
Examiners should also consult MPEP § 2106.05(a) for a discussion of cases in which the Federal Circuit determined that the claims did not reflect an improvement to computer-functionality or other technology. For instance, if a claimed process can be performed without a computer, the Federal Circuit has indicated that it cannot improve computer technology. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 120 USPQ2d 1473 (Fed. Cir. 2016) (a method of translating a logic circuit into a hardware component description of a logic circuit “cannot be characterized as an improvement in a computer” because the method did not employ a computer and a skilled artisan could perform all the steps mentally). The Federal Circuit has also indicated that mere automation of manual processes or increasing the speed of a process where these purported improvements come solely from the capabilities of a general-purpose computer are not sufficient to show an improvement in computer-functionality. FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095, 120 USPQ2d 1293, 1296 (Fed. Cir. 2016); Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017). Similarly, the Federal Circuit has indicated that a claim must include more than conventional implementation on generic components or machinery to qualify as an improvement to an existing technology. See, e.g.,Affinity Labs of Tex. v. DirecTV, LLC, 838 F.3d 1253, 1264-65, 120 USPQ2d 1201, 1208-09 (Fed. Cir. 2016); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 612-13, 118 USPQ2d 1744, 1747-48 (Fed. Cir. 2016). See MPEP § 2106.05(a) for further discussion of these cases, and additional examples of what the courts have indicated does and does not show an improvement to computer-functionality or other technology.
Although the question of whether a claim improves computer-functionality or other technology may be considered in either step of the Alice/Mayo test (Step 2A or 2B), examiners are encouraged to resolve this question as early as possible in the eligibility analysis. For instance, a claim that is directed to a clear improvement in computer-related technology like Enfish could be found eligible at Pathway A under the streamlined analysis discussed in MPEP § 2106.06(b) or at Pathway B as not being directed to an abstract idea. Other claims may require the full eligibility analysis, for example a claim that is directed to an abstract idea rather than an improvement should be evaluated in Step 2B to determine whether it amounts to significantly more than the abstract idea. Examiners are reminded that even if an improvement is not clear enough to demonstrate eligibility in Step 2A, it may still contribute to the eligibility of a claim in the Step 2B analysis. Cf. Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300-01, 120 USPQ2d 1527, 1536-37 (Fed. Cir. 2016) (explaining that even if the claims were considered to be directed to abstract ideas and not improvements, the claims were eligible in Step 2B because the claimed improvement of a distributed network architecture operating in an unconventional fashion to reduce network congestion while generating networking accounting data records amounted to an inventive concept).
II. MORE INFORMATION ON CLAIMS THAT ARE, AND ARE NOT, DIRECTED TO ABSTRACT IDEAS
MPEP § 2106.04(a)(1) provides more information about claims that are not directed to abstract ideas (or other judicial exceptions) and thus are eligible at Step 2A. These claims include claims that do not recite abstract ideas, as well as claims that recite abstract ideas but that are, when viewed as a whole, directed to an improvement of a technological process or the functioning of a computer and not to an abstract idea. See, e.g.,McRO, 837 F.3d at 1315, 120 USPQ2d at 1102-103 (claims to automatic lip synchronization and facial expression animation were directed to an improvement in computer-related technology); Enfish, 822 F.3d at 1336, 118 USPQ2d at 1689 (claims to self-referential table for a computer database were directed to a specific improvement to the way computers operate and not an abstract idea). Thus, examiners should consider the principles discussed in MPEP § 2106.04(a)(1) and MPEP § 2106.05(a) before making a conclusion as to whether a claim is directed to an abstract idea.
MPEP § 2106.04(a)(2) provides more information about the types of concepts the courts have considered to be abstract ideas by associating concepts discussed in exemplary Supreme Court and Federal Circuit eligibility decisions with judicial descriptors (e.g., “fundamental economic practices”) based on common characteristics. (e.g., “fundamental economic practices”) described in exemplary Supreme Court and Federal Circuit eligibility decisions. It should be noted that these associations are not mutually exclusive, i.e., some concepts may be associated with more than one judicial descriptor. For example, the concept of hedging claimed in Bilski was described by the Supreme Court as both a method of organizing human activity and a fundamental economic practice. Alice Corp., 134 S. Ct. at 2356-57, 110 USPQ2d at 1982. Similarly, in Ultramercial, the Federal Circuit called the claimed steps of displaying an advertisement in exchange for access to copyrighted media an “idea,” but this concept could also be considered organizing human activity because the claim describes advertising. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715, 112 USPQ2d 1750, 1754 (Fed. Cir. 2014). Accordingly, examiners should rely on the concepts identified in the cases, not the judicial descriptors themselves, when determining whether a claimed concept is similar to a concept that the courts have identified as an abstract idea.