When evaluating a claim to determine whether it recites an abstract idea, examiners should keep in mind that while “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomenon, or abstract ideas”, not all claims are directed to an abstract idea. Alice Corp., 134 S. Ct. at 2354-55, 110 USPQ2d at 1980-81 (citing Mayo, 566 US at 71, 101 USPQ2d at 1965). The Step 2A analysis articulated in MPEP § 2106.04 accounts for this cautionary principle by requiring a claim to recite (i.e., set forth or describe) an abstract idea in order to be directed to that idea, thereby separating claims reciting abstract ideas from those that are merely based on or involve an abstract idea.
Before concluding that a claim is directed to an abstract idea, examiners should consider the following principles, which are discussed with reference to non-limiting hypothetical examples of claims that are not directed to abstract ideas.
I. IF A CLAIM IS BASED ON OR INVOLVES AN ABSTRACT IDEA, BUT DOES NOT RECITE IT, THEN THE CLAIM IS NOT DIRECTED TO AN ABSTRACT IDEA
Some claims are not directed to an abstract idea because they do not recite anything similar to a judicially-identified abstract idea, although it may be apparent that at some level they are based on or involve an abstract idea.
Judicial decisions discussing such claims include Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336, 118 USPQ2d 1684, 1689 (Fed. Cir. 2016) (claims to self-referential table for a computer database were based on, but not directed to, the concept of organizing information using tabular formats), DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258-59, 113 USPQ2d 1097, 1106-07 (Fed. Cir. 2014) (claim to system that is programmed to modify conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage is not directed to an abstract idea because it does not recite an idea similar to those previously found by the courts to be abstract), and Trading Techs. Int’l, Inc. v. CQG, Inc., 675 Fed. App’x 1001 (Fed. Cir. 2017) (non-precedential) (claimed graphical user interface that improves the accuracy of trader transactions by displaying bid and asked prices in a particular manner that prevents order entry at a changed price is not directed to an abstract idea).
Non-limiting hypothetical examples of claims that do not set forth or describe an abstract idea include:
- i. a printer comprising a belt, a roller, a printhead and at least one ink cartridge;
- ii. a washing machine comprising a tub, a drive motor operatively connected to the tub, a controller for controlling the drive motor, and a housing for containing the tub, drive motor, and controller;
- iii. an earring comprising a sensor for taking periodic blood glucose measurements and a memory for storing measurement data from the sensor;
- iv. a method for sequencing BRCA1 gene sequences comprising: amplifying by a polymerization chain reaction technique all or part of a BRCA1 gene from a tissue sample from a human subject using a set of primers to produce amplified nucleic acids; and sequencing the amplified nucleic acids; and
- v. a method for loading BIOS into a local computer system which has a system processor and volatile memory and non-volatile memory, the method comprising the steps of: responding to powering up of the local computer system by requesting from a memory location remote from the local computer system the transfer to and storage in the volatile memory of the local computer system of BIOS configured for effective use of the local computer system, transferring and storing such BIOS, and transferring control of the local computer system to such BIOS.
II. IF A CLAIM RECITES AN ABSTRACT IDEA, BUT THE CLAIM AS A WHOLE IS DIRECTED TO AN IMPROVEMENT OR OTHERWISE CLEARLY DOES NOT SEEK TO TIE UP THE ABSTRACT IDEA, THEN THE CLAIM IS NOT DIRECTED TO AN ABSTRACT IDEA
Some claims reciting an abstract idea are not directed to the abstract idea because they also recite additional elements (such as an improvement) demonstrating that the claims as a whole clearly do not seek to tie up the abstract idea. In such claims, the improvement, or other additional elements, shifts the focus of the claimed invention from the abstract idea that is incidentally recited. The types of improvements that the courts have identified as indicative of eligibility in the first step of the Alice/Mayo test (Step 2A) are discussed in MPEP § 2106.05(a) and MPEP § 2106.06(b).
Judicial decisions discussing such claims include McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1315, 120 USPQ2d 1091, 1102-103 (Fed. Cir. 2016) (claims to automatic lip synchronization and facial expression animation are directed to an improvement in computer-related technology and not to an abstract idea), and 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). Another relevant case is Research Corporation Technologies Inc. v. Microsoft Corp., 627 F.3d 859, 97 USPQ2d 1274 (Fed. Cir. 2010), which discussed claims to halftone rendering of a gray scale image using a blue noise mask. While the claims in Research Corportation Technologies recited a step of generating the blue noise mask (an iterative mathematical operation that is an abstract idea), they also recited additional steps that clearly improved the functioning of the claimed computer. 627 F.3d at 865, 868-69, 97 USPQ2d at 1278, 1280-81. Thus viewed in light of McRO and Enfish the claims are directed to the recited improvement and not to the abstract idea.
Non-limiting hypothetical examples of claims that are not directed to an abstract idea because of an improvement or other limitation that renders the eligibility of the claim self-evident include:
- i. a method of cutting a blood vessel with surgical shears having a surgical blade, an arm having a cutting surface, and a pressure regulator that is designed to limit the force applied on the cutting surface to less than 45 psi, comprising: positioning a blood vessel between the surgical blade and the cutting surface, and applying pressure to the arm so that it closes toward the blade, whereby the pressure regulator limits the applied force so that the blood vessel is cut cleanly;
- ii. a robotic arm assembly comprising: a robotic arm having an end effector that is capable of movement along a predetermined motion path, a sensor that obtains movement information about the end effector, and a control system that uses the movement information from the sensor to adjust the velocity of the end effector in order to achieve a smooth motion along the predetermined motion path;
- iii. an autofocus camera system comprising a lens that forms an image, an image sensor for capturing data from the formed image, a processor that analyzes the captured data using an autofocus algorithm to determine an optimal position for the lens, and a drive mechanism that moves the lens into the optimal position; and
- iv. an internal combustion engine providing exhaust gas recirculation comprising: an air intake manifold; an exhaust manifold; a combustion chamber to receive air from the air intake manifold, combust a combination of the received air and fuel to turn a drive shaft, and output resulting exhaust gas to the exhaust manifold; a throttle position sensor to detect the position of an engine throttle; an exhaust gas recirculation valve to regulate the flow of exhaust gas from the exhaust manifold to the air intake manifold; and a control system, comprising a processor and memory, to receive the engine throttle position from the throttle position sensor, calculate a position of the exhaust gas recirculation valve based upon the rate of change of the engine throttle position and change the position of the exhaust gas recirculation valve to the calculated position.