2106.03 Eligibility Step 1: The Four Categories of Statutory Subject Matter
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I. THE FOUR CATEGORIES
35 U.S.C. 101 enumerates four categories of subject matter that Congress deemed to be appropriate subject matter for a patent: processes, machines, manufactures and compositions of matter.
- If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.”
A process defines “actions”, i.e., an invention that is claimed as an act or step, or a series of acts or steps.
- The term “process” is synonymous with “method.”
The other three categories (machines, manufactures and compositions of matter) define the types of physical or tangible “things” or “products” that Congress deemed appropriate to patent.
Examiners should verify that the invention is to at least one of the following categories and is claimed in a physical or tangible form.
- A machine is a “concrete thing, consisting of parts, or of certain devices and combination of devices.”
- This category “includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.”
- A manufacture is “a tangible article that is given a new form, quality, property, or combination through man-made or artificial means.”
- Manufactures are articles that result from the process of manufacturing, i.e., they were produced “from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.”
- Manufactures also include “the parts of a machine considered separately from the machine itself.”
- A composition of matter is a “combination of two or more substances and includes all composite articles.”
- This category includes all compositions of two or more substances and all composite articles, “'whether they be the results of chemical union or of mechanical mixture, or whether they be gases, fluids, powders or solids.'”
It is not necessary to identify a single category into which a claim falls, so long as it is clear that the claim falls into at least one category.
It is also not necessary to identify a “correct” category into which the claim falls, because although in many instances it is clear within which category a claimed invention falls, a claim may satisfy the requirements of more than one category.
- For example, a bicycle satisfies both the machine and manufacture categories, because it is a tangible product that is concrete and consists of parts such as a frame and wheels (thus satisfying the machine category), and it is an article that was produced from raw materials such as aluminum ore and liquid rubber by giving them a new form (thus satisfying the manufacture category).
Non-limiting examples of claims that are not directed to any of the statutory categories include:
- Products that do not have a physical or tangible form, such as information (often referred to as “data per se”) or a computer program per se (often referred to as “software per se”) when claimed as a product without any structural recitations;
- Transitory forms of signal transmission (often referred to as “signals per se”), such as a propagating electrical or electromagnetic signal or carrier wave; and
- Subject matter that the statute expressly prohibits from being patented, such as humans per se, which are excluded under The Leahy-Smith America Invents Act (AIA),
As the courts' definitions of machines, manufactures and compositions of matter indicate, a product must have a physical or tangible form in order to fall within one of these statutory categories.
- A product claim to an intangible collection of information, even if created by human effort, does not fall within any statutory category.
- Software expressed as code or a set of instructions detached from any medium is an idea without physical embodiment.
- Thus, a product claim to a software program that does not also contain at least one structural limitation (such as a “means plus function” limitation) has no physical or tangible form, and thus does not fall within any statutory category.
- Another example of an intangible product that does not fall within a statutory category is a paradigm or business model for a marketing company.
Even when a product has a physical or tangible form, it may not fall within a statutory category.
- A transitory signal, while physical and real, does not possess concrete structure that would qualify as a device or part under the definition of a machine, is not a tangible article or commodity under the definition of a manufacture (even though it is man-made and physical in that it exists in the real world and has tangible causes and effects), and is not composed of matter such that it would qualify as a composition of matter.
- As such, a transitory, propagating signal does not fall within any statutory category.
II. ELIGIBILITY STEP 1: WHETHER A CLAIM IS TO A STATUTORY CATEGORY
Step 1 of the eligibility analysis asks: Is the claim to a process, machine, manufacture or composition of matter?
Like the other steps in the eligibility analysis, evaluation of this step should be made after determining what applicant has invented by reviewing the entire application disclosure and construing the claims in accordance with their broadest reasonable interpretation (BRI).
In the context of the flowchart, Step 1 determines whether:
- The claim as a whole does not fall within any statutory category (Step 1: NO) and thus is non-statutory, warranting a rejection for failure to claim statutory subject matter; or
- The claim as a whole falls within one or more statutory categories (Step 1: YES), and thus must be further analyzed to determine whether it qualifies as eligible at Pathway A or requires further analysis at Step 2A to determine if the claim is directed to a judicial exception.
A claim whose BRI covers both statutory and non-statutory embodiments embraces subject matter that is not eligible for patent protection and therefore is directed to non-statutory subject matter.
- Such claims fail the first step (Step 1: NO) and should be rejected under 35 U.S.C. 101, for at least this reason.
- In such a case, it is a best practice for the examiner to point out the BRI and recommend an amendment, if possible, that would narrow the claim to those embodiments that fall within a statutory category.
For example, the BRI of machine readable media can encompass non-statutory transitory forms of signal transmission, such as a propagating electrical or electromagnetic signal per se.
- When the BRI encompasses transitory forms of signal transmission, a rejection under 35 U.S.C. 101 as failing to claim statutory subject matter would be appropriate.
- Thus, a claim to a computer readable medium that can be a compact disc or a carrier wave covers a non-statutory embodiment and therefore should be rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
If a claim is clearly not within one of the four categories (Step 1: NO), then a rejection under 35 U.S.C. 101 must be made indicating that the claim is directed to non-statutory subject matter.
- However, as shown in the flowchart, when a claim fails under Step 1 (Step 1: NO), but it appears from applicant’s disclosure that the claim could be amended to fall within a statutory category (Step 1: YES), the analysis should proceed to determine whether such an amended claim would qualify as eligible at Pathway A, B or C.
- In such a case, it is a best practice for the examiner to recommend an amendment, if possible, that would resolve eligibility of the claim.
» 2106.04 Eligibility Step 2: Whether a Claim is Directed to a Judicial Exception
