2106.04 Eligibility Step 2: Whether a Claim is Directed to a Judicial Exception
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I. JUDICIAL EXCEPTIONS
Determining that a claim falls within one of the four enumerated categories of patentable subject matter recited in 35 U.S.C. 101 (i.e., process, machine, manufacture, or composition of matter) in Step 1 does not end the eligibility analysis, because claims directed to nothing more than abstract ideas (such as a mathematical formula or equation), natural phenomena, and laws of nature are not eligible for patent protection.
In addition to the terms "laws of nature," "natural phenomena," and "abstract ideas," judicially recognized exceptions have been described using various other terms, including:
- "physical phenomena,"
- "products of nature,"
- "scientific principles,"
- "systems that depend on human intelligence alone,"
- "disembodied concepts,"
- "mental processes," and
- "disembodied mathematical algorithms and formulas."
It should be noted that there are no bright lines between the types of exceptions, and that many of the concepts identified by the courts as exceptions can fall under several exceptions.
- For example, mathematical formulas are considered to be a judicial exception as they express a scientific truth, but have been labelled by the courts as both abstract ideas and laws of nature.
- Likewise, "products of nature" are considered to be an exception because they tie up the use of naturally occurring things, but have been labelled as both laws of nature and natural phenomena.
- Thus, it is sufficient for this analysis for the examiner to identify that the claimed concept (the specific claim limitation(s) that the examiner believes may recite an exception) aligns with at least one judicial exception.
The Supreme Court has explained that the judicial exceptions reflect the Court’s view that abstract ideas, laws of nature, and natural phenomena are "the basic tools of scientific and technological work", and are thus excluded from patentability because "monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it."
- The Supreme Court’s concern that drives this "exclusionary principle" is pre-emption.
- The Court has held that a claim may not preempt abstract ideas, laws of nature, or natural phenomena, even if the judicial exception is narrow (e.g., a particular mathematical formula such as the Arrhenius equation).
- This is because such a patent would "in practical effect [] be a patent on the [abstract idea, law of nature or natural phenomenon] itself." The concern over preemption was expressed as early as 1852.
While preemption is the concern underlying the judicial exceptions, it is not a standalone test for determining eligibility.
- Instead, questions of preemption are inherent in and resolved by the two-part framework from Alice Corp. and Mayo.
- It is necessary to evaluate eligibility using the Alice/Mayo test, because while a preemptive claim may be ineligible, the absence of complete preemption does not demonstrate that a claim is eligible.
- Several Federal Circuit decisions, however, have noted the absence of preemption when finding claims eligible under the Alice/Mayo test.
The Supreme Court’s decisions make it clear that judicial exceptions need not be old or long-prevalent, and that even newly discovered or novel judicial exceptions are still exceptions.
- For example, the mathematical formula in Flook, the laws of nature in Mayo, and the isolated DNA in Myriad were all novel or newly discovered, but nonetheless were considered by the Supreme Court to be judicial exceptions because they were "‘basic tools of scientific and technological work’ that lie beyond the domain of patent protection."
The Supreme Court’s cited rationale for considering even "just discovered" judicial exceptions as exceptions stems from the concern that "without this exception, there would be considerable danger that the grant of patents would ‘tie up’ the use of such tools and thereby ‘inhibit future innovation premised upon them.’"
- The Federal Circuit has also applied this principle, for example, when holding a concept of using advertising as an exchange or currency to be an abstract idea, despite the patentee’s arguments that the concept was "new".
II. ELIGIBILITY STEP 2A: WHETHER A CLAIM IS DIRECTED TO A JUDICIAL EXCEPTION
Step 2A of the Office’s eligibility analysis is the first part of the Alice/Mayo test, i.e., the Supreme Court’s "framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts."
- 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.
Step 2A asks: Is the claim directed to a law of nature, a natural phenomenon (product of nature) or an abstract idea? Subsection III, Step 2A determines whether:
- The claim as a whole is not directed to a judicial exception (Step 2A: NO) and thus is eligible at Pathway B, thereby concluding the eligibility analysis; or
- The claim as a whole is directed to a judicial exception (Step 2A: YES) and thus requires further analysis at Step 2B to determine if the claim as a whole amounts to significantly more than the exception itself.
A. Step 2A Is a Two Prong Inquiry
Step 2A is a two-prong inquiry, in which examiners determine in Prong One whether a claim recites a judicial exception, and if so, then determine in Prong Two if the recited judicial exception is integrated into a practical application of that exception.
- Together, these prongs represent the first part of the Alice/Mayo test, which determines whether a claim is directed to a judicial exception.
1. Prong One
Prong One asks does the claim recite an abstract idea, law of nature, or natural phenomenon?
- In Prong One examiners evaluate whether the claim recites a judicial exception, i.e. whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim.
- While the terms "set forth" and "described" are thus both equated with "recite", their different language is intended to indicate that there are two ways in which an exception can be recited in a claim.
- For instance, the claims in Diehr, clearly stated a mathematical equation in the repetitively calculating step, and the claims in Mayo, clearly stated laws of nature in the wherein clause, such that the claims "set forth" an identifiable judicial exception.
- Alternatively, the claims in Alice Corp., described the concept of intermediated settlement without ever explicitly using the words "intermediated" or "settlement."
The Supreme Court has held that 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.’’
- 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.’’
- Examiners should accordingly be careful to distinguish claims that recite an exception (which require further eligibility analysis) and claims that merely involve an exception (which are eligible and do not require further eligibility analysis).
An example of a claim that recites a judicial exception is "A machine comprising elements that operate in accordance with F=ma."
- This claim sets forth the principle that force equals mass times acceleration (F=ma) and therefore recites a law of nature exception.
- Because F=ma represents a mathematical formula, the claim could alternatively be considered as reciting an abstract idea.
- Because this claim recites a judicial exception, it requires further analysis in Prong Two in order to answer the Step 2A inquiry.
An example of a claim that merely involves, or is based on, an exception is a claim to "A teeter-totter comprising an elongated member pivotably attached to a base member, having seats and handles attached at opposing sides of the elongated member."
- This claim is based on the concept of a lever pivoting on a fulcrum, which involves the natural principles of mechanical advantage and the law of the lever.
- However, this claim does not recite these natural principles and therefore is not directed to a judicial exception (Step 2A: NO).
- Thus, the claim is eligible at Pathway B without further analysis.
If the claim recites a judicial exception, the claim requires further analysis in Prong Two.
- If the claim does not recite a judicial exception (a law of nature, natural phenomenon, or abstract idea), then the claim cannot be directed to a judicial exception (Step 2A: NO), and thus the claim is eligible at Pathway B without further analysis.
2. Prong Two
Prong Two asks does the claim recite additional elements that integrate the judicial exception into a practical application?
- In Prong Two, examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception.
- If the additional elements in the claim integrate the recited exception into a practical application of the exception, then the claim is not directed to the judicial exception (Step 2A: NO) and thus is eligible at Pathway B.
- This concludes the eligibility analysis.
If, however, the additional elements do not integrate the exception into a practical application, then the claim is directed to the recited judicial exception (Step 2A: YES), and requires further analysis under Step 2B (where it may still be eligible if it amounts to an ‘‘inventive concept’’).
The mere inclusion of a judicial exception such as a mathematical formula in a claim means that the claim "recites" a judicial exception under Step 2A Prong One.
- However, mere recitation of a judicial exception does not mean that the claim is "directed to" that judicial exception under Step 2A Prong Two.
- Instead, under Prong Two, a claim that recites a judicial exception is not directed to that judicial exception, if the claim as a whole integrates the recited judicial exception into a practical application of that exception.
- Prong Two thus distinguishes claims that are "directed to" the recited judicial exception from claims that are not "directed to" the recited judicial exception.
Because a judicial exception is not eligible subject matter, if there are no additional claim elements besides the judicial exception, or if the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application.
For a claim reciting a judicial exception to be eligible, the additional elements (if any) in the claim must "transform the nature of the claim" into a patent-eligible application of the judicial exception, either at Prong Two or in Step 2B.
If there are no additional elements in the claim, then it cannot be eligible.
- In such a case, after making the appropriate rejection, it is a best practice for the examiner to recommend an amendment, if possible, that would resolve eligibility of the claim.
B. Evaluating Claims Reciting Multiple Judicial Exceptions
A claim may recite multiple judicial exceptions.
- For example, claim 4 at issue in Bilski v. Kappos, recited two abstract ideas, and the claims at issue in Mayo Collaborative Servs. v. Prometheus Labs. Inc., recited two laws of nature.
- However, these claims were analyzed by the Supreme Court in the same manner as claims reciting a single judicial exception, such as those in Alice Corp..
During examination, examiners should apply the same eligibility analysis to all claims regardless of the number of exceptions recited therein.
- Unless it is clear that a claim recites distinct exceptions, such as a law of nature and an abstract idea, care should be taken not to parse the claim into multiple exceptions, particularly in claims involving abstract ideas.
- Accordingly, if possible examiners should treat the claim for Prong Two and Step 2B purposes as containing a single judicial exception.
In some claims, the multiple exceptions are distinct from each other, e.g., a first limitation describes a law of nature, and a second limitation elsewhere in the claim recites an abstract idea.
- In these cases, for purposes of examination efficiency, examiners should select one of the exceptions and conduct the eligibility analysis for that selected exception.
- If the analysis indicates that the claim recites an additional element or combination of elements that integrate the selected exception into a practical application or that amount to significantly more than the selected exception, then the claim should be considered patent eligible.
- On the other hand, if the claim does not recite any additional element or combination of elements that integrate the selected exception into a practical application, and also does not recite any additional element or combination of elements that amounts to significantly more than the selected exception, then the claim should be considered ineligible.
In other claims, multiple abstract ideas, which may fall in the same or different groupings, or multiple laws of nature may be recited.
- In these cases, examiners should not parse the claim.
- For example, in a claim that includes a series of steps that recite mental steps as well as a mathematical calculation, an examiner should identify the claim as reciting both a mental process and a mathematical concept for Step 2A Prong One to make the analysis clear on the record.
- However, if possible, the examiner should consider the limitations together as a single abstract idea for Step 2A Prong Two and Step 2B (if necessary) rather than as a plurality of separate abstract ideas to be analyzed individually.
