2106.04(a) Abstract Ideas
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The abstract idea exception has deep roots in the Supreme Court’s jurisprudence.
- Despite this long history, the courts have declined to define abstract ideas.
- However, 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."
To facilitate examination, the Office has set forth an approach to identifying abstract ideas that distills the relevant case law into enumerated groupings of abstract ideas.
- This approach represents a shift from the former case-comparison approach that required examiners to rely on individual judicial cases when determining whether a claim recites an abstract idea.
- By grouping the abstract ideas, the examiners’ focus has been shifted from relying on individual cases to generally applying the wide body of case law spanning all technologies and claim types.
The enumerated groupings of abstract ideas are defined as:
- 1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations;
- 2) Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and
- 3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
Examiners should determine whether a claim recites an abstract idea by
- (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and
- (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas listed above.
If the identified limitation(s) falls within at least one of the groupings of abstract ideas, it is reasonable to conclude that the claim recites an abstract idea in Step 2A Prong One.
- The claim then requires further analysis in Step 2A Prong Two.
If the identified limitation(s) do not fall within any of the groupings of abstract ideas, it is reasonable to find that the claim does not recite an abstract idea.
- This concludes the abstract idea judicial exception eligibility analysis, except in the rare circumstance discussed in 2106.04(a)(3).
- The claim is thus eligible at Pathway B unless the claim recites, and is directed to, another exception (such as a law of nature or natural phenomenon).
It should be noted that these groupings are not mutually exclusive, i.e., some claims recite limitations that fall within more than one grouping or sub-grouping.
- For example, a claim reciting performing mathematical calculations using a formula that could be practically performed in the human mind may be considered to fall within the mathematical concepts grouping and the mental process grouping.
- Accordingly, examiners should identify at least one abstract idea grouping, but preferably identify all groupings to the extent possible, if a claim limitation(s) is determined to fall within multiple groupings and proceed with the analysis in Step 2A Prong Two.
» 2106.04(a)(1) Examples of Claims That Are Not Directed To Abstract Ideas
