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2106.04(a)(2)    Abstract Idea Groupings

MPEP SECTION SUMMARY This section covers examples of concepts the courts have identified as abstract ideas.

I. MATHEMATICAL CONCEPTS

The mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations.

• The Supreme Court has identified a number of concepts falling within this grouping as abstract ideas including: a procedure for converting binary-coded decimal numerals into pure binary form, Gottschalk v. Benson, a mathematical formula for calculating an alarm limit, Parker v. Flook, the Arrhenius equation, Diamond v. Diehr, and a mathematical formula for hedging, Bilski v. Kappos.

The Court’s rationale for identifying these "mathematical concepts" as judicial exceptions is that a ‘‘mathematical formula as such is not accorded the protection of our patent laws,’’ Diehr, and thus ‘‘the discovery of [a mathematical formula] cannot support a patent unless there is some other inventive concept in its application.’’

• In the past, the Supreme Court sometimes described mathematical concepts as laws of nature, and at other times described these concepts as judicial exceptions without specifying a particular type of exception.
• More recent opinions of the Supreme Court, however, have affirmatively characterized mathematical relationships and formulas as abstract ideas.

When determining whether a claim recites a mathematical concept (i.e., mathematical relationships, mathematical formulas or equations, and mathematical calculations), examiners should consider whether the claim recites a mathematical concept or merely limitations that are based on or involve a mathematical concept.

• A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the mathematical concept grouping), if it is only based on or involves a mathematical concept.
• For example, a limitation that is merely based on or involves a mathematical concept described in the specification may not be sufficient to fall into this grouping, provided the mathematical concept itself is not recited in the claim.

It is important to note that a mathematical concept need not be expressed in mathematical symbols, because "[w]ords used in a claim operating on data to solve a problem can serve the same purpose as a formula." 

A. Mathematical Relationships

A mathematical relationship is a relationship between variables or numbers.

• A mathematical relationship may be expressed in words or using mathematical symbols.
• For example, pressure (p) can be described as the ratio between the magnitude of the normal force (F) and area of the surface on contact (A), or it can be set forth in the form of an equation such as p = F/A.

Examples of mathematical relationships recited in a claim include:

• i. a relationship between reaction rate and temperature, which relationship can be expressed in the form of a formula called the Arrhenius equation, Diamond v. Diehr;
• ii. a conversion between binary coded decimal and pure binary, Benson;
• iii. a mathematical relationship between enhanced directional radio activity and antenna conductor arrangement (i.e., the length of the conductors with respect to the operating wave length and the angle between the conductors), Mackay Radio & Tel. Co. v. Radio Corp. of America; and
• iv. organizing information and manipulating information through mathematical correlations, Digitech Image Techs., LLC v. Electronics for Imaging, Inc.
  • The patentee in Digitech claimed methods of generating first and second data by taking existing information, manipulating the data using mathematical functions, and organizing this information into a new form.
  • The court explained that such claims were directed to an abstract idea because they described a process of organizing information through mathematical correlations, like Flook's method of calculating using a mathematical formula.

B. Mathematical Formulas or Equations

A claim that recites a numerical formula or equation will be considered as falling within the "mathematical concepts" grouping.

• In addition, there are instances where a formula or equation is written in text format that should also be considered as falling within this grouping.
• For example, the phrase "determining a ratio of A to B" is merely using a textual replacement for the particular equation (ratio = A/B).
• Additionally, the phrase "calculating the force of the object by multiplying its mass by its acceleration" is using a textual replacement for the particular equation (F= ma).

Examples of mathematical equations or formulas recited in a claim include:

• i. a formula describing certain electromagnetic standing wave phenomena, Mackay Radio & Tel. Co. v. Radio Corp. of America;
• ii. the Arrhenius equation, Diamond v. Diehr;
• iii. a formula for computing an alarm limit, Parker v. Flook; and
• iv. a mathematical formula for hedging (claim 4).

C. Mathematical calculations

A claim that recites a mathematical calculation, when the claim is given its broadest reasonable interpretation in light of the specification, will be considered as falling within the "mathematical concepts" grouping.

• A mathematical calculation is a mathematical operation (such as multiplication) or an act of calculating using mathematical methods to determine a variable or number, e.g., performing an arithmetic operation such as exponentiation.
• There is no particular word or set of words that indicates a claim recites a mathematical calculation.
  • That is, a claim does not have to recite the word "calculating" in order to be considered a mathematical calculation.
• For example, a step of "determining" a variable or number using mathematical methods or "performing" a mathematical operation may also be considered mathematical calculations when the broadest reasonable interpretation of the claim in light of the specification encompasses a mathematical calculation.

Examples of mathematical calculations recited in a claim include:

• i. performing a resampled statistical analysis to generate a resampled distribution, SAP America, Inc. v. Investpic, LLC;
• ii. calculating a number representing an alarm limit value using the mathematical formula ‘‘B1=B0 (1.0–F) + PVL(F)’’, Parker v. Flook;
• iii. using a formula to convert geospatial coordinates into natural numbers, Burnett v. Panasonic Corp.;
• iv. managing a stable value protected life insurance policy via performing calculations, Bancorp Servs., LLC v. Sun Life Assur. Co. of Canada (U.S.);
• v. using an algorithm for determining the optimal number of visits by a business representative to a client, In re Maucorps; and
• vi. calculating the difference between local and average data values, In re Abele.

II. CERTAIN METHODS OF ORGANIZING HUMAN ACTIVITY

The phrase "methods of organizing human activity" is used to describe concepts relating to:

• 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, and business relations); and
• managing personal behavior or relationships or interactions between people, (including social activities, teaching, and following rules or instructions).

The Supreme Court has identified a number of concepts falling within the "certain methods of organizing human activity" grouping as abstract ideas.

• In particular, in Alice, the Court concluded that the use of a third party to mediate settlement risk is a ‘‘fundamental economic practice’’ and thus an abstract idea.
• In addition, the Court in Alice described the concept of risk hedging identified as an abstract idea in Bilski as ‘‘a method of organizing human activity’’.  
• Previously, in Bilski, the Court concluded that hedging is a ‘‘fundamental economic practice’’ and therefore an abstract idea.

The term "certain" qualifies the "certain methods of organizing human activity" grouping as a reminder of several important points.

• First, not all methods of organizing human activity are abstract ideas.
• Second, this grouping is limited to activity that falls within the enumerated sub-groupings of fundamental economic principles or practices, commercial or legal interactions, and managing personal behavior and relationships or interactions between people, and is not to be expanded beyond these enumerated sub-groupings except in rare circumstances.
• Finally, the sub-groupings encompass both activity of a single person (for example, a person following a set of instructions or a person signing a contract online) and activity that involves multiple people (such as a commercial interaction), and thus, certain activity between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within the "certain methods of organizing human activity" grouping.
  • It is noted that the number of people involved in the activity is not dispositive as to whether a claim limitation falls within this grouping.
  • Instead, the determination should be based on whether the activity itself falls within one of the sub-groupings.

A. Fundamental Economic Practices or Principles

The courts have used the phrases "fundamental economic practices" or "fundamental economic principles" to describe concepts relating to the economy and commerce.

• Fundamental economic principles or practices include hedging, insurance, and mitigating risks.

The term "fundamental" is not used in the sense of necessarily being "old" or "well-known."

• However, being old or well-known may indicate that the practice is fundamental.

An example of a case identifying a claim as reciting a fundamental economic practice is Bilski v. Kappos.

Another example of a case identifying a claim as reciting a fundamental economic practice is Bancorp Services., L.L.C. v. Sun Life Assurance Co. of Canada (U.S.).

Other examples of "fundamental economic principles or practices" include:

• i. mitigating settlement risk, Alice Corp. v. CLS Bank;
• ii. rules for conducting a wagering game, In re Smith;
• iii. financial instruments that are designed to protect against the risk of investing in financial instruments, In re Chorna;
• iv. offer-based price optimization, OIP Techs., Inc. v. Amazon.com, Inc.;
• v. local processing of payments for remotely purchased goods, Inventor Holdings, LLC v. Bed Bath Beyond;
• vi. using a marking affixed to the outside of a mail object to communicate information about the mail object, i.e., the sender, recipient, and contents of the mail object, Secured Mail Solutions LLC v. Universal Wilde, Inc.; and
• vii. placing an order based on displayed market information, Trading Technologies Int’l, Inc. v. IBG LLC.

B. Commercial or Legal Interactions

"Commercial interactions" or "legal interactions" include agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations.

An example of a claim reciting a commercial or legal interaction, where the interaction is an agreement in the form of contracts, is found in buySAFE, Inc. v. Google, Inc.

Other examples of subject matter where the commercial or legal interaction is an agreement in the form of contracts include:

• i. managing a stable value protected life insurance policy via performing calculations, Bancorp Servs., LLC v. Sun Life Assur. Co. of Canada (U.S.); and
• ii. processing insurance claims for a covered loss or policy event under an insurance policy (i.e., an agreement in the form of a contract), Accenture Global Services v. Guidewire Software, Inc..

An example of a claim reciting a commercial or legal interaction in the form of a legal obligation is found in Fort Properties, Inc. v. American Master Lease, LLC.

Other examples of subject matter where the commercial or legal interaction is a legal obligation include:

• i. hedging, Bilski v. Kappos;
• ii. mitigating settlement risk, Alice Corp. Pty. Ltd. v. CLS Bank Int'l; and
• iii. arbitration, In re Comiskey.

An example of a claim reciting advertising is found in Ultramercial, Inc. v. Hulu, LLC.

Other examples of subject matter where the commercial or legal interaction is advertising, marketing or sales activities or behaviors include :

• i. structuring a sales force or marketing company, which pertains to marketing or sales activities or behaviors, In re Ferguson;
• ii. using an algorithm for determining the optimal number of visits by a business representative to a client, In re Maucorps; and
• iii. offer-based price optimization, which pertains to marketing, OIP Techs., Inc. v. Amazon.com, Inc..

An example of a claim reciting business relations is found in Credit Acceptance Corp. v. Westlake Services.

Another example of subject matter where the commercial or legal interaction is business relations includes:

• i. processing information through a clearing-house, where the business relation is the relationship between a party submitted a credit application (e.g., a car dealer) and funding sources (e.g., banks) when processing credit applications.

C. Managing Personal Behavior or Relationships or Interactions Between People

The sub-grouping "managing personal behavior or relationships or interactions between people" include social activities, teaching, and following rules or instructions.

An example of a claim reciting managing personal behavior is Intellectual Ventures I LLC v. Capital One Bank (USA).

Other examples of managing personal behavior recited in a claim include:

• i. filtering content, BASCOM Global Internet v. AT&T Mobility, LLC;
• ii. considering historical usage information while inputting data, BSG Tech. LLC v. Buyseasons, Inc.; and
• iii. a mental process that a neurologist should follow when testing a patient for nervous system malfunctions, In re Meyer.

An example of a claim reciting social activities is Voter Verified, Inc. v. Election Systems & Software, LLC.

Another example of a claim reciting social activities is Interval Licensing LLC, v. AOL, Inc.

An example of a claim reciting following rules or instructions is In re Marco Guldenaar Holding B.V.

Other examples of following rules or instructions recited in a claim include:

• i. assigning hair designs to balance head shape, In re Brown; and
• ii. a series of instructions of how to hedge risk, Bilski v. Kappos.

III. MENTAL PROCESSES

The courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc.

• As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’"

Accordingly, the "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions.

• A discussion of concepts performed in the human mind, as well as concepts that cannot practically be performed in the human mind and thus are not "mental processes", is provided below with respect to point A.

The courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation.

• Mental processes performed by humans with the assistance of physical aids such as pens or paper are explained further below with respect to point B.

Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer.

• As the Federal Circuit has explained, "[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind." 
• Mental processes recited in claims that require computers are explained further below with respect to point C.

Because both product and process claims may recite a "mental process", the phrase "mental processes" should be understood as referring to the type of abstract idea, and not to the statutory category of the claim.

• The courts have identified numerous product claims as reciting mental process-type abstract ideas, for instance the product claims to computer systems and computer-readable media in Versata Dev. Group. v. SAP Am., Inc.
• This concept is explained further below with respect to point D.

The following discussion is meant to guide examiners and provide more information on how to determine whether a claim recites a mental process.

• Examiners should keep in mind the following points A, B, C, and D when performing this evaluation.

A. A Claim With Limitation(s) That Cannot Practically be Performed in the Human Mind Does Not Recite a Mental Process.

Claims do not recite a mental process when they do not contain limitations that can practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitations.

Examples of claims that do not recite mental processes because they cannot be practically performed in the human mind include:

• a claim to a method for calculating an absolute position of a GPS receiver and an absolute time of reception of satellite signals, where the claimed GPS receiver calculated pseudoranges that estimated the distance from the GPS receiver to a plurality of satellites, SiRF Tech;
• a claim to detecting suspicious activity by using network monitors and analyzing network packets, SRI Int’l;
• a claim to a specific data encryption method for computer communication involving a several-step manipulation of data, Synopsys; and
• a claim to a method for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask, where the method required the manipulation of computer data structures (e.g., the pixels of a digital image and a two-dimensional array known as a mask) and the output of a modified computer data structure (a halftoned digital image), Research Corp. Techs.

In contrast, claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions.

Examples of claims that recite mental processes include:

• a claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A.;
• claims to "comparing BRCA sequences and determining the existence of alterations," where the claims cover any way of comparing BRCA sequences such that the comparison steps can practically be performed in the human mind, University of Utah Research Foundation v. Ambry Genetics;
• a claim to collecting and comparing known information (claim 1), which are steps that can be practically performed in the human mind, Classen Immunotherapies, Inc. v. Biogen IDEC; and
• a claim to identifying head shape and applying hair designs, which is a process that can be practically performed in the human mind, In re Brown.

B. A Claim That Encompasses a Human Performing the Step(s) Mentally With or Without a Physical Aid Recites a Mental Process.

If a claim recites a limitation that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper, the limitation falls within the mental processes grouping, and the claim recites an abstract idea.

The use of a physical aid (e.g., pencil and paper or a slide rule) to help perform a mental step (e.g., a mathematical calculation) does not negate the mental nature of the limitation, but simply accounts for variations in memory capacity from one person to another.

C. A Claim That Requires a Computer May Still Recite a Mental Process.

Claims can recite a mental process even if they are claimed as being performed on a computer.

In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification.

For instance, examiners should review the specification to determine if the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed

• 1) on a generic computer, or
• 2) in a computer environment, or
• 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite a mental process.

Here, each concept is expanded upon:

1. Performing a mental process on a generic computer. 

2. Performing a mental process in a computer environment. 

3. Using a computer as a tool to perform a mental process. 

D. Both Product and Process Claims May Recite a Mental Process.

Examiners should keep in mind that both product claims (e.g., computer system, computer-readable medium, etc.) and process claims may recite mental processes.

• For example, in Mortgage Grader, the patentee claimed a computer-implemented system and a method for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders, comprising a database that stores loan package data from the lenders, and a computer system providing an interface and a grading module.
  • The Federal Circuit determined that both the computer-implemented system and method claims were directed to "anonymous loan shopping", which was an abstract idea because it could be "performed by humans without a computer."
• Accordingly, the phrase "mental processes" should be understood as referring to the type of abstract idea, and not to the statutory category of the claim.

Examples of product claims reciting mental processes include:

• An application program interface for extracting and processing information from a diversity of types of hard copy documents – Content Extraction
• A computer-implemented system for enabling anonymous loan shopping – Mortgage Grader
• A computer readable medium containing program instructions for detecting fraud – CyberSource
• A post office for receiving and redistributing email messages on a computer network – Symantec
• A self-verifying voting system – Voter Verified
• A wide-area real-time performance monitoring system for monitoring and assessing dynamic stability of an electric power grid – Electric Power Group
• Computer readable storage media comprising computer instructions to implement a method for determining a price of a product offered to a purchasing organization – Versata

 

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