2106.04(d)(1) Evaluating Improvements in the Functioning of a Computer, or an Improvement to Any Other Technology or Technical Field in Step 2A Prong Two
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The courts have not provided an explicit test for this consideration, but have instead illustrated how it is evaluated in numerous decisions.
- These decisions, and a detailed explanation of how examiners should evaluate this consideration are provided in MPEP § 2106.05(a).
In short, first the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.
- The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art.
- Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology.
- Second, if the specification sets forth an improvement in technology, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement.
- That is, the claim includes the components or steps of the invention that provide the improvement described in the specification.
- The claim itself does not need to explicitly recite the improvement described in the specification (e.g., "thereby increasing the bandwidth of the channel").
While the courts usually evaluate "improvements" as part of the "directed to" inquiry in part one of the Alice/Mayo test (equivalent to Step 2A), they have also performed this evaluation in part two of the Alice/Mayo test (equivalent to Step 2B).
- However, the improvement analysis at Step 2A Prong Two differs in some respects from the improvements analysis at Step 2B.
- Specifically, the "improvements" analysis in Step 2A determines whether the claim pertains to an improvement to the functioning of a computer or to another technology without reference to what is well-understood, routine, conventional activity.
- That is, the claimed invention may integrate the judicial exception into a practical application by demonstrating that it improves the relevant existing technology although it may not be an improvement over well-understood, routine, conventional activity.
- It should be noted that while this consideration is often referred to in an abbreviated manner as the "improvements consideration," the word "improvements" in the context of this consideration is limited to improvements to the functioning of a computer or any other technology/technical field, whether in Step 2A Prong Two or in Step 2B.
Examples of claims that improve technology and are not directed to a judicial exception include:
- Enfish, LLC v. Microsoft Corp.,(claims to a self-referential table for a computer database were directed to an improvement in computer capabilities and not directed to an abstract idea);
- McRO, Inc. v. Bandai Namco Games Am. Inc., (claims to automatic lip synchronization and facial expression animation were directed to an improvement in computer-related technology and not directed to an abstract idea);
- Visual Memory LLC v. NVIDIA Corp., (claims to an enhanced computer memory system were directed to an improvement in computer capabilities and not an abstract idea);
- Finjan Inc. v. Blue Coat Systems, Inc., (claims to virus scanning were found to be an improvement in computer technology and not directed to an abstract idea);
- SRI Int’l, Inc. v. Cisco Systems, Inc., (claims to detecting suspicious activity by using network monitors and analyzing network packets were found to be an improvement in computer network technology and not directed to an abstract idea).
» 2106.04(d)(2) Particular Treatment and Prophylaxis in Step 2A Prong Two
