2106.05(b) Particular Machine
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When determining whether a claim integrates a judicial exception, into a practical application in Step 2A Prong Two and whether a claim recites significantly more than a judicial exception in Step 2B, examiners should consider whether the judicial exception is applied with, or by use of, a particular machine.
- "The machine-or-transformation test is a useful and important clue, and investigative tool" for determining whether a claim is patent eligible under § 101. Bilski v. Kappos.
It is noted that while the application of a judicial exception by or with a particular machine is an important clue, it is not a stand-alone test for eligibility.
All claims must be evaluated for eligibility using the two-part test from Alice/Mayo.
- If a claim passes the Alice/Mayo test (i.e., is not directed to an exception at Step 2A, or amounts to significantly more than any recited exception in Step 2B), then the claim is eligible even if it fails the machine-or-transformation test ("M-or-T test").
Examiners may find it helpful to evaluate other considerations such as the mere instructions to apply an exception consideration, the insignificant extra-solution activity consideration, and the field of use and technological environment consideration, when making a determination of whether an element (or combination of elements) is a particular machine.
- When determining whether a machine recited in a claim provides significantly more, the following factors are relevant.
I. THE PARTICULARITY OR GENERALITY OF THE ELEMENTS OF THE MACHINE OR APPARATUS
The particularity or generality of the elements of the machine or apparatus, i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines).
- One example of applying a judicial exception with a particular machine is Mackay Radio & Tel. Co. v. Radio Corp. of America.
In this case, a mathematical formula was employed to use standing wave phenomena in an antenna system.
- The claim recited the particular type of antenna and included details as to the shape of the antenna and the conductors, particularly the length and angle at which they were arranged.
Another example is Eibel Process, in which gravity (a law of nature or natural phenomenon) was applied by a Fourdrinier machine (which was understood in the art to have a specific structure comprising a headbox, a paper-making wire, and a series of rolls) arranged in a particular way to optimize the speed of the machine while maintaining quality of the formed paper web.
It is important to note that a general purpose computer that applies a judicial exception, such as an abstract idea, by use of conventional computer functions does not qualify as a particular machine. Ultramercial, Inc. v. Hulu, LLC.
- If applicant amends a claim to add a generic computer or generic computer components and asserts that the claim recites significantly more because the generic computer is 'specially programmed' (as in Alappat, now considered superseded) or is a 'particular machine' (as in Bilski), the examiner should look at whether the added elements integrate the exception into a practical application or provide significantly more than the judicial exception.
- Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection.
II. WHETHER THE MACHINE OR APPARATUS IMPLEMENTS THE STEPS OF THE METHOD
Integral use of a machine to achieve performance of a method may integrate the recited judicial exception into a practical application or provide significantly more, in contrast to where the machine is merely an object on which the method operates, which does not integrate the exception into a practical application or provide significantly more.
- For example, as described in MPEP § 2106.05(f), additional elements that invoke computers or other machinery merely as a tool to perform an existing process will generally not amount to significantly more than a judicial exception. See, e.g., Versata Development Group v. SAP America.
Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the claim.
- Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more.
