2106.05(f) Mere Instructions To Apply An Exception
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As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do "‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’".
- Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible.
The Supreme Court has identified additional elements as mere instructions to apply an exception in several cases.
For instance, in Mayo, the Supreme Court concluded that a step of determining thiopurine metabolite levels in patients’ blood did not amount to significantly more than the recited laws of nature, because this additional element simply instructed doctors to apply the laws by measuring the metabolites in any way the doctors (or medical laboratories) chose to use.
In Alice Corp., the claim recited the concept of intermediated settlement as performed by a generic computer. The Court found that the recitation of the computer in the claim amounted to mere instructions to apply the abstract idea on a generic computer.
The Supreme Court also discussed this concept in an earlier case, Gottschalk v. Benson, where the claim recited a process for converting binary-coded-decimal (BCD) numerals into pure binary numbers. The Court found that the claimed process had no meaningful practical application except in connection with a computer. The claim simply stated a judicial exception (e.g., law of nature or abstract idea) while effectively adding words that "apply it" in a computer.
Requiring more than mere instructions to apply an exception does not mean that the claim must be narrow in order to be eligible.
The courts have identified some broad claims as eligible.
- Thus, examiners should carefully consider each claim on its own merits, as well as evaluate all other relevant considerations, before making a determination of whether an element (or combination of elements) is more than mere instructions to apply an exception.
- For example, because this consideration often overlaps with the improvement consideration, the particular machine and particular transformation considerations, and the well-understood, routine, conventional consideration, evaluation of those other considerations may assist examiners in making a determination of whether an element (or combination of elements) is more than mere instructions to apply an exception.
- Note, however, that examiners should not evaluate the well-understood, routine, conventional consideration in the Step 2A Prong Two analysis, because that consideration is only evaluated in Step 2B.
For claim limitations that do not amount to more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners should explain why they do not meaningfully limit the claim in an eligibility rejection.
- For example, an examiner could explain that implementing an abstract idea on a generic computer, does not integrate the abstract idea into a practical application in Step 2A Prong Two or add significantly more in Step 2B, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer.
When determining whether a claim simply recites a judicial exception with the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners may consider the following:
(1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished.
The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it".
- In contrast, claiming a particular solution to a problem or a particular way to achieve a desired outcome may integrate the judicial exception into a practical application or provide significantly more.
By way of example, in Intellectual Ventures I v. Capital One Fin. Corp., the steps in the claims described "the creation of a dynamic document based upon ‘management record types’ and ‘primary record types.’"
The claims were found to be directed to the abstract idea of "collecting, displaying, and manipulating data." In addition to the abstract idea, the claims also recited the additional element of modifying the underlying XML document in response to modifications made in the dynamic document.
Although the claims purported to modify the underlying XML document in response to modifications made in the dynamic document, nothing in the claims indicated what specific steps were undertaken other than merely using the abstract idea in the context of XML documents. The court thus held the claims ineligible, because the additional limitations provided only a result-oriented solution and lacked details as to how the computer performed the modifications, which was equivalent to the words "apply it".
Other examples where the courts have found the additional elements to be mere instructions to apply an exception, because they recite no more than an idea of a solution or outcome include:
- i. Remotely accessing user-specific information through a mobile interface and pointers to retrieve the information without any description of how the mobile interface and pointers accomplish the result of retrieving previously inaccessible information, Intellectual Ventures v. Erie Indem. Co.;
- ii. A general method of screening emails on a generic computer without any limitations that addressed the issues of shrinking the protection gap and mooting the volume problem, Intellectual Ventures I v. Symantec Corp.; and
- iii. Wireless delivery of out-of-region broadcasting content to a cellular telephone via a network without any details of how the delivery is accomplished, Affinity Labs of Texas v. DirecTV, LLC.
In contrast, other cases have found that additional elements are more than "apply it" or are not "mere instructions" when the claim recites a technological solution to a technological problem.
In DDR Holdings, the court found that the additional elements did amount to more than merely instructing that the abstract idea should be applied on the Internet. The claims at issue specified how interactions with the Internet were manipulated to yield a desired result—a result that overrode the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.
In BASCOM, the court determined that the claimed combination of limitations did not simply recite an instruction to apply the abstract idea of filtering content on the Internet. Instead, the claim recited a "technology based solution" of filtering content on the Internet that overcome the disadvantages of prior art filtering systems.
Finally, in Thales Visionix, the particular configuration of inertial sensors and the particular method of using the raw data from the sensors was more than simply applying a law of nature. The court found that the claims provided a system and method that "eliminate[d] many ‘complications’ inherent in previous solutions for determining position and orientation of an object on a moving platform." In other words, the claim recited a technological solution to a technological problem.
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process.
Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.
- Similarly, "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept.
- In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more.
TLI Communications provides an example of a claim invoking computers and other machinery merely as a tool to perform an existing process. The court stated that the claims describe steps of recording, administration and archiving of digital images, and found them to be directed to the abstract idea of classifying and storing digital images in an organized manner.
The court then turned to the additional elements of performing these functions using a telephone unit and a server and noted that these elements were being used in their ordinary capacity (i.e., the telephone unit is used to make calls and operate as a digital camera including compressing images and transmitting those images, and the server simply receives data, extracts classification information from the received data, and stores the digital images based on the extracted information).
In other words, the claims invoked the telephone unit and server merely as tools to execute the abstract idea. Thus, the court found that the additional elements did not add significantly more to the abstract idea because they were simply applying the abstract idea on a telephone network without any recitation of details of how to carry out the abstract idea.
Other examples where the courts have found the additional elements to be mere instructions to apply an exception, because they do no more than merely invoke computers or machinery as a tool to perform an existing process include:
- i. A commonplace business method or mathematical algorithm being applied on a general purpose computer,
- ii. Generating a second menu from a first menu and sending the second menu to another location as performed by generic computer components,
- iii. A process for monitoring audit log data that is executed on a general-purpose computer where the increased speed in the process comes solely from the capabilities of the general-purpose computer,
- iv. A method of using advertising as an exchange or currency being applied or implemented on the Internet,
- v. Requiring the use of software to tailor information and provide it to the user on a generic computer; and
- vi. A method of assigning hair designs to balance head shape with a final step of using a tool (scissors) to cut the hair.
(3) The particularity or generality of the application of the judicial exception.
A claim having broad applicability across many fields of endeavor may not provide meaningful limitations that integrate a judicial exception into a practical application or amount to significantly more.
- For instance, a claim that generically recites an effect of the judicial exception or claims every mode of accomplishing that effect, amounts to a claim that is merely adding the words "apply it" to the judicial exception.
In contrast, limitations that confine the judicial exception to a particular, practical application of the judicial exception may amount to significantly more or integrate the judicial exception into a practical application.
- For example, in BASCOM, the combination of additional elements, and specifically "the installation of a filtering tool at a specific location, remote from the end‐users, with customizable filtering features specific to each end user" where the filtering tool at the ISP was able to "identify individual accounts that communicate with the ISP server, and to associate a request for Internet content with a specific individual account," were held to be meaningful limitations because they confined the abstract idea of content filtering to a particular, practical application of the abstract idea.
