2106.05(g) Insignificant Extra-Solution Activity
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The term "extra-solution activity" can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim.
Extra-solution activity includes both pre-solution and post-solution activity.
- An example of pre-solution activity is a step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered information by a series of steps in order to detect whether the transactions were fraudulent.
- An example of post-solution activity is an element that is not integrated into the claim as a whole, e.g., a printer that is used to output a report of fraudulent transactions, which is recited in a claim to a computer programmed to analyze and manipulate information about credit card transactions in order to detect whether the transactions were fraudulent.
As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional.
- In Flook, the Court reasoned that "[t]he notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance. A competent draftsman could attach some form of post-solution activity to almost any mathematical formula".
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 insignificant extra-solution activity.
- In particular, evaluation of the particular machine and particular transformation considerations, the well-understood, routine, conventional consideration, and the field of use and technological environment consideration may assist examiners in making a determination of whether an element (or combination of elements) is insignificant extra-solution activity.
- 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.
This consideration is similar to factors used in past Office guidance (for example, the now superseded Bilski and Mayo analyses) that were described as mere data gathering in conjunction with a law of nature or abstract idea.
- When determining whether an additional element is insignificant extra-solution activity, examiners may consider the following:
(1) Whether the extra-solution limitation is well known.
Because this overlaps with the well-understood, routine, conventional consideration, it should not be considered in the Step 2A Prong Two extra-solution activity analysis.
(2) Whether the limitation is significant (i.e. it imposes meaningful limits on the claim such that it is not nominally or tangentially related to the invention).
This is considered in Step 2A Prong Two and Step 2B.
(3) Whether the limitation amounts to necessary data gathering and outputting, (i.e., all uses of the recited judicial exception require such data gathering or data output).
This is considered in Step 2A Prong Two and Step 2B. Below are examples of activities that the courts have found to be insignificant extra-solution activity:
- Mere Data Gathering:
- i. Performing clinical tests on individuals to obtain input for an equation;
- ii. Testing a system for a response, the response being used to determine system malfunction;
- iii. Presenting offers to potential customers and gathering statistics generated based on the testing about how potential customers responded to the offers; the statistics are then used to calculate an optimized price;
- iv. Obtaining information about transactions using the Internet to verify credit card transactions;
- v. Consulting and updating an activity log; and
- vi. Determining the level of a biomarker in blood.
- Selecting a particular data source or type of data to be manipulated:
- i. Limiting a database index to XML tags;
- ii. Taking food orders from only table-based customers or drive-through customers;
- iii. Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display; and
- iv. Requiring a request from a user to view an advertisement and restricting public access.
- Insignificant application:
- i. Cutting hair after first determining the hair style; and
- ii. Printing or downloading generated menus.
Some cases have identified insignificant computer implementation as an example of insignificant extra-solution activity.
- Other cases have considered these types of limitations as mere instructions to apply a judicial exception.
For claim limitations that add insignificant extra-solution activity to the judicial exception (e.g., mere data gathering in conjunction with a law of nature or abstract idea), examiners should explain in an eligibility rejection why they do not meaningfully limit the claim.
- For example, an examiner could explain that adding a final step of storing data to a process that only recites computing the area of a space (a mathematical relationship) does not add a meaningful limitation to the process of computing the area.
