2106.05(h) Field of Use and Technological Environment
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As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use."
- Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application.
The courts often cite to Parker v. Flook as providing a classic example of a field of use limitation.
In Flook, the claim recited steps of calculating an updated value for an alarm limit (a numerical limit on a process variable such as temperature, pressure or flow rate) according to a mathematical formula "in a process comprising the catalytic chemical conversion of hydrocarbons."
Processes for the catalytic chemical conversion of hydrocarbons were used in the petrochemical and oil-refining fields. Although the applicant argued that limiting the use of the formula to the petrochemical and oil-refining fields should make the claim eligible because this limitation ensured that the claim did not preempt all uses of the formula, the Supreme Court disagreed.
Instead, the additional element in Flook regarding the catalytic chemical conversion of hydrocarbons was not sufficient to make the claim eligible, because it was merely an incidental or token addition to the claim that did not alter or affect how the process steps of calculating the alarm limit value were performed.
Further, the Supreme Court found that this limitation did not amount to an inventive concept. The Court reasoned that to hold otherwise would "exalt[] form over substance", because a competent claim drafter could attach a similar type of limitation to almost any mathematical formula.
In contrast, the additional elements in Diamond v. Diehr as a whole provided eligibility and did not merely recite calculating a cure time using the Arrhenius equation "in a rubber molding process".
Instead, the claim in Diehr recited specific limitations such as monitoring the elapsed time since the mold was closed, constantly measuring the temperature in the mold cavity, repetitively calculating a cure time by inputting the measured temperature into the Arrhenius equation, and opening the press automatically when the calculated cure time and the elapsed time are equivalent.
These specific limitations act in concert to transform raw, uncured rubber into cured molded rubber.
A more recent example of a limitation that does no more than generally link a judicial exception to a particular technological environment is Affinity Labs of Texas v. DirecTV, LLC.
In Affinity Labs, the claim recited a broadcast system in which a cellular telephone located outside the range of a regional broadcaster
- (1) requests and receives network-based content from the broadcaster via a streaming signal,
- (2) is configured to wirelessly download an application for performing those functions, and
- (3) contains a display that allows the user to select particular content.
The court identified the claimed concept of providing out-of-region access to regional broadcast content as an abstract idea, and noted that the additional elements limited the wireless delivery of regional broadcast content to cellular telephones (as opposed to any and all electronic devices such as televisions, cable boxes, computers, or the like).
Although the additional elements did limit the use of the abstract idea, the court explained that this type of limitation merely confines the use of the abstract idea to a particular technological environment (cellular telephones) and thus fails to add an inventive concept to the claims.
Examples of limitations that the courts have described as merely indicating a field of use or technological environment in which to apply a judicial exception include:
- i. A step of administering a drug providing 6-thioguanine to patients with an immune-mediated gastrointestinal disorder, because limiting drug administration to this patient population did no more than simply refer to the relevant pre-existing audience of doctors who used thiopurine drugs to treat patients suffering from autoimmune disorders, Mayo Collaborative Servs. v. Prometheus Labs. Inc;
- ii. Identifying the participants in a process for hedging risk as commodity providers and commodity consumers, because limiting the use of the process to these participants did no more than describe how the abstract idea of hedging risk could be used in the commodities and energy markets;
- iii. Limiting the use of the formula C = 2 (pi) r to determining the circumference of a wheel as opposed to other circular objects, because this limitation represents a mere token acquiescence to limiting the reach of the claim;
- iv. Specifying that the abstract idea of monitoring audit log data relates to transactions or activities that are executed in a computer environment, because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer, FairWarning v. Iatric Sys.;
- v. Language specifying that the process steps of virus screening were used within a telephone network or the Internet, because limiting the use of the process to these technological environments did not provide meaningful limits on the claim, Intellectual Ventures I v. Symantec Corp.;
- vi. Limiting the abstract idea of collecting information, analyzing it, and displaying certain results of the collection and analysis to data related to the electric power grid, because limiting application of the abstract idea to power-grid monitoring is simply an attempt to limit the use of the abstract idea to a particular technological environment, Electric Power Group, LLC v. Alstom S.A.;
- vii. Language informing doctors to apply a law of nature (linkage disequilibrium) for purposes of detecting a genetic polymorphism, because this language merely informs the relevant audience that the law of nature can be used in this manner, Genetic Techs. Ltd. v. Merial LLC;
- viii. Language specifying that the abstract idea of budgeting was to be implemented using a "communication medium" that broadly included the Internet and telephone networks, because this limitation merely limited the use of the exception to a particular technological environment, Intellectual Ventures I v. Capital One Bank;
- ix. Specifying that the abstract idea of using advertising as currency is used on the Internet, because this narrowing limitation is merely an attempt to limit the use of the abstract idea to a particular technological environment, Ultramercial, Inc. v. Hulu, LLC; and
- x. Requiring that the abstract idea of creating a contractual relationship that guarantees performance of a transaction (a) be performed using a computer that receives and sends information over a network, or (b) be limited to guaranteeing online transactions, because these limitations simply attempted to limit the use of the abstract idea to computer environments, buySAFE Inc. v. Google, Inc..
Examiners should be aware that the courts often use the terms "technological environment" and "field of use" interchangeably, and thus for purposes of the eligibility analysis examiners should consider these terms interchangeable.
- Examiners should also keep in mind that this consideration overlaps with other considerations, particularly insignificant extra-solution activity.
- For instance, a data gathering step that is limited to a particular data source (such as the Internet) or a particular type of data (such as power grid data or XML tags) could be considered to be both insignificant extra-solution activity and a field of use limitation.
- Thus, examiners should carefully consider each claim on its own merits, as well as evaluate all other relevant considerations, before making a determination on this consideration.
For claim limitations that generally link the use of the judicial exception to a particular technological environment or field of use, examiners should explain in an eligibility rejection why they do not meaningfully limit the claim.
- For example, an examiner could explain that employing generic computer functions to execute an abstract idea, even when limiting the use of the idea to one particular environment, does not add significantly more, similar to how limiting the abstract idea in Flook to petrochemical and oil-refining industries was insufficient.