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2106.06  Streamlined Analysis

MPEP SECTION SUMMARY For purposes of efficiency in examination, examiners may use a streamlined eligibility analysis (Pathway A) when the eligibility of the claim is self-evident, e.g., because the claim clearly improves a technology or computer functionality. However, if there is doubt as to whether the applicant is effectively seeking coverage for a judicial exception itself, the full eligibility analysis should be conducted to determine whether the claim integrates the judicial exception into a practical application or recites significantly more than the judicial exception.

The results of the streamlined analysis will always be the same as the full analysis, thus the streamlined analysis is not a means of avoiding a finding of ineligibility that would occur if a claim were to undergo the full eligibility analysis.

• Similarly, a claim that qualifies as eligible after Step 2A (Pathway B) or Step 2B (Pathway C) of the full analysis would also be eligible if the streamlined analysis (Pathway A) were applied to that claim.
  • It may not be apparent that an examiner employed the streamlined analysis because the result is a conclusion that the claim is eligible, and there will be no rejection of the claim on eligibility grounds.
• In practice, the record may reflect the conclusion of eligibility simply by the absence of an eligibility rejection or may include clarifying remarks, when appropriate.

In the context of the flowchart in MPEP § 2106, subsection III, if, when viewed as a whole, the eligibility of the claim is self-evident (e.g., because the claim clearly improves a technology or computer functionality), the claim is eligible at Pathway A, thereby concluding the eligibility analysis.

 

MPEP SECTION SUMMARY A streamlined eligibility analysis can be used for a claim that may or may not recite a judicial exception but, when viewed as a whole, clearly does not seek to tie up any judicial exception such that others cannot practice it.

Such claims do not need to proceed through the full analysis herein as their eligibility will be self-evident.

• On the other hand, a claim that does not qualify as eligible after Step 2B of the full analysis would not be suitable for the streamlined analysis, because the claim lacks self‐evident eligibility.

For instance, a claim directed to a complex manufactured industrial product or process that recites meaningful limitations along with a judicial exception may sufficiently limit its practical application so that a full eligibility analysis is not needed.

• As an example, a robotic arm assembly having a control system that operates using certain mathematical relationships is clearly not an attempt to tie up use of the mathematical relationships and would not require a full analysis to determine eligibility.
  • Also, a claim that recites a nature-based product, but clearly does not attempt to tie up the nature-based product, does not require a markedly different characteristics analysis to identify a "product of nature" exception.
• As an example, a claim directed to an artificial hip prosthesis coated with a naturally occurring mineral is not an attempt to tie up the mineral.
• Similarly, claimed products that merely include ancillary nature-based components, such as a claim that is directed to a cellphone with an electrical contact made of gold or a plastic chair with wood trim, would not require analysis of the nature-based component to determine whether the claims are directed to a "product of nature" exception because such claims do not attempt to improperly tie up the nature-based product.

 

MPEP SECTION SUMMARY As explained by the Federal Circuit, some improvements to technology or to computer functionality are not abstract when appropriately claimed, and thus claims to such improvements do not always need to undergo the full eligibility analysis. For instance, claims directed to clear improvements to computer-related technology do not need the full eligibility analysis.

Claims directed to improvements to other technologies or technological processes, beyond computer improvements, may also avoid the full eligibility analysis.

• In these cases, when the claims were viewed as a whole, their eligibility was self-evident based on the clear improvement, so no further analysis was needed.
• Although the Federal Circuit held these claims eligible at Step 2A as not being directed to abstract ideas, it would be reasonable for an examiner to have found these claims eligible at Pathway A based on the clear improvement, or at Pathway B (Step 2A) as not being directed to an abstract idea.

If the claims are a "close call" such that it is unclear whether the claims improve technology or computer functionality, a full eligibility analysis should be performed to determine eligibility.

• Only when the claims clearly improve technology or computer functionality, or otherwise have self-evident eligibility, should the streamlined analysis be used.
  • For example, because the claims in BASCOM described the concept of filtering content, which is a method of organizing human behavior previously found to be abstract, the Federal Circuit considered them to present a "close call" in the first step of the Alice/Mayo test (Step 2A), and thus proceeded to the second step of the Alice/Mayo test (Step 2B) to determine their eligibility.  
• Although the Federal Circuit held these claims eligible at Step 2B (Pathway C) because they presented a "technology-based solution" of filtering content on the Internet that overcame the disadvantages of prior art filtering systems and that amounted to significantly more than the recited abstract idea, it also would be reasonable for an examiner to have found these claims eligible at Pathway A or B if the examiner had considered the technology-based solution to be an improvement to computer functionality.

 

» 2106.07 Formulating and Supporting Rejections For Lack Of Subject Matter Eligibility