II. Further Explanation Of The Markedly Different Characteristics Analysis
Additional explanation of the markedly different characteristics (MDC) analysis was requested, some comments suggested moving the MDC analysis from Step 2A to Step 2B, and some comments suggested retaining the MDC analysis in Step 2A.
- After full consideration of the proposed alternatives, the MDC analysis will be retained in Step 2A, because that location provides three benefits to applicants: it allows many claims to qualify as eligible earlier in the analysis; it provides an additional pathway to eligibility for many claims directed to “product of nature” exceptions; and it ensures consistent eligibility analyses across all technologies and claim types.
- These benefits, and the MDC analysis in general, are explained further in the following discussion.
Early Eligibility.
The 2014 IEG implemented the Supreme Court’s two‐part framework set forth in Alice Corp. (also called the Mayo test) as Steps 2A and 2B of the eligibility analysis.
- Locating the MDC analysis in Step 2A allows many claims to qualify as eligible early in the analysis, i.e., as soon as it is determined that no “product of nature” is recited in the claim.
- For instance, in Example 10 (NBP‐2: pomelo juice) claim 2, once it is determined that the recited nature‐based product has MDC from what occurs in nature, the claim qualifies as eligible subject matter.
This early eligibility mirrors how the claims in Chakrabarty and Myriad (with respect to cDNA) were held eligible after the Step 2A analysis, i.e., after the Supreme Court determined that no “product of nature” was recited in the claims at issue.
- If the MDC analysis was moved to Step 2B, however, then these claims as well as every other claim reciting a nature‐based product limitation would be subjected to the significantly more inquiry before they could be held eligible.
- Such lengthening of the eligibility inquiry is difficult to reconcile with the judicial precedent and would unnecessarily consume examination resources.
Additional Pathway To Eligibility. Locating the MDC analysis in Step 2A and the significantly more inquiry in Step 2B provides an additional pathway to eligibility for many claims directed to “product of nature” exceptions.
- As explained in the 2014 IEG and the training materials, claims that fail to immediately qualify as eligible in Step 2A because they are directed to judicial exceptions have a second chance at eligibility in Step 2B when they are evaluated to determine if the claim as a whole amounts to significantly more.
- This is illustrated, e.g., by Example 17 (NBP‐9: cells) claim 5, which achieves eligibility in Step 2B because the addition of the pacemaker cells to the scaffold confines the claim to a particular useful application of the scaffold, and improves the technology of regenerative medicine by facilitating faster tissue regeneration than when pacemaker cells are implanted by themselves. If the MDC analysis was moved to Step 2B as suggested, however, then the conclusion for claim 5 might change because the Step 2B additional pathway to eligibility would no longer exist for claims directed to “product of nature” exceptions.
Consistency.
Placing the MDC analysis (which the courts have used to identify “product of nature” exceptions) in Step 2A ensures that all claims are consistently analyzed for eligibility regardless of statutory category or the type of exception recited.
- As many examiners are faced with claims that contain different types of exceptions, this ensures a more uniform approach to examination for eligibility because all exceptions are identified in the same manner (i.e., in Step 2A), and examiners are not required to distinguish between exceptions which can prove to be difficult.
- This consistency is illustrated in the examples, e.g., by comparing the analysis for Example 10 (NBP‐2:pomelo juice) claim 2 with the analysis for Example 1 (AI‐1: method of isolating and removing malicious code from electronic messages) claim 1.
- Although these two examples concern different statutory categories (composition of matter vs. process) and different judicial exceptions (“product of nature” vs. abstract idea), the overall analysis is the same, i.e., once it is determined that the claim is not directed to a judicial exception (Step 2A: NO), the claim qualifies as eligible subject matter and the eligibility analysis ends.
» III. Further Information on Identifying Abstract Ideas in Step 2A
