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2106 Patent Subject Matter Eligibility

MPEP SECTION SUMMARY

This section deals with the eligibility of subject matter for patentability, providing a flow chart of guidelines for Patent Office examiners to make such eligibility determinations.

Computer programs may be patented, however, mere instructions cannot. The computer program must either be a method that is novel, or a system that instructs a computer to perform a particular action. Functional descriptive material may be patented, while nonfunctional descriptive material are not.

The criteria for determining subject matter eligibility are:

The claimed invention must be directed to one of the four statutory categories, and
It must not be wholly directed to subject matter encompassing a judicially recognized exception.

A two-step analysis is used to evaluate these criteria. This two-step analysis is covered in detail in this section.

Section Frequency Chart

Key

2106

I. THE FOUR CATEGORIES OF STATUTORY SUBJECT MATTER

Step 1: Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter? The subject matter of the claim must be directed to one of the four subject matter categories.

A summary of the four categories of invention, as they have been defined by the courts, are:

i. Process – an act, or a series of acts or steps."A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing."
ii. Machine – a concrete thing, consisting of parts, or of certain devices and combination of devices. This includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.
iii. Manufacture – an article produced from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand labor or by machinery.
iv. Composition of matter – all compositions of two or more substances and all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids.

Non-limiting examples of claims that are not directed to one of the statutory categories:

i. transitory forms of signal transmission (for example, a propagating electrical or electromagnetic signal per se);
ii. a human per se, The Leahy-Smith America Invents Act (AIA);
iii. a legal contractual agreement between two parties;
iv. a computer program per se;
v. a company;
vi. a mere arrangement of printed matter; and
vii. data.

A claim that covers both statutory and non-statutory embodiments (under the broadest reasonable interpretation of the claim when read in light of the specification and in view of one skilled in the art) embraces subject matter that is not eligible for patent protection and therefore is directed to non-statutory subject matter.

For example, machine readable media can encompass non-statutory transitory forms of signal transmission, such as, a propagating electrical or electromagnetic signal.

When the broadest reasonable interpretation of machine readable media in light of the specification as it would be interpreted by one of ordinary skill in the art encompasses transitory forms of signal transmission, a rejection under 35 U.S.C. 101 as failing to claim statutory subject matter would be appropriate.
Thus, a claim to a computer readable medium that can be a compact disc or a carrier wave covers a non-statutory embodiment and therefore should be rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.

If the claimed invention is clearly not within one of the four categories, then a rejection under 35 U.S.C. 101 must be made indicating that the claimed invention is directed to non-statutory subject matter.

However, when the claim fails under Step 1 and it appears from applicant’s disclosure that the claim could be amended to be directed to a statutory category, Step 2 below should still be conducted.

II. JUDICIAL EXCEPTIONS TO THE FOUR CATEGORIES

Step 2: Does the claim wholly embrace a judicially recognized exception, which includes laws of nature, natural phenomena, and abstract ideas?

Determining whether the claim falls within one of the four enumerated categories of patentable subject matter recited in 35 U.S.C. 101 (i.e., process, machine, manufacture, or composition of matter) does not end the analysis because claims directed to nothing more than abstract ideas (such as mathematical algorithms), natural phenomena, and laws of nature are not eligible for patent protection
Thus, “a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter”.

Analysis Of Subject Matter Eligibility

USPTO personnel should review the totality of the evidence (e.g., the specification, claims, relevant prior art) before reaching a conclusion with regard to whether the claimed invention sets forth patent eligible subject matter.

USPTO personnel must reach a conclusion as to whether it is more likely than not that the claimed invention as a whole either falls outside of one of the enumerated statutory classes or within one of the exceptions to statutory subject matter.
If the record as a whole suggests that it is more likely than not that the claimed invention would be considered significantly more than an abstract idea, natural phenomenon, or law of nature, then USPTO personnel should not reject the claim.

After USPTO personnel identify and explain in the record the reasons why a claim is for an abstract idea, natural phenomenon, or law of nature without significantly more, then the burden shifts to the applicant to either amend the claim or make a showing of why the claim is eligible for patent protection.

III. Establish on the Record a Prima Facie Case

» 2107 Guidelines for Examination of Applications for Compliance with the Utility Requirement