III. Further Information on Identifying Abstract Ideas in Step 2A
Additional guidance on identifying abstract ideas was requested in order to assist examiners in clearly articulating grounds of rejection with respect to eligibility.
- The abstract idea exception, like the other judicial exceptions, was created by the courts to protect the building blocks of ingenuity, scientific exploration, technological work, and the modern economy.
- Because the courts have declined to define abstract ideas, other than by example, the 2014 IEG instructs examiners to refer to the body of case law precedent in order to identify abstract ideas by way of comparison to concepts already found to be abstract.
- Accordingly, the following discussion provides more information about the types of concepts the courts have considered to be abstract ideas, by associating Supreme Court and Federal Circuit eligibility decisions with judicial descriptors (e.g., “certain methods of organizing human activities”) based on common characteristics.
- These associations define the judicial descriptors in a manner that stays within the confines of the judicial precedent, with the understanding that these associations are not mutually exclusive, i.e., some concepts may be associated with more than one judicial descriptor.
- This discussion is meant to guide examiners and ensure that a claimed concept is not identified as an abstract idea unless it is similar to at least one concept that the courts have identified as an abstract idea.
When identifying abstract ideas, examiners should keep in mind that judicial exceptions need not be old or long‐prevalent, and that even newly discovered judicial exceptions are still exceptions, despite their novelty.
- For example, the mathematical formula in Flook, the laws of nature in Mayo, and the isolated DNA in Myriad were all novel, but nonetheless were considered by the Supreme Court to be judicial exceptions because they were “‘basic tools of scientific and technological work’ that lie beyond the domain of patent protection.”
- The Supreme Court’s cited rationale for considering even “just discovered” judicial exceptions as exceptions stems from the concern that “without this exception, there would be considerable danger that the grant of patents would ‘tie up’ the use of such tools and thereby ‘inhibit future innovation premised upon them.’”
- The Federal Circuit has also applied this principle, for example, when holding the concept of using advertising as an exchange or currency abstract in Ultramercial, despite the patentee’s arguments that the concept was “new”.
A. “Fundamental economic practices”
The phrase “fundamental economic practices” is used to describe concepts relating to the economy and commerce, such as agreements between people in the form of contracts, legal obligations, and business relations.
- The term “fundamental” is used in the sense of being foundational or basic, and not in the sense of necessarily being “old” or “well‐known.”
As shown below, these concepts have common characteristics.
- At least two cases have found concepts relating to agreements between people or performance of financial transactions abstract, such as creating a contractual relationship (buy SAFE), and hedging (Bilski).
- At least two cases have found concepts relating to mitigating risks abstract, such as hedging (Bilski), and mitigating settlement risk (Alice Corp.).
B. “Certain Methods of Organizing Human Activity”
The phrase “certain methods of organizing human activity” is used to describe concepts relating to interpersonal and intrapersonal activities, such as managing relationships or transactions between people, social activities, and human behavior; satisfying or avoiding a legal obligation; advertising, marketing, and sales activities or behaviors; and managing human mental activity.
The 2014 IEG uses the term “certain” to qualify this category description, in order to remind examiners that:
- (1) not all methods of organizing human activity are abstract ideas, and
- (2) this category description is not meant to cover human operation of machines.
Like the other categories, some methods of organizing human activities can also be economic practices or “ideas.”
- For example, the concept of hedging claimed in Bilski was described by the Supreme Court as both a method of organizing human activity and a fundamental economic practice.
As shown below, these concepts have common characteristics.
- Several cases have found concepts relating to managing relationships or transactions between people abstract, such as creating a contractual relationship (buySAFE), hedging (Bilski), mitigating settlement risk (Alice Corp.), processing loan information (Dealertrack), managing an insurance policy (Bancorp), managing a game of Bingo (Planet Bingo), allowing players to purchase additional objects during a game (Gametek), and generating rule‐based tasks for processing an insurance claim (Accenture).
- At least two cases have found concepts relating to satisfying or avoiding a legal obligation abstract, such as tax‐free investing (Fort Properties) or arbitration (In re Comiskey).
- Several cases have found concepts relating to advertising, marketing and sales activities or behaviors abstract, such as using advertising as an exchange or currency (Ultramercial),structuring a sales force or marketing company (In re Ferguson), using an algorithm for determining the optimal number of visits by a business representative to a client (In re Maucorps), allowing players to purchase additional objects during a game (Gametek), and computing a price for the sale of a fixed income asset and generating a financial analysis output (Freddie Mac).
- At least two cases have found concepts relating to managing human behavior abstract, such as a mental process that a neurologist should follow when testing a patient for nervous system malfunctions (In re Meyer), and meal planning (DietGoal).
C. “An Idea ‘Of Itself’”
The phrase “an idea ‘of itself,’” is used to describe an idea standing alone such as an uninstantiated concept, plan or scheme, as well as a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper.”
Some concepts that are “ideas” can also fall within other categories.
- For example, in Ultramercial, the steps of displaying an advertisement in exchange for access to copyrighted media was called an “idea”, but could also be considered organizing human activity because the claim describes advertising.
As shown below, these concepts have common characteristics.
- Several cases have found concepts relating to processes of comparing data that can be performed mentally abstract, such as comparing information regarding a sample or test subject to a control or target data (Ambry, Myriad CAFC), collecting and comparing known information (Classen), comparing data to determine a risk level (Perkin‐Elmer), diagnosing an abnormal condition by performing clinical tests and thinking about the results (In re Grams),obtaining and comparing intangible data (Cybersource), and comparing new and stored information and using rules to identify options (SmartGene).
- Several cases have found concepts relating to processes of organizing information that can be performed mentally abstract, such as using categories to organize, store and transmit information (Cyberfone), data recognition and storage (Content Extraction), and organizing information through mathematical correlations (Digitech).
- At least one case has found the steps of displaying an advertisement in exchange for access to copyrighted media to be “an idea, having no particular concrete or tangible form” (Ultramercial).
D. “Mathematical relationships/formulas”
The phrase “mathematical relationships/formulas” is used to describe mathematical concepts such as mathematical algorithms, mathematical relationships, mathematical formulas, and calculations.
As shown below, these concepts have common characteristics.
It is also noted that the courts have described some mathematical concepts as laws of nature.
- At least five cases have found concepts relating to a mathematical relationship or formula abstract, for example an algorithm for converting binary coded decimal to pure binary (Benson), a formula for computing an alarm limit (Flook), a formula describing certain electromagnetic standing wave phenomena (Mackay Radio), the Arrhenius equation (Diehr), and a mathematical formula for hedging (Bilski).
- Several cases have found concepts relating to performing mathematical calculations abstract, such as managing a stable value protected life insurance policy by performing calculations and manipulating the results (Bancorp), reducing the amount of calculations in known and established computations (FuzzySharp), an algorithm for determining the optimal number of visits by a business representative to a client (In re Maucorps), an algorithm for calculating parameters indicating an abnormal condition (In re Grams), computing a price for the sale of a fixed income asset and generating a financial analysis output (Freddie Mac), and calculating the difference between local and average data values (In re Abele).
