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Cooler Heads Prevail in New Interim Guidance on Patent Subject Matter Eligibility

The 2014 Interim Guidance on Patent Subject Matter Eligibility (“Interim Guidance”) was printed in the Federal Register Tuesday [1] (December 16) and “supplements” the Preliminary Examination Instructions in view of the Supreme Court decision in Alice Corp. of June 25, 2014 (“Preliminary Instructions”).[2] The Interim Guidance includes a flowchart that presents the two-part test for Section 101 eligibility in graphical form:

With respect to Step 2A, the Interim Guidance still includes the four categories of abstract ideas identified in the Preliminary Instructions: “fundamental economic practices, certain methods of organizing human activities, an idea ‘of itself,’ and mathematical relationships/formulas.”  However, while the Preliminary Instructions suggested that Part 1 of the two-part test is met by any claim that includes an element that falls into one of these categories, the Interim Guidance provides 17 distinct examples from various cases, allowing for a finer-grained analysis.  Similarly, while the Preliminary Instructions recited five examples relating to Part 2 of the two-part test, the Interim Guidance provides ten.

For six of the 17 abstract idea examples, the Interim Guidance walks through the two-part analysis to show how the decision regarding Section 101 eligibility was reached (or how the decision was consistent with the two-part analysis, for decisions rendered prior to Mayo or Alice).[3] Additionally, fifteen Federal Circuit and Supreme Court case summaries are provided.  The case summaries should help to provide context for practitioners and Examiners, but are unlikely to provide clear direction in any particular application.  Accordingly, future battles over Section 101 rejections may look more like litigation than prosecution, with the applicant arguing that Case X provides the appropriate precedent for analysis of his claims and the Examiner arguing that Case X is distinguishable and Case Y is the relevant case.

In addition to discussing the two-step process, the Interim Guidelines also include a streamlined eligibility analysis for a claim that “when viewed as a whole, clearly does not seek to tie up any judicial exception such that others cannot practice it.”  Four examples are provided of such claims:

  • a robotic arm assembly having a control system that operates using certain mathematical relationships
  • an artificial hip prosthesis coated with a naturally occurring mineral
  • a cellphone with an electrical contact made of gold
  • a plastic chair with wood trim

Unfortunately, the Interim Guidelines do not go into any greater detail as to why these examples “clearly” do not implicate the judicial exceptions.  For example, if the naturally occurring mineral and its properties are natural phenomena, and the artificial hip prosthesis is otherwise known in the art, then why isn’t the hip prosthesis claim merely a field of use limitation for the mineral?  In that case, the hip prosthesis, no matter how complex in its own right, would merely be well-understood and routine, and could not be significantly more than the use of the natural phenomenon.

The Interim Guidelines specify that “if there is doubt … the full analysis should be conducted.”  Accordingly, once an examiner has decided to perform the full analysis, an applicant will have little recourse to argue that the streamlined eligibility analysis should have been used.  Thus, as with the Preliminary Guidelines, examiners retain broad discretion in deciding what the abstract idea is, whether preemption concerns apply, and whether the claim involves significantly more than the abstract idea.

For reference, the examples included in the Interim Guidance for Part 1 and Part 2 of the test are provided below.  The 17 example laws of nature, natural phenomena, and abstract ideas are:

  • isolated DNA – Myriad
  • a correlation that is the consequence of how a compound is metabolized – Mayo
  • electromagnetism to transmit signals – Morse
  • the chemical principle underlying the union between fatty elements and water – Tilghman
  • mitigating settlement risk – Alice
  • hedging – Bilski
  • creating a contractual relationship – buySAFE
  • using an advertisement as currency – Ultramercial
  • processing information through a clearinghouse – Dealertrack
  • comparing new and stored information and using rules to identify options – SmartGene
  • using categories to organize, store, and transmit information – Cyberfone
  • organizing information through mathematical correlations – Digitech
  • managing a game of bingo – Planet Bingo
  • the Arrhenius equation for calculating the cure time of rubber – Diehr
  • a formula for updating alarm limits – Flook
  • a formula relating to standing wave phenomena – Mackay Radio
  • a procedure for converting one form of numerical representation to another – Benson

The six positive examples of what qualifies as “significantly more” than the abstract idea are:

  • improvements to another technology or technical field – Diehr
  • improvements to the functioning of the computer itself – Alice
  • applying the judicial exception with, or by use of, a particular machine – Bilski
  • effecting a transformation or reduction of a particular article to a different state or thing – Diehr, Benson, Tilghman
  • other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment – Alice

The four negative examples of what is not “significantly more” are:

  • adding the words “apply it” (or the equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer – Alice
  • simply appending well-understood, routine and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry – Alice, Mayo
  • adding insignificant extrasolution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea – Mayo, Flook
  • generally linking the use of the judicial exception to a particular technological environment or field of use – Mayo, Bilski, Flook

My thanks to Domenico Ippolito for this post.

[1] 79 Fed. Reg. 74618-33 (Dec. 16, 2014).

[2] The Interim Guidance also “supersedes” the March 4, 2014 Procedure For Subject Matter Eligibility Analysis Of Claims Reciting Or Involving Laws of Nature / Natural Principles, Natural Phenomena, And / Or Natural Products.  However, that Procedure did not address software inventions, and so is not addressed here.

[3] Four additional cases are also addressed, for a total of 21 case summaries in the Interim Guidance.


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