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USPTO publishes interim guidance for assessing patentable subject matter post-Bilski
July 27, 2010

In a Federal Register notice today, the USPTO has published interim guidance regarding how examiners are to assess whether an application's patent claims fall within the scope of patentable subject matter defined in § 101 in light of the Supreme Court's decision in Bilski. Many patent attorneys were concerned when the initial memo to examiners was released, suggesting the machine-or-transformation test was a burden-shifting mechanism and leaving it to an applicant who did not meet the test to prove the claims fell within § 101. The new guidance should allay these concerns somewhat, and comments are sought on both the guidelines and to provide examples of claims that are perceived to fall both within and without § 101.

The notice provides a background of the Bilski decision, particularly in the context of abstract ideas, given that was the basis for the Court finding Bilski's claims unpatentable. It then provides details on how examiners are to evaluate claims for § 101 compliance and provides factors to be considered. Of particular note is the following passage:

Section 101 is merely a coarse filter and thus a determination of eligibility under § 101 is only a threshold question for patentability. Sections 102, 103, and 112 are typically the primary tools for evaluating patentability unless the claim is truly abstract . . . .

The guidelines also provide how the examiner can make a § 101 rejection such that it can be responded to:

If a claim is rejected under § 101 on the basis that it is drawn to an abstract idea, the applicant then has the opportunity to explain why the claimed method is not drawn to an abstract idea. Specifically identifying the factors used in the analysis will allow the applicant to make specific arguments in response to the rejection if the applicant believes that the conclusion that the claim is directed to an abstract idea is in error.

The Notice lists various factors that an examiner can use to assist in the determination. On the whole, this approach should assist both applicants and examiners in addressing § 101 issues in a productive manner, although there will in most cases be room for argument regarding the relative weighing of the factors.

Click below for a listing of the factors identified in the notice as relevant to the § 101 analysis.

Factors To Be Considered in an Abstract Idea Determination of a Method Claim
A. Whether the method involves or is executed by a particular machine or apparatus. If so, the claims are less likely to be drawn to an abstract idea; if not, they are more likely to be so drawn. Where a machine or apparatus is recited or inherent in a patent claim, the following factors are relevant:
(1) The particularity or generality of the elements of the machine or apparatus; i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines). Incorporation of a particular machine or apparatus into the claimed method steps weighs toward eligibility.
(2) Whether the machine or apparatus implements the steps of the method. Integral use of a machine or apparatus to achieve performance of the method weighs toward eligibility, as compared to where the machine or apparatus is merely an object on which the method operates, which weighs against eligibility.
(3) Whether its involvement is extrasolution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the execution of the claimed method steps. Use of a machine or apparatus that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would weigh against eligibility.
B. Whether performance of the claimed method results in or otherwise involves a transformation of a particular article. If such a transformation exists, the claims are less likely to be drawn to an abstract idea; if not, they are more likely to be so drawn. Where a transformation occurs, the following factors are relevant:
(1) The particularity or generality of the transformation. A more particular transformation would weigh in favor of eligibility.
(2) The degree to which the recited article is particular; i.e., can be specifically identified (not any and all articles). A transformation applied to a generically recited article would weigh against eligibility.
(3) The nature of the transformation in terms of the type or extent of change in state or thing, for instance by having a different function or use, which would weigh toward eligibility, compared to merely having a different location, which would weigh against eligibility.
(4) The nature of the article transformed, i.e., whether it is an object or substance, weighing toward eligibility, compared to a concept such as a contractual obligation or mental judgment, which would weigh against eligibility.
(5) Whether its involvement is extrasolution activity or a field-of-use, i.e., the extent to which (or how) the transformation imposes meaningful limits on the execution of the claimed method steps. A transformation that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would weigh against eligibility.
C. Whether performance of the claimed method involves an application of a law of nature, even in the absence of a particular machine, apparatus, or transformation. If such an application exists, the claims are less likely to be drawn to an abstract idea; if not, they are more likely to be so drawn. Where such an application is present, the following factors are relevant:
(1) The particularity or generality of the application. Application of a law of nature having broad applicability across many fields of endeavor weighs against eligibility, such as where the claim generically recites an effect of the law of nature or claims every mode of accomplishing that effect, such that the claim would monopolize a natural force or patent a scientific fact. (As an example, claiming "the use of electromagnetism for transmitting signals at a distance.")
(2) Whether the claimed method recites an application of a law of nature solely involving subjective determinations; e.g., ways to think about the law of nature. Application of a law of nature to a particular way of thinking about, or reacting to, a law of nature would weigh against eligibility.
(3) Whether its involvement is extrasolution activity or a field-of-use, i.e., the extent to which (or how) the application imposes meaningful limits on the execution of the claimed method steps. An application of the law of nature that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would weigh against eligibility.
D. Whether a general concept (which could also be recognized in such terms as a principle, theory, plan or scheme) is involved in executing the steps of the method. The presence of such a general concept can be a clue that the claim is drawn to an abstract idea. Where a general concept is present, the following factors are relevant:
(1) The extent to which use of the concept, as expressed in the method, would preempt its use in other fields; i.e., that the claim would effectively grant a monopoly over the concept.
(2) The extent to which the claim is so abstract and sweeping as to cover both known and unknown uses of the concept, and be performed through any existing or future-devised machinery, or even without any apparatus.
(3) The extent to which the claim would effectively cover all possible solutions to a particular problem; i.e., that the claim is a statement of the problem versus a description of a particular solution to the problem.
(4) Whether the concept is disembodied or whether it is instantiated; i.e., implemented, in some tangible way. Note, however, that limiting an abstract idea to one field of use or adding token postsolution components does not make the concept patentable. A concept that is well-instantiated weighs in favor of eligibility.
(5) The mechanism(s) by which the steps are implemented; e.g., whether the performance of the process is observable and verifiable rather than subjective or imperceptible. Steps that are observable and verifiable weigh in favor of eligibility.
(6) Examples of general concepts include, but are not limited to:
Basic economic practices or theories (e.g., hedging, insurance, financial transactions, marketing);
Basic legal theories (e.g., contracts, dispute resolution, rules of law);
Mathematical concepts (e.g., algorithms, spatial relationships, geometry);
Mental activity (e.g., forming a judgment, observation, evaluation, or opinion);
Interpersonal interactions or relationships (e.g., conversing, dating);
Teaching concepts (e.g., memorization, repetition);
Human behavior (e.g., exercising, wearing clothing, following rules or instructions);
Instructing "how business should be conducted," Bilski, slip op. at 12.
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