USPTO Releases Examples of Patent Eligible Claims Relating to Abstract Ideas

We previously reported on the United States Patent and Trademark Office’s issuance of new interim examination guidance in December for evaluating subject matter eligibility under 35 U.S.C. § 101. At the time, the USPTO included examples of allowable claims for nature-based products in light of previous Supreme Court rulings in Mayo and Myriad. On Tuesday, January 27, the USPTO followed up by releasing claim examples relating to abstract ideas in response to the Supreme Court’s decision earlier this year in Alice.

These new examples are arranged into one set of four fact patterns with patent claims eligible under Alice, followed by a second set of four fact patterns with claims that were found ineligible in recent Federal Circuit decisions.

The analysis of both sets of fact patterns starts with Step 1: whether the claim is directed to a process, machine, manufacture, or composition of matter. If the claim is not directed to one of these categories, the claim is rejected. If the claim is directed to one of these categories, the analysis proceeds to the two-part Mayo framework from the Alice decision.

The Mayo framework involves Steps 2A and 2B. In Step 2A, a determination is made on whether the claim is directed to laws of nature, natural phenomena, and abstract ideas (the judicial exceptions). If no, then the claim is eligible under § 101 and examination should proceed. If yes, however, then in Step 2B, the claim must be analyzed to determine whether any element or combination of elements elevates the claim to significantly more than the judicial exception. If no, then the claim is ineligible under § 101, but if yes, then the claim is eligible and examination should proceed.

The patent eligible claim examples include the following:

  1. hypothetical software invention claims directed to isolating and removing malicious code from email;
  2. a claim for an e-commerce outsourcing system based on DDR Holdings, LLC v. et al., 113 USPQ 2d 1097 (Fed. Cir. 2014);
  3. hypothetical digital image processing claims based on Research Corporation Technologies Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010); and
  4. hypothetical GPS claims modeled after the technology in SiRF Technology Inc. v. International Trade Commission, 601 F.3d 1319 (Fed. Cir. 2010).

The patent ineligible claim examples include the following:

  1. a digital imaging processing method claim found ineligible in Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014);
  2. an automated Bingo game system claim found ineligible in Planet Bingo, LLC v. VKGS LLC, 576 Fed. Appx. 1005 (Fed. Cir. 2014);
  3. an e-commerce method claim providing a transaction performance guaranty found ineligible in buySAFE, Inc. v Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014); and
  4. a method claim for the distribution of products over the internet found ineligible in Ultramercial v. Hulu and WildTangent, 2014 U.S. App. LEXIS 21633 (Fed. Cir. 2014).

It is to be stressed that these claim examples released by the USPTO are only intended to be illustrative, as patent prosecution inherently requires a fact-intensive analysis. Therefore, other fact patterns may result in different outcomes.

We will continue to monitor and report on developments concerning examination guidance. If you have any questions regarding the Interim Guidance and claim examples, please contact the Gibbons P.C. Intellectual Property Department.

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