The USPTO has issued new subject matter eligibility guidelines, which can be found here. I have reviewed the 27 page guidelines and have the following comments.
The USPTO now has expressly identified groups of abstract ideas to be used in the Alice/Mayo test. The groups of abstract ideas are:
a) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations;
b) Certain methods of organizing human activity;
c) Mental processes.
In addition there is a “…rare circumstance in which a USPTO employee believes a claim limitation that does not fall within the enumerated groupings of abstract ideas should nonetheless be treated as reciting an abstract idea”.
Further, the USPTO states that claim are NOT directed to a judicial exception (abstract idea), “if the claim as a whole integrates the recited judicial exception into a practical application of that exception”. The USPTO goes on to state:
“If the recited exception is integrated into a practical application of the exception, then the claim is eligible at Prong Two of revised Step 2A. This concludes the eligibility analysis.
“If, however, the additional elements do not integrate the exception into a practical application, then the claim is directed to the recited judicial exception, and requires further analysis under Step 2B (where it may still be eligible if it amounts to an “inventive concept”).”
With respect to the “integrated into a practical application” determination, the USPTO states the following:
“Examiners evaluate integration into a practical application by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations laid out by the Supreme Court and the Federal Circuit, for example those listed below.”
“Examiners should note, however, that revised Step 2A specifically excludes consideration of whether the additional elements represent well-understood, routine, conventional activity.”
“In the context of revised Step 2A, the following exemplary considerations are indicative that an additional element (or combination of elements)24 may have integrated the exception into a practical application:
“an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
“an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
“an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
“an additional element effects a transformation or reduction of a particular article to a different state or thing; and
“an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.”
I believe the above guidance will help inventors and patent attorneys in protecting inventions in the business method and software arts.
