Ineligible-Patent Subject Matter

35 U.S.C. §101 limits patent-eligible subject matter to processes – including the new use of a known process, machine, manufacture, composition of matter, or material, machines, articles of manufacture, compositions of matter, and improvements to any of the aforementioned items. In Diamond v. Chakrabarty, 447 U.S. 303 (1980), the Supreme Court adopted an expansive interpretation of §101 but carved out three exceptions to patent eligibility for the laws of nature, natural phenomena, and abstract ideas. The Court’s current framework for determining whether patent claims are directed to patent-eligible subject matter requires lower courts to (1) determine if the patent claims are directed to one of the three exceptions to §101 and (2) if they are, determine whether the claims include additional elements, which, when considered individually or as an ordered combination are sufficient to ensure that the claims amount to more than a patent on the judicial exception. See, e.g., Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S.Ct. 2347 (2014); Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66 (2012); Association for Molecular Pathology v. Myriad Genetics, 133 S.Ct. 2119 (2013) (dealing with life-science related inventions and similar problems under §101)

The Court itself – besides clarifying that the significance of additional claims limitations does not require analysis under §§102, 103, and 112 of the Patent Act and that a claim does not recite significantly more information if it simply involves a well-understood, routine, or conventional activity – has provided little, if no guidance with this two-factor test. The USPTO has, though, published a helpful flowchart to help examiners determine subject matter eligibility (see appendix). Moreover, the Federal Circuit has also found that conventional computer and network components operating according to their ordinary function, well-known activities, See, e.g., Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044 (Fed. Cir. 2017), certain patents directed towards collecting and analyzing information, See, e.g., Intellectual Ventures I LLC v. Symantec, 838 F.3d 1307 (Fed. Cir. 2016), certain mathematical algorithms, See, e.g., Digitech Image Tech’s v. Electronics for Imaging, 758 F.3d 1344 (Fed. Cir. 2014), and mental processes that do not require a computer are not patent eligible under §101. See, e.g., Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138 (Fed. Cir. 2016). On the other hand, the Federal Circuit has also held that patents directed towards improvements in computer functionality, See, e.g., Core Wireless Licensing v. LG Elecs., Inc., 2018 WL 542672 (Fed. Cir. January 25, 2018) ordered combinations of claimed steps using unconventional rules that are different from the processes humans used before, See, e.g., McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016), and unconventional arrangements of physical elements to create data used in a mathematical equation to calculate information that is an improvement over a prior art. See, e.g., Thales Visionix Inc v. United States, 850 F.3d 1343 (Fed. Cir. 2017), are patent-eligible.  

Appendix