1

TC 1600Subject Matter Eligibility Under

35 USC § 101

Andrew WangSPE 1631(571) 272-0811

2

Introduction of Interim Guidelines

• Posted on USPTO web site 10/26/2005

• Published in the Official Gazette 11/22/2005

http://www.uspto.gov/web/offices/com/sol/og/2005/week47/patgupa.htm

3

Application of Guidelines

• Any position taken on 35 USC § 101 is based on the substantive law, not the guidelines themselves

• The interim guidelines do not constitute substantive rulemaking and do not have the effect of law

• The interim guidelines set forth the procedures USPTO personnel will follow when examining applications

4

Prerequisite to Analysis Under35 USC § 101

• Determine what applicant invented

• Review the specification and claims

• Conduct a thorough search of the art

• Identify and understand:– any utility and/or practical application asserted by

applicant

– the meaning of claim terms

– claim scope

5

Improper Tests for Subject Matter Eligibility

Tests that are not to be applied

• “not in the technological arts” test

• Freeman-Walter-Abele test

• Mental step or human step tests

• The machine implemented test

• The per se data transformation test

6

Analysis Under 35 USC § 101

1) Does the claimed invention fall within one of the four statutory categories?

7

1) Statutory Categories

35 USC § 101 reads:

“whoever invents or discovers any new and useful process, machine, manufacture, or composition, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.”

8

Enumerated Categories

• A “machine’, “manufacture”, and “composition of matter” all define things and products.

• A “process” defines actions (i.e. inventions) that set forth a series of steps or acts to be performed.

9

Examples Outside of the Statutory Categories

1) Literary Works per se

2) Rules to play a game per se

3) Legal agreements, e.g. an insurance policy

4) Signals per se

5) A computer program, logic, or language per se

10

If Not, Do Not Stop

• If a claim does not fall into a statutory category, that does not preclude complete examination for all other conditions of patentability

• The examiner must continue with the analysis under 35 USC § 101 and still examine the claims for compliance with 102, 103, and 112.

11

Analysis Under 35 USC § 101

1) Does the claimed invention fall within one of the four statutory categories?

2) Does the claimed invention fall within a judicial exception?

12

2) Judicial Exceptions

• The Supreme Court has specifically identified three categories of non-statutory subject matter– Laws of Nature per se

– Natural Phenomena per se

– Abstract Ideas per se

13

Examples of Judicial Exceptions

• Laws of natureE=mc2; F=ma; V=IR

• Natural PhenomenaThe heat of the sun; electricity; a new mineral

• Abstract IdeasMathematical algorithms; legal rights

14

If Yes, Do Not Stop

• While judicial exceptions per se are not patent eligible, methods and products employing abstract ideas, natural phenomena, and laws of nature to perform a real-world function may well be

• The scope of a claim must be ascertained to determine if it covers a Sec. 101 judicial exception or practical application of a Sec. 101 judicial exception

15

Analysis Under 35 USC § 101

1) Does the claimed invention fall within one of the four statutory categories?

2) Does the claimed invention fall within a judicial exception?

3) Does the claimed invention provide a practical application?

16

3) Practical Applications

• If the claim is directed to a practical application of the Sec. 101 judicial exception producing a resultresult tied to the physical world that does not preempt the judicial exception, then the claim meets the statutory requirement

17

Physical Transformation

• Does the claimed invention transform an article or physical object to a different state?

• Transformation of data is not considered a physical transformation

• Physical acts are not necessarily a physical transformation

18

Determination of a Useful, Concrete, and Tangible Result

• If the examiner does not find such a physical transformation, the examiner must determine whether the claim provides a practical application that produces a useful, concrete, and tangible resultresult

• A useful concrete, and tangible result must either be specifically recited in the claim or inherently flow therefrom

• A practical application is provided when a judicial exception is applied, as claimed, to produce a useful, concrete, and tangible result

19

Useful Result

• The claimed invention as a whole must satisfy the utility requirement of 35 USC § 101: specific, substantial, and credible

• These criteria require an evaluation of the specification and the knowledge of one of ordinary skill in the art

20

Concrete Result

• Generally, a claimed invention is not concrete when a result cannot be assured or is not reproducible

• Concrete is not a requirement that the result must be 100% accurate (e.g.: a claim directed to a method of estimating, predicting, or approximating)

21

Tangible Result

• A tangible result is a real world result• The opposite meaning of “tangible” is “abstract”

(e.g.: thoughts and ideas are not real world results)• The tangible result requirement does not

necessarily mean that a claim must be tied to a particular machine or apparatus or must operate to change articles or materials to a different state (i.e. it is notnot a duplicate of physical transformation)

22

Computer Related Products

• Computer-related products such as software, data structures, and collections of data are also evaluated for a practical application

• Computer-related products are classified in one of two groups:– Functional Descriptive Material– Non-Functional Descriptive Material

23

Functional Descriptive Material

• “Functional Descriptive Material” includes data structures and computer programs which impart functionality when employed as a computer computer componentcomponent

• The definition of “data structure” is “a physical or logical relationship among data elements, designed to support specific data manipulation functions.”

[see The New IEEE Standard Dictionary of Electrical and Electronics Terms 308 (5th ed. 1993)]

24

Functional Descriptive Material

• Functional descriptive Material per se is not statutory

• Functional Descriptive Material in combination with an appropriate computer readable medium must be capable of producing a useful, concrete, and tangible result when used in conjunction with a computer system– the “computer readable medium” must be a physical

structure, not a signal, which permits the functionality to be realized with the computer

25

Non-Functional Descriptive Material

• Non-Functional Descriptive Material per se is an abstract idea and therefore non-statutory

• Non-Functional Descriptive Material is not statutory even in combination with a computer or physical medium (e.g.: experimental data stored in computer memory)– no useful, concrete, or tangible result is produced

– no functionality is imparted to a computer (i.e. it is not a computer component)

26

Examples of Non-Functional Descriptive Material

• Music

• Literature

• Art

• Photographs

• Data formats, frames, or packets

• A data base per se

• Mere arrangements of facts or compilations of data

• Share price on a disk

Even when non-functional descriptive material is stored on,read by, or outputted to a computer without any physicalinterrelationship, they do not impart functionality to the computer

27

Analysis Under 35 USC § 101

1) Does the claimed invention fall within one of the four statutory categories?

2) Does the claimed invention fall within a judicial exception?

3) Does the claimed invention provide a practical application?

4) Does the claimed invention preempt a judicial exception?

28

4) Preemption

• A claim may not preempt every “substantial practical application” of an abstract idea, law of nature, or natural phenomena because it would in practical effect be a patent on the judicial exceptions themselves

• In order to establish a case of preemption, the examiner must identify the abstraction, law of nature, or natural phenomenon and explain why the claim covers every practical application thereof

29

Example 1

Claim 1 (original). A computer program comprising:(i) first instructions for causing a computer executing saidinstructions to read gene expression data from memory;

(ii) second instructions for causing said computer to analyze said gene expression data and identify genes with catalytic enzymatic activity; and

(iii) third instructions for causing said computer to transmitsaid identified genes with catalytic enzymatic activity to a user.

30

Example 1 (cont.)

Claim 1 (currently amended). A computer memory comprising a program, wherein said program further comprises[[ing]]:(i) first instructions for causing a computer executing saidinstructions to read gene expression data from memory;(ii) second instructions for causing said computer to analyze said gene expression data and identify genes with catalytic enzymatic activity; and

(iii) third instructions for causing said computer to transmitsaid identified genes with catalytic enzymatic activity to a user.

31

Example 1 (cont.)

Claim 1 (currently amended). A computer memory comprising executable code for a program, wherein said program further comprises:(i) first instructions for causing a computer executing saidinstructions to read gene expression data from memory;(ii) second instructions for causing said computer to analyze said gene expression data and identify genes with catalytic enzymatic activity; and

(iii) third instructions for causing said computer to transmitsaid identified genes with catalytic enzymatic activity to a user.

32

Example 1 (cont.)

Claim 1 (currently amended). A computer memory comprising executable code for a program, wherein said program further comprises:(i) first instructions for causing a computer executing saidinstructions to read gene expression data from memory;(ii) second instructions for causing said computer to analyze said gene expression data and identify genes with catalytic enzymatic activity; and

(iii) third instructions for causing said computer to transmitsaid identified genes with catalytic enzymatic activity to a user and further displaying said identified genes on a computer screen.

33

Example 2

Disclosure: The purpose of the invention is to provide a method for inserting a medical instrument at an optimal location in a human body for the purpose of deploying the instrument during a surgical procedure using the instrument.

Claim 1 (original). A method of determining an optimal location for insertion of a medical instrument into a human body comprising:i) determining a treatment site within a human body;ii) selecting an instrument for use in treating the body at the treatment site;iii) determining the size and type of instrument; andiv) determining an optimal location for insertion of the instrument using an algorithm based on the size and type of the instrument and the treatment site.

34

Example 2 (cont.)

Claim 1 (currently amended). A method of determining an optimal location for insertion of a medical instrument into a human body comprising:i) determining a treatment site within a human body;ii) selecting an instrument for use in treating the body at the treatment site;iii) determining the size and type of instrument; [[and]]iv) determining an optimal location for insertion of the instrument using an algorithm based on the size and type of the instrument and the treatment site; andv) inserting the instrument at the determined optimal location.

35

Example 3

Claim 1: The relationship between energy and mass as represented by the equation E=mc2.

36

Example 3 (cont.)

Claim 1: A method of determining [[T]]the [[relationship between]] energy associated with the [[and]]mass [[as represented by]]of an object comprising:(i) determining the mass of said object; and(ii) determining the energy E of said object using the equation E=mc2, wherein m is the determined mass of said object.

37

Example 3 (cont.)

Claim 1: A method of determining the energy associated with the mass of [[an object]]a spaceship comprising:(i) determining the mass of said spaceship[[object]]; and(ii) determining the energy, E, of said spaceship[[object]] using the equation E=mc2, wherein m is the determined mass of said spaceship[[object]].

38

Example 3 (cont.)Claim 1: A method of determining the energy associated with the mass of

a spaceship comprising:(i) determining the mass of said spaceship; [[and]](ii) determining the energy, E, of said spaceship using the equation E=mc2, wherein m is the determined mass of said spaceship; and(iii) displaying the determined energy to a passenger on said spaceship.

39

Acknowledgement

Special thanks is extended to

Eric DeJong for his contributions to the

preparation of this presentation.