Overview of Interim Guidelines for Subject Matter Eligibility Robert Weinhardt – Business Practice Specialist TC3600

1. Overview of Interim Guidelines for Subject Matter EligibilityRobert Weinhardt – Business Practice Specialist TC3600

2. Interim Guidelines • Purpose: To assist examiners in determining whether a claim is directed to statutory subject matter under 35 U.S.C. § 101. • Published in the O.G. 11/22/2005 • Period for public commentary runs until June 30, 2006. • Submit comments via email addressed to: AB98.Comments@uspto.gov

3. Interim Guidelines Intro • What’s In: • Statutory Categories • Judicial Exceptions • Practical Application • Preemption

4. Interim Guidelines Intro • What’s Out: • “Not in the Technological Arts” • Freeman-Walter-Abele • Mental Steps or Human Steps • Machine Implemented • Data Transformation

5. Prerequisites to AnalysisUnder 101 • Determine what applicant invented. • Review the spec and claims. • Identify and understand: • Any utility and/or practical application asserted by applicant; • The meaning of claim terms; and • Claim scope. • Conduct a thorough search. • What is known in the art can contribute to understanding the invention.

6. Analysis Under 101 • Does the claimed invention fall within one of the four statutory categories? • Does the claimed invention fall within a judicial exception? • Does the claimed invention provide a practical application? • Does the claimed invention preempt a judicial exception?

7. 1) Statutory Categories • What do we grant patents for? • 35 U.S.C. §101 reads: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.”

8. Statutory Categories • A “machine”, “manufacture”, and “composition of matter” all define things or products. • A “process” defines actions i.e. inventions that set forth a series of steps or acts to performed.

9. Not in One of the Statutory Categories • Literary works per se. • Rules to play a game per se. • Legal agreements per se, e.g. an insurance policy. • Signals per se. • A computer program, logic or language per se.

10. If Not, Don’t Stop • If the examiner can establish that 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 101 analysis and must still examine the claims for compliance with 102, 103 and 112.

11. 2) Judicial Exceptions • Despite the apparent sweep of 35 U.S.C. §101, the Supreme Court has specifically identified three categories of nonstatutory subject matter: • Laws of nature, per se • Natural phenomena, per se • Abstract ideas, per se

12. Judicial Exception Examples • Laws of nature • e=mc2; f=ma • Natural phenomena • the heat of the sun; electricity; a new mineral • Abstract ideas • mathematical algorithms; legal rights

13. If Yes, Don’t Stop • If a judicial exception is found in the claim, further analysis under 101 is required. • If a judicial exception is not found in the claim, the claim must fall within a statutory category and meet the other conditions of 101.

14. 3) Practical Application • Two ways to provide a practical application of a judicial exception: • Physical Transformation, OR • Produce A Useful, Concrete, and Tangible Result

15. Physical Transformation • The claimed invention transforms an article or physical object to a different state or thing. • If transformation is found, this ends the analysis for statutory subject matter. • Transformation of data is not “physical transformation,” nor are physical acts necessarily a “physical transformation.” • Example: manufacturing a tire by curing rubber.

16. Physical Transformation • Even if a judicial exception is a limitation of the claimed invention, e.g. a law of nature, if it is applied in the physical transformation, a practical application is provided. • The claims still need to be checked for utility under 101 however.

17. Useful, Concrete, Tangible • If no physical transformation appears in the claim, check for a “useful, concrete and tangible result”. • The focus is on the result, not the steps or structure used to produce the result. • A useful, concrete and tangible result must be either specifically recited in the claim or flow inherently therefrom.

18. Useful, Concrete, Tangible • Even if a judicial exception is a limitation of the claimed invention, e.g. a law of nature, if it is applied to produce a useful, concrete and tangible result, a practical application is provided.

19. “Useful” • The claimed invention as a whole must satisfy the utility requirement of 101: • specific, • substantial, and • credible utility. • These criteria require evaluation of the specification and the knowledge in the art.

20. “Useful” • A complete disclosure should contain some indication of why the claimed invention is useful. • If the claimed invention does not fulfill any of the disclosed utilities, determine if the utility would have been recognized by those in the art.

21. “Concrete” • Usually, 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 estimating, predicting or approximating something does not necessarily lack concreteness) • May require a determination of the level of ordinary skill in the art.

22. Enablement • In instances where the invention cannot be used as intended without undue experimentation, an appropriate rejection of the claim as being nonstatutory under 35 U.S.C. 101 should be accompanied by a lack of enablement rejection under 35 U.S.C. 112 first paragraph.

23. “Tangible” • “Real world” result. • Not necessarily tied to a machine; not a duplicate of “physical transformation”. • In other words, the opposite of “tangible” is “abstract”. • Thoughts are not “real world” results. • Example: Calculating a price of an item to sell and then conveying the calculated price to a potential customer

24. Descriptive Material and Practical Application • 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

25. Functional Descriptive Material • “Functional descriptive material" includes data structures and computer programs which impart functionality when employed as a computer component. • 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).

26. Functional Descriptive Material • Functional Descriptive material per se is not statutory. • Cf.In re Warmerdam, disembodied data structure claim. • 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 a computer system. • Cf.In re Warmerdam – data structure stored in a computer memory, and In re Lowry, 32 USPQ2d 1031 (Fed. Cir. 1994) – data structure in a “computer readable medium”. • The “computer readable medium” must be physical structure, not a signal, which permits the functionality to be realized with the computer.

27. Non-Functional Descriptive Material • Non-functional descriptive material per se is an abstract idea, and therefore is not statutory. • Non-Functional Descriptive Materialisnot statutory even if in combination with a physical medium. • No useful, concrete or tangible result is produced.

28. Examples of Non-Functional Descriptive Material Even when non-functional descriptive material is stored to be read or outputted by a computer without any functional interrelationship, they do not impart functionality to the computer, i.e., they are not computer components. • Data base per se • Mere arrangements of facts or compilations of data • Share price on a disk • Music • Literature • Art • Photographs • Data formats, frames or packets

29. Practical Application • A claim to a proper computer readable medium (not e.g. a signal) encoded with functional descriptive material that can function with a computer to effect a useful, concrete and tangible result (e.g. running an assembly line or executing a stock transaction) satisfies the practical application test.

30. If Yes, Don’t Stop • Finding a practical application does not end the analysis under 101.

31. 4) Preemption • A claim may not preempt abstract ideas, laws of nature or natural phenomena. • Further, 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.

32. Preemption • Thus, even though a practical application is found in the claim, we must determine if every “substantial practical application” is being claimed. • If every substantial practical application is being claimed, the claim is non-statutory under 101.

33. Thank You