The USPTO has issued a June 25, 2014 Memorandum entitled “Priliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. with respect to 35 USC section 101. It goes without saying that instructions from the PTO are important because they govern the way applications are examined at the PTO.
Some important points are the following:
- The same analysis provided by Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 US _ (2012) (guidance in MPEP 2106.01) should be used for all types of juidicial exceptions (laws of nature, natural phenomena and abstract ideas) as well as all categories of claims (e.g., product and process claims)
- The first inquiry is thus to determine whether the claim is directed to an abstract idea. Examples of abstract ideas reference in Alice Corp. include the following:
- Fundamental economic practices (e.g., intermediated settlement);
- certain methods of organizing human activities (e.g., a series of steps instructing how to hedge risk as in Bilski v. Kappos, 561 US 593 (2010);
- an idea of itself (e.g., a principle, an orginal cuase, a motive (see Gottschalk v. Benson, 409 US 63, (1972).
- mathematical relationships/formulas (see a mathematical formula for computing alarm limits in a catlytic conversion process in Parker v. Flook, 437 US 584 (1978) or a formula for covnerting binary coded decimal numerals into pure binary form in Gottschalk v. Benson, 409 US 63, (1972).
- If an abstract idea is present in the claim, the 2nd inquiry is to determine whether any element or combination of elements in the claim are sufficient to ensure that the claim amounts to significanlty more than the abstract idea itself. Limitations referenced in Alice Corp. that may be enough to qualify as “significanlty more” include the following:
- improvements to another technology or technical field (see a mathematical formula applied in a specific rubber molding process in Diamond v. Diehr, 450 US 175 (1981);
- improvements to the functioning of the computer itself;
- meaningful limitations beyond generally linking the use of an abstract idea to a particular technological enviornment.
Limitations referenced in Alice Corp that are not enough to qualify as “significantly more” include (1) adding the words “apply it” 9Or an equivalent) with an abstract idea or mroere instructions to implement an abstract idea on a computer (2) requiring no more than a generic computer to perform generic computer funcitons that are well understood, routine and conventional activities previously known to the industry. :