`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`MEMORANDUM
`
`DATE:
`
`July 27, 2010
`
`TO:
`
`FROM:
`
`Patent Examining Corps
`
`" 12%) . Bahr
`
`Acting Associate Commissioner
`For Patent Examination Policy
`
`Commissioner for Patents
`.
`United States Patent and Trademark Office
`PO. Box 1450
`Alexandria, VA 22313—1450
`www.csplogov
`
`SUBJECT:
`
`Interim Guidance for Determining Subject Matter Eligibility for Process
`Claims in View of Bilski v. Kappos
`
`The attached Federal Register notice entitled Interim Guidance for Determining Subject Matter
`Eligibility for Process Claims in View of Bilski v. Kappos (Interim Biiski Guidance) is for use by
`USPTO personnel in determining subject matter eligibility under 35 U.S.C. -§ 101 in view of the
`recent decision by the United States Supreme Court (Supreme Court) in Biiski v. Kappos, 561
`
`US. _ (2010) (Bilski). The Interim Bilski Guidance is a supplement to the previously issued
`Interim Examination Instructionsfor Evaluating Subject Matter Eligibility Under 35 US. C. § 101'
`dated August 24, 2009 (August 2009 Interim Instructions) and the memorandum to the Patent
`Examining Corps on the Supreme Court Decision in Bilski dated June 28, 2010. The August 2009
`Interim Instructions are to be consulted for determining subject matter eligibility under 35 U.S.C.
`§ 101 of machine, composition, and manufacture claims.
`
`The Interim Biiski Guidance provides factors to consider in determining whether a claim is directed
`to an abstract idea and is therefore not patent-eligible under 35 U.S.C. § 101. Under the Interim
`Bilski Guidance, factors that weigh in favor of patent-eligibility satisfy the criteria of the machine-
`or-transformation test or provide evidence that the abstract idea has been practically applied, and
`factors that weigh against patent-eligibility neither satisfy the criteria of the machine-or-
`transformation test nor provide evidence that the abstract idea has been practically applied. A
`summary sheet of these factors is also attached to this memorandum. The machine-or-
`transformation test remains an investigative tool and is a useful starting point for determining
`whether a claimed invention is a patent-eligible process under 35 U.S.C. § 101. The Interim Bilski
`Guidance provides additional factors to aid in the determination of whether a claimed method that
`fails the machine-or-transformation test is nonetheless patent—eligible {i.e., is not an abstract idea),
`and also whether a claimed method that meets the machine-or-transfonnation test is nonetheless
`patent-ineligible (i. e, is an abstract idea). Since claims directed to abstract ideas were not patent-
`eligible prior to Bilski, subject matter eligibility outcomes based on the Interim Biiski Guidance are
`not likely to change in most cases. The difference is that in some rare cases, factors beyond those
`relevant to machine-or-transformation may weigh for or against a finding that a claim is directed to
`an abstract idea.
`
`Finally, under the principles of compact prosecution, Office personnel should state all non-
`cumulative reasons and bases for rejecting claims in the first Office action, and should avoid
`focusing on issues of patent-eligibility under 35 U.S.C. § 101 to the detriment of considering an
`application for compliance with the requirements of 35 U.S.C. §§ 102, 103, and 112, and also avoid
`treating an application solely on the basis of patent—eligibility under 35 U.S.C. § 101 except in the
`most extreme cases.
`
`Apple Exhibit 1011
`
`Page 00001
`
`
`Page 00001
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`Apple Exhibit 1011
`
`

`

`101 Method Eligibility Quick Reference Sheet
`
`The factors below should be considered when analyzing the claim as a whole to evaluate whether a method
`claim is directed to an abstract idea. However, not every factor will be relevant to every claim and, as such,
`need not be considered in every analysis. When it is determined that the claim is patent-eligible, the analysis
`may be concluded. In those instances where patent-eligibility cannot easily be identified, every relevant factor
`should be carefully weighed before making a conclusion. Additionally, no factor is conclusive by itself, and the
`weight accorded each factor will vary based upon the facts of the application. These factors are not intended to
`be exclusive or exhaustive as there may be more pertinent factors depending on the particular technology of the
`claim. For assistance in applying these factors, please consult the accompanying “Interim Guidance” memo and
`TC management.
`
`Factors Weighing Toward Eligibility:
`(cid:120)(cid:3) Recitation of a machine or transformation (either express or inherent).
`o
`Machine or transformation is particular.
`o
`Machine or transformation meaningfully limits the execution of the steps.
`o
`Machine implements the claimed steps.
`o
`The article being transformed is particular.
`o
`The article undergoes a change in state or thing (e.g., objectively different function or use).
`o
`The article being transformed is an object or substance.
`(cid:120)(cid:3) The claim is directed toward applying a law of nature.
`o
`Law of nature is practically applied.
`o
`The application of the law of nature meaningfully limits the execution of the steps.
`(cid:120)(cid:3) The claim is more than a mere statement of a concept.
`o
`The claim describes a particular solution to a problem to be solved.
`o
`The claim implements a concept in some tangible way.
`o
`The performance of the steps is observable and verifiable.
`
`Factors Weighing Against Eligibility:
`(cid:120)(cid:3) No recitation of a machine or transformation (either express or inherent).
`Insufficient recitation of a machine or transformation.
`(cid:120)(cid:3)
`o
`Involvement of machine, or transformation, with the steps is merely nominally, insignificantly, or
`tangentially related to the performance of the steps, e.g., data gathering, or merely recites a field in
`which the method is intended to be applied.
`o
`Machine is generically recited such that it covers any machine capable of performing the claimed
`step(s).
`o
`Machine is merely an object on which the method operates.
`o
`Transformation involves only a change in position or location of article.
`o
`“Article” is merely a general concept (see notes below).
`(cid:120)(cid:3) The claim is not directed to an application of a law of nature.
`o
`The claim would monopolize a natural force or patent a scientific fact; e.g., by claiming every mode
`of producing an effect of that law of nature.
`o
`Law of nature is applied in a merely subjective determination.
`o
`Law of nature is merely nominally, insignificantly, or tangentially related to the performance of the
`steps.
`(cid:120)(cid:3) The claim is a mere statement of a general concept (see notes below for examples).
`o
`Use of the concept, as expressed in the method, would effectively grant a monopoly over the concept.
`o
`Both known and unknown uses of the concept are covered, and can be performed through any existing
`or future-devised machinery, or even without any apparatus.
`o
`The claim only states a problem to be solved.
`o
`The general concept is disembodied.
`o
`The mechanism(s) by which the steps are implemented is subjective or imperceptible.
`
`
`Page 00002
`
`

`

`NOTES:
`
`1) Examples of general concepts include, but are not limited, to:
`(cid:131)(cid:3) Basic economic practices or theories (e.g., hedging, insurance, financial transactions, marketing);
`(cid:131)(cid:3) Basic legal theories (e.g., contracts, dispute resolution, rules of law);
`(cid:131)(cid:3) Mathematical concepts (e.g., algorithms, spatial relationships, geometry);
`(cid:131)(cid:3) Mental activity (e.g., forming a judgment, observation, evaluation, or opinion);
`(cid:131)(cid:3) Interpersonal interactions or relationships (e.g., conversing, dating);
`(cid:131)(cid:3) Teaching concepts (e.g., memorization, repetition);
`(cid:131)(cid:3) Human behavior (e.g., exercising, wearing clothing, following rules or instructions);
`(cid:131)(cid:3) Instructing “how business should be conducted.”
`
`For a detailed explanation of the terms machine, transformation, article, particular, extrasolution
`2)
`activity, and field-of-use, please refer to the Interim Patent Subject Matter Eligibility Examination
`Instructions of August 24, 2009.
`
`3)
`When making a subject matter eligibility determination, the relevant factors should be weighed with
`respect to the claim as a whole to evaluate whether the claim is patent-eligible or whether the abstract idea
`exception renders the claim ineligible. When it is determined that the claim is patent-eligible, the analysis may
`be concluded. In those instances where patent-eligibility cannot be easily identified, every relevant factor
`should be carefully weighed before making a conclusion. Not every factor will be relevant to every claim.
`While no factor is conclusive by itself, the weight accorded each factor will vary based upon the facts of the
`application. These factors are not intended to be exclusive or exhaustive as there may be more pertinent factors
`depending on the particular technology of the claim.
`
`4) Sample Form Paragraphs:
`
`a.
`Based upon consideration of all of the relevant factors with respect to the claim as a whole, claim(s) [1]
`held to claim an abstract idea, and is therefore rejected as ineligible subject matter under 35 U.S.C. § 101. The
`rationale for this finding is explained below: [2]
`
`1. In bracket 2, identify the decisive factors weighing against patent-eligibility, and explain the manner
`in which these factors support a conclusion of ineligibility. The explanation needs to be sufficient to
`establish a prima facie case of ineligibility under 35 U.S.C. § 101.
`
`b.
`Dependent claim(s) [1] when analyzed as a whole are held to be ineligible subject matter and are
`rejected under 35 U.S.C. § 101 because the additional recited limitation(s) fail(s) to establish that the claim is
`not directed to an abstract idea, as detailed below: [2]
`
`1. In bracket 2, provide an explanation as to why the claim is directed to an abstract idea; for instance,
`that the additional limitations are no more than a field of use or merely involve insignificant
`extrasolution activity; e.g., data gathering. The explanation needs to be sufficient to establish a prima
`facie case of ineligibility under 35 U.S.C. § 101.
`
`
`Page 00003
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`

`

`43922
`
`Federal Register / Vol. 75, No. 143 / Tuesday, July 27, 2010 / Notices
`
`administrative review. As a result of our
`review, we determine that a weighted-
`average dumping margin of 2.43 percent
`exists for Far Eastern Textile Limited for
`the period May 1, 2008, through April
`30, 2009.
`Assessment Rates
`The Department shall determine and
`U.S. Customs and Border Protection
`(CBP) shall assess antidumping duties
`on all appropriate entries. Although Far
`Eastern Textile Limited indicated that it
`was not the importer of record for any
`of its sales to the United States during
`the period of review, it reported the
`names of the importers of record for all
`of its U.S. sales. Because Far Eastern
`Textile Limited also reported the
`entered value for all of its U.S. sales, we
`have calculated importer-specific
`assessment rates for the merchandise in
`question by aggregating the dumping
`margins we calculated for all U.S. sales
`to each importer and dividing this
`amount by the total entered value of
`those sales.
`The Department clarified its
`‘‘automatic assessment’’ regulation on
`May 6, 2003. This clarification will
`apply to entries of subject merchandise
`during the period of review produced by
`Far Eastern Textile Limited for which it
`did not know its merchandise was
`destined for the United States. In such
`instances, we will instruct CBP to
`liquidate unreviewed entries at the all-
`others rate if there is no rate for the
`intermediate company(ies) involved in
`the transaction. For a full discussion of
`this clarification, see Antidumping and
`Countervailing Duty Proceedings:
`Assessment of Antidumping Duties, 68
`FR 23954 (May 6, 2003).
`The Department intends to issue
`assessment instructions directly to CBP
`15 days after publication of these final
`results of review.
`Cash-Deposit Requirements
`The following deposit requirements
`will be effective upon publication of
`this notice of final results of
`administrative review for all shipments
`of PSF from Taiwan entered, or
`withdrawn from warehouse, for
`consumption on or after the date of
`publication, as provided by section
`751(a)(1) of the Act: (1) The cash-
`deposit rate for Far Eastern Textile
`Limited will be 2.43 percent; (2) for
`merchandise exported by manufacturers
`or exporters not covered in this review
`but covered in the original less-than-
`fair-value investigation or previous
`reviews, the cash-deposit rate will
`continue to be the company-specific rate
`published for the most recent period; (3)
`if the exporter is not a firm covered in
`
`this review, a prior review, or the
`original investigation but the
`manufacturer is, the cash-deposit rate
`will be the rate established for the most
`recent period for the manufacturer of
`the merchandise; (4) the cash-deposit
`rate for all other manufacturers or
`exporters will continue to be 7.31
`percent, the all-others rate established
`in Notice of Amended Final
`Determination of Sales at Less Than
`Fair Value: Certain Polyester Staple
`Fiber From the Republic of Korea and
`Antidumping Duty Orders: Certain
`Polyester Staple Fiber From the
`Republic of Korea and Taiwan, 65 FR
`33807 (May 25, 2000). These cash-
`deposit requirements shall remain in
`effect until further notice.
`Notifications
`
`This notice serves as a final reminder
`to importers of their responsibility
`under 19 CFR 351.402(f)(2) to file a
`certificate regarding the reimbursement
`of antidumping duties prior to
`liquidation of the relevant entries
`during this review period. Failure to
`comply with this requirement could
`result in the Secretary’s presumption
`that reimbursement of antidumping
`duties occurred and the subsequent
`assessment of doubled antidumping
`duties.
`This notice also serves as a reminder
`to parties subject to the administrative
`protective order (APO) of their
`responsibility concerning the
`disposition of proprietary information
`disclosed under APO in accordance
`with 19 CFR 351.305(a)(3). Timely
`notification of the destruction of APO
`materials or conversion to judicial
`protective order is hereby requested.
`Failure to comply with the regulations
`and the terms of an APO is a
`sanctionable violation.
`We are issuing and publishing these
`results and this notice in accordance
`with sections 751(a)(1) and 777(i)(1) of
`the Act.
`Dated: July 19, 2010.
`Ronald K. Lorentzen.
`Deputy Assistant Secretary for Import
`Administration.
`Appendix
`
`1. Exchange Rates.
`2. Selection of Normal Value.
`[FR Doc. 2010–18391 Filed 7–26–10; 8:45 am]
`
`BILLING CODE 3510–DS–P
`
`DEPARTMENT OF COMMERCE
`
`United States Patent and Trademark
`Office
`[Docket No. PTO–P–2010–0067]
`
`Interim Guidance for Determining
`Subject Matter Eligibility for Process
`Claims in View of Bilski v. Kappos
`AGENCY: United States Patent and
`Trademark Office, Commerce.
`ACTION: Notice; Request for comments.
`SUMMARY: The United States Patent and
`Trademark Office (USPTO or Office) has
`prepared Interim Guidance for
`Determining Subject Matter Eligibility
`for Process Claims in view of Bilski v.
`Kappos (Interim Bilski Guidance) for its
`personnel to use when determining
`subject matter eligibility under 35
`U.S.C. 101 in view of the recent
`decision by the United States Supreme
`Court (Supreme Court) in Bilski v.
`Kappos, No. 08–964 (June 28, 2010). It
`is intended to be used by Office
`personnel as a supplement to the
`previously issued Interim Examination
`Instructions for Evaluating Subject
`Matter Eligibility Under 35 U.S.C. 101
`dated August 24, 2009 (Interim
`Instructions) and the memorandum to
`the Patent Examining Corps on the
`Supreme Court Decision in Bilski v.
`Kappos dated June 28, 2010. This
`guidance supersedes previous guidance
`on subject matter eligibility that
`conflicts with the Interim Bilski
`Guidance. Any member of the public
`may submit written comments on the
`Interim Bilski Guidance. The Office is
`especially interested in receiving
`comments regarding the scope and
`extent of the holding in Bilski.
`DATES: The Interim Bilski Guidance is
`effective July 27, 2010. This guidance
`applies to all applications filed before,
`on or after the effective date of July 27,
`2010.
`Comment Deadline Date: To be
`ensured of consideration, written
`comments must be received on or before
`September 27, 2010. No public hearing
`will be held.
`ADDRESSES: Comments concerning this
`Interim Bilski Guidance should be sent
`by electronic mail message over the
`Internet addressed to
`Bilski_Guidance@uspto.gov or facsimile
`transmitted to (571) 273–0125.
`Comments may also be submitted by
`mail addressed to: Mail Stop
`Comments—Patents, Commissioner for
`Patents, P.O. Box 1450, Alexandria, VA
`22313–1450. Although comments may
`be submitted by facsimile or mail, the
`Office prefers to receive comments via
`the Internet.
`
`
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`Federal Register / Vol. 75, No. 143 / Tuesday, July 27, 2010 / Notices
`
`43923
`
`The comments will be available for
`public inspection at the Office of the
`Commissioner for Patents, located in
`Madison East, Tenth Floor, 600 Dulany
`Street, Alexandria, Virginia, and will be
`available via the USPTO Internet Web
`site, (address: http://www.uspto.gov).
`Because comments will be available for
`public inspection, information that is
`not desired to be made public, such as
`an address or phone number, should not
`be included in the comments.
`FOR FURTHER INFORMATION CONTACT:
`Caroline D. Dennison, Legal Advisor,
`Office of Patent Legal Administration,
`Office of the Associate Commissioner
`for Patent Examination Policy, by
`telephone at (571) 272–7729, or by mail
`addressed to: Mail Stop Comments—
`Patents, Commissioner for Patents, P.O.
`Box 1450, Alexandria, VA 22313–1450,
`marked to the attention of Caroline D.
`Dennison.
`SUPPLEMENTARY INFORMATION: The
`USPTO has prepared interim guidance
`(Interim Bilski Guidance) for its
`personnel to use when determining
`subject matter eligibility under 35
`U.S.C. 101 in view of the recent
`decision by the United States Supreme
`Court (Supreme Court) in Bilski. It is
`intended to be used by Office personnel
`as a supplement to the previously
`issued Interim Examination Instructions
`for Evaluating Subject Matter Eligibility
`Under 35 U.S.C. 101 dated August 24,
`2009 (Interim Instructions) and the
`memorandum to the Patent Examining
`Corps on the Supreme Court Decision in
`Bilski v. Kappos dated June 28, 2010.
`The Interim Bilski Guidance is based on
`the USPTO’s current understanding of
`the law and is believed to be fully
`consistent with the decision in Bilski,
`the binding precedent of the Supreme
`Court, the U.S. Court of Appeals for the
`Federal Circuit (Federal Circuit) and the
`Federal Circuit’s predecessor courts.
`The USPTO has also posted the Interim
`Bilski Guidance on its Internet Web site
`(http://www.uspto.gov).
`Request for Comments
`
`The Office has received and
`considered the comments regarding the
`Interim Instructions submitted in
`response to the Request for Comments
`on Interim Examination Instructions for
`Evaluating Patent Subject Matter
`Eligibility, 74 FR 47780 (Sept. 11, 2009),
`1347 Off. Gaz. Pat. Office 110 (Oct. 13,
`2009). See also Additional Period for
`Comments on Interim Examination
`Instructions for Evaluating Patent
`Subject Matter Eligibility, 74 FR 52184
`(Oct. 9, 2009), 1348 Off. Gaz. Pat. Office
`42 (Nov. 3, 2009) (extending the
`
`comment period until November 9,
`2009).
`Members of the public are invited to
`review the Interim Bilski Guidance
`(below) and provide comments. The
`Office is particularly interested in
`receiving comments in response to the
`following questions:
`1. What are examples of claims that
`do not meet the machine-or-
`transformation test but nevertheless
`remain patent-eligible because they do
`not recite an abstract idea?
`2. What are examples of claims that
`meet the machine-or-transformation test
`but nevertheless are not patent-eligible
`because they recite an abstract idea?
`3. The decision in Bilski suggested
`that it might be possible to ‘‘defin[e] a
`narrower category or class of patent
`applications that claim to instruct how
`business should be conducted,’’ such
`that the category itself would be
`unpatentable as ‘‘an attempt to patent
`abstract ideas.’’ Bilski slip op. at 12. Do
`any such ‘‘categories’’ exist? If so, how
`does the category itself represent an
`‘‘attempt to patent abstract ideas?’’
`Interim Guidance for Determining
`Subject Matter Eligibility for Process
`Claims in view of Bilski v. Kappos
`(Interim Bilski Guidance)
`I. Overview: This Interim Bilski
`Guidance is for determining patent-
`eligibility of process claims under 35
`U.S.C. 101 in view of the opinion by the
`Supreme Court in Bilski v. Kappos, 561
`U.S. ___ (2010), which refined the
`abstract idea exception to subject matter
`that is eligible for patenting. A claim to
`an abstract idea is not a patent-eligible
`process.
`This Interim Bilski Guidance provides
`factors to consider in determining
`subject matter eligibility of method
`claims in view of the abstract idea
`exception. Although this guidance
`presents a change in existing
`examination practice, it is anticipated
`that subject matter eligibility
`determinations will not increase in
`complexity for the large majority of
`examiners, who do not routinely
`encounter claims that implicate the
`abstract idea exception.
`Under the principles of compact
`prosecution, each claim should be
`reviewed for compliance with every
`statutory requirement for patentability
`in the initial review of the application,
`even if one or more claims are found to
`be deficient with respect to the patent-
`eligibility requirement of 35 U.S.C. 101.
`Thus, Office personnel should state all
`non-cumulative reasons and bases for
`rejecting claims in the first Office
`action.
`
`Section III of this Interim Bilski
`Guidance provides guidance on the
`abstract idea exception to subject matter
`eligibility as set forth in Bilski, and
`section IV of this Interim Bilski
`Guidance provides guidance on factors
`relevant to reviewing method claims for
`subject matter eligibility in view of
`Bilski. To aid examiners in
`implementing this guidance, a summary
`sheet of factors which may be useful for
`determining subject matter eligibility of
`a method claim is provided at the end
`of this Interim Bilski Guidance.
`Section V of this Interim Bilski
`Guidance discusses how to make the
`determination of eligibility. To
`summarize, in order for the examiner to
`make a proper prima facie case of
`ineligibility, the examiner will evaluate
`the claim as a whole and weigh the
`relevant factors set forth in Bilski and
`previous Supreme Court precedent and
`make a determination of compliance
`with the subject matter eligibility prong
`of § 101. The Office will then consider
`rebuttal arguments and evidence
`supporting subject matter eligibility.
`II. Summary: The Bilski Court
`underscored that the text of § 101 is
`expansive, specifying four independent
`categories of inventions eligible for
`protection, including processes,
`machines, manufactures, and
`compositions of matter. See slip op. at
`4 (‘‘In choosing such expansive terms
`* * * modified by the comprehensive
`‘any’, Congress plainly contemplated
`that the patent laws would be given
`wide scope.’’) (quoting Diamond v.
`Chakrabarty, 447 U.S. 303, 308 (1980)).
`The Court also made clear that business
`methods are not ‘‘categorically outside
`of § 101’s scope,’’ stating that ‘‘a business
`method is simply one kind of ‘method’
`that is, at least in some circumstances,
`eligible for patenting under § 101.’’ Id. at
`10–11. Examiners are reminded that
`§ 101 is not the sole tool for determining
`patentability; where a claim
`encompasses an abstract idea, sections
`102, 103, and 112 will provide
`additional tools for ensuring that the
`claim meets the conditions for
`patentability. As the Court made clear in
`Bilski:
`The § 101 patent-eligibility inquiry is only
`a threshold test. Even if an invention
`qualifies as a process, machine, manufacture,
`or composition of matter, in order to receive
`the Patent Act’s protection the claimed
`invention must also satisfy ‘‘the conditions
`and requirements of this title.’’ § 101. Those
`requirements include that the invention be
`novel, see § 102, nonobvious, see § 103, and
`fully and particularly described, see § 112.
`Id. at 5.
`Therefore, examiners should avoid
`focusing on issues of patent-eligibility
`
`
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`43924
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`Federal Register / Vol. 75, No. 143 / Tuesday, July 27, 2010 / Notices
`
`under § 101 to the detriment of
`considering an application for
`compliance with the requirements of
`§§ 102, 103, and 112, and should avoid
`treating an application solely on the
`basis of patent-eligibility under § 101
`except in the most extreme cases.
`III. The Abstract Idea Exception to
`Subject Matter Eligibility: There are
`limits on the scope of patent-eligibility.
`In particular, the Supreme Court has
`identified three specific exceptions to
`§ 101’s broad patent-eligibility
`principles: Laws of nature, physical
`phenomena, and abstract ideas. See id.
`The Office has been using the so-
`called ‘‘machine-or-transformation’’ test
`used by the Federal Circuit to evaluate
`whether a method claim qualifies as a
`statutory patent-eligible process. See
`Interim Examination Instructions For
`Evaluating Subject Matter Eligibility
`Under 35 U.S.C. 101 dated August 24,
`2009 (‘‘2009 Interim Instructions’’). The
`Supreme Court stated in Bilski that the
`machine-or-transformation test is a
`‘‘useful and important clue’’ and
`‘‘investigative tool’’ for determining
`whether some claimed methods are
`statutory processes, but it ‘‘is not the
`sole test for deciding whether an
`invention is a patent-eligible ‘process.’ ’’
`Slip op. at 8. Its primary objection was
`to the elevation of the machine-or-
`transformation test—which it
`considered to be ‘‘atextual’’—as the ‘‘sole
`test’’ for patent-eligibility. Slip op. at 6–
`8, 16. To date, no court, presented with
`a subject matter eligibility issue, has
`ever ruled that a method claim that
`lacked a machine or a transformation
`was patent-eligible. However, Bilski
`held open the possibility that some
`claims that do not meet the machine-or-
`transformation test might nevertheless
`be patent-eligible.
`Prior to adoption of the machine-or-
`transformation test, the Office had used
`the ‘‘abstract idea’’ exception in cases
`where a claimed ‘‘method’’ did not
`sufficiently recite a physical
`instantiation. See, e.g., Ex parte Bilski,
`No. 2002–2257, slip op. at 46–49
`(B.P.A.I. Sept. 26, 2006) (informative),
`http://www.uspto.gov/ip/boards/bpai/
`decisions/inform/fd022257.pdf.
`Following Bilski, such an approach
`remains proper. A claim that attempts to
`patent an abstract idea is ineligible
`subject matter under 35 U.S.C. 101. See
`slip op. at 13 (‘‘[A]ll members of the
`Court agree that the patent application
`at issue here falls outside of § 101
`because it claims an abstract idea.’’). The
`abstract idea exception has deep roots in
`the Supreme Court’s jurisprudence. See
`id. at 5 (citing Le Roy v. Tatham, 55 U.S.
`(14 How.) 156, 174–175 (1853)).
`
`Bilski reaffirmed Diehr’s holding that
`‘‘while an abstract idea, law of nature, or
`mathematical formula could not be
`patented, ‘an application of a law of
`nature or mathematical formula to a
`known structure or process may well be
`deserving of patent protection.’ ’’ Id. at
`14 (quoting Diamond v. Diehr, 450 U.S.
`175, 187 (1981)) (emphasis in original).
`The recitation of some structure, such as
`a machine, or the recitation of some
`transformative component will in most
`cases limit the claim to such an
`application. However, not all such
`recitations necessarily save the claim:
`‘‘Flook established that limiting an
`abstract idea to one field of use or
`adding token postsolution components
`did not make the concept patentable.’’
`Id. at 15. Moreover, the fact that the
`steps of a claim might occur in the ‘‘real
`world’’ does not necessarily save it from
`a section 101 rejection. Thus, the Bilski
`claims were said to be drawn to an
`‘‘abstract idea’’ despite the fact that they
`included steps drawn to initiating
`transactions. The ‘‘abstractness’’ is in the
`sense that there are no limitations as to
`the mechanism for entering into the
`transactions.
`Consistent with the foregoing, Bilski
`holds that the following claim is
`abstract:
`1. A method for managing the
`consumption risk costs of a commodity
`sold by a commodity provider at a fixed
`price comprising the steps of:
`(a) Initiating a series of transactions
`between said commodity provider and
`consumers of said commodity wherein
`said consumers purchase said
`commodity at a fixed rate based upon
`historical averages, said fixed rate
`corresponding to a risk position of said
`consumer;
`(b) Identifying market participants for
`said commodity having a counter-risk
`position to said consumers; and
`(c) Initiating a series of transactions
`between said commodity provider and
`said market participants at a second
`fixed rate such that said series of market
`participant transactions balances the
`risk position of said series of consumer
`transactions.
`Specifically, the Court explains:
`The concept of hedging, described in claim
`1 and reduced to a mathematical formula in
`claim 4, is an unpatentable abstract idea, just
`like the algorithms at issue in Benson and
`Flook. Allowing petitioners to patent risk
`hedging would preempt use of this approach
`in all fields, and would effectively grant a
`monopoly over an abstract idea.
`Slip op. at 15.
`Bilski also held that the additional,
`narrowing, limitations in the dependent
`claims were mere field of use
`
`limitations or insignificant postsolution
`components, and that adding these
`limitations did not make the claims
`patent-eligible. See id. Claims 1–9 in
`Bilski are attached as examples of claims
`that run afoul of the abstract idea
`exception.
`The day after deciding Bilski, the
`Supreme Court denied certiorari in
`Ferguson v. Kappos, U.S. Supreme
`Court No. 09–1501, while granting,
`vacating, and remanding two other
`Federal Circuit section 101 cases. The
`denial of certiorari left intact the
`rejection of all of Ferguson’s claims.
`Although the Federal Circuit had
`applied the machine-or-transformation
`test to reject Ferguson’s process claims,
`the Supreme Court’s disposition of
`Ferguson makes it likely that the
`Ferguson claims also run afoul of the
`abstract idea exception. A representative
`Ferguson claim is:
`1. A method of marketing a product,
`comprising:
`Developing a shared marketing force, said
`shared marketing force including at least
`marketing channels, which enable marketing
`a number of related products;
`Using said shared marketing force to
`market a plurality of different products that
`are made by a plurality of different
`autonomous producing company [sic], so that
`different autonomous companies, having
`different ownerships, respectively produce
`said related products;
`Obtaining a share of total profits from each
`of said plurality of different autonomous
`producing companies in return for said
`using; and
`Obtaining an exclusive right to market each
`of said plurality of products in return for said
`using.
`The following guidance presents
`factors that are to be considered when
`evaluating patent-eligibility of method
`claims. The factors include inquiries
`from the machine-or-transformation test,
`which remains a useful investigative
`tool, and inquiries gleaned from
`Supreme Court precedent. While the
`Supreme Court in Bilski did not set forth
`detailed guidance, there are many
`factors to be considered when
`determining whether there is sufficient
`evidence to support a determination
`that a method claim is directed to an
`abstract idea. The following factors are
`intended to be useful examples and are
`not intended to be exclusive or limiting.
`It is recognized that new factors may be
`developed, particularly for emerging
`technologies. It is anticipated that the
`factors will be modified and changed to
`take into account developments in
`precedential case law and to
`accommodate prosecution issues that
`may arise in implementing this new
`practice.
`
`
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`Federal Register / Vol. 75, No. 143 / Tuesday, July 27, 2010 / Notices
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`43925
`
`Additional guidance in the form of
`expanded explanation and specific
`examples will follow in due course.
`IV. Evalua