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`PATENTS TRADEMARKS
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`IP LAW & POLICY PRODUCTS & SERVICES INVENTORS NEWS & NOTICES FAQS ABOUT US
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`2106 Patent Subject Matter Eligibility [R-11.2013]
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`There are two criteria for determining subject matter eligibility and both must be satisfied. The claimed invention (1) must be
`directed to one of the four statutory categories, and (2) must not be wholly directed to subject matter encompassing a judicially
`recognized exception, as defined below. The following two step analysis is used to evaluate these criteria.
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`I. THE FOUR CATEGORIES OF STATUTORY SUBJECT MATTER
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`Step 1: Is the claim directed to one of the four patent—eligible subject matter categories: process, machine, manufacture, or
`composition of matter? The subject matter of the claim must be directed to one of the four subject matter categories. If it is not,
`the claim is not eligible for patent protection and should be rejected under 35 U.S.C. 101 (mQeQ—9015—aQQx—I.htmI#dDe302376) , for
`at least this reason. A summary of the four categories of invention, as they have been defined by the courts, are:
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`i. Process — an act, or a series of acts or steps. See Gottschalk V. Benson, 409 U.S. 63, 70, 175 USPQ 673, 676 (1972)
`("A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts,
`performed upon the subject-matter to be transformed and reduced to a different state or thing." (emphasis added) (quoting
`Cochrane V. Deener, 94 U.S. 780, 788, 24 L. Ed. 139, 1877 Dec. Comm'r Fat. 242 (1876))); NTP, Inc. V. Research in
`Motion, Ltd, 418 F.3d 1282, 1316, 75 USPQ2d 1763, 1791 (Fed. Cir. 2005) ("[A] process is a series of acts." (quoting
`Minton V. Natl. Ass’n. of Securities Dealers, 336 F.3d 1373, 336 F.3d 1373, 1378, 67 USPQ2d 1614, 1681 (Fed. Cir.
`2003))). See also 35 U.S.C. 100(b)[mEQ—9015—aQgx—|.htm|#d0e302350); Bilski V. Kappos, 561 U.S. _, 130 S. Ct. 3218,
`95 USPQ2d 1001 (2010).
`ii. Machine — a concrete thing, consisting of parts, or of certain devices and combination of devices. Burr V. Duryee, 68
`U.S. (1 Wall.) 531, 570, 17 L. Ed. 650 (1863). This includes every mechanical device or combination of mechanical powers
`and devices to perform some function and produce a certain effect or result. Corning V. Burden, 56 U.S. 252, 267, 14 L.
`Ed. 683 (1854).
`iii. Manufacture — an article produced from raw or prepared materials by giving to these materials new forms, qualities,
`properties, or combinations, whether by handlabor or by machinery. Diamond V. Chakrabarty, 447 U.S. 303, 308, 206
`USPQ 193, 197 (1980) (emphasis added) (quoting Am. Fruit Growers, Inc. V. Brogdex C0,, 283 U.S. 1, 11, 51 S. Ct. 328,
`75 L. Ed. 801, 1931 (Dec. Comm'r Pat. 711 (1931))).
`iv. Composition of matter — all compositions of two or more substances and all composite articles, whether they be the
`results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids, for example.
`Chakrabarty, 447 U.S. at 308, 206 USPQ at 197.
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`Non-limiting examples of claims that are not directed to one of the statutory categories:
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`i. transitory forms of signal transmission (for example, a propagating electrical or electromagnetic signal per se), In re
`Nuijten, 500 F.3d 1346, 1357, 84 USPQ2d 1495, 1503 (Fed. Cir. 2007);
`ii. a naturally occurring organism, Chakrabarfy, 447 U.S. at 308, 206 USPQ at 197;
`iii. a human per se, The Leahy-Smith America lnvents Act (AIA), Public Law 112-29, sec. 33 (mQeQ-9015-aQQX-
`l.html#aiasec33limitonissuance) , 125 Stat. 284 (September 16, 2011);
`iv. a legal contractual agreement between two parties, see In re Ferguson, 558 F.3d 1359, 1364, 90 USPQ2d 1035, 1039-
`40 (Fed. Cir. 2009) (cert. denied);
`v. a game defined as a set of rules;
`vi. a computer program per se,GottschaIk V. Benson, 409 U.S. at 72, 175 USPQ at 676-77;
`- vii. a company, Ferguson, 558 F.3d at 1366, USPQ at 1040; and
`- viii. a mere arrangement of printed matter, In re Miller, 418 F.2d 1392, 1396, 164 USPQ 46, 49 (CCPA 1969).
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`A claim that covers both statutory and non-statutory embodiments (under the broadest reasonable interpretation of the claim
`when read in light of the specification and in view of one skilled in the art) embraces subject matter that is not eligible for patent
`protection and therefore is directed to non-statutory subject matter. Such claims fail the first step and should be rejected under §
`U.S.C. 101 (mgeg-9015-aggx-l.html#d0e302376) , for at least this reason.
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`For example, machine readable media can encompass non-statutory transitory forms of signal transmission, such as, a
`propagating electrical or electromagnetic signal per se. See In re Nuijten, 500 F.3d 1346, 84 USPQ2d 1495 (Fed. Cir. 2007).
`When the broadest reasonable interpretation of machine readable media in light of the specification as it would be interpreted by
`one of ordinary skill in the art encompasses transitory forms of signal transmission, a rejection under 35 U.S.C. 101 (m;gp—9015-
`aQgx—|.htm|#d0e302376) as failing to claim statutory subject matter would be appropriate. Thus, a claim to a computer readable
`medium that can be a compact disc or a carrier wave covers a non-statutory embodiment and therefore should be rejected under
`35 U.S.C. 101 (mpep-9015-aQpx-|.htm|#d0e302376)_aS being directed to non-statutory subject matter.
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`If the claimed invention is clearly not within one of the four categories, it is not patent eligible. However, when the claim falls
`under Step 1 and it appears from applicant’s disclosure that the claim could be amended to be directed to a statutory category,
`Step 2 below should still be conducted.
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`II.
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`JUDICIAL EXCEPTIONS TO THE FOUR CATEGORIES
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`Step 2: Does the claim wholly embrace a judicially recognized exception, which includes laws of nature, physical phenomena,
`and abstract ideas, or is it a particular practical application of a judicial exception? See Bilski v. Kappos, 561 U.S. _, _, 130
`S. Ct. 3218, 3225, 95 USPQ2d 1001, 1005-06 (2010) (stating “The Court's precedents provide three specific exceptions to §@
`(mgeg—9015—aggx—I.htmI#d0e302376) ‘s broad patent-eligibility principles: ‘laws of nature, physical phenomena, and abstract
`ideas.”‘) (quoting Diamond v. Chakrabarty, 447 U.S. 303, 309, 206 USPQ 193, 197 (1980)).
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`Determining whether the claim falls within one of the four enumerated categories of patentable subject matter recited in 35 U.S.C.
`101 (mgep-9015-apgx-|.htm|#d0e302376) (i_e_, process, machine, manufacture, or composition of matter) does not end the
`analysis because claims directed to nothing more than abstract ideas (such as mathematical algorithms), natural phenomena,
`and laws of nature are not eligible for patent protection. Diamond v. Diehr, 450 U.S. 175, 185, 209 USPQ 1, 7 (1981); accord,
`e.g., Chakrabarty, 447 U.S. at 309, 206 USPQ at 197; Parker V. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978); Benson,
`409 U.S. at 67-68 , 175 USPQ at 675. “A principle, in the abstract, is a fundamental truth; an original cause; a motive; these
`cannot be patented, as no one can claim in either of them an exclusive right.” Le Roy v. Tatham,55 U.S. (14 How.) 156, 175
`(1852). Instead, such “manifestations of laws of nature" are “part of the storehouse of knowledge,” “free to all men and reserved
`exclusively to none.” Funk Bros. Seed Co. v. Kalo Inoculant C0,, 333 U.S. 127, 130, 76 USPQ 280, 281 (1948).
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`Thus, “a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter” under Section 101
`(mgeg-9015-apgx-|.htm|#dDe302376) . Chakrabarty, 447 U.S. at 309, 206 USPQ at 197. “Likewise, Einstein could not patent his
`celebrated law that E=mc2; nor could Newton have patented the law of gravity.” Id. Nor can one patent “a novel and useful
`mathematical fonnula,” Flook, 437 U.S. at 585, 198 USPQ at 195; electromagnetism or steam power, O’ReiIIy v. Morse, 56 U.S.
`(15 How.) 62, 113-114 (1853); or “[t]he qualities of
`bacteria,
`the heat of the sun, electricity, orthe qualities of metals,” Funk,
`333 US. at 130, 76 USPQ at 281; see Le Roy, 55 U.S. (14 How.) at 175.
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`While abstract ideas, physical phenomena, and laws of nature are not eligible for patenting, methods and products employing
`abstract ideas, physical phenomena, and laws of nature to perform a real—world function may well be. In evaluating whether a
`claim meets the requirements of 35 U.S.C. 101 (mgeg—9015—aggx—I.htmI#d0e302376) , the claim must be considered as a whole to
`determine whether it is for a particular application of an abstract idea, physical phenomenon, or law of nature, and not forthe
`abstract idea, physical phenomenon, or law of nature itself. Diehr, 450 U.S. at 188, 209 USPQ at 7.
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`In addition to the tenns laws of nature, physical phenomena, and abstract ideas, judicially recognized exceptions have been
`described using various other terms, including natural phenomena, scientific principles, systems that depend on human
`intelligence alone, disembodied concepts, mental processes and disembodied mathematical algorithms and formulas, for
`example. The exceptions reflect the courts’ view that the basic tools of scientific and technological work are not patentable.
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`The claimed subject matter must not be wholly directed to a judicially recognized exception. If it is, the claim is not eligible for
`patent protection and should be rejected under 35 U.S.C. 101 (mgeg-9015-aggx-|.htm|#d0e302376) . However, a claim that is
`limited to a particular practical application of a judicially recognized exception is eligible for patent protection. A “practical
`application” relates to how a judicially recognized exception is applied in a real world product or a process, and not merely to the
`result achieved by the invention. When subject matter has been reduced to a particular practical application having a real world
`use, the claimed practical application is evidence that the subject matter is not abstract (e.g., not purely mental) and does not
`encompass substantially all uses (preemption) of a law of nature or a physical phenomenon. See, e.g., Ultramercial v. Hulu, 657
`F.3d 1323, 1329, 100 USPQ2d 1140,1145 (Fed. Cir. 2011) (stating that the patent “does not claim a mathematical algorithm, a
`series of purely mental steps, or any similarly abstract concept. It claims a particular method .
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`. a practical application of the
`general concept.").
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`A. Practical Application of Machines, Manufactures, and Compositions of Matter (Products)
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`If the claimed product falls within one of the three product categories of invention and does not recite judicially excepted subject
`matter, e.g., a law of nature, a physical phenomenon, or an abstract idea, it qualifies as eligible subject matter. If a judicial
`exception is recited in the claim, it must be determined if the judicially excepted subject matter has been practically applied in the
`product.
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`Eligible machines, manufactures, and compositions of matter are non—naturally occurring products typically formed of tangible
`elements or parts that embody a particular or specific, tangible practical application of the invention. Thus, for these product
`categories, a particular practical application is often self-evident based on the claim limitations that define the tangible
`embodiment. This is because an idea that is tangibly applied to a structure is no longer abstract, and a law of nature or physical
`phenomenon that is practically applied to a structure is limited to that particular application of the concept. For example, a cup is
`the tangible application of the abstract idea of containing a liquid and is one limited embodiment of that idea (which is no longer
`abstract). As another example, a magnetic door latch is the tangible application of the concept of magnetism and does not wholly
`embrace the concept of magnetism but, rather, is one limited application of the concept.
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`A claim that includes tenns that imply that the invention is directed to a product, for instance by reciting “a machine
`comprising...”, but fails to include tangible limitations in accordance with its broadest reasonable interpretation is not limited to a
`practical application, but rather wholly embraces or encompasses the concept upon which the invention is based. This is
`impennissible as such claim coverage would extend to every way of applying the abstract idea, law of nature or physical
`phenomenon.
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`A claim that includes judicially excepted subject matter and whose broadest reasonable interpretation is directed to a man-made
`tangible embodiment (i_e_, structure) with a real world use is limited to a practical application (the subject matter has been
`practically applied). The reason is that the claim as a whole must be evaluated for eligibility in the same manner that a claim as a
`whole is evaluated for patentability under 35 U.S.C. 102 (mQeg—9015—aQgx—I.htmI#d0e302383) , 103 [mQeQ—9015—aQQx—
`|.html#dDe302450)_and 112 (mpep-9015-appx-|.htm|#d0e302824)_.
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`Once a practical application has been established, the limited occurrence of preemption must be evaluated to detennine whether
`the claim impermissibly covers substantially all practical applications of the judicially excepted subject matter. If so, the claim is
`not patent-eligible. If the claim covers only a particular practical application of the judicially excepted subject matter, it is patent
`eligible.
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`The following examples show the difference between a tangible embodiment that is evidence of a particular practical application
`and an abstract concept that has no practical application.
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`(a) A claim that is directed to a machine comprising a plurality of structural elements that work together in a defined
`combination based on a mathematical relationship, such as a series of gears, pulleys and belts, possesses structural
`limitations that show that it is a tangible embodiment, providing evidence that the mathematical relationship has been
`applied (a practical application). Additionally, that tangible embodiment is limited by the claimed structure and would not
`cover all substantial practical uses of the mathematical relationship. The claim would be eligible for patent protection.
`(b) On the other hand, a claim that is directed to a machine (‘What is claimed is a machine that operates in accordance
`with F=ma.”) and includes no tangible structural elements under the broadest reasonable interpretation, covers the
`operating principle based on a mathematical relationship with no limits on the claim scope. Thus, as no tangible
`embodiment is claimed, there would be no evidence of a practical application. The claim would wholly embrace the
`mathematical concept of F=ma and would not be eligible subject matter.
`(c) As another example, a claim to a non—transitory, tangible computer readable storage medium per se that possesses
`structural limitations under the broadest reasonable interpretation standard to qualify as a manufacture would be patent-
`eligible subject matter. Adding additional claim limitations to the medium, such as executable instructions or stored data,
`to such a statutory eligible claim would not render the medium non-statutory, so long as the claim as a whole has a real
`world use and the medium does not cover substantially all practical uses of a judicial exception. The claim as a whole
`remains a tangible embodiment and qualifies as a manufacture. As explained above, the additional claim limitations would
`be evaluated in terms of whetherthey distinguish over the prior art.
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`B. Practical Application of Processes (Methods)
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`The Supreme Court in Bilski v. Kappos, 561 U.S. _, 130 S. Ct. 3218, 95 USPQ2d 1001 (2010), clarified the requirements fora
`claim to be a statutory process. Not every claimed method qualifies as a statutory process. A process claim, to be statutory
`under 35 U.S.C. 101 [mgeg—9015-ag9x—I.html#d0e302316) , must be limited to a particular practical application. This ensures that
`the process is not simply claiming an abstract idea, or substantially all practical uses of (preempting) a law of nature, or a
`physical phenomenon. See MPEP § 2106.01 (s2106.htmI#d0e198001) for further guidance regarding subject matter eligibility
`determinations during examination of process claims that involve laws of nature/natural correlations.
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`A claim that attempts to patent an abstract idea is ineligible subject matter under 35 U.S.C. 101 (m§p—9015—apgx—
`I.html#d0e302376) . See Bilski, 561 U.S. at _, 130 S. Ct. at 3230, 95 USPQ2d at 1009 (“[A]l| 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 Bilski, 561 U.S. at _, 130 S. Ct. at 3225, 95 USPQ2d at 1006 (citing Le
`Roy v. Tatham, 55 U.S. (14 How.) 156, 174-175 (1853)).
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`Bilski reaffinned 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 fomiula to a known stmcture or process may well be deserving of patent
`protection."' See Bilski, 561 U.S. at _, 130 S. Ct. at 3230, 95 USPQ2d at 1010 (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 transfonnative
`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 patentab|e." See Bilski, 561 U.S. at _, 130 S. Ct. at 3231, 95 USPQ2d at 1010. Moreover, the fact that the steps of a
`claim might occur in the "real world" does not necessarily save it from a 35 U.S.C. 101 {mg};-9015-aggx-I.htmI#d0e3023761
`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.
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`Consistent with the foregoing, Bilski holds that the following claim is abstract:
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`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:
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`(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.
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`Specifically, the Court explains:
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`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 Flaok. 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.
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`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. Claims 1-9 in Bilski are
`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 35 U.S.C. 101 [mQeg—9015—aQQx—|.htm|#d(]e302376) 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:
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`1. A method of marketing a product, comprising:
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`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.
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`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. See In re Bilski, 545 F.3d 943, 954, 88 USPQ2d 1385, 1391 (Fed. Cir. 2009) (stating that “[a] claimed
`process is surely patent—eligible under § 101 (mpep-9015-appx-|.htm|#d0e302376)_if: (1) it is tied to a particular machine or
`apparatus, or (2) it transforms a particular article into a different state or thing."); and Bilski, 561 U.S. at _, 130 S. Ct. at 3227,
`95 USPQ2d at 1007 (stating, “This Court's precedents establish that the machine- or-transforrnation test is a useful and important
`clue, an investigative tool, for detennining whether some claimed inventions are processes under § 101 (mQeQ-9015-aQQX-
`l.html#dDe302376) . The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible
`‘process.”’).
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`While the Supreme Court in Bilski did not set forth detailed guidance, there are many factors to be considered when determining
`whetherthere 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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`Where the claim is written in the form of a method and is potentially a patentable process, as defined in 35 U.S.C. 100(b) (mg?
`9015-appx-I.htmI#d0e302350) , the claim is patent-eligible so long as it is not disqualified as one of the exceptions to 35 U.S.C.
`101 (mpep-9015-apgx-l.html#d0e302376) ‘s broad patent-eligibility principles; i.e., laws of nature, physical phenomena, and
`abstract ideas.
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`Taking into account the following factors, the examiner should determine whether the claimed invention, viewed as a whole, is
`disqualified as being a claim to an abstract idea. Relevant factors—both those in favor of patent-eligibility and those against such
`a finding—should be weighed in making the determination. Factors that weigh in favor of patenteligibility satisfy the criteria of the
`machine<)r—transformation test or provide evidence that the abstract idea has been practically applied. 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. Each case will present different factors, and it is likely that only some of the factors will be present in
`each application. It would be improper to make a conclusion based on one factor while ignoring other factors.
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`With respect to the factors listed below, a “fieldof-use” limitation does not impose actual boundaries on the scope of the claimed
`invention. A field-of-use limitation merely indicates that the method is for use in a particular environment, such as “for use with a
`machine” or "for transforming an article", which would not require that the machine implement the method orthat the steps of the
`method cause the article to transform. A field-of-use limitation does not impose a meaningful limit on the claimed invention.
`Insignificant “extra—solution” activity means activity that is not central to the purpose of the method invented by the applicant. For
`example, gathering data to use in the method when all applications of the method would require some form of data gathering
`would not impose a meaningful limit on the claim.
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`1. Factors To Be Considered in an Abstract Idea Determination of a Method Claim
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`(a) Whether the method involves or is executed by a particular machine or apparatus
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`“The machine-or-transfonnation test is a useful and important clue, and investigative tool, for detennining whether some claimed
`inventions are processes under
`101 m e -9015-a
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`Bilski V. Kappos, 561 U.S. _, _, 130 S. Ct.
`3218, 3227, 95 USPQ2d 1001, 1007 (2010). If so, the claims are less likely to be drawn to an abstract idea; if not, they are more
`likely to be so drawn. With respect to these factors, a “machine” is a concrete thing, consisting of parts, or of certain devices and
`combination of devices. This includes every mechanical device or combination of mechanical powers and devices to perform
`some function and produce a certain effect or result. This definition is interpreted broadly to include electrical, electronic, optical,
`acoustic, and other such devices that accomplish a function to achieve a certain result. An “apparatus" does not have a
`significantly different meaning from a machine and can include a machine or group of machines or a totality of means by which a
`designated function or specific task is executed.
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`Where a machine or apparatus is recited or inherent in a patent claim, the following factors are relevant:
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`(a) The particularity or generality of the elements of the machine or apparatus; i.e., the degree to which the machine in the claim
`can be specifically identified (not any and all machines). Incorporation of a particular machine or apparatus into the claimed
`method steps weighs toward eligibility.
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`For computer implemented processes, the “machine” is often disclosed as a general purpose computer. In these cases, the
`general purpose computer may be sufficiently “particular” when programmed to perfonn the process steps. Such programming
`creates a new machine because a general purpose computer, in effect, becomes a special purpose computer once it is
`programmed to perform particular functions pursuant to instructions from program software. In re Alappat, 33 F.3d 1526, 1545, 31
`USPQ 1545, 1558 (Fed. Cir. 1994); see also Ultramercial v. Hulu, 657 F.3d 1323, 1329, 100 USPQ2d 1140, 1145 (Fed. Cir. 2011)
`(stating “a programmed computer contains circuitry unique to that computer“). However, "adding a 'computer—aided‘ limitation to a
`claim covering an abstract concept, without more, is insufficient to render [a] patent claim eligible" where the claims "are silent as
`to how a computer aids the method, the extent to which a computer aids the method, or the significance of a computer to the
`performance of the method." DealerTrack v. Huber, 674 F.3d 1315, 1333, 101 USPQ2d 1325, 1339-40 (Fed. Cir. 2012). To qualify
`as a particular machine under the test, the claim must clearly convey that the computer is programmed to perform the steps of
`the method because such programming, in effect, creates a special purpose computer limited to the use of the particularly
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`claimed combination of elements (i.e., the programmed instructions) performing the particularly claimed combination of functions.
`If the claim is so abstract and sweeping that performing the process as claimed would cover substantially all practical
`applications of a judicial exception, such as a mathematical algorithm, the claim would not satisfy the test as the machine would
`not be sufficiently particular.
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`(b) Whether the machine or apparatus implements the steps of the method. Integral use of a machine or apparatus to achieve
`perfonnance of the method weighs toward eligibility, as compared to where the machine or apparatus is merely an object on
`which the method operates, which weighs against eligibility. See Cybersource V. Retail Decisions, 654 F.3d 1366, 99 USPQ2d
`1960 (Fed. Cir. 2011) (“We are not persuaded by the appellant's argument that claimed method is tied to a particular machine
`because it ‘would not be necessary or possible without the Internet.’ .
`.
`. Regardless of whether "the Internet" can be viewed as a
`machine, it is clearthat the Internet cannot perfonn the fraud detection steps of the claimed method").
`
`(c) Whether its involvement is extrasolution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus
`imposes meaningful limits on the execution of the claimed method steps. Use of a machine or apparatus that contributes only
`nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a fie|dof—use limitation)
`would weigh against eligibility. See Bilski, 561 U.S. at _138 S. Ct. at 3230, 95 USPQ2d at 1009 (citing Parker v. Flook, 437
`U.S. 584, 590, 198 USPQ 193, 197 (1978)), and Cybersource v. Retail Decisions, 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694
`(Fed. Cir. 2011)(citations omitted) (“[N]othing in claim 3 requires an infringer to use the Intemet to obtain that data .
`.
`. [t]he
`lntemet is merely described as the source of the data. We have held that mere ‘[data-gathering] step[s] cannot make an
`othenlvise nonstatutory claim statutory.” 654 F.3d at 1375, 99 USPQ2d at 1694 (citation omitted).).
`
`(b) Whether performance of the claimed method results in or othenrvise involves a transfomiation of a
`particular article
`
`“['Ijransformation and reduction of an article ‘to a different state or thing’ is the clue to patentability of a process claim that does
`not include particular machines." Bilski v. Kappos, 561 U.S. _,_, 130 S. Ct. 3218, 3227, 95 USPQ2d 1001, 1007 (2010)
`(quoting Goftschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673, 676 (1972). If such a transformation exists, the claims are less
`likely to be drawn to an abstract idea; if not, they are more likely to be so drawn.
`
`An “article" includes a physical object or substance. The physical object or substance must be particular, meaning it can be
`specifically identified. An article can also be electronic data that represents a physical object or substance. For the test, the data
`should be more than an abstract value. Data can be specifically identified by indicating what the data represents, the particular
`type or nature of the data, and/or how or from where the data was obtained.
`
`“Transformation” of an article means that the “article” has changed to a different state or thing. Changing to a different state or
`thing usually means more than simply using an article or changing the location of an article. A new or different function or use
`can be evidence that an article has been transfomred. Manufactures and compositions of matter are the result of transforming
`raw materials into something new with a different function or use. Purely mental processes in which thoughts or human based
`actions are “changed" are not considered an eligible transformation. For data, mere "manipulation of basic mathematical
`constructs [i.e,] the paradigmatic ‘abstract idea'," has not been deemed a transformation. Cybersource v. Retail Decisions, 654
`F.3d 1366, 1372 n.2, 99 USPQ2d 1690, 1695 n.2 (Fed. Cir. 2011)(quoting In re Wannerdam, 33 F.3d 1354, 1355, 1360 (Fed. Cir.
`1994)). However, transformation of electronic data has been found when the nature of the data has been changed such that it has
`a different function or is suitable for a different use. In re Bilski, 545 F.3d 943, 962-63, 88 USPQ2d 1385, 1399 (Fed. Cir. 2009)
`(aff'cl sub nom Bilski v. Kappos, 561 U.S. _, 130 S. Ct. 3218, 95 USPQ2d 1001 (2010)).
`
`Where a transformation occurs, the following factors are relevant:
`
`(a) The particularity or generality of the transformation. The Supreme Court has stated that an invention comprising a process of
`“‘tanning, dyeing, making waterproof cloth, vulcan