Hallenbeck Interim Patent Subject Matter Eligibility Examination Instructions

Interim Patent Subject Matter Eligibility Examination Instructions

Published August 24, 2009James D. Hallenbeck

Copyright 2009 Schwegman, Lundberg & Woessner. P.A. All Rights Reserved.

Purpose of the Interim Instructions

• The state of the law in the United States with regard to patent subject matter eligibility is in flux pending a final decision from the Supreme Court in Bilski v. Kappos.

• The instructions published August 24, 2009 were provided to aid examiners at the United States Patent and Trademark Office in the interim until the decision in Bilski v. Kappos is issued.

• These instructions supersede the portions of the Manual of Patent Examining Procedure that conflict, such as MPEP §§ 2106(IV), 2106.01, and 2106.02.


Statutory Roots

• The interim instructions are rooted in 35 U.S.C. § 101 which provides the statutory guidance for what constitutes eligible statutory subject matter.

• 35 U.S.C. § 101– 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 therefor....


To make a long story short…

• The interim instructions focus on a two-step process for determining subject matter eligibility.

• Step 1– Is the claim directed to one of the four patent-eligible subject

matter categories: process, machine, manufacture, or composition of matter?

• Step 2– Does the claim wholly embrace a judicially recognized

exception, which includes abstract ideas, mental processes or substantially all practical uses (pre-emption) of a law of nature or a natural phenomenon, or is it a particular practical application of a judicial exception?


Step 1

• Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter?

– Process• an act, or series of acts or steps that are tied to a particular machine or

apparatus• OR• transforms a particular article into a different state or thing

– Machine• 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.


Step 1

• Is the claim directed to one of the four patent-eligible subject matter categories: process, machine, manufacture, or composition of matter?

– Manufacture• An article produced of raw or prepared materials giving to these materials

new forms, qualities, properties, or combinations, whether by hand-labor or by machinery.

– 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


Step 1

• Examples of claims not directed to one of the statutory categories (process, machine, manufacture, or composition of matter)– Signals and carrier waves (e.g., computer readable medium

defined to include transmitted signals);– Naturally occurring organisms;– Humans per se;– Contracts between parties;– A game defined by a set of rules;– A computer program per se;– A company.


Step 1

• Broadest reasonable interpretation of the claim– When a claim, read in light of what the specification would

teach to one of average skill upon reading it, supports a reading that encompasses both statutory and non-statutory embodiments, the claim is not patent-eligible.

– For example:• A claim is directed to a computer readable medium with instructions

encoded thereon….• The specification defines computer readable medium to include both

storage mediums and transitory mediums, such as transmitted signals– Not eligible

• Solution– Amend the claim to be limited to the storage mediums


Step 2

• Does the claim wholly embrace a judicially recognized exception, which includes abstract ideas, mental processes or substantially all practical uses (pre-emption) of a law of nature or a natural phenomenon, or is it a particular practical application of a judicial exception?

– Product claims (machines, manufactures, compositions of matter) patent-eligible unless they recite a judicial exception.

• If a judicial exception is recited, the claim is patent-eligible if it recites a practical application.

– For example a product claim to magnetism is not patent-eligible, but a product claim that covers magnetism only with regard to door latches is patent-eligible


Step 2

• A common issue today is with regard to system claims– If a claim recites a system, but fails to include tangible

limitations, the claim is not limited to a practical application.– For example, A system comprising a payment module and an

accounting module.• Solution

– Add tangible limitations to the claim such as at least one processor, a memory device, a data storage device, a network interface device, etc.


Step 2

• Does the claim wholly embrace a judicially recognized exception, which includes abstract ideas, mental processes or substantially all practical uses (pre-emption) of a law of nature or a natural phenomenon, or is it a particular practical application of a judicial exception?

• Process Claims– To be patent-eligible, a process claim must pass the Machine-or-

Transformation test, which ensures that the process is limited to a particular practical application. Thus, not every claimed method qualifies as a patent-eligible process.

• This is the controversial part that the Supreme Court is dealing with in Bilski v. Kappos.


Machine-or-Transformation Test

A claimed process is patent-eligible under § 101 if:(1) it is tied to a particular machine or apparatus, or(2) it transforms a particular article into a different state or thing.

But the machine or transformation must:• “impose meaningful limits on the claim’s scope”

– More than plugging in the machine to an electrical outlet;• “not merely be insignificant extra-solution activity”

– i.e., the machine or transformation must be central to the purpose of the claim.


Examination Procedure

• Determine the meaning of the claim• Determine if the claim as a whole falls within one of the four

categories of invention from Step 1 - process, machine, manufacture, or composition of matter

• Determine if the claim is directed to a particular practical application or a judicial exception – Step 2.

• If eligible, proceed to examine the claim on the merits.


Flow Chart


Process Flow Chart

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Example Claim 1 - Product

1. A hand tool, comprising:a handle; anda head coupled to the handle and having a striking

surface and a claw.

– Is the claim directed to a machine or manufacture?• YES – it is an article produced from prepared materials.

– Does the claim recite a judicial exception?• NO

– Patent Eligible.


Example Claim 2 - Product

2. A machine for evaluating search results, comprising:a microprocessor coupled to a memory;wherein the microprocessor is programmed to evaluate search results by:

sorting the results into groups based on a first characteristic;ranking the results based on a second characteristic using a mathematical formula; andcomparing the ranked results to a predetermined list of desired results to evaluated the success

of the search.• Is the claim directed to a machine?

– YES – it is a concrete thing, consisting of parts.• Does the claim recite a judicial exception?

– YES – the ranking step includes a mathematical algorithm.• Is the claim directed to a practical application?

– Yes – evidenced by the tangible embodiment of the microprocessor for evaluating search results, which is a real world use.

• Is the claim directed to substantially all practical applications of the mathematical algorithm?– NO – the algorithm is limited to use in evaluating search results in the particular claimed machine

that is programmed to perform certain steps. As there are other ways to use the algorithm, for example, with different programmed steps, not every use is covered by the claim.

• The claim is eligible.


Example Claim 3 – Product

3. A non-transitory computer-readable storage medium with an executable program stored thereon, wherein the program instructs a microprocessor to perform the following steps:

sorting the results into groups based on a first characteristic;ranking the results based on a second characteristic using a mathematical formula; andcomparing the ranked results to a predetermined list of desired results to evaluated the

success of the search.• Is the claim directed to a machine?

– YES – it is an article (a non-transitory storage medium) produced from raw or prepared materials.

• Does the claim recite a judicial exception?– YES – the ranking step includes a mathematical algorithm.

• Is the claim directed to a practical application?– Yes – evidenced by the tangible embodiment of the computer-readable storage medium.

• Is the claim directed to substantially all practical applications of the mathematical algorithm?– NO – there are other substantial uses of the algorithm than using it in evaluating search results

in a program stored on the particular claimed manufacture. As there are other ways to use the algorithm, for example, with different programmed steps, not every use is covered by the claim.



Example Claim 4 – Process

4. A method of evaluating search results, comprising:sorting the results into groups based on a first characteristic;ranking the results based on a second characteristic using a

mathematical formula; andcomparing the ranked results to a predetermined list of desired

results to evaluated the success of the search.

• Under the broadest reasonable interpretation, each step could be performed manually or on a programmed computer.

• Is there a particular machine?– NO – there is no machine explicitly recited or inherently required.

• Is there a transformation of an article or data representative of a article?– NO.

• The claim is not eligible.


Example Claim 5 – Process

5. A method of evaluating search results, comprising:sorting the results into groups based on a first characteristic;ranking the results based on a second characteristic using a mathematical

formula; andComparing, using a microprocessor, the ranked results to a predetermined list

of desired results to evaluated the success of the search.

• Under the broadest reasonable interpretation, the microprocessor must be programmed in a particular manner to perform the claimed comparing step.

• Is there a particular machine?– YES – the comparing requires a programmed microprocessor.

• Does the machine impose a meaningful limit and is it more than insignificant extra-solution activity?– YES – the step of comparing is central to the method.



Example Claim 6 - Process

6. A method of evaluating search results, comprising:Obtaining the search results by electronically downloading the results from

a database;sorting the results into groups based on a first characteristic;ranking the results based on a second characteristic using a mathematical

formula; andcomparing the ranked results to a predetermined list of desired results to

evaluated the success of the search.• Is there a particular machine?

– Yes – the downloading requires a programmed microprocessor• Does the machine required for downloading impose a meaningful limit and involve

more than insignificant extra-solution activity?– NO – the downloading is not central to the purpose of the method.

• Is there a transformation of an article?– No

• The claim is not eligible.

Hallenbeck Interim Patent Subject Matter Eligibility Examination Instructions

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