Summary of Preliminary Examination Instructions in view of Alice Corp
- Step 1 is to determine if the claim is a process, machine, manufacture or composition of matter.
· If the answer is NO then the claim is not eligible subject matter.
· If the answer is YES, we move on to step 2, which comes in two parts: step 2A and step 2B.
- Step 2A is to determine if the claim is directed to a law of nature, a natural phenomenon, or an abstract idea (collectively, judicial exceptions).
· If the answer is YES to step 2A we move on to step 2B
· If the answer is NO, the claim as a whole is eligible subject matter.
· A claim is directed to a judicial exception when a law of nature, natural phenomenon, or an abstract idea is recited, set forth, or described in (but not when it only involves an abstract concept) the claims. Some example of judicial exceptions include: mathematical formulas, nature-based products that do not exhibit markedly different characteristics from its naturally occurring counterparts in their natural state, an isolated DNA, fundamental economic practices, and certain methods of organizing human activities.
- Step 2B is to determine whether there is an “inventive concept,” meaning if there is any element, or combination of elements, in the claim sufficient to ensure that the claim amounts to significantly more than the judicial exception.
· If the answer is YES to step 2B, the claim is eligible.
· If the answer is NO, the claim should be rejected under 35 U.S.C. 101.
· A claim amounts to significantly more than the judicial exception when the claim includes, but is not limited to, improvements to another technology; improvements to the functioning of the computer itself; applying the judicial exception with, or by use of a particular machine; effecting a transformation or reduction of a particular article to a different state or thing; and adding a specific limitation other than what is routine and conventional in the field. Limitations that were not found to be “significantly more” include, but are limited to, simply appending well-understood routine and conventional activities previously known to the industry to the judicial exception, such as using a generic computer to perform generic computer functions to implement an abstract idea.