THE TWO-STEP 101 ANALYSIS
Is the claim directed to one of the four patent-eligible subject matter categories?
– Process, Machine, Manufacture, Composition of Matter
If not in one of the four categories, the claim is not eligible.
– Examples of claims that are not eligible:
• Transitory signals per se, humans per se, a company per se, or a set of instructions per se (such as a game or software per se)
A claim satisfying Step 1 is subject-matter eligible under 101 unless it wholly embraces a judicially recognized exception.
Does the claim wholly embrace a judicially recognized exception?
– Abstract Idea
– Law of Nature
– Natural Phenomena
– The exceptions also include, for example:
• Mental Processes
• Mathematical Algorithms
• Scientific Principles
If the claim is directed to a judicial exception itself, it is not eligible.
A particular practical application of a judicial exception is eligible.
PRODUCT CLAIM ANALYSIS
• Begin with the broadest reasonable interpretation (BRI) of the claim in view of the specification consistent with the interpretation those skilled in the art would reach. MPEP 2111
• Product Focus:
– Does the claim meet definitions of machine, manufacture or composition of matter?
– Is there a judicial exception recited in the claim?
The functional/non-functional distinction is not an inquiry under 101. The 101 inquiry is whether a claim directed to one of the four statutory categories is wholly directed to a judicial exception.
A tangible medium including a computer program should be evaluated to determine if there is a functional relationship between the computer program and the medium for purposes of distinguishing over prior art, not for subject matter eligibility.
PROCESS CLAIM ANALYSIS
• Begin with the broadest reasonable interpretation (BRI) of the claim in view of the specification consistent with the interpretation those skilled in the art would reach. MPEP 2111.
• Process Focus:
– Does the claim meet the machine or transformation (M-or-T) test? The claimed process must:
• (1) be tied to a particular machine or apparatus, or
• (2) particularly transform a particular article to a different state or thing.
• Two corollaries: the particular machine or transformation must involve:
– Meaningful limits
– More than insignificant “extra-solution” activity
• The Instructions supersede previous guidance on subject matter eligibility that conflicts with the Instructions, including MPEP 2106(IV), 2106.01 and 2106.02, as of 8/24/09.
– To determine subject matter eligibility, follow the “Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101”.
• Product claims are evaluated to determine if the claim is wholly directed to a judicial exception.
– Functional/nonfunctional descriptive material (FDM/NFDM) is evaluated for patentable distinction over the prior art. See MPEP 2112.01(III).
• All process (method) claims are evaluated with the M-or-T test.