Section 101 Examples
Example 19: Hip Prothesis

This is an example provided by the U.S. Patent and Trademark Office for analyzing Section 101 patent subject matter eligibility issues. The example comes from the Computer Based Training (CBT) Materials provided by the USPTO in February 2015. Both examples 19 and 20 come from these materials, and are found in both the PDF version of the slides and the automated CBT provided by the USPTO. The numbering of these examples is taken from Appendix 2 of the July 2015 Update on Subject Matter Eligibility.

The index for all of the examples provided by the Patent and Trademark Office is found on BitLaw's Section 101 Index.

Example 19: Hip Prothesis

For purposes of efficient examination, a streamlined analysis can be used for claims that clearly do not seek to tie up any judicial exception

  • Such claims may recite an exception, but their eligibility will be self-evident, so no detailed analysis is needed
  • If there is doubt as to whether the claim seeks coverage for a judicial exception itself, perform a full analysis
See Examples 1 and 2 that follow

1. A hip prosthesis comprising:
a femoral component and
an acetabular cup,
wherein the acetabular cup has an inner concave surface for engaging the femoral component, and an outer convex surface for engaging a patient’s acetabulum, and
wherein the outer convex surface is coated with hydroxyapatite.

  • The claim recites a nature-based product (hydroxyapatite is a naturally occurring mineral).
  • However, the claim clearly does not seek to tie up the mineral. Instead, the claim is focused on the assembly of the femoral component and the cup that together form the hip prosthesis.
  • No need to perform the markedly different characteristics analysis on the mineral.

The claim qualifies as eligible subject matter without a full analysis.