BitLaw

Example 10 (2): Pomelo Juice: Process Claim That Is Directed To An Exception And Product Claim That Is Not Directed To An Exception

This example illustrates the eligibility analysis of a process (claim 1) that focuses on a nature-based product and a product (claim 2) that is nature-based but is not directed to an exception because it has markedly different characteristics from its naturally occurring counterpart.

Background:

The pomelo tree (Citrus maxima) is a naturally occurring tree that is native to South and Southeast Asia. Pomelo fruit is often eaten raw or juiced, and has a mild grapefruit-like flavor. Naturally occurring pomelo juice spoils over the course of a few days even when refrigerated, due to the growth of bacteria that are naturally present in the juice. The specification indicates that suitable preservatives for fruit juices are known in the art, and include naturally occurring preservatives such as vitamin E, and non- naturally occurring preservatives such as preservative X. The specification defines an “effective amount” of these preservatives as an amount sufficient to prevent juice from spoiling for at least three weeks, e.g., by retarding the growth of bacteria in the juice.

Claims:

1. A method comprising providing a pomelo fruit.

2. A beverage composition comprising pomelo juice and an effective amount of an added preservative.

Analysis of Claims:

These claims are analyzed for eligibility in accordance with their broadest reasonable interpretation. All of the claims are directed to a statutory category, e.g., a process or composition of matter (Step 1: YES).

Claim 1: Ineligible.

Although the claim is a process claim, it has been drafted such that there is no difference in substance from a product claim to the pomelo fruit itself. Accordingly, this process claim is focused on the pomelo fruit per se (a nature-based product), and must be analyzed for markedly different characteristics, to determine whether the claimed pomelo fruit is a “product of nature” exception. There is no indication in the specification that the claimed fruit has any characteristics (structural, functional, or otherwise) that are different from the naturally occurring fruit provided by pomelo trees. Thus, the claimed fruit does not have markedly different characteristics from what occurs in nature, and is a “product of nature” exception. Accordingly, the claim is directed to an exception (Step 2A: YES). Because the claim does not include any additional features that could add significantly more to the exception (Step 2B: NO), the claim does not qualify as eligible subject matter, and should be rejected under 35 U.S.C. § 101.

Claim 2: Eligible.

Because the claim is a nature-based product, i.e., a combination of a naturally occurring substance (pomelo juice) with an added preservative, the nature-based combination is analyzed to determine whether it has markedly different characteristics from any naturally occurring counterpart(s) in their natural state. In this case, there is no naturally occurring counterpart to the claimed combination, so the combination is compared to the individual components as they occur in nature. The specification indicates that the preservative can be natural or non-natural in origin, but that regardless of its origin, when an effective amount of preservative is mixed with the pomelo juice, the preservative affects the juice so that it spoils much more slowly (spoils in a few weeks) than the naturally occurring juice by itself (spoils in a few days). This property (slower spoiling) of the claimed combination is markedly different from properties of the juice by itself in nature. Accordingly, the claimed combination has markedly different characteristics, and is not a “product of nature” exception. Thus, the claim is not directed to an exception (Step 2A: NO), and qualifies as eligible subject matter.