USPTO's Section 101 Examples for Subject Matter Eligibility

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The patent and trademark office has provided a total of 27 examples that can be used to understand how Section 101 should be applied in particular fact situations. Because these examples are hard to find and use, they have been separated from their original source document and placed into separate pages in BitLaw. More information on Section 101, and other resources for analyzing these issues, can be found on Bitlaw's Section 101 Index.

Examples

The 27 examples below were provided by the USPTO in three batches. The first batch, examples 1-8, were provided by the USPTO on January 27, 2015. Examples 9-18 were actually provided before examples 1-8--on December 16, 2014. The numbering of these examples is taken from Appendix 2 of the July 2015 Update on Subject Matter Eligibility. As a result, examples 9-18 in the present list reflect examples 1-10 in the original PDF document provided on December 16, 2014. The final set of examples, examples 21-27, were provided in that July 2015 Update in the same Appendix 2.

The following table identifies these 27 different examples. The five columns in this table identify to following information: the example number and subject matter for the example; the relevant court case upon which the analyzed claims are based; the relevant exception (abstract idea, product of nature, or none); whether or not the example found the claims to be patent eligible, and a summary of the analysis found in each example. This is a dynamic table, which can be sorted by clicking on column headers, or filtered by entering text into the search box.

Example Relevant Case Step 2A: Exception Eligible? Notes
Example 1:
Removing Malicious Code From Email Messages
None (not an abstract idea) Yes Computer readable medium is an article of manufacture. Software code on the medium that removes computer virus "inextricably tied to computer technology," and therefore not abstract
Example 2:
Composite Web Page (DDR Holdings)
DDR Holdings None (not an abstract idea) Yes Claim is not abstract because it does not merely recite performance of some business practice known from the pre-Internet world, but is instead necessarily rooted in computer technology to overcome a problem arising in the realm of computer networks . Since this is not abstract, no need to analyze inventive concept.
Example 3:
Halftoning--Digital Image Processing
Research Corp. Technologies Abstract Idea (Math) Yes Claims use mathematical operation to generate a mask, and therefore is directed toward an abstract idea. But the mask is used to convert a binary image array into a halftoned image in a way that uses less memory and faster computation time without sacrificing quality. These are improvements in the technology of digital image processing. Also explains that steps do more than retrieve (gather) and combine data using a computer.
Example 4:
Global Positioning System in Mobile Device
SiRF Technology Abstract Idea (Math) Yes Claims recite mathematical operations and therefore are directed to an abstract idea. Use of CPU, memory, and clock are insufficient to save claim. However, claim is limited to mobile device with GPS receiver, wireless transceiver, and display. This, plus improvement to existing technology (global positioning) make claim eligible.
Example 5:
Generating device profile for a scanner (Digitech)
Digitech Image Tech Abstract Idea (Math) No Claim only generates data using mathematical techniques (so is directed toward an abstract idea), and then combines data into a "profile." Without any additional elements beyond idea of gathering and combining data, claim is ineligible.
Example 6:
Game of Bingo (Planet Bingo)
Planet Bingo Abstract Idea (Organizing Human Activity) No Managing Bingo game can be performed mentally and is therefore similar to the organizing of human activity of Alice. Additional generic computer components perform basic functions so there is no inventive concept.
Example 7:
E‐Commerce With Transaction Performance Guaranty (buySAFE)
buySAFE Abstract Idea (Fundemental Economic Practices) No Invention is to guaranty the performance of a transaction over a computer program and therefore creates a contractual relationship similar to economic practices of Bilski. Rest of claim is only generic computer and computer network performing basic functions.
Example 8:
Display Ads in Exchange for Viewing Desired Material (Ultramercial)
Ultramercial Abstract Idea (Fundemental Economic Practices) No Claims use ads "as an exchange or currency" and relate to commercial practices that the courts have found to be abstract. The details (11 steps) in the claim further describe the abstract idea, but do not make it less abstract. Additional limitations are data gathering or other pre-solution activity or limitations to a particular technological environment.
Example 9:
Gunpowder & Fireworks
None (Product of Nature) Yes Claim is to gunpowder--a mixture of three naturally occurring substances, but there are no naturally occurring counterparts to the combination. The explosive property of the mixture has a markedly different characteristic of the non-explosive quality of the components, therefore claim is not directed toward product of nature. Claim to fireword including cardboard body is clearly not directed to nature-based products, and it is not necessary to apply the markedly different analysis.
Example 10:
Pomelo Juice
Product of Nature and None No and Yes Claim to simply providing a known fruit is no different than a claim to the fruit--there is no difference in characteristics between fruit provided in claim and fruit from tree. This claim is ineligible. However, a claim to a beverage of fruit juice and an effective amount of added preservative creates a beverage that spoils more slowly and is markedly different from the juice in nature. This claim is not directed to a product of nature.
Example 11:
Amazonic Acid, Pharm. Compositions, & Methods of Treatment
Product of Nature and None No and Yes Claim to chemical purified from leaves of a tree, two derivatives (one is functionally different from chemical in nature), and use of chemical to treat disease. Claim to purified version of chemical is not eligibile as it has no characteristics that are markedly different. This is a product of nature, and no additional claim elements provide inventive concept. Both derivatives are eligible as they are at least structurally different from chemical in nature and are therefore not directed toward a product of nature. In addition, compositions with different characteristics are also eligible. Finally, use of purified chemical to treat particular medical conditions is not directed to an exception.
Example 12:
Purified Proteins
Product of Nature and None No and Yes Antibiotic protein is found in nature. Processes are discovered that yield the same protein (claim to protein alone is ineligible as product of nature.). Process creates puriified version of protein with different characteristics than natural protein (claims to purified protein eligible--different characteristics than natural protein). Proteins in forms not found in nature are also patentable because of a marked difference.
Example 13:
Genetically Modified Bacterium
Chakrabarty Product of Nature and None No and Yes One claim was to a plasmit that might exist in a bacterium to decrade a hydrocarbon. Because the claim covers plamid that is no different than that occurring in nature, the product of nature exception applies, and there are no additional features in the claim. This claim is ineligible. The claim to a bacterium that has plasmids that degrade two different hydrocarbons is eligible--nature has no such bacterium so the claim is to something with markedly different characteristics.
Example 14:
Bacterial Mixtures
Funk Brothers Product of Nature and None No and Yes Claim to mixture of a plurality of non-inhibitive (but otherwise unidentified) species of Rhizobium bacteria is not eligible as the specification did not indicate that the mixture has any markedly different characteristics from what occurs in nature (as in Funk Brothers). A mixture of two identified Rhizobium bacteria that the specification has identified as changing the biological function of one bacteria is eligible as the biological difference "rises to the level of a marked difference."
Example 15:
Nucleic Acids
Product of Nature and None No and Yes Claims are to an "isolated nucleic acid." Claim only to a sequence (severed to isolate from chromosome) is not eligible under Myeria--not different enough to be markedly different. When sequence has been modified so it is different than that in nature, it is eligible as markedly different.
Example 16:
Antibodies
Product of Nature and None No and Yes Antibody to a protein on a bacteria is found in animals but not humans. A claim to the antibody alone is the same as found in nature, and is ineligible as a product of nature. A claim to the "human antibody" is eligible, as no human antibodies are naturally occurring. Also antibodies that are structurally different than natural antibodies are eligible.
Example 17:
Cells
Product of Nature and None No and Yes Specification describes growing human pacemaker cell through stem cells. A claim to an isoloated human pacemaker cell is ineligible because in encompasses naturally occurring cells (product of nature). Same is true to claim of cells in a container (container is well-understood and conventional and does not add an inventive concept). Some cells express a protein market that is not found in nature. Claims relating to these cells are eligible (markedly different).
Example 18:
Food
Product of Nature and None No and Yes Invention is use of two different bacteria to produce goat milk yoghurt. Use of both bateria creates better yoghurt (faster fermentation, less fat, better flavor). A claim merely to the two bateria (standing alone) as a "kit" is ineligible, as each bacteria standing alone has no markedly different characteristics than they did in nature. A claim to the mixture of the two bacteria and goats milk is eligible, because of the markedly different differences.
Example 19:
Hip Prosthesis
Product of Nature
Streamlined
Yes A hip prosthesis that has a surface coataed with a naturally occurring mineral recites the mineral, but clearlydoes not seek to tie up the mineral. This claim qualifies as eligible without full analysis (using the streamlined analysis).
Example 20:
Robotic Arm Assembly
Abstract Idea (Math)
Streamlined
Yes A claim to a robotic arm assembly that can adjust velocity (a mathematical relationship between position and time) recites math, but clearlydoes not seek to tie up this mathematical relationship and qualifies as eligible without full analysis (using the streamlined analysis).
Example 21:
Transmission Of Stock Quote Data
Simpleair CBM Abstract Idea (mental steps, idea of itself) No and Yes Claim to a server that receives stock quote data, filters data, formats data into an alert, and transmits the alert is not eligible as an abstract idea. These steps can be performed mentally (PTO calls it an "idea of itself" without explanation). Extra claim elements are generic computer components performing generic functions or the Internet, which are not enough (or field of use limitations). Second claim adds actions that occur at subscriber computer where alert activates an app that connects to a data source identified in the alert. This second claim is still directed to abstract idea, but hte claim as a whole now amounts to significantly more than organizing and comparing data. This is an Internet-centric problemlike that in DDR Holdings.
Example 22:
Graphical User Interface For Meal Planning
Dietgoal Innovations Abstract Idea (Mental Steps) No Claim was to a a user interface, a database, and a "meal builder" which caused meals to be displayed on the user interface. Meal planning is a mental process of managing behavior, and as such is abstract (compared to SmartGene and Cybersource). As database and interface provide only basic computer functions, the claim does not amount to significantly more than the abstract idea.
Example 23:
Graphical User Interface For Relocating Obscured Textual Information
Abstract Idea (Math) and None Yes and No Invention related to automatically re-formatting obscured windows on a computer's user interface. Claims that only calculated window areas and a scaling factor are directed toward abstract ideas (math) and have no limitations beyond the math. Method that relocates text when obscured without defining the math are not directed toward an abstract idea at all--necessarily rooted in computer technology. Similar claim that includes math is directed to abstract idea (math), but contains significantly more than the math when viewed as an ordered combination because limitations improves the functioning of the display and therefore are eligible.
Example 24:
Updating Alarm Limits
Flook Abstract Idea (Math) No Method covers calculating alarm limit either by hand or by computer. This is math, so claim is directed toward abstract idea. Additional claim elements do not create inventive concept. Determining value of process value is data gathering, and adjusting alarm limit is merely post-solution activity.
Example 25:
Rubber Manufacturing
Diehr Abstract Idea (Math) Yes Claim includes the Arrhenius equation (math), so are directed toward an abstract idea. Many of the individual claim steps are cited generally and perform basic functions, or are mere data gathering steps. When the claim is viewed as a whole it is seen that another technical field (rubber molding) is improved, making the claim eligible.
Example 26:
Internal Combustion Engine
Abstract Idea (Math)
Streamlined
Yes Claim is to an internal cumbustion enginer with a control system that determines rate of change of the throttle position and alters the position of the gas recirculation valve. While the claim relates to math (rate of change), the claim does not seek to tie up this mathematical relationship so others can't practice it. Plus there are meaninful relationships, and the math improves engine technology. Eligibility is self-evident--there is no need to perform the full analysis.
Example 27:
System Software ‐ BIOS
None
Streamlined
Yes Claim is to a method of loading BIOS into a computer system. Analysis indicates that computer processes involved are not directed toward any exception. Even if they were, claim elements "would clearly amount to significantly more" than an exception (example is unclear, but probably because of improvement to another technical field).