1 P atent S ubject M atter E ligibility – Patentable Subject Matter in US Practice Dr. Hezy Saado,...

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Dr. Hezy Saado, Patent Attorney, www.drsaadopatents.com, [email protected], 972-52-4757290, 972-3-5220884 All Rights Reserved©

Patent Subject Matter Eligibility

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Patentable Subject Matter in US Practice

©כל הזכויות שמורות ליוצר, ד"ר חזי סעדו, עורך פטנטים

אין להעתיק או להפיץ מצגת זו או קטעים ממנה או לעשות בה שימוש בכל דרך או אמצעי, אלקטרוני או מכני, לרבות מערכות לאחסון ואחזור מידע, הקלטה, הדפסה או צילום, ללא אישור בכתב מהיוצר למעט לצורכי לימוד אישי בלבד.

http://www.drsaadopatents.com/

mailto:[email protected]

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35 U.S.C. 101 – Statutory Patentability

Whoever invents or discovers any new and useful process,machine, manufacture, or composition of matter, or any newand useful improvement thereof may obtain a patenttherefor, subject to the conditions and requirements of thistitle.

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“anything under the sun that is made by man”

Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) (quoting S.Rep. No. 1979, 82d Cong. 2d. Sess., 5 (1952))

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http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=us&vol=447&invol=303

http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=us&vol=447&invol=303



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Patent Subject Matter Eligibility - Patentable Subject Matter in US Practice

timeJudicial Exceptions: Patentable v. Not Patentable (Before Bilski)

Judicially recognized exceptions (laws of nature, physicalphenomena, abstract ideas)

– not patentable

Tangible, Concrete and Useful application Mathematical algorithm (e.g., software, business method)

– patentable– not patentable

Mathematical algorithm (e.g., software, business method)

– patentable(every process, e.g.,chemical, physical, isessentially analgorithm)

?

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Judicial Exceptions: Patentable v. Not Patentable

Machine or Transformation Test (M-or-T)


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Not Patentable:

Judicially recognized exceptions

(laws of nature,

physical phenomena,

abstract ideas)

Patentable:

Particular practical application of a judicial

exception

(Bilski v. Kappos)

V.



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Factors Weighing Toward Eligibility:

• Recitation of a machine or transformation (either express or inherent).o Machine or transformation is particular. o Machine or transformation meaningfully limits the execution of the steps. o Machine implements the claimed steps. o The article being transformed is particular. o The article undergoes a change in state or thing (e.g., objectively different function or use). o The article being transformed is an object or substance.

• The claim is directed toward applying a law of nature. o Law of nature is practically applied. o The application of the law of nature meaningfully limits the execution of the steps.

• The claim is more than a mere statement of a concept. o The claim describes a particular solution to a problem to be solved. o The claim implements a concept in some tangible way. o The performance of the steps is observable and verifiable.

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Factors Weighing Against Eligibility:• No recitation of a machine or transformation (either express or inherent).• Insufficient recitation of a machine or transformation.

o Involvement of machine, or transformation, with the steps is merely nominally, insignificantly, or tangentially related to the performance of the steps, e.g., data gathering, or merely recites a field in which the method is intended to be applied.

o Machine is generically recited such that it covers any machine capable of performing the claimed step(s).

o Machine is merely an object on which the method operates. o Transformation involves only a change in position or location of article. o “Article” is merely a general concept.

• The claim is not directed to an application of a law of nature.

o The claim would monopolize a natural force or patent a scientific fact; e.g., by claiming every mode of producing an effect of that law of nature. o Law of nature is applied in a merely subjective determination. o Law of nature is merely nominally, insignificantly, or tangentially related to the performance of the steps.

• The claim is a mere statement of a general concept.o Use of the concept, as expressed in the method, would effectively grant a monopoly over the concept. o Both known and unknown uses of the concept are covered, and can be performed through any existing or future-devised machinery, or even without any apparatus. o The claim only states a problem to be solved. o The general concept is disembodied. o The mechanism(s) by which the steps are implemented is subjective or imperceptible. P

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• Recitation of a machine or transformation (either express or inherent).o Machine or transformation is particular.

o Machine or transformation meaningfully limits the execution of the steps.

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√+Χ

Χ√

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• Recitation of a machine or transformation (either express or inherent).o Machine implements the claimed steps.

o The article being transformed is particular.

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√+Χ

Χ √



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• Recitation of a machine or transformation (either express or inherent).o The article undergoes a change in state or thing (e.g., objectively different function or use).

o The article being transformed is an object or substance.

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LEFT RIGHT√

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Χ √



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• The claim is directed toward applying a law of nature. o Law of nature is practically applied.

o The application of the law of nature meaningfully limits the execution of the steps.

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Χ √

Χ √



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• The claim is more than a mere statement of a concept. o The claim describes a particular solution to a problem to be solved.

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Χ√



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• The claim is more than a mere statement of a concept. o The claim implements a concept in some tangible way.

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• The claim is more than a mere statement of a concept. o The performance of the steps is observable and verifiable.

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Χ √

√Χ



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Patentable OR Not Patentable

(that is the question)

A Method of Authenticating the Origin of a Medicinal Herb


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Examples

• Obtain information on the source of the seeds of the medicinal herb;

• Keep track on the growth of the herb, packaging and shipping;

• Register the information on a computer database and update.



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Patentable OR Not Patentable(that is the question) Examples

A Method of Authenticatingthe Origin of a Medicinal Herb


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1) Changes only the location of the data.

2) Can be transformed with any household computer.

3) Covers an entire field of medicinal herbs (preempts).

4) No practical application.

Why?

LEFT RIGHT√

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The article undergoes a change in state or thing (e.g., objectively differentfunction or use).



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• Use computer database to receive information and transform it to verify the origin of the medicinal herb and legal processing;

• Obtain information on the source of the seeds of the medicinal herb;

• Keep track on the growth of the herb, packaging and shipping;

• Register the information on a computer database and update;

• Retrieve the information and provide legal proof of the authenticity of the medicinal herb.


A Method of Authenticating the Origin of a Medicinal Herb


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A Method of Authenticatingthe Origin of a Medicinal Herb

US 8,818,820



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Computer readable medium including instructionsfor rewarding a user for sharing digital content by:

• Receiving from a user a request to share content;

• Retrieving the content;

• Transmitting the content to one or more destinations for sharing;

• Rewarding the user.


Method of Coordinating Professional Services


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Method of CoordinatingProfessional Services


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1) Includes transitory (carrying signal) and non-transitory tangible media.

2) Computer-readable medium covers also signals per se.

3) Computer-readable storage medium includes also solid-state memories, optical and magnetic disks and carrier wave signals.

Why?

√+Χ

Machine or transformation is particular.



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Method of Coordinating Professional Services


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Non-transitory computer readable medium includingInstructions for rewarding a user for sharing digital contentby:

• Receiving from a user a request to share content;

• Retrieving the content;

• Transmitting the content to one or more destinations for sharing;

• Rewarding the user.

US 2012/0290308



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Declining Balance of Financial Calculation with noRemainder


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Method of financial calculation for dividing a sum to equalportions as follows:

• Divide an amount by ‘n’ to result in a quotient;

• Adjust the quotient with certain number of decimal places;

• Subtract the adjusted quotient from the amount;

• Decrement ‘n’ by 1;

• Store the subtotal as the amount and repeat dividing until ‘n’<2.



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Declining Balance of FinancialCalculation with no Remainder


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1) Method includes only mental steps.

2) Does not recite subject matter being transformed.

3) Is not tied to a particular machine.

Why?

Χ√

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Machine or transformation meaningfully limits the execution of the steps.



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Method of financial calculation for dividing a sum to equalportions using a computer as follows:

• Divide an amount by ‘n’ to result in a quotient;

• Adjust the quotient with certain number of decimal places;

• Subtract the adjusted quotient from the amount;

• Decrement ‘n’ by 1;

• Store the subtotal as the amount and repeat dividing until ‘n’<2.




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1) Reciting a computer in the preamble is only nominal.

Why?

Χ√

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√+Χ

Machine implements the claimed steps.



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Computer implemented method of financial calculation fordividing a sum to equal portions as follows:

• Divide, by a computer, an amount by ‘n’ to result in a quotient;

• Adjust, by a computer, the quotient with certain number of decimal places;

• Subtract, by a computer, the adjusted quotient from the amount;

• Decrement, by a computer, ‘n’ by 1;

• Store, by a computer, the subtotal as the amount and repeat dividing until ‘n’<2.


US 8,859,258



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Workflow Visualization


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System for visualizing workflow that comprises:

• a first server with a workflow application that:

executes the workflow; and

provides workflow definition and execution state;

• a second server with a rendering application that:

loads static diagram that visualizes workflow;

annotates the static diagram with graphical elements;

adds script and overlay it on the graphical diagram; and

presents workflow as a flowchart with start and end

points;



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Workflow VisualizationPatent Subject Matter Eligibility - Patentable Subject Matter in US Practice

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Why?

Χ√

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1) Data structures not embodied in a computer medium are only descriptive.

2) They do not cause functional change in the computer.

3) No functional interrelationship between the data and computer.

4) Data structures are not functionally realized.



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Workflow VisualizationPatent Subject Matter Eligibility - Patentable Subject Matter in US Practice

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Why?

Χ √

The article being transformed is an object or substance.

5) Computer programs per se (description/expression of the program) are not physical “things”, i.e., computer components or “acts” being performed.

6) A computer medium encoded with a software program is computer element that defines structural and functional interrelationships.



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Workflow Visualization


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System having a processor for visualizing workflow thatcomprises:

• a first server having a memory with a workflow application that: executes the workflow; and provides workflow definition and execution state;

• a second server having another memory with a rendering application that: loads static diagram that visualizes workflow; annotates the static diagram with graphical elements; adds script and overlay it on the graphical diagram; and presents workflow as a flowchart with start and end points;

US 8,621,421



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Roulette Game


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Method of playing roulette game that comprises:

• Providing a roulette wheel with primary and supplemental wagering positions;

• Each position is marked with number and non-number index combination;

• Players place bets on two different boards, one for the primary, the second for the supplemental positions;

• Spinning the roulette and collecting bets;

• Calculating chances for winning for each bet; and

• Paying for each player according to the exact chances of his bet.



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Roulette GamePatent Subject Matter Eligibility - Patentable Subject Matter in US Practice

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Why?

Χ√

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1) No sufficient tie to a machine.

2) The machine is only an object upon which the process operates.

3) The use of the machine is only insignificant extra-solution.



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Roulette GamePatent Subject Matter Eligibility - Patentable Subject Matter in US Practice

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Why?

4) Elements of the game are only moved from one location to another.

LEFT RIGHT√

Χ




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Patentable OR Not Patentable(that is the question) ExamplesRoulette GamePatent Subject Matter Eligibility

- Patentable Subject Matter in US Practice

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• The background of the index is selected from three colors;

• The numbers are arranged in two sets of ten;

• The background of the numbers is selected from three colors;







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• The background of the index is selected from three colors;

• The numbers are arranged in two sets of ten;

• The background of the numbers is selected from three colors;


• The primary and supplemental boards are indexed corresponding to the indexes of the primary and supplemental positions;






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The claim implements a concept in some tangible way.

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Why?Patentable OR Not Patentable

(that is the question) ExamplesRoulette Game

5) Attempts to claim abstract idea in the form of a new set of

rules for playing roulette.



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Board of Appeals:

Invention includes physical steps –

• providing roulette wheel;

• providing betting boards;

• spinning the wheel;

• collecting bets;

• paying out winning wagers.

These steps are more than an abstract idea or insignificant extra-solution activity.



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US 8,517,384



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Method of Dealing Hands in 21 Game with One Dealer andMany Players


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• Dealer hands himself first two cards of a standard deck;

• Duplicates the rest of 50 cards for each player;

• Deals two cards for each player from the rest of 50 cards of the deck;

• Each player draws cards according to the 21 game;

• Dealer draws third card; and

• Awards winning players a prize according to game rules.

• Game is practically played electronically with computer system and software. Number of players is unlimited.



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21 Card GamePatent Subject Matter Eligibility - Patentable Subject Matter in US Practice

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Why?

Χ√

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1) No sufficient tie to a machine.

2) The machine is only an object upon which the process operates.

3) The use of the machine is only insignificant extra-solution.


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21 Card GamePatent Subject Matter Eligibility - Patentable Subject Matter in US Practice

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Why?

4) Elements of the game are only moved from one location to another.

LEFT RIGHT√

Χ


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The claim implements a concept in some tangible way.

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Χ

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Why?Patentable OR Not Patentable

(that is the question) Examples21 Card Game

5) Abstract idea in the form of a new set of rules for playing 21 card game.

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Board of Appeals:

• Abstract idea means a process can be practiced mentally entirely within the human mind.

• If not abstract, then the process is closely tied to apparatus (for example, deck of cards).

• Almost any non-abstract machine, transformation or object can be imagined mentally.

• This does not mean that they exist only in the mind.

• Otherwise, thought alone would infringe most methods.

Patentable OR Not Patentable(that is the question) Examples21 Card GamePatent Subject Matter Eligibility


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US 8,764,014

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Examples of general concepts include, but are not limited to:

• Basic economic practices or theories (e.g., hedging, insurance, financial transactions, marketing);

• Basic legal theories (e.g., contracts, dispute resolution, rules of law);

• Mathematical concepts (e.g., algorithms, spatial relationships, geometry);

• Mental activity (e.g., forming a judgment, observation, evaluation, or opinion);

• Interpersonal interactions or relationships (e.g., conversing, dating);

• Teaching concepts (e.g., memorization, repetition);

• Human behavior (e.g., exercising, wearing clothing, following rules or instructions);

• Instructing ‘‘how business should be conducted.’’

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real-world function

reduced to a particular practical application having a real world use

must not be wholly directed to a judicially recognized exception

limited to a particular practical application of a judicially recognized exception

how a judicially recognized exception is applied in a real world product or a process

not merely the result achieved by the invention

subject matter reduced to a particular practical application having a real world use

not purely mental

does not encompass substantially all uses (preemption) of a law of nature or a physical phenomenon P

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Thank You

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1 P atent S ubject M atter E ligibility – Patentable Subject Matter in US Practice Dr. Hezy Saado,...

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