Abstract Idea Test

If no Abstract Idea

• The claim is eligible — no further analysis needed
• Most modern software claims fail Step 1 (they are found to recite abstract ideas)
• STEP 2 — DOES IT ADD SIGNIFICANTLY MORE? (if Step 1 = yes): does the claim recite additional elements that transform the abstract idea into a patent-eligible application?
• SIGNIFICANTLY MORE must be beyond the abstract idea itself
• A specific technical improvement to computer technology (not just using a computer)
• NOT significantly more: applying the abstract idea on a generic computer
• Applying the abstract idea using conventional software steps
• Limiting to a particular field without changing the abstraction

Use of a Computer Alone is not Enough

• 'apply it with a computer' does not transform an abstract idea into eligible subject matter
• The computer must be doing something new or solving a technical problem in a new way.

Important Limitation

• An examiner cannot simply call something an 'abstract idea' without mapping it to one of these three groupings
• Vague assertions that a concept is 'abstract' without specificity are improper rejections under the 2019 PEG
• 2019 PEG STEP 2A PRONG 2 — PRACTICAL APPLICATION?: does the claim as a whole integrate the abstract idea into a practical application?
• This analysis considers: (a) whether the additional elements reflect a specific technological improvement (not just the abstract idea applied to a computer)
• (b) whether the claim applies a mathematical concept to a particular article or machine
• (c) whether the claim uses a particular machine or transformation (though this is not required post-Bilski)
• IF PRACTICAL APPLICATION = YES: the claim is eligible without reaching Step 2B
• STEP 2B — WELL-UNDERSTOOD, ROUTINE, CONVENTIONAL?: only reached if there is no practical application identified
• Are the additional elements beyond the abstract idea well-understood, routine, conventional (WURC) in the relevant field?
• If the additional elements are WURC, the claim is ineligible

Examiner Burden

• Examiners must provide evidence (prior art, admitted prior art, official notice) that the additional elements are WURC
• They cannot simply assert it.

Claims That Typically Survive

• (a) TECHNICAL IMPROVEMENTS: claims that address a specific technical problem in a computer or network in a new way (improved data compression, reduced processing latency, improved memory efficiency)
• Enfish v. Microsoft (Fed. Cir. 2016): self-referential table database structure improved computer memory — eligible
• (b) SPECIFIC HARDWARE COMBINATION: claims that tie the abstract idea to a specific hardware architecture beyond a generic computer
• (c) UNCONVENTIONAL COMPUTER OPERATIONS: claims where the specific computer operations are themselves the improvement, not just the result

Claims That Typically Fail

• (a) GENERIC COMPUTER + ABSTRACT IDEA: any mathematical or business method claim that simply says 'perform this on a computer' without a specific technical improvement
• (b) FINANCIAL AND COMMERCIAL METHODS: hedging, intermediated settlement, risk mitigation, bilateral trading — all abstract
• Alice itself: computerized method for mitigating financial settlement risk using escrow — abstract
• (c) DATA MANIPULATION WITHOUT TECHNICAL IMPROVEMENT: collecting data, analyzing data, displaying results — abstract unless the collection, analysis, or display itself is technically improved
• Elec. Power Grp. v. Alstom (Fed. Cir. 2016): monitoring and analyzing power grid data — abstract
• (d) MENTAL STEPS + COMPUTER: anything a human could do in their head and a computer just does faster
• (e) AI/MACHINE LEARNING CLAIMS: training a neural network using conventional backpropagation + standard training data — likely abstract
• Applying a model to generate predictions — likely abstract
• The specific ML architecture or algorithm must be technically novel

These Require Prior Art Comparison

• The claims are evaluated against the prior art
• A truly novel, non-obvious claim still survives § 102/103 even if the prior art is close

Confusion Between Them

• Sometimes examiners conflate § 101 'abstract idea' with § 103 obviousness
• The two are distinct
• A claim can be both obvious (§ 103) AND directed to an abstract idea (§ 101) — but each requires separate analysis
• Courts have been criticized for using § 101 to invalidate claims that could have been analyzed under § 102/103: 'the concern is that § 101 will be used to invalidate patents that merely lack novelty or are obvious' (Berkeley Chem Sec.)

Practical Overlap

• 'well-understood, routine, and conventional' in Step 2B of Alice sometimes overlaps with 'obvious' under § 103
• But WURC in § 101 is a narrower inquiry — it asks whether the additional elements (not the whole claim) are conventional
• § 103 asks whether the whole claim would have been obvious to try or combine

Prosecution Strategy

• Pursue both § 101 and § 102/103 responses simultaneously
• Do not concede § 101 eligibility of the prior art claims while arguing § 102/103.

Strategy 1 — Claim the Technical Improvement

• Identify the specific technical problem the invention solves
• Claim the solution in terms of what the computer system DOES differently, not what result it achieves
• Instead of 'a method for recommending products,' claim 'a method for reducing cache collisions in a distributed recommendation system by [specific technique]'

Strategy 2 — Include Specific Hardware or Network Architecture

• Tie the claim to specific hardware or network components beyond a generic processor
• 'a network switch configured to [specific novel function]' is better than 'a processor configured to [abstract function]'

Strategy 3 — Claim the Novel Algorithm Specifically

• If the core innovation is an algorithm, claim it in detail
• Do not describe results — describe the specific computational steps
• Include the technical reason the algorithm is better (faster, more accurate, more efficient in a measurable technical way)

Strategy 5 — Avoid Result-oriented Claiming

• 'a method for generating accurate predictions' is a result
• 'a method comprising: training a model using [specific technique], applying [specific loss function], achieving [specific technical parameter improvement]' is a technical implementation

Strategy 6 — Specification Matters

• Write detailed specification sections explaining the specific technical problem and why conventional approaches fail
• This context helps claim construction and § 101 analysis
• Cite technical benchmarks showing improvement

Strategy 8 — Bifurcate Method and System Claims

• Method claims for § 101 face higher scrutiny than system (apparatus) claims in some courts
• Draft both to maximize eligibility arguments.