December 2, 2014
Beware Abstract Ideas
Beware claims that manipulate concepts such as risk, permission, human activities (viewing, responding) or money -- whether a computer or internet is involved or not. Such claims will likely be found directed to abstract ideas and ineligible under 35 U.S.C. ยง101.
In ULTRAMERCIAL, INC., AND ULTRAMERCIAL, LLC, v. HULU, LLC, AND WILDTANGENT, INC., CAFC, 2010-1544 (Ultramercial), the CAFC has interpreted the Supreme Court decision in Alice to require more than such claims offer. In doing so, the CAFC has fallen back to the safe harbor of the machine or transformation test previously articulated. In Bilski, the Supreme Court determined that the machine or transformation test is not a final test, because some things that do not pass that test may still be patent eligible. However no such claim has ever been found by the courts; and, the practitioner is wise to make use of the safe harbor of the machine or transformation test.
The concepts listed above are not tangible objects that can be manipulated by a novel machine or transformed to satisfy the machine or transformation test. Better to manipulate pixels and memory locations in novel ways. Claims requiring that the pixels or memory locations represent any of the above concepts can detract from the patent eligibility of the claimed process or system. Claims requiring that the pixels or memory locations represent tangible objects such as energy or matter of the science of physics, chemistry or biology are much less likely to be found directed to abstract ideas.
Furthermore, according to this Ultramercial case, claims can be found to be directed to an abstract idea before claim construction!
In a separate concurring opinion, Judge Mayer interpreted Alice as essentially requiring claims be in the technological arts, a requirement that parallels the approach in Europe.
Besides abstract ideas addressed in Ultramercial, claims can still be found not patent eligible if they are directed essentially to a law of nature or a natural phenomenon.