Locke Lord QuickStudy: January 2019 Patent Subject Matter Eligibility Guidance

Alice/Mayo Test

Step 2A – determine whether the claims are directed to an abstract idea, a law of nature or a natural phenomenon (i.e., a judicial exception)

Step 2B – if a judicial exception, determine whether the claim recites additional elements that amount to significantly more than the judicial exception 

Alice/Mayo STEP 2A

The 2019 guidance bifurcates Alice/Mayo Step 2A into a two-prong analysis:

PRONG ONE (Step 2A)

Abstract ideas are to be identified with reference to enumerated categories of subject matter by determining if the claimed subject is an abstract idea exception by falling in one the following three enumerated groupings:

• Mathematical concepts: Mathematical relationships, mathematical formulas or equations, mathematical calculations;
• Certain methods of organizing human activity: Fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and
• Mental processes: Concepts performed in the human mind (including an observation, evaluation, judgment, or opinion).

If the claimed subject matter falls into a judicial exception, a determination is to be made as to whether the judicial exception is integrated into a practical application. Under the 2019 Guidance, examiners should "evaluate integration into a practical application ‎by: (a) Identifying whether there are any additional elements recited in the claim beyond the ‎judicial exception(s); and (b) evaluating those additional elements individually and in ‎combination to determine whether they integrate the exception into a practical application."

The 2019 Guidance provides several illustrative examples of such practical integration:

• An additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
• An additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
• An additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
• An additional element effects a transformation or reduction of a particular article to a different state or thing; and
• An additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.

• An additional element merely recites the words "apply it" with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea;
• An additional element adds insignificant extra-solution activity to the judicial exception; and
• An additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use.