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Merely collecting information and performing steps that people go through in their minds are abstract ideas that by themselves do not confer patent eligibility (Electric Power Group LLC v. Alstom S.A.).

In OIP Technologies, Inc. v. Amazon.com, Inc. (Federal Circuit Docket No. 2012-1696, decided 11 June 2015), the patent-in-suit, US Patent No. 7,970,713 (OIP patent), relates to a method of optimizing the price of a product for sale. The claims of the OIP patent recite processes such as sending messages over a network, gathering data with a machine-readable medium, and using a computer to read data from the machine-readable medium. However, the Federal Circuit determined that “[t]hese processes are well-understood, routine, conventional data-gathering activities that do not make the claims patent eligible.”

In Alice Corp. v. CLS Bank Int’l. (Docket No. 13-298, 2014), the petitioner, Alice Corporation, asked the Supreme Court to weigh in on a decision of the lower courts that claims drawn to a scheme for mitigating settlement risk are invalid, unenforceable, and therefore not infringed. The scheme involved use of a computer system as an intermediary.

Keith Campbell and Ian Wilmut successfully cloned a sheep, which they called "Dolly", using a process known as somatic cell nuclear transfer. (Dolly lived from 1996 to 2003.) The process of cloning Dolly involved fusing “the nucleus of an adult, somatic mammary cell with an enucleated oocyte.” Campbell and Wilmut obtained US Patent No. 7,514,258 on the somatic method of cloning mammals and assigned this patent to Roslin Institute of Edinburgh, Scotland (Roslin). Campbell and Wilmut filed U.S. Patent Application No. 09/225,233 (the ‘233 application), which they also assigned to Roslin, for products of their cloning method. The following are representative claims from the ’233 application.

On 20 March 2012, the Supreme Court released its opinion on Mayo Collaborative Services v. Prometheus Laboratories, Inc., a case relating to patentability of a method of treating autoimmune diseases using thiopurine drugs. The Supreme Court had the task of deciding whether a claim such as shown below is valid under 35 USC 101.

1. A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder, comprising:
(a) administering a drug providing 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder; and
(b) determining the level of 6-thioguanine in said subject having said immune-mediated gastrointestinal disorder,
wherein the level of 6-thioguanine less than about 230 pmol per 8x108 red blood cells indicates a need to increase the amount of said drug subsequently administered to said subject and
wherein the level of 6-thioguanine greater than 400 pmol per 8x108 red blood cells indicates a need to decrease the amount of said drug subsequently administered to said subject.

In Prometheus Laboratories, Inc. v. Mayo Collaborative Services (Fed. Cir. 2008-1403, decided September 16, 2009), the Federal Circuit found that the asserted claims of the patents in suit meet the transformation prong of the machine-or-transformation test (see Bilski, 545 F.3d 961) and therefore are directed to statutory subject matter.

Recently, I encountered an Office action in which the examiner stated that the claims are patent eligible under § 101 because they pass the machine-or-transformation test but do not recite statutory subject matter under § 101 because they are not directed to a practical application of a judicial exception. The examiner argued that the claims are not directed to a practical application of a judicial exception because the claimed invention does not produce a result. Based on this line of reasoning, the examiner concluded that the claims are not patent eligible under § 101.

In Ex Parte Gutta (Appeal 2008-3000, decided January 15, 2009), the BPAI found that claims 1 and 3-13 failed the machine-or-transformation test.

How many tests does it take to determine if a process claim is patent eligible under §101? According to the Federal Circuit, only one two-prong test. In re Bilski, Fed. Cir., No. 2007-1130, October 30, 2008.

The Deputy Commissioner for Patent Examination Policy, Mr. John J. Love, has issued a memorandum to the USPTO Technology Center Directors in an effort to clarify processes under 35 USC § 101. In the memorandum, dated May 15, 2008, Mr. Love provided a two-step process for determining patent eligibility of process claims under 35 USC § 101.