Draft A Successful Software Claim

 

After figuring out the components of the software, we next present the legal framework for eligibility.

 

The statutory legal basis for eligibility is 35 U.S.C. § 101, which provides four statutory categories. From 2010, the Supreme Court heard four decisive cases[ The four cases are Bilski v. Kappos, 561 U.S. 593 (2010); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012); Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013); Alice Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208 (2014).] and laid out the fundamental framework for determining eligibility, harmonizing the Alice/Mayo test after the four-categories test. After 2019, USPTO revised the fundamental framework. The current framework is as the following. 

 

 

Image 2: Subject Matter Eligibility Test For Products and Processes[ Section 2106 Patent Subject Matter Eligibility [R-10.2019], Chapter 2100 of Manual of Patent Examining Procedure, The United States Patent and Trademark Office]

 

According to the current framework, to qualify as eligible subject matter, 

 

`first, the claimed invention must be to one of the four statutory categories; 

 

`second, the claimed invention also must not be directed to a judicial exception, such as an abstract idea, unless the claim as a whole includes additional limitations amounting to significantly more than the exception.

 

We will apply the framework to test the eligibility of software inventions.

 

When applying the framework, at all stages the claimed invention is treated “as a whole”[ See 2106.03 II. ELIGIBILITY STEP 1: WHETHER A CLAIM IS TO A STATUTORY CATEGORY, II. ELIGIBILITY STEP 2A: WHETHER A CLAIM IS DIRECTED TO A JUDICIAL EXCEPTION, II. ELIGIBILITY STEP 2B: WHETHER THE ADDITIONAL ELEMENTS CONTRIBUTE AN “INVENTIVE CONCEPT” of MPEP.]. That is, when interpreting the invention, Courts[ Note that in the US “court” only rules litigations, while during the stage of application, the examination is done by examiners of USPTO. They however use the same rule to examine the patentability of invention. Since this paper does not deal with procedural distinctions, it does not make a difference whether the same rule is heard by the court or by the USPTO. For the sake of consistency, the term "court" is used throughout this article.] determine what the invention is by reviewing the entire application disclosure and construing the claims in accordance with their broadest reasonable interpretation (BRI)[ Ibid. ]. The specification must offer sufficient details so that the PHOSITA, not the inventor, could apparently recognize the claimed invention as providing an improvement, and thus be eligible[ See for example MPEP § 2106.05(a). 

The improvement in the specification should not be in a conclusory manner. That is, the specification cannot barely assert that the claimed invention has an improvement, but it must offer details to show the improvement.]. Correspondingly, the claim must reflect the disclosed eligible elements, though the claim itself does not need to include all details[ Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316, 120 USPQ2d 1353, 1359 (Fed. Cir. 2016)

For the eligible elements, such as improvement in functions of computers, the claim itself does not need to explicitly recite the improvement described in the specification, but the claim must include the components or steps of the invention that provide the improvement described in the specification.].

 

 

In the first step, we should test whether the claimed invention is one of the four statutory categories as defined in 35 U.S.C. § 101, namely processes, machines, manufactures, and compositions of matter. 

 

As discussed above, to implement an application software, in addition to the application software itself, there should be corresponding operating systems and hardware. Hence, in most software patent applications, Applicants usually claim at least three independent claims: (1) the method applied by the software, (2) the system configured to carry out the method, (3) and the corresponding hardware[ Such claims can be found in for example Alice Corp. In addition, the three inventions are specifically emphasized in Part B of the Examination Guidelines for Computer-Related Inventions, Department of Commerce, Patent and Trademark Office, [Docket No. 950531144-5304-02], RIN 0651-XX02 ]. 

Bounded by the Restriction Requirement, one application can only contain one invention[ 35 U.S.C § 121: If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions.]. If there is more than one independent claim, they must cover the same invention. In other words, the core technology of the three independent claims is the same. 

Inspired by the Restriction Requirement, when applying the test of eligibility, we can choose the method claim as the focus. If the method claim fails the test of eligibility, the other claims usually fail the test, too[ See 35 USC § 101: Statutory Requirements and Four Categories of Invention, Office of Patent Legal Administration United States Patent and Trademark Office, August 2015 (although in 2019 MPEP was revised, this rule was not changed.)
“A claim whose BRI covers both statutory and non-statutory embodiments embraces subject matter that is not eligible for patent protection and therefore is directed to non-statutory subject matter. Such claims fail the first step (Step 1: NO) and should be rejected under 35 U.S.C. 101, for at least this reason.”]. This is particularly effective for software-related patents because, according to the previous analysis, the independent claims of operating systems and hardware are used only to run the methods. This approach is used in many cases, such as Alice Corp[ Alice Corp., 573 U.S. at 227].

In general, the method claim is regarded as a “process”. The term “process” means process, art or method as defined in 35 U.S.C § 100(b). In case law, the term was explained as a series of acts[ NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1316, 75 USPQ2d 1763, 1791]. In fact, in all relevant cases, the method claim of software invention is regarded as a process[ For example, in the case Alice Corp., the court did not expressly define the claim into “process” category, but the court jumped the test of four categories and directly started the analysis of abstract ideas. Because the method claim can hardly be deemed as a machine or composition, dividing it into the category of “process” is the only reasonable way.
Further, in the case Bilski v. Kappos, the court held that business method could be a “process”. Although business method is not a computer program, the draft the business method claim and computer program is similar – step by step. Furthermore, in the case Bilski, when defining the term of “process”, the court specifically emphasized that “computer programs are not always unpatentable” (at 605). That is, in general, software method is considered as a process.]. The independent claims of operating systems and hardware are usually regarded as of the “machine” category[ Ibid Footnote 26.].

In fact, when the invention is software, Courts seldom consider inventions to be outside of the four categories. Among the five cases related to software eligibility heard by the Supreme Court, none of the inventions failed the four categories test.[ The cases are, Diamond v. Diehr, Alice Corp. Pty. Ltd. v. CLS Bank Intern., Gottschalk v. Benson, Parker v. Flook, , Funk Bros. Seed Co. v. Kalo Inoculant Co.] Further, to keep up with emerging technology, courts have tended to interpret these four categories as being broad in scope[ See Diamond v. Diehr, 450 U.S. 175 (1981) at 182, or Bilski v. Kappos, 561 US 593, 130 S.Ct. at 600.]. 

Step 2A Judiciary Exception

In Step 2A the claim is examined whether it contains judiciary exceptions. 35 USC 101 does not expressly exclude any subject matters but the Supreme Court has held that Section 101 contains an implicit exception for ‘‘laws of nature, natural phenomena, and abstract ideas’’[ Alice Corp., 573 U.S. at 216, 110 USPQ2d at 1980 (citing Mayo, 566 US at 71, 101 USPQ2d at 1965)]. 

The principle behind the implicit exception is that they are basic tools of scientific and technological work[ Ibid.]. Considering that patent is a strong monopoly, allowing a patent on abstract ideas, etc. themselves is unfair to the public[ Benson, 409 U.S. at 71- 72, 175 USPQ at 676]. That shows the attitude of US patent law: patenting a judicial exception itself is ineligible but the patent could base on the judicial exception[ Alice Corp., 573 U.S. at 217-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. 66, 101 USPQ2d 1961).
“the Court has also emphasized that an invention is not considered to be ineligible for patenting simply because it involves a judicial exception.”].

Before 2019, Step 2A tests whether the claim is directed to a judicial exception[ See MPEP 2106 Patent Subject Matter Eligibility, III. SUMMARY OF ANALYSIS AND FLOWCHART]. This test was challenged in the case Enfish, LLC v. Microsoft Corp., out the reason that all inventions involve a patent-ineligible concept[ Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335, 118 USPQ2d 1684, 1688 (Fed. Cir. 2016)
In fact, this Step was also criticized in the case Diamond v. Diehr, 450 U.S. 175, 191-92 n.14, 209 USPQ 1, 10-11 n.14 (1981). “at some level, all inventions embody laws of nature, natural phenomena, or abstract ideas”.]. In 2019, Step 2A was revised into a two-prong inquiry. We will discuss them separately.

Prong One

In Prong One examiners evaluate whether the claim recites a judicial exception. The point is whether the claim recites a judicial exception or merely limitations that are based on or involve a judicial exception[ 2106.04(a)(2) Abstract Idea Groupings [R-07.2022]]. if a claim is only based on or involves an exception, it does not recite a judicial exception, and thus be eligible[ Thales Visionix, Inc. v. United States, 850 F.3d 1343, 1348-49, 121 USPQ2d 1898, 1902-03 (Fed. Cir. 2017)]. 

According to MPEP, when determining whether a claim recites a judicial exception, the examiner usually 

(1)identifies the limitations in the claim which possibly recites a judicial exception; 

(2)determines whether the identified limitations fall within at least one judicial exception[ MPEP § 2106.04(a)(2)].

It is notable that many terms, e.g., abstract idea, law of nature, etc., are recognized as judicial exceptions, but there are no bright lines between the types of exceptions. Courts have declined to define what each judicial exception is[ Bilski v. Kappos, 561 U.S. 593, 601-602, 95 USPQ2d 1001, 1006 (2010) (citing Le Roy v. Tatham, 55 U.S. (14 How.)], and many of the concepts identified by the courts as exceptions can fall under several categories[ 2106.04 Eligibility Step 2A: Whether a Claim is Directed to a Judicial Exception [R-07.2022]]. Hence, this paper does not distinguish whether the example is abstract ideas or natural phenomena, etc., but uses “abstract idea” to refer to judicial exceptions under Step 2A.

Nonetheless, MPEP offers several examples of judicial exceptions, wherein software is specifically related to the following enumerated examples[ MPEP offers many examples under different categories of judicial exception, where the above examples related to software are actually enumerated under the category of “abstract idea”. The category of “law of nature” and “product of nature” are more related to DNA and chemical principles, which can be found in 2106.04(b) Laws of Nature, Natural Phenomena & Products of Nature [R-10.2019]. Because MPEP emphasized that there is no bright line between different categories, here we do not distinguish whether the examples are enumerated under which category, but just present the examples related to software. ]:

·Methods of organizing human activity are another example, including fundamental economic principles or practices, commercial or legal interactions, managing personal behavior or relationships or interactions between people[ MPEP § 2106.04(a)(2), subsection II]. 

·Mathematical concepts are an example of judicial exceptions, including mathematical relationships, mathematical formulas or equations, mathematical calculations[ MPEP § 2106.04(a)(2), subsection I
It is important to note that a mathematical concept need not be expressed in mathematical symbols, because “[w]ords used in a claim operating on data to solve a problem can serve the same purpose as a formula.” In re Grams, 888 F.2d 835, 837 and n.1, 12 USPQ2d 1824, 1826 and n.1 (Fed. Cir. 1989).].

·Mental processes is a judicial exception, which is concepts performed in the human mind[ MPEP § 2106.04(a)(2), subsection III].

As shown in Image 1, the life circle of software is tightly based on the need of consumers, so software is definitely related to methods of organizing human activity. Because the performance of a software task involves an underlying mathematical calculation or relationship, mathematical concepts and mental processes are related to software claims. In fact, when a software-related patent is suspected of reciting an abstract idea, these three categories are often first to be suspected[ In the case Thales Visionix, Inc. v. United States, McRO, Inc. v. Bandai Namco Games Am. Inc., and Enfish, etc., the claims are suspected as mathematical concepts. 
In the case Alice, Bilski, and In re Marco Guldenaar Holding B.V., the claims are suspected as human activities. 
In the case Synopsys, Inc. v. Mentor Graphics Corp., Intellectual Ventures I LLC v. Symantec Corp., etc. the claims are suspected as mental process.].

Drafting claims in light of the enumerated examples is a more logical path today because the examiners’ focus has been shifted in past case law developments from relying on individual cases to generally applying the wide body examples[ 2106.04(a) Abstract Ideas [R-07.2022]]. However, this merely noticing the enumerated examples is not sufficient because as presented above, all inventions embody judicial exceptions at some level[ Diamond v. Diehr, 450 U.S. 175, 191-92 n.14, 209 USPQ 1, 10-11 n.14 (1981)]. Prong 2 may help to succeed in the test of Step 2A.

Prong Two

If the claim is decided as reciting a judicial exception, Prong Two of Step 2A will further evaluate whether the claim as a whole integrates the exception into a practical application of that exception[ Alice, 573 U.S. at 217, 110 USPQ2d at 1981]. Put differently, whether the additional elements other than the judicial exception transform the nature of the claim into a patent-eligible application[ Ibid. Note that the test of “transforming the nature into eligible application” is also used in Step 2B.
Also, note that the Alice/Mayo two-part test is the only test that should be used to evaluate the eligibility of claims under examination. While the machine-or-transformation test is an important clue to eligibility, it should not be used as a separate test for eligibility. Instead, it should be considered as part of the "integration" determination or "significantly more" determination articulated in the Alice/Mayo test. This is emphasized in the case Bilsiki. ]. If so, the claim is not directed to the judicial exception and therefore is eligible. If the claim does not integrate the exception into a practical application, the claim is directed to the recited judicial exception and examiners will start Step 2B.

To do Prong Two, Courts usually

·Identifying whether there are any additional elements recited in the claim beyond the judicial exception(s), and if there are additional elements

·Evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application of the exception[ Consideration of the elements in combination is particularly important, because even if an additional element does not amount to significantly more on its own, it can still amount to significantly more when considered in combination with the other elements of the claim.].

When evaluating whether the additional elements integrate the exception into a practical application, Courts take into consideration the factors indicative of integration into a practical application. Such factors overlap with Step 2B. Here we present the factors under Step 2A Prong Two. 

Step 2A Prong Two specifically excludes the factor of requiring the additional elements to represent NOT well-understood, routine, conventional activity. Accordingly, when evaluating whether a judicial exception has been integrated into a practical application, Step 2A Prong Two should ensure that all additional elements are given weight, no matter whether they are conventional. That means additional elements that represent well-understood, routine, conventional activity may integrate a recited judicial exception into a practical application. 

The indicative factor that is most relevant to software inventions is

Improvements to the functioning of a computer or to any other technology or technical field[ MPEP 2106.05(a)]

If the claim aims to improve the functioning of the computer itself or any other technical fields, the additional elements are more likely to integrate the exception into a practical application[ Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 225, 110 USPQ2d 1976, 1984 (2014)]. 

For computer-related inventions, the improvement can be found in improving computer capabilities rather than invoking computers merely as a tool[ Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336, 118 USPQ2d 1684, 1689 (Fed. Cir. 2016)]. According to case law, modifications on memory systems[ Visual Memory, LLC v. NVIDIA Corp., 867 F.3d 1253, 1259-60, 123 USPQ2d 1712, 1717 (Fed. Cir. 2017)], conventional Internet hyperlink protocols[ DDR Holdings, 773 F.3d at 1258-59, 113 USPQ2d at 1106-07], distribution systems[ BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350-51, 119 USPQ2d 1236, 1243 (Fed. Cir. 2016)], etc., are improvements on computer capabilities, while a typical example of using computers merely as a tool is that improvements are made by changing the executor from human to computer[ MPEP 2106.05(a) offers summaries of cases under the test of “improvements to computer functionality”. From the cases, if the improvement of computer functionality is only due to the fact that the work is done by a person to a computer, such an improvement is not enough to make the invention eligible. Instead, if the improvement is from the particular solution contained in the claim, that could make the claim eligible.]. 

Considering that computers are used in many industrial fields, if an invention does not improve the functionality of the computer itself, but can improve the technical field, this can also make the invention eligible[ McRO, 837 F.3d at 1316, 120 USPQ2d at 1103
Note that when evaluating whether the claim has improvement in other technical fields, the invention is not necessarily a computer-related invention. This test is for invention in any technical fields.]. For example, in McRO, the court held claimed methods of automatic lip synchronization and facial expression animation using computer-implemented rules to be patent eligible because it is directed to an improvement in computer animation and thus integrate an abstract idea into a practical application[ Ibid. ].

The core in determining the improvement to the functioning of a computer or to any other technical field is the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome[ McRO, 837 F.3d at 1314-15, 120 USPQ2d at 1102-03; DDR Holdings, 773 F.3d at 1259, 113 USPQ2d at 1107.]. An indication that the claimed invention provides an improvement could be that invention identifies a technical problem and offers a technical solution, or identifies technical improvements over the prior art[ Ibid. ]. 

The test of particular solution fits in essence with the case law in the above two paragraphs. When the solution is more particular, the more likely court is to find it to be a practical application of an abstract idea, and vice versa[ This is can be explained more clearly under the factor of “applying or using the judicial exception in some other meaningful way”, see the following content.].

Other indicative factors are not so relevant to software inventions[ The factor of Machine, i.e., MPEP 2106.05(b), refers to the degree to which the machine in the claim can be specifically identified. It is usually applied in the field of electronic information or other traditional machinery.

The factor of Transformation, i.e., MPEP 2106.05(c), refers to a reduction of an article ‘to a different state or thing’. It is usually applied to a process claim that does not include particular machines.
These two factors are not so relevant to software invention. The factor of MPEP 2106.05(d) and MPEP 2106.05(e) are assistance to other factors.], but they are useful to assist the evaluation of the factor “improvement”[ When evaluating the improvement factor, the considerations of that factor overlap with other considerations, specifically the particular machine consideration (see MPEP § 2106.05(b)), and the mere instructions to apply an exception consideration (see MPEP § 2106.05(f)). Thus, evaluation of those other factors may assist Courts in making a determination of whether a claim satisfies the improvement consideration.]. 

The factor Machine refers to the degree to which the machine in the claim can be specifically identified[ MPEP § 2106.05(b) ]. MPEP lists several considerations for the determination of factor Machine, wherein the third consideration is particularly important for software invention, which tests the extent to which the machine imposes meaningful limits on the claim[ MPEP 2106.05(b) III. WHETHER ITS INVOLVEMENT IS EXTRA-SOLUTION ACTIVITY OR A FIELD-OF-USE
The other two considerations are 
I.THE PARTICULARITY OR GENERALITY OF THE ELEMENTS OF THE MACHINE OR APPARATUS
II.WHETHER THE MACHINE OR APPARATUS IMPLEMENTS THE STEPS OF THE METHOD]. Merely applying an abstract idea to a tangible machine does not make the claim eligible[ Bilski, 561 U.S. at 610, 95 USPQ2d at 1009 (citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 197 (1978))]. Accordingly, merely applying a judicial exception, such as mathematical formula, on a computer, does not make the claim eligible[ This is also decided in the case Intellectual Ventures I LLC v. Capital One Bank (USA), N.A., 792 F.3d 1363, 1366, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015) (“An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer”).]. Conversely, intangible additional elements do not doom the claims, because tangibility is not necessary for eligibility[ Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 118 USPQ2d 1684 (Fed. Cir. 2016)].  Hence, the method claim is not ineligible due to lacking tangible elements.

The factor Transformation applies to a process claim that does not include particular machines, which refers to a reduction of an article ‘to a different state or thing’[ MPEP 2106.05(c), the considerations under factor Transformation include
1. The particularity or generality of the transformation.
2. The degree to which the recited article is particular
3. The nature of the transformation in terms of the type or extent of change in state or thing.
4. The nature of the article transformed. 
5. Whether the transformation is extra-solution activity or a field-of-use (i.e., the extent to which (or how) the transformation imposes meaningful limits on the execution of the claimed method steps). ]. Within this factor, if the transformation imposes meaningful limits on the execution of the claimed method, the claim is more likely regarded as eligible.

The courts have also identified limitations that did not integrate a judicial exception into a practical application. The followings are related to computer inventions:

•Merely reciting the words “apply it” or any equivalent words with the judicial exception[ MPEP § 2106.05(f)];

•Merely including instructions to implement an abstract idea on a computer[ Ibid. ];

•Adding insignificant extra-solution activity to the judicial exception, as discussed[ MPEP § 2106.05(g)];

•Generally linking the use of a judicial exception to a particular technological environment or field of use[ MPEP § 2106.05(h)].

Step 2B Significant More

If the claim fails Step 2A, Courts will start the test of Step 2B, where the test aims to find an “inventive concept”[ Alice Corp., 573 U.S. at 217-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966)]. An “inventive concept” is furnished by an element or combination of elements that is recited in the claim in addition to the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself[ Ibid.]. That is, the core of the inventive concept is “what else beyond the judicial exception”[ Ibid. “after determining that a claim is directed to a judicial exception, “we then ask, ‘[w]hat else is there in the claims before us?”].

Step 2B largely overlaps with Step 2A Prong Two, and most of factors were evaluated in Step 2A Prong Two. Thus, in Step 2B, the actual steps are[ See MPEP 2106.05 Eligibility Step 2B: Whether a Claim Amounts to Significantly More [R-07.2022], II. ELIGIBILITY STEP 2B: WHETHER THE ADDITIONAL ELEMENTS CONTRIBUTE AN “INVENTIVE CONCEPT”
The listed steps by MPEP are 
• Carry over their identification of the additional element(s) in the claim from Step 2A Prong Two;
• Carry over their conclusions from Step 2A Prong Two on the considerations discussed in MPEP §§ 2106.05(a) - (c), (e) (f) and (h):
• Re-evaluate any additional element or combination of elements that was considered to be insignificant extra-solution activity per MPEP § 2106.05(g), because if such re-evaluation finds that the element is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field, this finding may indicate that the additional element is no longer considered to be insignificant; and
• Evaluate whether any additional element or combination of elements are other than what is well-understood, routine, conventional activity in the field, or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, per MPEP § 2106.05(d).
Here the paper briefed it according to the above content.]:

·Carry over the identified additional elements in the claim and the conclusions from Step 2A Prong Two;

·Evaluate each additional element or combination of elements per the rule of well-understood, routine, conventional activity.

To summarize, if the claim fails the test of Step 2A, courts will further test whether the additional elements are well-understood, routine, conventional activity. If the additional elements are a specific limitation other than what is well-understood, routine and conventional in the field, then this consideration favors eligibility.

Requiring the additional elements to be not conventional does not mean the claim should be novel or non-obvious. Additional elements that are known in the art can still be unconventional or non-routine[ See, e.g., BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) 
“The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . . [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”]. The core of this factor is to test whether the additional elements are so unconventional that reflect an improvement to existing technology[ Enfish, LLC v. Microsoft Corp., 822 F.3d 1337, 118 USPQ2d 1690 (Fed. Cir. 2016)].  The factor of Unconventional is also non-relevant to the requirement of Utility. The invention is useful does not mean it is not well-understood, and vice versa[ Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1380, 118 USPQ2d 1541, 1548 (Fed. Cir. 2016).].

In addition, to determine whether the additional elements are conventional, a factual determination is required. However, that does not mean Courts should do a prior art search. Instead, Court could rely on the general knowledge of PHOSITA. If Courts would readily find the additional elements are common use in the art according to the expertise in the art, the elements are conventional[ Ibid, at 1377 and 1546 ].

According to case law, MPEP summarized what has been recognized as conventional. The considerations related to software inventions include[ See MPEP 2106.05(d) Well-Understood, Routine, Conventional Activity [R-07.2022], II. ELEMENTS THAT THE COURTS HAVE RECOGNIZED AS WELL-UNDERSTOOD, ROUTINE, CONVENTIONAL ACTIVITY IN PARTICULAR FIELDS]

·Receiving or transmitting data over a network, e.g., using the Internet to gather data;

·Performing repetitive calculations

·Electronic recordkeeping

·Storing and retrieving information in memory

·Electronically scanning or extracting data from a physical document

·A Web browser’s back and forward button functionality

·Recording a customer’s order

·Shuffling and dealing a standard deck of cards

·Restricting public access to media by requiring a consumer to view an advertisement

·Presenting offers and gathering statistics

·Determining an estimated outcome and setting a price

·Arranging a hierarchy of groups, sorting information, eliminating less restrictive pricing information and determining the price

Note that the evaluation in Step 2B is not a weighing test, it is not important how many considerations apply from this list, but it is important to evaluate the significance of the additional elements relative to the invention[ Ibid. ].