2106.05(c) Particular Transformation
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It is noted that while the transformation of an article is an important clue, it is not a stand-alone test for eligibility.
All claims must be evaluated for eligibility using the two-part test from Alice/Mayo.
- If a claim passes the Alice/Mayo test (i.e., is not directed to an exception at Step 2A, or amounts to significantly more than any recited exception in Step 2B), then the claim is eligible even if it “fails” the M-or-T test.
- And if a claim fails the Alice/Mayo test (i.e., is directed to an exception at Step 2A and does not amount to significantly more than the exception in Step 2B), then the claim is ineligible even if it passes the M-or-T test.
Examiners may find it helpful to evaluate other Step 2B considerations such as the mere instructions to apply an exception consideration, and the field of use and technological environment consideration, before making a determination of whether a claim satisfies the particular transformation consideration.
An “article” includes a physical object or substance.
- The physical object or substance must be particular, meaning it can be specifically identified.
- “Transformation” of an article means that the “article” has changed to a different state or thing.
Changing to a different state or thing usually means more than simply using an article or changing the location of an article.
- A new or different function or use can be evidence that an article has been transformed.
Purely mental processes in which thoughts or human based actions are “changed” are not considered an eligible transformation.
- For data, mere “manipulation of basic mathematical constructs [i.e.,] the paradigmatic ‘abstract idea,’” has not been deemed a transformation.
Tilghman v. Proctor, provides an example of effecting a transformation of a particular article to a different state or thing.
In that case, the claim was directed to a process of subjecting a mixture of fat and water to a high degree of heat and included additional parameters relating to the level of heat, the quantities of fat and water, and the strength of the mixing vessel.
The claimed process, which used the natural principle that the elements of neutral fat require that they be severally united with an atomic equivalent of water in order to separate and become free, resulted in the transformation of the fatty bodies into fat acids and glycerine.
Where a transformation is recited in a claim, the following factors are relevant to the significantly more analysis:
- 1. The particularity or generality of the transformation.
- According to the Supreme Court, an invention comprising a process of “‘tanning, dyeing, making waterproof cloth, vulcanizing India rubber [or] smelting ores’ . . . are instances . . . where the use of chemical substances or physical acts, such as temperature control, changes articles or materials [in such a manner that is] sufficiently definite to confine the patent monopoly within rather definite bounds.”
- Therefore, a more particular transformation would likely provide significantly more.
- 2. The degree to which the recited article is particular.
- A transformation applied to a generically recited article or to any and all articles would likely not provide significantly more than the judicial exception.
- A transformation that can be specifically identified, or that applies to only particular articles, is more likely to provide significantly more.
- 3. The nature of the transformation in terms of the type or extent of change in state or thing.
- A transformation resulting in the transformed article having a different function or use, would likely provide significantly more, but a transformation resulting in the transformed article merely having a different location, would likely not provide significantly more.
- For example, a process that transforms raw, uncured synthetic rubber into precision-molded synthetic rubber products, as discussed in Diamond v. Diehr, provides significantly more.
- 4. The nature of the article transformed.
- Transformation of a physical or tangible object or substance is more likely to provide significantly more than the transformation of an intangible concept such as a contractual obligation or mental judgment.
- 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).
- A transformation that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not provide significantly more.
- For example, in Mayo the Supreme Court found claims regarding calibrating the proper dosage of thiopurine drugs to be patent ineligible subject matter.
- The Federal Circuit had held that the step of administering the thiopurine drug demonstrated a transformation of the human body and blood.
- The Supreme Court disagreed, finding that this step was only a field-of-use limitation and did not provide significantly more than the judicial exception.
» 2106.05(d) Well-Understood, Routine, Conventional Activity
