2016年 03月 11日
米国 Ex parte Hoitsma (Appeal 2014-003035）
"Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, the application of these concepts may be deserving of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Supreme Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to “search for an ‘inventive concept’‒ i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. at 2357 (brackets in original) (quoting Mayo, 132 S. Ct. at 1297). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “‘[s]imply appending conventional steps, specified at a high level of generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294). "
”Step one: Are the claims at issue directed to a patent-ineligible concept?
We conclude that they are: Claims 1, 4–12, and 15–20 are directed to a mathematical algorithm in the form of a probability distribution mapping function. ”
"Step two: Is there something else in the claims that ensures that they are directed to significantly more than a patent-ineligible concept?
As we noted above, according to Alice, the question to be settled next is whether claims 1, 4–12, and 15–20 recite an element, or combination of elements, that is enough to ensure that the claim is directed to significantly more than the mathematical algorithm (the “ineligible concept”) itself. We conclude that claims 1 and 11, which merely require a generic “processor” (claims 1 and 11, line 2 of each) and an “input variable [which] is representative of a physical characteristic of a component or system” (claim 1, line 3), fail to transform that mathematical algorithm into a patent-eligible invention. "
（2016.3.11. 弁理士 鈴木学）