Archive for September, 2020

Can a dependent claim that adds an abstract idea to an otherwise eligible independent claim be patent ineligible?

Wednesday, September 2nd, 2020

I was reading through the PTO’s most recent update to the MPEP on patent eligibility recently and ran across this statement instructing examiners:

And conversely, even if an independent claim is determined to be eligible, a dependent claim may be ineligible because it adds a judicial exception without also adding limitations that integrate the judicial exception or provide significantly more.

MPEP §2106.07 (Revised June 2020).

In a recent webinar, a listener asked the speaker if a dependent claim that adds an abstract idea limitation to an otherwise patent eligible independent claim could make the dependent claim ineligible. On the fly, the speaker astutely pointed to the Diamond v. Diehr decision. In that case, the Supreme Court stated:

Our earlier opinions lend support to our present conclusion that a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer.

Diamond v. Diehr, 450 U.S. 175, 187 (1981).

Judge Linn highlighted this issue a few years ago in the oral argument of IP-Learn v. Microsoft [Link]. It’s a great sound bite, if you have not listened to it before.

It is interesting to think about how 35 U.S.C. §112(d) informs the analysis, if at all:

(d)Reference in Dependent Forms.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.

35 U.S.C. §112(d).