Page 5 - How to Successfully Obtain Blockchain Patents Brochure

Further discussion of these steps follows.
Step 2A – Is the Claim Directed to an Abstract Idea?
Under the current USPTO guidance, Step 2A is itself a two-prong inquiry. Under Prong One, the examiner must determine whether the claim recites an abstract idea. If so, under Prong Two, the examiner must determine whether the recited judicial exception is integrated into a practical application of that exception.
Step 2A - Prong One: Does The Claim Recite an Abstract Idea?
Under Step One, the Examiner considers whether any claim elements recite one or more of the abstract ideas identified by the USPTO, including:
1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations;
2)Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and
3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) or by a human using a pen and paper.
If the claim elements do not fall within any of these groupings of abstract ideas, it is reasonable to find that the claim does not recite an abstract idea.
With respect to mathematical concepts, a process of organizing information through mathematical correlations has been determined to be directed to an abstract idea, as was managing a stable value protected life insurance policy by performing calculations and manipulating the results.
With respect to fundamental economic principles or practices, a method of allocating returns to different investors in an investment fund has been determined to be a fundamental economic concept, as was the concept of hedging risk resulting from fluctuations in market demand
for energy and financial instruments designed to protect against the risk of investing in financial instruments.
With respect to mental processes, claims directed to collecting information, analyzing it, and displaying certain results of the collection and analysis have been found to recite a mental process, as were ones directed to a computer-implemented system for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders. Moreover, courts have examined claims that required the use of a computer and still found that the underlying invention was not patent-eligible because it could be performed via pen and paper or in a person’s mind.
5 | www.sheppardmullin.com
Step 2A - Prong Two: Does the Claim Integrate the Judicial Exception Into A Practical Application?
Even if the claimed invention recites a judicial exception under Prong One, the invention may be patent-eligible if the claim as a whole integrates the recited judicial exception into a practical application of the exception under Prong Two. The MPEP provides examples of limitations the courts have found to be indicative that an additional element (or combination of elements) has integrated the exception into a practical application, and thus rendered the claim patent-eligible. Some examples potentially relevant to blockchain inventions include:
• An improvement in the functioning of a computer, or an improvement to other technology or technical field;
• Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
• Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
How to Successfully Obtain Blockchain Patents
Even if the claimed invention recites a judicial exception under Prong One, the invention may be patent-eligible if the claim as a whole integrates the recited judicial exception into a practical application of the exception under Prong Two.