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Detailed Examples
Having reviewed the applicable USPTO guidance, we will now look at some exemplary inventions and claims provided by the USPTO in the MPEP to help explain how the above guidance is applied. Over the past six years, the USPTO has issued 46 of these examples, which can be found at https://www.uspto.gov/patent/laws-and- regulations/examination-policy/subject-matter-eligibility. Examples 37-46 are provided under the current guidance.
The USPTO has modeled these examples after actual cases, but revised the facts to emphasize certain teaching points, such as by including incrementally different versions of the relevant claims. We have selected for further discussion two examples that have at least some analogue to FinTech inventions.
Example 1 (USPTO Example 37): Relocation of Icons on a Graphical User Interface
In this example, the invention is a method for rearranging icons on a graphical user interface (GUI), where the most used icons are rearranged closest to the “start” icon of the computer system, based on a determined amount of use. This is intended to be an improvement based on previous organization methods (e.g., alphabetic, file size, file type, etc.). The amount of use can either be automatically determined by a tracking system, or manually entered.
Sample Claim 1:
1. A method of rearranging icons on a graphical user interface (GUI) of a computer system, the method comprising:
a. receiving, via the GUI, a user selection to organize each icon based on a specific criteria, wherein the specific criteria is an amount of use of each icon;
b. determining, by a processor, the amount of use of each icon over a predetermined period of time; and
c. automatically moving the most used icons to a position on the GUI closest to the start icon of the computer system based on the determined amount of use.
Step
Analysis
Key Insights for Obtaining FinTech Patents
1: Statutory Category?
Yes. The claim recites a series of steps and, therefore, is a process.
2A - Prong 1: Judicial Exception Recited?
Yes. Under the broadest reasonable interpretation, the limitation “determining ... the amount of use of each icon over a predetermined period of time” would include performance
in an actor’s mind. Thus, it qualifies as an abstract idea in the category of “Mental Processes.” Simply reciting
a generic processor is not enough to take the limitation out of the “Mental Processes” grouping.
2A - Prong 2: Integrated into a Practical Application?
Yes. The additional claim limitations recite a specific manner of automatically displaying icons to the user based on usage, which provides a specific improvement over prior systems and results in an improved user interface.
Thus, the claim is eligible because it is not directed to the recited judicial exception.
2B: Claim provides an Inventive Concept?
N/A.
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