Page 4 - Key Insights for Obtaining FinTech Patents Brochure
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As shown in the chart, if the claim as a whole is not directed to a judicial exception (Step 2A: NO) it is eligible via Pathway B, thereby concluding the eligibility analysis.4 If the claim as a whole is directed to a judicial exception (Step 2A: YES), further analysis is required (Step 2B) to determine if the claim as a whole amounts to significantly more than the exception itself. 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. However, many FinTech-related inventions fall into one or more of these groupings as highlighted by the following examples.
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.
  4 The mere inclusion of a judicial exception such as a mathematical formula (which is one of the mathematical concepts identified as an abstract idea in MPEP § 2106.04(a)) in a claim means that the claim “recites” a judicial exception under Step 2A Prong One. However, mere recitation of a judicial exception does not mean that the claim is “directed to” that judicial exception under Step 2A Prong Two. Instead, under Prong Two, a claim that recites a judicial exception is not directed to that judicial exception, if the claim as a whole integrates the recited judicial exception into a practical application of that exception. Prong Two thus distinguishes claims that are “directed to” the recited judicial exception from claims that are not “directed to” the recited judicial exception.
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