Can Material Properties be an Abstract Idea?
In the scientific community, material properties have long been used to define and characterize materials and other compositions of matter. However, under a recent decision by the International Trade Commission (ITC), some types of material properties may now be considered an “abstract idea,” and thus patent ineligible subject matter.
US patent law states that a patent claim may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Exceptions to this rule, considered to be “patent ineligible subject matter,” are concepts directed to laws of nature, natural phenomena, and abstract ideas.
A two-step test for determining if a claim is directed to patent ineligible subject matter has been provided by the Supreme Court in what is commonly referred to as the Alice/Mayo test.
The first step of the Alice/Mayo test asks the following question: Are the claims directed to one of the patent ineligible exceptions – law of nature, natural phenomena, or abstract idea?
Under the first step of the Alice/Mayo test, courts have tried to identify what constitutes “an abstract idea” by looking at whether the claim at issue focuses on a “fundamental truth,” “an original cause,” “a motive,” or a basic “building block.” The Court of Appeals for the Federal Circuit has outlined the distinction by asking if the claim at issue focuses “on a specific means or method that improves the relevant technology” or “a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.”[1]
To help examiners during examination of patent applications, the US Patent and Trademark Office distilled accumulated case law related to abstract ideas and categorized abstract ideas into three groups: 1) mathematical concepts, 2) certain methods of organizing human activity, and 3) mental processes.
If the claims are determined to be directed to an abstract idea, the analysis moves to the second step of the Alice/Mayo test: Do the claims recite additional elements that amount to significantly more than the abstract idea to transform the nature of the claim into a patent eligible application?
This part of the analysis includes a determination if the claims recite additional elements that integrate the abstract idea into a practical application.
In the ITC investigation of U.S. Patent Nos. 10,507,565 (“the ‘565 patent”) and 10,508,502 (“the ‘502 patent”),[2] the claims at issue are directed to polycrystalline diamond compacts (“PDCs”) having an improved polycrystalline diamond (“PCD”) cutting tables. The patents teach that sintering diamond particles at a pressure of at least about 7.5 GPa may promote nucleation and growth of diamond so that the volume of the interstitial regions of the PCD is decreased, where the amount of metal solvent catalyst used to form the PCD is maintained below about 7.5 wt %. Such manufacturing parameters may form PCD material with improved properties, as claimed.
The elements of the claims at issue are outlined below.
Of the claimed elements, the “G-ratio” and “thermal stability” claim elements were considered to be “performance measures,” and “coercivity,” “specific magnetic saturation,” “specific permeability,” and “average electrical conductivity” were considered to be mere side effects or results of the fabrication processes and microscopic characteristics of a PDC. These performance measures and side effects were found to be an abstract idea because they do not solve any problems, but are instead measures of other, actually beneficial characteristics.[3] Particularly, the ITC found that the claimed parameters were the result of the sintering conditions and input materials that went into manufacturing and not indicative of any specific microstructure. For example, the electrical and magnetic properties claimed are not design choices or manufacturing variables but are instead indirect measures of the effectiveness of other design choices and manufacturing variables, such as sintering pressure and temperature, which are not recited in the claims. The ITC explained that there may some causal connection with the claimed grain size, catalyst concentration, and other, unspecified design and fabrication choices, but that causal connection is so loose that the parameters are little more than side effects and are thus gratuitous rather than inventive.
The fact that the claimed characteristics may be measured did not make the claims any less abstract for purposes of the ITC analysis. Instead, the ITC reasoned that because the claims do not recite a way of achieving the claimed characteristics, the breadth of the claims would read on any PDC structure that achieves the claimed improvements. Further, it did not matter to the ITC that the specification described the conditions used to produce the claimed PCDs. Instead, the ITC considered the mismatch between the specification (outlining the method of achieving the claimed improvements) and the breadth of the claims to be evidence that the claimed improvements are an abstract idea and not the particular configuration discussed in the specification that departs from the prior art. Thus, the claimed properties were considered abstract because the claims effectively cover any PDCs with those properties no matter how it is made.
The ITC reasoned that the claims attempt to monopolize every potential structure or way of creating stronger PDCs with the claimed characteristics rather than claiming a specific structure or way of making a PDC. Allowing such claims would prohibit other inventors from developing their own solutions to making the improved PDC without first licensing the abstract idea.
The dissent notes that the majority’s findings represent a significant departure from conventionally understood US patent law. Particularly, the claims recite a manufactured composition of matter (a PDC defined by specific, objective measurements), which is a class of invention that has historically been patent eligible.
The ITC’s decision has been appealed to the Court of Appeals for the Federal Circuit for appeal. Until this case is decided on appeal, it may be good practice to exercise caution when including result-oriented parameters in claims. One strategy may include diversification of claim scope, where the claim scope may be varied by including, in at least some of the claims, elements related to how certain result-oriented parameters are achieved.
