How does extra-solution activity or field-of-use affect a machine’s contribution to patent eligibility?
The involvement of a machine in extra-solution activity or as a field-of-use limitation can significantly impact its contribution to patent eligibility. MPEP 2106.05(b) states:
“Use of a machine that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would not integrate a judicial exception or provide significantly more.”
Key considerations:
- The extent to which the machine imposes meaningful limits on the claim
- Whether the machine’s involvement goes beyond mere data gathering or field-of-use limitations
- The machine should contribute significantly to the execution of the claimed method
For example, in CyberSource v. Retail Decisions, the court found that the Internet’s role in obtaining data was merely a data-gathering step and did not make the claim statutory. When evaluating patent eligibility, examiners will consider whether the machine’s involvement is more than just extra-solution activity or a field-of-use limitation.
For more information, refer to MPEP § 2106.05(g) on insignificant extra-solution activity and MPEP § 2106.05(h) on field of use.
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