An “inventive concept” establishing subject matter eligibility can be found in a non-conventional and non-generic arrangement of otherwise known, conventional pieces. Here, for example, an inventive concept was found in the installation of an Internet-content filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user, even though content filtering was found to be an abstract idea and none of the limitations was individually inventive. “The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art.” This would be a good case to consult and cite in response to a subject matter eligibility rejection that fails to consider the claim limitations as a whole.
Background / Facts: The patent being asserted here is directed to filtering content on the Internet. Unlike the filtering tools that existed on local servers and remote ISP servers at the time, the claimed filtering tool retains the advantage of a filtering tool that is located on each local computer; individuals are able to customize how requests for Internet content from their own computers are filtered instead of having a universal set of filtering rules applied to everyone’s requests.
Issue(s): Whether the claims are patent-eligible under 35 U.S.C. § 101.
Holding(s): Yes. While agreeing that “filtering content is an abstract idea because it is a longstanding, well-known method of organizing human behavior, similar to concepts previously found to be abstract,” and that “the limitations of the claims, taken individually, recite generic computer, network and Internet components, none of which is inventive by itself,” the court ultimately “disagree[d] with the district court’s analysis of the ordered combination of limitations. In light of Mayo and Alice, it is of course now standard for a § 101 inquiry to consider whether various claim elements simply recite ‘well-understood, routine, conventional activit[ies].’ [] The district court’s analysis in this case, however, looks similar to an obviousness analysis under 35 U.S.C. § 103, except lacking an explanation of a reason to combine the limitations as claimed. The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. As is the case here, an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces. The inventive concept described and claimed in the [] patent is the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user.” There was also a notable concurring opinion admonishing the “cumbersome procedures for separate determinations of patent eligibility and patentability.”