Novelty and non-obviousness do not alone resolve the question of inventive concept at the second step of Mayo/Alice. Here, for example, although the prior art did not disclose the idea of “determining” and “outputting” a particular type of e-mail, these operations were found to add nothing more to the abstract idea because they did not improve the functioning of the computer itself. “[T]he jury’s general finding that … three particular prior art references do not disclose all the limitations of or render obvious the asserted claims does not resolve the question of whether the claims embody an inventive concept at the second step of Mayo/Alice.” It may therefore be helpful to point out how any new and nonobvious features help improve the functionality of a computer.
Background / Facts: The patents being asserted here are directed to screening emails and other data files for unwanted content. The court found that the underlying idea of characterizing e-mail based on a known list of identifiers is abstract. At trial, however, the jury found that the prior art did not disclose “determining … whether each received content identifier matches a characteristic” or “outputting … an indication of the characteristic of the data file.”
Issue(s): Whether the lack of anticipation and obviousness requires a finding of an “inventive concept” sufficient to transform the abstract idea into patent-eligible subject matter.
Holding(s): No. “While the claims may not have been anticipated or obvious … that does not suggest that the idea of ‘determining’ and ‘outputting’ is not abstract, much less that its implementation is not routine and conventional. Indeed, ‘[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.’ [] Here, the jury’s general finding that [the accused infringer] did not prove by clear and convincing evidence that three particular prior art references do not disclose all the limitations of or render obvious the asserted claims does not resolve the question of whether the claims embody an inventive concept at the second step of Mayo/Alice.”