The addition of novel or non-routine components to a claimed idea does not necessarily turn an abstraction into something concrete for the purposes of subject matter eligibility under 35 U.S.C. § 101. Here, for example, a novel advertisement mechanism was found to be insufficient to transform the abstract idea of advertising in general into a concrete application. It therefore appears that arguments focusing on the novelty of the claimed invention will not be successful in traversing an abstract idea finding by the PTO.
Background / Facts: The patent on appeal here for reconsideration in light of Alice is directed to a method for distributing copyrighted products (e.g., songs, movies, books) over the Internet where the consumer receives a copyrighted product at no cost in exchange for viewing an advertisement. It is not strongly disputed that the process of receiving copyrighted media, selecting an ad, offering the media in exchange for watching the selected ad, displaying the ad, allowing the consumer access to the media, and receiving payment from the sponsor of the ad all describe an abstract idea, devoid of a concrete or tangible application. However, the claims additionally recite a step that requires users to select advertisements, which was a change from existing methods of passive advertising.
Issue(s): Whether ideas underlying a claim that are new ideas, not previously well-known and not routine activity, are sufficient to place the claim outside of the “abstract” realm defined by the first step of the Alice test for patent-eligibility under 35 U.S.C. § 101.
Holding(s): No. “Although certain additional limitations, such as consulting an activity log, add a degree of particularity, the concept embodied by the majority of the limitations describes only the abstract idea of showing an advertisement before delivering free content. … We do not agree with [the patentee] that the addition of merely novel or non-routine components to the claimed idea necessarily turns an abstraction into something concrete. In any event, any novelty in implementation of the idea is a factor to be considered only in the second step of the Alice analysis. … Further, that the system is active, rather than passive, and restricts public access also represents only insignificant ‘[pre]-solution activity,’ which is also not sufficient to transform an otherwise patent-ineligible abstract idea into patent-eligible subject matter.”