The ITC Says Product Improvement is an Unpatentable Abstract Idea

Recent decisions point to greater need for at least some detail-oriented claims

By Ted Fay & Brandon Williams, Patent/IP Attorneys

Certain inventions cannot be patented, no matter how brilliant, as a matter of public policy. For example, under U.S. law, an abstract idea or a mathematical formula would not be patent eligible under 35 U.S.C. § 101. Believe it or not, Albert Einstein’s brilliant equation, E=MC2 may have radically altered science, but a patent claim that only recited the equation itself would not be considered patent eligible under 35 U.S.C. § 101.


A major problem in the jurisprudence of patentable subject matter under 35 U.S.C. § 101 over the last decade has been the thorny issue of deciding, in the abstract, what constitutes an abstract idea. Unfortunately for some patent holders, recent cases have found even claims to physical objects to be abstract. For example, in American Axle & Manufacturing, Inc., v. Neapco Holdings, LLC (Fed. Cir. Oct. 3, 2019), a split Federal Circuit panel affirmed the district court’s grant of summary judgment holding claims directed to a physical axle of a vehicle (see reference 20 of Fig. 1 below) to be patent ineligible under 35 U.S.C. § 101. The Court found the claims to be directed to the abstract idea of a scientific principle known as Hooke’s Law, as the claims describing the axle were too broadly worded using functional language. The United States Supreme Court refused to grant certiorari on this case, effectively establishing a precedent that insufficiently detailed claims to a physical thing (i.e., an axle) may be found to recite a law of nature, and thus be directed to a patent ineligible abstract idea under 35 U.S.C. § 101.


More recently, on October 26, 2022, the International Trade Commission (ITC) issued a split decision in which a claim directed to a composition of matter was found to be directed to a patent ineligible abstract idea under 35 U.S.C. § 101. In The Matter of Certain Polycrystalline Diamond Compacts and Articles Containing Same. [2022-10-26 [DI 783166].Commission Opinion]. Citing American Axle, the majority in the Commission decision stated that the claims covered goals (i.e., a range of characteristics) for a physical drill bit (a Polycrystalline Diamond Compact (PDC) bit), and did not recite a way of achieving the claimed characteristics of the PDC drill bit. Id. The specification included details describing such a “way,” but the way itself was not claimed. Id. Thus, the patent claims were found to be unenforceable as being directed to patent ineligible abstract ideas under 35 U.S.C. § 101. Id. The ITC decision is currently under appeal, which we will be watching closely.

In view of these decisions, a practical question for patent holders and patent applicants is, ‘What do we do about these new decisions?’


While broad claims defined in functional language may read on a broader range of potentially infringing products or processes, we recommend considering including claims that define the invention in structural terms (i.e., clearly detail the component parts to describe what it “is,” not what it “does.”). Prosecute at least one independent claim that specifically defines the invention in specific structural terms, or in the case of a process, that defines the invention in terms of the specific steps taken to achieve a result. Additionally, for claims directed to compositions of matter, recite the precise steps taken to achieve the process, and consider including a product-by-process claim set.


In view of the above decisions, detail-oriented claims are less likely to be found “abstract” under 35 U.S.C. § 101. Such claims may be a valuable “fallback” position, in case broader claims defined using functional language are found to be patent ineligible under 35 U.S.C. § 101.


Led by Shareholder/Attorney Robert Lord, the patent prosecution team at FBFK has, combined, over 100 years’ experience dealing with patentable subject matter issues under 35 U.S.C. § 101, with several team members having more than 20 years’ experience each. FBFK’s patent prosecution team has proven skill in obtaining patents in areas where patentable subject matter (under 35 U.S.C. § 101) is difficult. In fact, we historically achieve an unheard-of 80-90 percent allowance rate. Please contact us if you have specific questions regarding patentable subject matter issues, or other patent-related issues.