Functional claiming = abstract idea! 

In step one of the Alice patentable-subject-matter test under 35 U.S.C. § 101, the Fed. Cir. normally reviews the claim and specification and then looks at its case law to see if the claim recites subject matter on the forbidden list of abstract ideas (see my prior posts) to determine if the claim is directed to an abstract idea. The claim may recite sufficient details such that it isn’t considered to be directed to the abstract idea. In today’s 10Tales v. Tiktok Fed. Cir. case (nonprecedential), however, the court seemed to flip that around and focus mainly on whether the claim was functionally drafted in striking down the claim. The court made it clear that “abstract” means lack of specificity and concreteness and thus functionally drafted claims recite an abstract idea. I don’t think it’s a stretch to say the court was stating this for any subject matter.

For step one of the Alice test, the court stated: “‘[a]s reflected repeatedly in our cases,’ claims can be ‘abstract’ under step one when they lack the ‘specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it.” Further, the court stated: “[t]he claim itself ‘must identify “how” that functional result is achieved by limiting the claim scope to structures specified at some level of concreteness….'” Because the claim was result oriented, the court held that “the claim is drawn to the underlying idea itself, i.e., presenting personalized content to a user based on information about the user.”

At step two, the court again criticized the lack of details: “while the inventor…may have had the foresight of retrieving user information from social networks as a means for personalizing digital content, that idea, without more specificity reflected in the claim, is still an abstract idea, and thus, cannot provide the inventive concept at step two.”

I think this case serves as a warning for functionally drafted claims regardless of their subject matter.