Improvements to mental processes as opposed to computer efficacy do not qualify as an inventive concept for establishing patent eligibility under the second step of Mayo/Alice. Here, for example, claims to an improvement in the design process for a logic circuit without recitation of any form of computer implementation was found to lack an inventive concept even though the improvement was acknowledged as being novel and nonobvious over the prior art. “[G]iven that the claims are for a mental process … as opposed to computer efficacy, [there is no] inventive concept that takes the Asserted Claims beyond their abstract idea.” It may therefore be best to specifically include at least some form of computer implementation of an otherwise mental process if that process can improve computer efficacy.
Background / Facts: The patents being asserted here are directed to translating a functional description of a logic circuit into a hardware component description of the logic circuit. The claims recite methods of changing one description of a level sensitive latch (i.e., a functional description), for example, into another description of the level sensitive latch (i.e., a hardware component description) by way of a third description of that very same level sensitive latch (i.e., assignment conditions). It is not disputed that the claims do not call for any form of computer implementation of the claimed methods. It is also not disputed that there has been no showing that the claims are anticipated by (35 U.S.C. § 102) or obvious over (35 U.S.C. § 103) the prior art.
Issue(s): Whether the novel use of assignment conditions in converting user descriptions into specific logic circuits can qualify as an inventive concept for establishing patent eligibility under the second step of Mayo/Alice.
Holding(s): No. “To the extent the Asserted Claims add anything to the abstract idea (i.e., translating a functional description of a logic circuit into a hardware component description of the logic circuit), it is the use of assignment conditions as an intermediate step in the translation process. [] But, given that the claims are for a mental process, assignment conditions, which merely aid in mental translation as opposed to computer efficacy, are not an inventive concept that takes the Asserted Claims beyond their abstract idea. Unlike the claims at issue in DDR Holdings and BASCOM, the Asserted Claims do not introduce a technical advance or improvement.”