Imagine That IP Law Blog

Patent eligibility in the United States is governed by 35 U.S.C. § 101, which requires that an invention must fit within the categories of a process, machine, manufacture, or composition of matter. However, even if an invention falls into one of these categories, it may still be ineligible for patent protection due to judicial exceptions that exclude laws of nature, natural phenomena, and abstract ideas. A common issue arises when patents claim a desired result without providing the specific method or process for achieving that result. In this blog post, we explore the legal framework applied in cases where patents are challenged under § 101 for claiming an outcome without detailing how it is achieved.

The Problem with Result-Oriented Claims

Claims directed toward achieving a result, without specifying how to achieve that result, often fail to meet the patent eligibility requirements of § 101. Courts have repeatedly emphasized that patents must describe the method or process used to accomplish the claimed result rather than simply claiming the outcome itself. When a claim lacks this specificity, it risks being deemed abstract or based on a natural law, both of which are excluded from patent protection.

The Alice/Mayo Two-Step Framework

The Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank International  introduced a two-step test to determine patent eligibility under § 101:

1. Step 1: Is the claim directed to a patent-ineligible concept? Many cases involving result-oriented claims fail the first step of the Alice test because the claims are found to be directed toward an abstract idea or law of nature. For example, if the patent claims the result of achieving a biological or mechanical effect without describing the specific steps needed to cause that effect, it is often considered abstract.
2. Step 2: Does the claim contain an “inventive concept” that transforms the abstract idea into patent-eligible subject matter? Even if a claim is directed to an abstract idea, it can still be patentable if it includes an inventive concept. However, claims that merely describe the result without offering any inventive method or process to achieve it usually fail this second step. The courts look for some form of innovation that transforms the abstract idea into a concrete invention. If the patent only recites conventional or routine steps—such as applying a generic procedure or using standard components—it does not meet the inventive concept requirement.

Precedential Cases Supporting Ineligibility

Several Federal Circuit cases reinforce the principle that claims directed to a result without a concrete method are ineligible under § 101. Some of the key cases include:

• Interval Licensing LLC v. AOL Inc. (896 F.3d 1335): This case involved claims directed to an “attention manager” for displaying content on unused portions of a screen. The court found the claims to be result-oriented and invalid under § 101 because they did not recite a specific technological method for achieving the result. Similarly, claims that fail to describe how a desired result is achieved, whether it’s displaying information or performing a specific action, are often invalidated for being too abstract.
• American Axle & Manufacturing v. Neapco Holdings LLC (967 F.3d 1285): In this case, the court held that a patent claim must include sufficient specificity to transform it from merely stating a desired result to describing how that result is achieved. The claims in American Axle were directed toward reducing vibrations in a driveshaft but failed to specify how the driveshaft should be tuned. This failure to detail the method for achieving the result rendered the claims abstract and ineligible for patent protection.
• Free Stream Media Corp. v. Alphonso Inc. (996 F.3d 1355): The court in Free Stream emphasized that a claim must specify how the functional result is achieved. If a claim simply recites a desired outcome without specifying concrete steps or actions, it is considered abstract and ineligible. Whether it’s controlling media content or applying a technical effect, claims that don’t describe how the result is achieved fail to meet patent eligibility standards. (see Federal Circuit Invalidation of Targeted Advertising Claims Reaffirms Patent Subject Matter Eligibility Precedent but Recent Petition for Rehearing Looms: | Volpe Koenig (vklaw.com))
• In re Killian, 45 F.4th 1373 (Fed. Cir. 2022): In this case, the Federal Circuit reaffirmed that claims simply demanding a desired result, without specifying how to achieve that result, are directed to an abstract idea and are ineligible for patent protection. The court found that the claims, which related to determining Social Security Disability Insurance (SSDI) eligibility by analyzing data from two databases, lacked the necessary inventive process or method for processing the data. At the second step of the Alice test, the court further determined that the claims did not include any inventive concept, as they merely involved generic, routine data gathering and comparison—tasks that could be performed with or without a computer. As a result, the claims were deemed patent-ineligible under § 101 for failing to provide more than an abstract idea.
• Contour IP Holding LLC v. GoPro, Inc., 2024 U.S. App. LEXIS 22825 (Fed. Cir. 2024): In Contour, the Federal Circuit clarified that an improved result alone is insufficient to establish patent eligibility under § 101. The court held that claims must not only describe the desired outcome but also include a specific process or machinery for achieving that result. At issue were claims related to a point-of-view (POV) video camera that recorded high- and low-quality video streams in parallel and transmitted the lower-quality stream to a remote device in real time. The court found these claims patent-eligible because they provided a concrete technological solution to bandwidth limitations, moving beyond an abstract idea by detailing how to implement the process. In the second step of the Alice test, the court rejected the district court’s ruling that the claims were merely functional and concluded that they disclosed an inventive concept, thus transforming the abstract idea into patent-eligible subject matter. (see A Clear POV on Patent Eligibility Under 35 U.S.C. 101: Contour’s Claims Zoom Back Into Focus in Contour v. GoPro: | Volpe Koenig (vklaw.com))

Preemption Concerns in Result-Oriented Claims

One of the fundamental concerns underlying patent ineligibility under § 101 is preemption. When a patent claims a result without specifying how to achieve it, it risks monopolizing all methods of achieving that result. This is particularly problematic in cases where the result is based on natural laws or scientific principles, as broad, result-oriented claims can effectively block others from developing alternative methods to achieve the same result.

For example, if a patent broadly claims the application of a specific biological or physical process without detailing how that process is controlled or implemented, it could prevent others from finding innovative ways to apply the same natural law. Courts seek to avoid granting patents that claim an abstract result because they could preclude further development in the field by monopolizing a wide range of potential methods.

Lack of Inventive Concept

Under the second step of the Alice framework, courts must consider whether the claim includes an inventive concept sufficient to transform an abstract idea into a patentable invention. In many cases, claims that describe a result without explaining how to achieve it, fail this test. Courts look for a specific, novel way of accomplishing the claimed result that goes beyond routine or conventional steps. If the claim simply recites generic actions—such as identifying, applying, or measuring—without offering an inventive solution, it is likely to be found ineligible for patent protection.

Functional Claiming and Its Problems

Functional claiming refers to a type of claim that recites a function or result without specifying the technical steps or processes required to accomplish that function. Courts have consistently invalidated such claims for failing to meet the requirements of § 101.

For example, in In re Killian, claims aimed at determining SSDI eligibility were deemed abstract because they failed to specify how the eligibility determination was made, lacking technical details for achieving the result. Similarly, in American Axl, the court reiterated that features not explicitly claimed cannot be considered in the Mayo/Alice analysis.  The court relied on ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759 (Fed. Cir. 2019) and Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013), which confirmed that abstract concepts cannot be transformed into patent-eligible subject matter simply through detailed descriptions in the specification unless the claims themselves provide meaningful limitations. Therefore, functional claims are problematic because they fail to include specific, inventive steps necessary to move beyond an abstract idea, and merely describing the desired function is insufficient to meet patent eligibility requirements.

Conclusion

Claims directed toward achieving a result without detailing the method or process for accomplishing that result are often deemed ineligible under 35 U.S.C. § 101. The courts have consistently applied this principle to prevent the monopolization of abstract ideas, natural laws, or desired outcomes without an inventive concept. As illustrated by cases such as Interval Licensing, American Axle, In re Killian and Contour, the courts require patent claims to offer a specific, inventive method for achieving the claimed result.

For inventors and patent applicants, the lesson is clear: patents must provide more than a broad claim to a desired outcome. They must describe the concrete steps or processes required to achieve that outcome, along with an inventive concept that transforms the claim into something patent-eligible. Result-oriented claims that fail to specify how the result is achieved will continue to face significant challenges in the courts.