Computer-based automation of a desired result without reciting a particular method for achieving that result does not rise to the level of an inventive concept under step two of the Mayo/Alice framework for establishing subject matter eligibility. Here, for example, using a computer to link orders from a restaurant menu with the customers placing those orders was found to lack the requisite inventive concept under step two of the Mayo/Alice framework because there was no disclosure concerning how the linked orders would be technologically implemented. “Generally, a claim that merely describes an effect or result dissociated from any method by which it is accomplished is not directed to patent-eligible subject matter.” It may therefore be best to claim more specifically how a desired result is achieved technologically rather than merely the generic automation of that result.
Background / Facts: The patents on appeal here from rejection at the PTO under covered business method (“CBM”) proceedings are directed to computerized menu systems that can be used in the restaurant industry. The patent specifications disclose a first menu that has categories and items, and software that can generate a second menu from that first menu by allowing categories and items to be selected. The claims require that the second menu, after being modified, can be linked to a specific customer at a specific table.
Issue(s): Whether using a computer to link orders and customers in a restaurant rises to the level of an inventive concept under step two of the Mayo/Alice framework for establishing subject matter eligibility.
Holding(s): No. “Generally, a claim that merely describes an ‘effect or result dissociated from any method by which [it] is accomplished’ is not directed to patent-eligible subject matter.  Here, the linked orders claim limitation calls for the desired result of associating a customer’s order with said customer, and does not attempt to claim any method for achieving that result. … These claims cover the process of a restaurant server taking an order from a customer and keeping track of what customer placed that order, when done using a computer. We agree with the  petitioners that the claimed linking of orders to customers is a classic example of manual tasks that cannot be rendered patent eligible merely by performing them with a computer.”