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Subject matter eligibility (SME) is a requirement for patentability grounded in 35 U.S.C. § 101, which permits patenting of “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” However, the courts have long recognized three classes of non-patentable “judicial exceptions”—laws of nature, natural phenomenon, and abstract ideas. The overarching goal of the SME requirement, applied using the Supreme Court’s 2014 Alice test, is to prevent patentees from unfairly preempting or monopolizing classes of inventions falling under the judicial exceptions, thus chilling innovation.[1] The Alice test is a two-part test—if a claim is directed to a judicial exception (Step One), the claim is then analyzed to determine if it contains an inventive concept (Step Two) to meet the SME requirement. After Alice, SME rejections and invalidations increased causing a degree of uncertainty for patentees.[2]

In a recent precedential opinion, PowerBlock v. iFit[3], the Court of Appeals for the Federal Circuit (CAFC) gave patentees some breathing room for mechanically automated inventions.[4] Leading up to PowerBlock, the district court ruled that PowerBlock’s claims directed to motorized weight-selecting dumbbells were patent ineligible under the Alice test as being directed to the abstract idea of automation. On appeal, the CAFC reversed the district court, ruling that the claims were not directed to an abstract idea under Alice Step One.[5]

The claims at-issue recited “selectorizable” dumbbells having a plate selection mechanism actuated by an electric motor to engage a number of nested weight plates corresponding to a user-selected weight. Applying Alice, the district court concluded that the patent claimed an abstract idea and would “preempt any weight-selection and adjustment system.” However, the CAFC disagreed with the district court’s characterization of the invention as an abstract idea, and instead ruled that “[a]lthough claim 1 is broad, we do not agree that it provides no meaningful limitations on how to accomplish automated weight stacking.”

In reaching its decision, the CAFC focused on the meaningful limitations identified in the opinion, including the physical features of the dumbbell (i.e., a selectorized dumbbell with nested weight plates opposing a handle, and a movable selector with different adjustment positions), and an electric motor to operate the selector. Taking these features into account, the CAFC held that the “specific mechanical invention” sufficiently “provide[d] enough specificity and structure” to be patent eligible.

The CAFC also faulted the district court for relying on the presence of claim elements in the prior art in finding an abstract idea. In doing so, the CAFC cautioned that the claimed invention must be viewed as a whole, separate and apart from the prior art under Alice Step One. In short, the district court went through unnecessary gymnastics to characterize the claimed dumbbells as an abstract idea, leading to an improper outcome under Alice.

While suggesting that claims with details of structure can overcome SME challenges, PowerBlock does not answer the question of how much specificity and structure is required to render a claim patentable. Given the flexibility and non-preemptory aims of SME, this question could be technology-dependent, particularly for software or computer-implemented inventions. In PowerBlock, despite the motorized selector mechanism being generic, the minimally-defining structural features of the dumbbells were specific enough to meet the SME requirement. More specifically, claiming a functionally-defined weight selecting mechanism automated by a motor or other means did not render the claimed dumbbells as being directed to an abstract idea. For at least mechanical inventions, it may likewise be sufficient to claim automation generically, provided that other structural features of the invention are claimed with sufficient specificity. However, as always, patentees should ensure that all claim elements are sufficiently described in the specification. Patentees should also plan for backup positions in dependent or alternative independent claims directed to additional or other aspects of the invention to add to the structure and specificity of the invention.

[1] Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)

[2] See, e.g., Andrew A. Toole & Nicholas A. Pairolero, Adjusting to Alice, U.S. Patent and Trademark Office, April 2020 https://www.uspto.gov/sites/default/files/documents/OCE-DH_AdjustingtoAlice.pdf; Brandon Rash et al., Overlooked Patent Cases: Lessons on Section 101 Motions, Akin Gump Strauss Hauer & Feld LLP 2020 https://www.akingump.com/a/web/mhJ3FnBYSHiXfunVMTFwig/TULi7/law360-overlooked-patent-cases-lessons-on-section-101-motions.pdf.

[3] Powerblock Holdings, Inc. v. iFit, Inc. No. 2024-1177, slip op. (Fed. Cir. Aug. 11, 2025). U.S. Patent No. 7,578,771 was at issue.

[4] The distinction between mechanical vs. artificial intelligence (AI) automated inventions is important to note. In another recent precedential Federal Circuit opinion, Recentive Analytics, Inc. v. Fox Corp., the court ruled that AI automation, in the absence of specific improvements to the underlying technology or the algorithm itself, is likely an unpatentable abstract idea. See, e.g., Landman et al., Driving the Machine Learning Engine is not Enough, Wiggin and Dana Publications, May 13, 2025 https://www.wiggin.com/publication/driving-the-machine-learning-engine-is-not-enough/.

[5] In PowerBlock, the Federal Circuit needed only to reach the conclusion under Alice Step One that the claims were not directed to a judicial exception, to conclude that the claims were patent-eligible.