That confuses me. First the SCOTUS says, we don’t have to decide whether the extra steps being less conventional would save the claim from 101 ineligibility. Then they say, the reason why we don’t have to and do not decide is because we have decided – it would not save the claim to only make the steps less conventional, because they also would have to “add something of significance.” We don’t have to decide, and we don’t decide, because we have decided and here is our decision. ??? I take “add something of significance” as alluding to the second part of the court’s earlier statement of why the “instructions” don’t save the claim from 101 ineligibility – they are steps that *must* be taken to apply the law, such that reciting those steps doesn’t save the claim from preempting all applications of the law of nature:

“These instructions add nothing specific to the laws of nature other than what is well-understood, routine, conventional activity, previously

engaged in by those in the field. ***And*** since they are steps that must be taken in order to apply the laws in question, the effect is simply to tell doctors to apply the law somehow when treating their patients.”

Slip op at 13.

Taken alone, the above passage seems to suggest that to reject/invalidate under 101, you have to show that any eligible portion of the claim is both old/obvious AND preempting. Another passage also suggests that merely finding the patent-eligible elements to be old or obvious is not enough by itself to reject/invalidate a claim:

“The Government, however, suggests in effect that the novelty of a component law of nature may be disregarded when evaluating the novelty of the whole. See Brief for United States as Amicus Curiae 27. But §§102 and 103 say nothing about treating laws of nature as if they were part of the prior art when applying those sections. Cf. Diehr, 450 U. S., at 188 (patent claims “must be considered as a whole”). And studiously ignoring all laws of

nature when evaluating a patent application under §§102 and 103 would ‘make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious.’ [citing Diehr]”

Slip op. at 21-22.