35 U.S.C. 101: Patentable Subject Matter

In his most recent “top-ten” paper — Hal Wegner identifies four pending appeals that challenge the court’s current broad patentable subject jurisprudence:

  • In re Nuijten (SN 09/211,928);
  • In re Comiskey (SN 09/461,742);
  • In re Bilski (SN 08/833,892);
  • In re Ferguson (SN 09/387,823)

It is quite possible that something from this set of cases will eventually produce a Supreme Court decision. In 2006, the Supreme Court initially granted certiorari on the issue of subject matter patentability in Metabolite v. LabCorp. That case was later dismissed without decision (as improvidently granted).  However, a block of justices appear ready to apply new subject matter limits once the right case comes along.

In Nuijten, the PTO refused to issue a patent on a novel type of signal unless the patentee included a limitation directed to a specific mode of transmission (e.g., smoke signal, electromagnetic, etc.). Nuijten argues that bares signals should be patentable subject matter under Section 101. That case was argued in February 2007, and a decision is expected soon. IPO’s brief supports Nuijten and broad application of patentable subject matter.

In Comiskey, the CAFC requested supplemental briefing on patentable subject matter issues. The claims involve a method of handling arbitration (that does not require any machine assistance).  Section 101 was not raised by the Examiner, Board, or PTO Solicitor, but was raised sua sponte by the CAFC. During the appeal, the PTO representative indicated that Comiskey was successful in the current appeal (on obviousness) that the PTO would likely raise 101 issues on remand.

Bilski similarly involves claims to a method of managing risk, but is not tied to any particular form of technology – such as an electronic computer. AIPLA’s amicus brief supports Bilski and a broad interpretation of patentable subject matter. Briefing is now complete, but arguments have not been scheduled.

Ferguson is still in the briefing stage. (Ferguson’s opening brief, filed last week, was rejected as non-compliant). Although not yet public, Ferguson’s claims apparently claims a method “of marketing a product.”  Fish & Richardson is handling the appeal.

Notes:

15 thoughts on “35 U.S.C. 101: Patentable Subject Matter

  1. Re: posted by an—The pharma and biotech industries should take some small comfort in the fact that none of these cases implicate (directly) the same question presented in the Metabolite case. (Which doesn’t mean the Court (or that “block of justices”) won’t be able to throw a scare into everyone through dicta.)

    —A patent, held invalid by he District Court of Maryland based upon Metabolite is set for oral argument on August 8. — However, the appeal is more interesting as the first test of 271(e)1 since Merck v. Integra

  2. “I’m just a junior examiner, but it seems to me that what the board appears to be ignoring is the fact that the ability to display particular types of lists requires specific function, whereas displaying different novels does not require different function.”

    Wow …. looks like you are ready for the Board, if not at least a SPE position.

    “It further seems to me that this decision puts most software patents on shaky ground. I’ve seen a good number of claims to computer programs on readable media whose ultimate utility is to display information to the user.”
    Exactly (well, for those software patents that involve the display of information) …. all based upon ***ZERO*** case law cited by the Board.

    “According to the decision, the case law cited by Appellants was directed to computer programs, whereas the issue in question is regarding the patentable weight of nondescriptive functional material. I’m not an attorney, but I don’t see how citing irrelevant case law is substantially better than not citing case law at all.”

    Not knowing (or caring to look up the prosecution history), my guess is that the applicants made the arguments because the cases cited were computer-related, as was the claims. As such, I can see the relevance in applicants citing these cases.

    Again, beating a dead horse, not only did the Board not cite any case law for their interpretation, they didn’t even stop to think of the potential broad-reaching consequences of their decision. Fortunately, this case was not intended to be binding precedent. However, when I take a case to the Board, I expect them to get the law right. Most examiners are not attorneys so I don’t expect them to understand all the nuances of the law …. but I do expect the Board not to come up with the type of poorly-reasoned BS that I read in this case.

  3. “The second claims a computer readable medium — a physical device. The first claims software in the abstract, which is not physical (note that, while the software is “embodied” on the computer readable medium, it doesn’t change the fact that the applicant hasn’t claimed the physical computer readable medium).”

    While that’s certainly the PTO’s position, it doesn’t appear to me that software not on stored computer readable medium would directly infringe either claim. You have to be pretty picky about which words in the preamble you chose to give weight to and which you elect to ignore to come up with the PTO’s interpretation.

    The real distinction between the two seems to be completelt a matter of form rather than of substance. I’m not aware of court decisions directly on point supporting the PTO position. On the other hand, during prosecution before the office there would seem to be very little reason not to write the claims in the PTO’s safe harbor format. If there is really no difference in scope, why fight that battle? How much of a client’s money could it be worth?

  4. “Again though, I’m just a junior examiner, so what do I know.”

    Well in-training,
    At least you are putting on your thinking cap and trying to make the gears in your head spin.

    There is a famous French painting from the existential period:
    link to tevanalexander.com

    The sign (label) says “This is not a pipe”.
    When you think about it for a moment, that is true. It is merely a painting of a smoker’s pipe.

    But then when you think some more, you realize it all depends on what you definition of “is” is (as Bill Clinton was fond of saying). It all depends on what you definition of “This” is. It all depends on what you definition of “pipe” is.

    One can generate similar combinations of words to describe a disc with patterns of optical pits inscribed in it: This is not software, This is not ___ (fill in the blank). Word games.

  5. According to the decision, the case law cited by Appellants was directed to computer programs, whereas the issue in question is regarding the patentable weight of nondescriptive functional material. I’m not an attorney, but I don’t see how citing irrelevant case law is substantially better than not citing case law at all.

    As for patentable weight of nondescriptive functional material, again, MPEP 2106.01:

    “USPTO personnel should determine
    whether the claimed nonfunctional descriptive material
    be given patentable weight. USPTO personnel
    must consider all claim limitations when determining
    patentability of an invention over the prior art. In re
    Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 403-04
    (Fed. Cir. 1983). USPTO personnel may not disregard
    claim limitations comprised of printed matter. See
    Gulack, 703 F.2d at 1384, 217 USPQ at 403; see also
    Diehr, 450 U.S. at 191, 209 USPQ at 10. >>However,
    USPTO personnel need not give patentable weight to
    printed matter absent a new and unobvious functional
    relationship between the printed matter and
    the substrate.<< See In re Lowry, 32 F.3d 1579, 1583-84,
    32 USPQ2d 1031, 1035 (Fed. Cir. 1994); In re Ngai,
    367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004).”

    (emphasis added)

    The key principle of the Board’s argument appears to be demonstrated on pg.18,l.10-12, “by this argument, a computer with a copy of the latest novel on its hard drive would patentably distinguish over another computer with a different novel.” I’m just a junior examiner, but it seems to me that what the board appears to be ignoring is the fact that the ability to display particular types of lists requires specific function, whereas displaying different novels does not require different function. Now, whether that function is unobvious as per the segment of the MPEP cited above, I don’t know.

    It further seems to me that this decision puts most software patents on shaky ground. I’ve seen a good number of claims to computer programs on readable media whose ultimate utility is to display information to the user. If the specific information being displayed is not given patentable weight, that seems to imply that those computer programs are, in general, patentably indistinct from one another. e.g., a computer program that generates and displays circuit routing information to the user is unpatentable over a computer program that generates and displays financial account information to the user, since the information being generated and displayed has no bearing on the patentability of the claim.

    Actually, stated that way – is this really a matter of narrowing the claims? Generic broad processes like ‘generating’ and ‘displaying’ might not be patentable regardless of what’s being generated/displayed, but Applicant could claim the specific steps of ‘generating’, and that would likely be patentably distinct, right?

    Again though, I’m just a junior examiner, so what do I know.

  6. I had a chance to peruse the Ex parte Patullo decision. I’m not sure what century these members of the Board think we are in, but the type of language recited in the claims, albeit perhaps “functional descriptive material,” has always been given patentable weight in the claims I’ve dealt with and in the prior art I have reviewed.

    On page 18, they conclude “the contents of the listing and display are considered, but given no patentable weight.” Although they call Appellants’ argument “creative [but] unpersuasive,” at least Appellants cited case law that these limitations should be given patentable weight. The Board, however, cited no case law for their conclusion.

    Although I dislike it when Examiner’s conjure up non-existent law to support their legal conclusions, I recognize that most Examiner don’t know any better. However, when the Board does it, I become worried because the board should definitely know better.

    This collection of the Board also appears to be unaware of the number of patents issued to types of printed material which refer to “printed information” and “indicia” in the claims.

  7. Training academy students have not been instructed to distinguish between program on media vs. media comprising program.

    MPEP 2106.01 states:
    “… Both types of “descriptive material” are nonstatutory
    when claimed as descriptive material per se, 33
    F.3d at 1360, 31 USPQ2d at 1759. When functional
    descriptive material is recorded on some computer-readable
    medium, it becomes structurally and functionally
    interrelated to the medium and will be statutory
    in most cases since use of technology permits the
    function of the descriptive material to be realized.”

    I suppose it can be argued that the first example claims only the program, but the language of the claim doesn’t reasonably support that argument. Specifically, neither instance reads on computer programs per se, regardless of the word order.

  8. exmnR,
    I haven’t kept tabs of all citations, but there have been a recent string of Board of Appeal cases that mention “functional descriptive matter”. It seems that this is the direction the USPTO BOPAI is heading towards as sort of an analog to the “technical effects” test of the EPO.

    One such “functional descriptive matter” case is Ex parte PASQUALE A. PATULLO Appeal 2007-1315 Application 09/828,437 Technology Center 3600 Decided: July 3, 2007
    link:
    link to des.uspto.gov

  9. “thanks, but I understand why the 2nd is statutory. I don’t really get why the 1st is not. Effectively, they seem to be claiming the same thing. It seems like what would infringe one would the other. Maybe there is somevery subtle difference? It seems like splitting a very fine hair to me.”

    The second claims a computer readable medium — a physical device. The first claims software in the abstract, which is not physical (note that, while the software is “embodied” on the computer readable medium, it doesn’t change the fact that the applicant hasn’t claimed the physical computer readable medium).

  10. thanks, but I understand why the 2nd is statutory. I don’t really get why the 1st is not. Effectively, they seem to be claiming the same thing. It seems like what would infringe one would the other. Maybe there is somevery subtle difference? It seems like splitting a very fine hair to me.

    examinR

  11. Can anyone here give me any insight on this 101 issue that we have seen come up in the office? Preferably any case law to suppoert one side or the other.

    We are being told that if a claim recites “a computer program stored on a computer readable medium, wherein the program contains instructions to do X, Y, and Z” it is NOT statutoy.
    Conversely, if a claim recited “a computer readable medium storing a computer program, wherein the program contains instructions to do X, Y, and Z” it IS statutory.

    The reasoning being the 1st example is just claiming a “program”, which is not statutory in itself while the 2nd example is claiming the medium (a “product”) which is statutory.

    Can anyone here provide any opinions or case law to support this?

    an examinR

  12. The pharma and biotech industries should take some small comfort in the fact that none of these cases implicate (directly) the same question presented in the Metabolite case. (Which doesn’t mean the Court (or that “block of justices”) won’t be able to throw a scare into everyone through dicta.)

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