Paul Gardner is PRG’s Academic Director. In an e-mail, I asked him whether claim drafting techniques and strategies can be effectively tailored to satisfy Bilski’s requirements without sacrificing valuable claim scope. Mr. Gardner says yes it can be done most of the time (and PRG is developing the CLE to tell you how). For Gardner, an important consideration in Bilski is between “meaningful limits” versus “nonobvious limits.”
While Bilski requires that process claims recite machine or transformation limitations that “impose meaningful limits on the claim’s scope,” such limitations need not themselves be new or nonobvious. In other words, “meaningful limits” is not to be equated with “nonobvious limits,” and the “meaningful limits” requirement may be satisfied – insofar as Section 101 patent-eligibility is concerned – by machine or transformation limitations which, standing alone, are old or obvious. Once Section 101 patent-eligibility is found to be present, novelty and nonobviousness of the claim as a whole may be satisfied by a novel and nonobvious algorithm in combination with the structural machine or transformation recitations.
This difference is seen in the Federal Circuit’s discussion of Abele.
As Chief Judge Michel points out in Bilski, in Abele the CCPA found a broad method claim reciting only data manipulation steps (calculating the difference between two values and displaying the value of the difference) to be patent-ineligible, but found a dependent claim adding only that the data is “X-ray attenuation data produced in a two dimensional field by a computed tomography scanner” to be patent-eligible, because the data represented physical and tangible objects.
My own caution comes from the CAFC’s nonobviousness analysis in the 2007 Comiskey decision. In describing that case, I led with the headline “35 USC 101 Finds its Teeth (Biting into Nonobviousness)” because Comiskey could be read to indicate that any portion of an invention that constitutes nonstatutory subject matter will be considered de facto obvious. Under this reading of Comiskey, obvious but meaningful limitations may overcome §101, but leave the claim extremely vulnerable under §103(a). The Supreme Court’s 1978 Parker v. Flook decision follows this same line of thinking – treating a non-statutory (but previously unknown) algorithm “as though it were a familiar part of the prior art.”