Patent Law

Scott Harris smoked. Also, State Street alive, sort of.

By Lawrence B. Ebert, Esq.

Lewis Ferguson, Darryl Costin and Scott C. Harris (collectively, ?Applicants?)
appeal from the final decision of the Board of Patent Appeals and Interferences
(?Board?) sustaining the rejection of all sixty-eight claims of their U.S. Patent Application
Serial No. 09/387,823 (?the ?823 application?). (...) Because we conclude that Applicants? claims are not
within the parameters of the statutory requirements and do not cover patent-eligible
subject matter, particularly in light of this court?s recent decision in In re Bilski, 545 F.3d
943 (Fed. Cir. 2008) (en banc), we affirm the decision of the Board.

The CAFC also noted:

The statute thus recites four categories of subject matter: processes, machines,
manufactures, and compositions of matter. But even if a claim may be deemed to fit
literally within one or more of the statutory categories, it may not be patent eligible. As
the Supreme Court has repeatedly cautioned: ?Phenomena of nature, though just
discovered, mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work.? Gottschalk v. Benson,
409 U.S. 63, 67 (1972); see also Bilski, 545 F.3d at 952 (collecting cases).

(...)

As this court phrased the machine-or-transformation test in Bilski:
A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a
particular machine or apparatus, or (2) it transforms a particular article into
a different state or thing.
Id. (emphasis in original) (citing Gottschalk, 409 U.S. at 70; Diamond v. Diehr, 450 U.S.
175, 192 (1981); Parker, 437 U.S. at 589 n.9; Cochrane v. Deener, 94 U.S. 780, 788
(1876)).

State Street is alive, sort of -->

Contrary to the concurrence?s assertion, we do not contend that this court
has overturned State Street Bank & Trust Co. v. Signature Financial Group, 149 F.3d
1373 (1998), but merely note that the ?useful, concrete and tangible result test? ?is
insufficient to determine whether a claim is patent-eligible under § 101,? Bilski, 545 F.3d
at 959, and ?is inadequate,? id. at 960 (reaffirming that ?the machine-or-transformation
test outlined by the Supreme Court is the proper test to apply? (emphasis added)), and
that ?those portions of our opinions in State Street and AT&T [Corp. v. Excel Commc?ns,
Inc., 172 F.3d 1352 (Fed. Cir. 1999),] relying on a ?useful, concrete and tangible result?
analysis should not longer be relied on,? id. at 960 n.19.

Relevant to Freeman-Abele-->

The decisions of the Board and the briefing and argument on appeal include
extensive discussion of a so-called ?useful, concrete, and tangible result? test. To avoid
confusion, we clarify here that in Bilski, this court considered whether this ?test? is valid
and useful and concluded that it is not. [citing to footnote 4, which states-->]

In Bilski, this court also rejected the so-called Freeman-Walter-Abele test,
the ?technological arts? test, and the ?physical steps? test. 545 F.3d at 959, 960, 960?
61. Because these ?tests? were not subjects of extensive argument in this case, we see
no need to revisit them here.

Full post as published by IPBiz on March 08, 2009 (boomark / email).