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New CAFC Decisions

Last week, two decisions regarding what constitutes patentable subject matter under 35 USC 101 came down from the CAFC:
In re Nuijten and In re Comiskey.

I must admit, I haven't even bothered to read the Nuijten decision. Signals are still unpatentable under 101. No change there. *Yawn*.
The only news here is that the Court was given the opportunity to decide that signals are patentable, and declined to do so (albeit with a dissent from Judge Linn).

The Comiskey decision was a bit more interesting. Layman's analysis, much of which having been gleaned from discussions on other blogs:

The decision seems to roll back the BPAI decision handed down in Ex Parte Lundgren, at least a bit.

The Lundgren decision struck the 'technological arts' test, which roughly covered processes having no hardware/machine/computer involved. (When Lundgren came out, I thought I'd heard the last of that 'mental steps' test; guess not). Now, we are told in Comiskey that "the patent statute does not allow patents on particular systems that depend for their operation on human intelligence alone...the application of human intelligence to the solution of practical problems is not in and of itself patentable."

So if you've got a process that doesn't utilize a machine, it needs to involve more than the application of human intelligence alone.

BUT, interestingly, simply including a machine does not necessarily render a process patentable (in the non-obvious sense), either.

"When an unpatentable mental process is combined with a machine, the combination may (my emphasis) produce patentable subject matter...While the mere use of the machine to collect data necessary for application of the mental process may not make the claim patentable subject matter, these claims [the claims at issue in the Comiskey decision] in combining the use of machines with a mental process claim patentable subject matter."
"The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness."

So, it seems that you can get past the 101 bar by simply incorporating a machine or computer to your mental process claims, but if the computer is doing something otherwise obvious (like just storing data and spitting it back out, for instance), your claim is presumed to be obvious. This makes sense, sort of a natural extension of In re Venner's 'it is not "invention" to broadly provide a mechanical or automatic means to replace manual activity which has accomplished the same result'.

On the other hand, if your machine or computer is doing something not so obvious, like maybe actually using some set of rules or artificial intelligence to implement that claimed mental process, well then maybe your claim might be patentable.
(It would really be great if the Court would publish their decisions, give the public a week or so to consider them, and then have a question and answer session so we can figure out what they actually meant.)

So, what does this do to/for examiners? Doesn't seem like much, does it?

As I said, Nuijten doesn't seem to do anything but maintain the status quo.

Even the Comiskey decision doesn't seem to be all that ground breaking, other than the contrast with Lundgren; just a bit of clarification.

I guess we'll have to wait and see what OPLA thinks.

Full post as published by Just a Patent Examiner on September 25, 2007 (boomark / email).