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An Enablement Approach to Signal Patentability

By William F. Heinze

In "ANALYZING THE PATENTABILITY OF 'INTANGIBLE' YET 'PHYSICAL' SUBJECT MATTER" Sam Han proposes that, if a signal is in any way "made by man" (e.g., generated from an electronic transmitter, manipulated by a medical imaging system, etc.), then that signal would be statutory subject matter, and further analysis would be needed to determine patentability:

Once it is determined that the subject matter in question is statutory, the next inquiry would be to determine "[i]f he has truly stated the principle, nature and extent of his art or invention." O?Reilly v. Morse, 56 U.S. 62 (1853). This, in essence, is a § 112 analysis to determine whether the inventor has, through his written disclosure, sufficiently "enable[d] any person skilled in the art to which it pertains . . . to make and use the . . . invention."

It is worthwhile to note that the § 112 analyses is wholly independent of the § 101 analysis. § 101 simply determines whether the subject matter is "made by man," while § 112 determines whether the description of that subject matter is sufficiently complete. Thus, in the context of signals, if the signal in question is "made by man," the next step is to determine whether the written disclosure sufficiently enables one of ordinary skill in the art to generate such a signal.

. . . Consistent with Congress' intent, it appears that the language in § 101 provides for almost limitless possibilities in patentable subject matter. On the other hand, §§ 112, 102, and 103 contain limiting language on the issuing of patents (i.e., the invention must be sufficiently described, novel, and nonobvious).

"A signal is a physical phenomenon," comments Malcolm Mooneyon the Patently-O Blog. "You can patent the phonograph. You can patent a novel compartment for listening to music. But you can't patent the echo in the room. Besides, it's just a fat lady singing."

"A signal must be produced by some device or process," counters Raoul. "If the signal is new and non-obvious, mustn't it follow that also new/non-obvious are: the method for producing it, a tangible media storing it, a device for receiving and decoding it, something to generate the signal, you get the idea."

Full post as published by I/P Updates on February 13, 2008 (boomark / email).