In this case, the Federal Circuit held that methods that employ only human intelligence without involving machines, manufactures, or compositions of matter do not qualify as statutory suject matter under 35 U.S.C. Section 101 because they are directed to abstract ideas.
According to the Comiskey court, mental processes (or processes of human thinking) standing alone are not patentable even if they have a practical application.
The Court concluded that:
It is thus clear that the present statute does not allow patents to be issued on particular business systems—such as a particular type of arbitration—that depend entirely on the use of mental processes. In other words, the patent statute does not allow patents on particular systems that depend for their operation on human intelligence alone, a field of endeavor that both the framers and Congress intended to be beyond the reach of patentable subject matter. Thus, it is established that the application of human intelligence to the solution of practical problems is not in and of itself patentable.
The case can be found here: http://www.fedcir.gov/opinions/06-1286.pdf
24 September 2007
In re Petrus A.C.M. Nuijten, 2007
This case has been decided by the Court of Appeals for the Federal Circuit.
The decision marks the death of signal claims.The issue on appeal was whether the Board of Appeals erred when it affirmed the Patent Examiner's final rejection of Claims 14 and 22-24 of Mr. Nuijten's patent application under 35 U.S.C. 101 as being directed to non-statutory subject matter. More specifically, the Court was to decide whether the invention of a signal, which is otherwise patentable when stored in a physical storage medium, is in and of itself patentable subject matter. The case relates to U.S. Patent Application Serial No. 09/211,928 for an invention "Embedding Supplemental Data in an Encoded Signal" which relates to signal watermarking. The apparatus claims were found to be statutory and allowable over the prior art.
Independent Claim 14, which is the subject of the appeal, recites:
14. A signal with embedded supplemental data, the signal being encoded in accordance with a given encoding process and selected samples of the signal representing the supplemental data, and at least one of the samples preceding the selected samples is different from the sample corresponding to the given encoding process.
The court could not fit a ‘signal’ into any of the four categories (process, machine, manufacture, or composition of matter).
Because a signal does not fit within a predefined category, the Federal Circuit concluded that a signal is not statutory subject matter.
The decision can be found here: http://www.fedcir.gov/opinions/06-1371.pdf
p.s., The applicant filed a petition for certiorari in June 2008 to overturn the Federal Circuit’s decision.
The decision marks the death of signal claims.The issue on appeal was whether the Board of Appeals erred when it affirmed the Patent Examiner's final rejection of Claims 14 and 22-24 of Mr. Nuijten's patent application under 35 U.S.C. 101 as being directed to non-statutory subject matter. More specifically, the Court was to decide whether the invention of a signal, which is otherwise patentable when stored in a physical storage medium, is in and of itself patentable subject matter. The case relates to U.S. Patent Application Serial No. 09/211,928 for an invention "Embedding Supplemental Data in an Encoded Signal" which relates to signal watermarking. The apparatus claims were found to be statutory and allowable over the prior art.
Independent Claim 14, which is the subject of the appeal, recites:
14. A signal with embedded supplemental data, the signal being encoded in accordance with a given encoding process and selected samples of the signal representing the supplemental data, and at least one of the samples preceding the selected samples is different from the sample corresponding to the given encoding process.
The court could not fit a ‘signal’ into any of the four categories (process, machine, manufacture, or composition of matter).
Because a signal does not fit within a predefined category, the Federal Circuit concluded that a signal is not statutory subject matter.
The decision can be found here: http://www.fedcir.gov/opinions/06-1371.pdf
p.s., The applicant filed a petition for certiorari in June 2008 to overturn the Federal Circuit’s decision.
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