In Re Bilski.

The applicable test to determine whether a claim is drawn to a patent-eligible process under § 101 is the machine-or-transformation test.

(Fed. Cir. 2008, 07-11130, en banc)

Bernard L. Bilski and Rand A. Warsaw (collectively, “Applicants”) appealed from the final decision of the BPAI sustaining the rejection of all eleven claims of their U.S. Patent Application Serial No. 08/833,892 ( the “′892 application”).  Specifically, Applicants argued that the examiner erroneously rejected the claims as not directed to patent-eligible subject matter under 35 U.S.C. § 101, and that the Board erred in upholding that rejection. The appeal was originally argued before a panel of the court on October 1, 2007. Prior to disposition by the panel, however, the CAFC sua sponte ordered en banc review. Oral argument before the en banc court was held on May 8, 2008. The CAFC affirmed the decision of the BPAI, concluding that Applicants’ claims are not directed to patent-eligible subject matter, and in doing so, clarified the standards applicable in determining whether a claimed method constitutes a statutory “process” under § 101.

CONCLUSION

Because the applicable test to determine whether a claim is drawn to a patent-eligible process under § 101 is the machine-or-transformation test set forth by the Supreme Court and clarified herein, and Applicants’ claim here plainly fails that test, the decision of the Board is

AFFIRMED.

JW Note:  Further analysis to follow.  See background from AT! here.

JW Update 11/12/08:  Analysis with varying opinions on the impact of the decision is available from other patent law blogs here, here, and here.  Enjoy.

They Invented What? (No. 117)

U.S. Pat. No. 6,754,472: Method and apparatus for transmitting power and data using the human body.

JW Note:  Hoping you have a scary and safe Halloween!

 

What is claimed is:

1. A network of devices comprising:

          a first device for generating a first electrical signal;
          a second device including first circuitry requiring an electrical signal from an external source to operate, wherein the second device generates initialization information including at least power requirement information; and
          a body of a living creature for coupling the first device to the second device and for conducting the electrical signal from the first device to the second device and the initialization information from the second device to the first device, wherein the first and second devices establish a master and a slave relationship there between.