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In Re Petrus A.C.M. Nuijten.

Posted in Opinion Commentary by Jake Ward on September 25, 2007

A “signal” is not patentable subject matter because it is not a tangible article or commodity. 

(Fed. Cir. 2007, 06-1371)


The issue before the CAFC was whether or not a signal is patentable subject matter?  Nuijten appealed a decision of the BPAI that maintained a rejection of his claims reciting a “signal” encoded in a particular manner.  The CAFC affirmed.

The technology at issue relates to a technique for reducing distortion induced by the introduction of “watermarks” into signals.  The Nuijten technique improved upon existing watermark technology by modifying the watermarked signal in a way that partially compensated for distortion introduced by the watermark.  Claim 14 at issue recites:

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.

In first construing the term “signal,” the CAFC determined that a signal is more than just data.  Some physical form for the signal is required – but the nature of the physical carrier is totally irrelevant to the issue of whether the signal constitutes statutory subject matter.  Instead, the appropriate inquiry was whether a transitory propagating signal is within any of the four statutory categories:  process, machine, manufacture, or composition of matter?  The CAFC addressed these categories as follows.

1) Process

The Supreme Court and this court have consistently interpreted the statutory term “process” to require action.  A process consists of doing something, and therefore has to be carried out or performed.  Nuijten noted that the claimed signal must be “encoded in accordance with a given encoding process.” However, the presence of acts recited in the claim does not transform a claim covering a thing—the signal itself—into one covering the process by which that thing was made.  The signal claims are not directed to a process.

2)  Machine

The Supreme Court has defined the term “machine” as “a concrete thing, consisting of parts, or of certain devices and combination of devices.” A transitory signal made of electrical or electromagnetic variances is not made of “parts” or “devices” in any mechanical sense. While such a signal is physical and real, it does not possess concrete structure in the sense implied by these definitions. A signal is clearly not a machine.

3)  Manufacture

The majority noted that this statutory category was the most difficult to analyze here.  Articles of manufacture are man-made, in the sense of having been encoded, generated, and transmitted by artificial means. However, artificiality is insufficient by itself to render something a “manufacture.” Under the statutory use of the term “manufacture” and dictionary definitions, “articles” of “manufacture” are defined as tangible articles or commodities.  A transient electric or electromagnetic transmission does not fit within that definition.

4)  Composition of matter

The Supreme Court has defined “composition of matter” to mean “all compositions of two or more substances and all composite articles.”  A signal comprising a fluctuation in electric potential or in electromagnetic fields is not a “composition[s] of matter.”

Accordingly, the CAFC held that a transitory, propagating signal cannot be patentable subject matter. 


Judge Linn dissented-in-part, arguing that the definition of a “manufacture” should not be limited to tangible, non-transitory things.  Instead, under an expansive view of the term “manufacture,” the dissent would hold that a signal that is a non-naturally occurring product of human ingenuity is patentable subject matter if it is otherwise new, useful, and non-obvious.

In Re Stephen W. Comiskey.

Posted in Opinion Commentary by Jake Ward on September 25, 2007

When an unpatentable mental process is combined with a machine, the combination may produce patentable subject matter. 

(Fed. Cir. 2007, 06-1286)

On appeal from the Board of Patent Appeals and Interferences (BPAI), the CAFC was asked to consider whether Comiskey’s “business method” claims constituted patentable subject matter under 35 U.S.C. § 101?   Comiskey’s claims recited a method and system for mandatory arbitration involving legal documents (such as wills or contracts).

The current 35 U.S.C. § 101 states:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title.

The PTO had argued that Comiskey’s independent claims were directed at an unpatentable abstract idea, and not a patentable process, because they were neither tied to a particular machine nor operated to change materials to a different state or thing.

The CAFC noted that “patentable subject matter under the 1952 Act is extremely broad,” but it is not without limits.  When an abstract concept has no claimed practical application, it is not patentable.  Mental processes—or processes of human thinking—standing alone are also not patentable even if they have a practical application.  The courts have consistently refused to find processes patentable when they merely claimed a mental process standing alone and untied to another category of statutory subject matter, even when a practical application was claimed.

The CAFC held that patents are not to be issued on particular business systems—such as a particular type of arbitration—that depend entirely on the use of mental processes.  Some of Comiskey’s claims did not require a machine, and were instead drawn to the use of human intelligence itself.  These claims were not patentable.

On the other hand, the CAFC observed that some of Comiskey’s claims recited a “module,” and that a broad interpretation of the term includes a computer.  The Supreme Court has held that a claim reciting the abstract concept can state statutory subject matter only if, as employed in the process, it is embodied in, operates on, transforms, or otherwise involves another class of statutory subject matter, i.e., a machine, manufacture, or composition of matter.  A claim that involves both a mental process and one of the other categories of statutory subject matter may therefore be patentable under § 101.  Accordingly, Comiskey’s claims that recited a “module” may be patentable.

AFFIRMED-IN-PART, VACATED-IN-PART and REMANDED to the PTO to determine whether the addition of general purpose computers or modern communication devices to Comiskey’s otherwise unpatentable mental process would have been non-obvious to a person of ordinary skill in the art.