In Re Stephen W. Comiskey.

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.