Anticipate This!™ | Patent and Trademark Law Blog

In Re Bilski.

Posted in Opinion Commentary by Jake Ward on October 30, 2008

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.

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: