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not in mpep

101 - cases cited in BPAI decisions that are not in MPEP
 
BILSKI
 
The claim does not involve the use of any machine or apparatus. Further, the claim does not involve the transformation of any physical objects or substances. As the court in Bilski noted, “[p]urported transformations or manipulations simply of public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances.” 545 F.3d at 963.
“[The Supreme] Court’s precedents establish that the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101. The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible ‘process.’” See Bilski v. Kappos, No. 08-964, 2010 WL 2555192, at *8 (June 28, 2010) (majority slip op. at Part–II–B1).
 
BILSKI
  
The law in the area of patent-eligible subject matter for process claims has recently been clarified by the Supreme Court in Bilski v. Kappos, 130 S. Ct. 3218, No. 08-964, 2010 WL 2555192 (U.S. June 28, 2010). The Court held that the term “process” as used in § 101, does not categorically exclude business methods. Id. at *9.

The Court is unaware of any argument that the “ordinary, contemporary, common meaning,”
Diehr, supra, at 182, of “method” excludes business methods. Nor is it clear how far a prohibition on business patents would reach, and whether it would exclude technologies for conducting a business more efficiently.
 
“At the same time, some business method patents raise special problems in terms of vagueness and suspect validity.” Id. (citing eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 397 (2006)) (Kennedy, J., concurring).

In searching for a limiting principle, this Court’s precedents on the unpatentibility of abstract ideas provide useful tools. See infra 12-15. Indeed, if the Court of Appeals were to succeed in defining a narrower category or class of patent applications that claim to instruct how business should be conducted, and then rule that the category is unpatentable because, for instance, it represents an attempt to patent abstract ideas, this conclusion might well be in accord with controlling precedent.
Id.
 
BURR
 
Here, the question is whether a network-based marketplace is a particular machine. ... “The Supreme Court has defined the term “machine” as “a concrete thing, consisting of parts, or of certain devices and combination of devices.” Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570 (1863).
 
CHATFIELD
 
"Software" claimed, for example, as "executable code" or as mere functions is similarly not within any of the four statutory categories and is not patent eligible subject matter. See In re Chatfield, 545 F.2d 152, 159 (CCPA 1976) (Rich, J., dissenting) ("It has never been otherwise than perfectly clear to those desiring patent protection on inventions which are new and useful programs for general purpose computers (software) that the only way it could be obtained would be to describe and claim (35 U.S.C. § 112) the invention as a 'process' or a 'machine.'"). It is now also common to claim software as a "manufacture" by reciting storing program code stored on a tangible medium that, when executed, will perform a method. But, software per se is not a "manufacture" under § 101.

COCHRANE
 
“A process is . . . an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.” Cochrane v. Deener, 94 U.S. 780, 788 (1877).
 
GUTTA
 
If the machine (or article of manufacture) claim involves a mathematical algorithm and fails either prong of our two-part inquiry, then the claim is not directed to patent-eligible subject matter under § 101. Ex parte Gutta, No. 2008-4366, 2009 WL 2563524 (BPAI 2009) (per curiam) (expanded panel), at *1.
 
HINIKER

As set forth in In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), "[t]he name of the game is the claim."

LANGEMYER

 
Cf. Ex parte Langemyer, 89 USPQ2d 1988 (BPAI 2008) (informative):

Nominal recitations of structure in an otherwise ineligible method fail to make the method a statutory process. See
Benson, 409 U.S. [63,] 71-72. As Comiskey recognized, “the mere use of the machine to collect data necessary for application of the mental process may not make the claim patentable subject matter.” Comiskey, 499 F.3d at [1365,] 1380 (citing In re Grams, 888 F.2d 835, 839-40 (Fed. Cir. 1989)). Incidental physical limitations, such as data gathering, field of use limitations, and post-solution activity are not enough to convert an abstract idea into a statutory process. In other words, nominal or token recitations of structure in a method claim do not convert an otherwise ineligible claim into an eligible one. To permit such a practice would exalt form over substance and permit claim drafters to file the sort of process claims not contemplated by the case law. Cf., Flook, 437 U.S. [584,] 593 (rejecting the respondent's assumption that “if a process application implements a principle in some specific fashion, it automatically falls within the patentable subject matter of § 101,” because allowing such a result “would make the determination of patentable subject matter depend simply on the draftsman's art and would ill serve the principles underlying the prohibition against patents for ‘ideas' or phenomena of nature.”). In this case, we decline to allow clever claim drafting to circumvent the principles underlying the Supreme Court's interpretation for “process.” The only recitation of structure is in the nominal recitation in the preamble citing a “method executed in a computer apparatus.” This recitation is so generic as to encompass any computing system, such that anyone who performed this method in practice would fall within the scope of these claims. Thus, the recitation of a computer apparatus in the preamble is not, in fact, a limitation at all to the scope of the claim, and the claim is directed, in essence, to the method performed by any means. As such, we fail to find that this recitation alone requires the claimed method to include a particular machine such that the method qualifies as a “process” under § 101. We will not allow such a nominal recitation in the preamble to convert an otherwise ineligible claim into an eligible one.
 
MICROSOFT

Significantly, "Abstract software code is an idea without physical embodiment." Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007). The unpatentability of abstract ideas was confirmed by the U.S. Supreme Court in Bilski v. Kappos, No. 08-964, 2010 WL 2555192 (June 28, 2010).
 
Nuijten

“If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007).

"Our reviewing court has recently held that transitory, propagating signals, such as carrier waves, are not within any of the four statutory categories (process, machine, manufacture or composition of matter). Therefore, a claim directed to computer instructions embodied in a signal is not statutory under 35 U.S.C. § 101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) "

See In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007) ("If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful."). "Manufactures" are tangible articles or commodities. Id. at 1356. Thus, a "signal" cannot be patentable subject matter because it is not within any of the four categories. Id. at 1357. Similarly, a "paradigm" does not fit within any of the four categories. In re Ferguson, 558 F.3d 1359, 1366 (Fed. Cir. 2009).

“If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007). “A transitory, propagating signal . . . is not a ‘process, machine, manufacture, or composition of matter’ [under 35 U.S.C. § 101]” and therefore does not constitute patentable subject matter under § 101. Id. at 1357.

“A transitory, propagating signal is not a ‘process, machine, manufacture, or composition of matter.’ Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101.” In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007), “If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.” Id. at 1354, reh’g en banc denied, 515 F.3d 1361 (Fed. Cir. 2008), cert. denied, __ U.S. __, 127 S. Ct. 70 (2008).

A computer data signal embodied in a carrier wave is a transitory, propagating signal not within any of the four statutory categories and, therefore, non-statutory. See In re Nuijten, 500 F.3d at 1357.

 
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