not in mpep

101 - cases cited in BPAI decisions that are not in MPEP

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).

DEALERTRACK

Thus, the machine-or-transformation test remains a useful tool for determining whether a claim covers an abstract idea. See e.g., Dealertrack, Inc. v. Huber, 674 F. 3d 1315, 1331 et seq. (Fed. Cir. 2012).

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).