In re Comiskey

(Fed. Cir. 2007)

Business methods that solely employ mental processes without machines, manufactures or compositions of matter are not patentable subject matter under 35 U.S.C. § 101, according to the Federal Circuit.

Comiskey filed a patent application claiming a method and system for mandatory arbitration involving legal documents, such as wills or contracts. Independent claim 1 was directed to a method for mandatory arbitration resolution regarding one or more unilateral documents. Independent claim 32 was virtually identical to claim 1, except that it referred to bilateral contractual documents rather than unilateral documents. Although the written description references “an automated system and method for requiring binding arbitration” and “a mandatory arbitration system through a computer network,” claims 1 and 32 do not reference the use of a mechanical device such as a computer.

Independent claim 17 was directed to a system for mandatory arbitration resolution regarding one or more unilateral documents. Claim 17 included, among other things, two modules, a database, and means for selecting an arbitrator. Claim 46 was practically identical to claim 17, except that it referred to contractual documents rather than unilateral documents.

Comiskey argued that the claimed subject matter was statutory subject matter under 35 U.S.C. § 101 because it did not fall within an exception to patentability, such as an abstract idea, natural phenomenon or law of nature. However, the Patent Office argued that the claims were directed to 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 Court characterized Comiskey’s application as a business method patent. The Court stated that business method patents are subject to the same legal requirements for patentability as applied to any other process or method. The Court stated that although the scope of patentable subject matter is extremely broad, there are limits. One such limit, according to the Court, is an abstract idea, which the Supreme Court has consistently held is beyond the broad reaches of patentable subject matter under 35 U.S.C. § 101.

The Court stated that when an abstract idea has no claimed practical application, it is not patentable subject matter. The Court also stated that an abstract idea can be statutory subject matter only if 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. According to the Court, for such a method to qualify as statutory subject matter under 35 U.S.C. § 101, (1) the process must be tied to a particular apparatus or (2) the process must operate to change materials to a different state or thing. Therefore, the Court stated that a claim involving both a mental process and one of the other categories of statutory subject matter (i.e., a machine, manufacture or composition) may be patentable under 35 U.S.C. § 101. According to the Court, mental processes standing alone are not patentable even if they have practical application.

The Court found that independent claims 1 and 32 seek to patent the use of human intelligence in and of itself and are therefore unpatentable. In addition, the Court found that independent claims 17 and 46 might be patentable because the broadest reasonable interpretation of the claims could require a computer as part of the system. The Court stated that, when an unpatentable mental process is combined with a machine, the combination may produce patentable subject matter. However, the Court warned that the routine addition of modern electronics to an otherwise unpatentable invention can create a prima facie case of obviousness.

Practice Tip: When filing a patent application that involves a business method, it may be benefi cial to include apparatus claims in order to connect to the process with another category of statutory subject matter such as a machine, manufacture or composition of matter.