This involved a patent entitled “Method and system for placing a purchase order via a communications network.”
The Patent Examiner rejected all 75 claims on the basis of obviousness and non-statutory subject matter. The Patent Appeal Board upheld the decision on non-statutory subject matter.
Assessing patentable subject matter requires consideration of the form and substance of the claims. Form is the language and substance is the nature of the claimed invention and a determination of what it adds to human knowledge. The form and substance must fit into the statutory categories of invention of new and useful art, process, machine, manufacture or composition of matter or any improvement thereof. Non-technological matter and business methods are excluded, non-patentable, subject matter.
The method of claims 1–43 and 51–75 are directed to methods in a client system or computer system for ordering items. This is a method of purchasing goods which is a method of doing business and therefore excluded subject matter.
Claims 44–50 are in form directed to a client system which is a physical object and therefore in form directed to a machine.
Claims 44–50 in substance, however, are the same as the excluded method claims. The actual discovery is a new use of a “cookie”; single action ordering without a checkout step or entry of account information; advantages of a registered user; and benefits of fewer steps. These are just rules for ordering. These rules do not change the character or condition of a physical object. They are non-technological methods of doing business and therefore unpatentable.