In re Comiskey (CAFC 2006-1286)

Comiskey thought he had a business method patent in hand. The CAFC didn't care that it was about business, but that it claimed a mental process.

Comiskey’s application may be viewed as falling within the general category of “business method” patents. At one time, “[t]hough seemingly within the category of process or method, a method of doing business [was] rejected as not being within the statutory classes.” State Street Bank, 149 F.3d at 1377 (quoting MPEP § 706.03(a) (1994)). In State Street Bank, we addressed the “business method” exception to statutory subject matter, and stated that “[w]e take this opportunity to lay this ill-conceived exception to rest.” Id. at 1375. State Street Bank involved “a data processing system for managing a financial services configuration of a portfolio established as a partnership,” and “[g]iven the complexity of the calculations, a computer or equivalent device [wa]s a virtual necessity to perform the task.” Id. at 1371. We held that this system was patentable, concluding that patentability does “not turn on whether the claimed subject matter does ‘business’ instead of something else.” Id. at 1377.

Although it has been suggested that State Street Bank supports the patentability of business methods generally, State Street Bank explicitly held that business methods are “subject to the same legal requirements for patentability as applied to any other process or method.” Id. at 1375; see also MPEP § 2106(I) (Rev. 4, Oct. 2005) (“MPEP”) (“Claims should not be categorized as methods of doing business. Instead, such claims should be treated like any other process claims.”).

Patentable subject matter under the 1952 Act is extremely broad. Given the breadth of the categories listed in § 101, it is not surprising that the legislative history of the 1952 Act noted that “Congress intended statutory subject matter to include anything under the sun that is made by man.” Chakrabarty, 447 U.S. at 309 (quoting S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H.R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952) (internal quotation marks omitted)). On the other hand, the Supreme Court has made clear that this statement does “not . . . suggest that § 101 has no limits or that it embraces every discovery.” Id.

“Abstract ideas” are one type of subject matter that the Supreme Court has consistently held fall beyond the broad reaches of patentable subject matter under § 101. As early as Le Roy v. Tatham, 55 U.S. 156 (1852), the Supreme Court explained that “[a] principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.” Id. at 175. Since then, the unpatentable nature of abstract ideas has repeatedly been confirmed.

The prohibition against the patenting of abstract ideas has two distinct (though related) aspects. First, when an abstract concept has no claimed practical application, it is not patentable... Second, the abstract concept may have a practical application. The Supreme Court has reviewed process patents reciting algorithms or abstract concepts in claims directed to industrial processes. In that context, the Supreme Court has held that a claim reciting an algorithm or abstract idea can state statutory subject matter only if, as employed in the process, 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. 35 U.S.C. § 101. As the PTO notes, “[t]he Supreme Court has recognized only two instances in which such a method may qualify as a section 101 process: when the process ‘either [1] was tied to a particular apparatus or [2] operated to change materials to a ‘different state or thing.’’”... In re Schrader, 22 F.3d 290, 295 (Fed. Cir. 1994) (holding when a claim does not invoke a machine, “§ 101 requires some kind of transformation or reduction of subject matter”). Thus, a claim that involves 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 § 101. See Diehr, 450 U.S. at 184 (holding a process that involved calculations using the “Arrhenius equation” patentable because the claim “involve[d] the transformation of an article, in this case raw, uncured synthetic rubber, into a different state or thing”). For example, we have found processes involving mathematical algorithms used in computer technology patentable because they claimed practical applications and were tied to specific machines.

However, mental processes—or processes of human thinking—standing alone are not patentable even if they have practical application. The Supreme Court has stated that “[p]henomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.” Benson, 409 U.S. at 67 (emphasis added)... It is thus clear that the present statute does not allow patents to be issued on particular business systems - such as a particular type of arbitration - that depend entirely on the use of mental processes. In other words, the patent statute does not allow patents on particular systems that depend for their operation on human intelligence alone, a field of endeavor that both the framers and Congress intended to be beyond the reach of patentable subject matter. Thus, it is established that the application of human intelligence to the solution of practical problems is not in and of itself patentable.

Comiskey harkens back to the Lundgren decision, which ditched the "technological arts" test. In Comiskey, that test reappears - merely having a computer processor act in the process puts Comiskey's claims back in play, though facing obviousness if the process had been done before.

The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness. Moreover, there is no pertinent evidence of secondary considerations because the only evidence offered is of long-felt need for the unpatentable mental process itself, not long-felt need for the combination of the mental process and a modern communication device or computer.

The CAFC put a footnote to the obviousness issue. In referring to claims to software processing of nominally mental processes, the court concisely posted the post-KSR rule of thumb that casting previously known methods into software, or computerizing mechanical devices, is no longer patentable. Adding little novelties means nothing in hindsight.

The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness.¹⁶

¹⁶ See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (“Accommodating a prior art . . . device . . . to modern electronics would have been reasonably obvious to one of ordinary skill in [the art]” because “[a]pplying modern electronics to older . . . devices has been commonplace in recent years.”); see also KSR Int’l Co. v. Teleflex Inc., 127 S. Ct 1727, 1743-44 (2007) (addition of a well-known electronic sensor to a well-known mechanical adjustable pedal would have been obvious); Dann v. Johnson, 425 U.S. 219, 220, 230 (1976) (finding it obvious to combine the modern computer program described in the patent with “existing machine systems in the banking industry”).