Methods Dependant Upon Human Thought Are Unpatentable

In Re Comiskey, [2006-1286](September 20, 2007)[DYK, Michel, and Prost] The Federal Circuit CHEL, Chief Judge, DYK and PROST, Circuit Judges. The Federal Circuit did not reach the Board’s obviousness rejection because it concluded that Comiskey’s claims are unpatentable subject matter under 35 U.S.C. § 101.
SIGNIFICANCE: Methods that depend for their operation on human intelligence alone are not patentable subject matter.
BRIEF: Comiskey’s patent application claims a method and system for mandatory arbitration involving legal documents, such as wills or contracts. According to the application, the claimed "program . . . requires resolution by binding arbitration of any challenge or complaint concerning any unilateral document . . . [or] contractual document." The PTO argued that Comiskey’s claims were directed at an unpatentable abstract idea, and not a patentable process, because they neither were tied to a particular machine nor operated to change materials to a different state or thing. Rather the claims impermissibly "encompasse[d] a method of controlling how humans interact with each other to resolve a dispute, based on a human arbitrator’s perception of the dispute." It is well-established that "[t]he first door which must be opened on the difficult path to patentability is § 101." The Federal Circuit said that Comiskey’s application may be viewed as falling within the general category of "business method" patents. At one time,though seemingly within the category of process or method, a method of doing business was rejected as not being within the statutory classes.
The Federal Circuit said that 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.” The Federal Circuited noted that the very cases of this court that recognized the patentability of some business methods have reaffirmed that abstract ideas are not patentable. The Federal Circuit said that 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.
The Federal Circuit examined the Supreme Court's decision in Diehr, where the Supreme Court confirmed that a process claim reciting an algorithm could state statutory subject matter if it (1) is tied to a machine or (2) creates or involves a composition of matter or manufacture. The Court concluded that "[t]ransformation and reduction of an article ‘to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines. However, mental processes—or processes of human thinking—standing alone are not patentable even if they have practical application. The Federal Circuit noted that in Flook the Supreme Court held the application unpatentable because "if a claim [as a whole] is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory."
The Federal Circuit concluded that: "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." The Federal Circuit said that Comiskey’s independent claims 1 and 32 claim the mental process of resolving a legal dispute between two parties by the decision of a human arbitrator. The Federal Circuit concluded that majority of the claims did not constitute patentable subject matter, and that the remainder, adding conventional devices may be obvious. The Federal Circuit remanded the application to the Board.