DO OVER FOR COMISKEY

In Re Comiskey, [2006-1286 (Serial No. 09/461,742)] (January 13, 2009) [DYK, Michel, Prost] The Federal Circuit vacated the panels original decision, and reassigned the opinion to the panel for revision.
DISCUSSION: The panel conclude that Comiskey’s independent claims 1 and 32 and most of their dependent claims are unpatentable subject matter under 35 U.S.C. § 101, and remanded the remainder of the claims for the PTO to consider the § 101 question in the first instance. The Federal Circuit said that only if the requirements of § 101 are satisfied is the inventor allowed to pass through to the other requirements for patentability, such as novelty under § 102 and, of pertinence to this case, non-obviousness under § 103. Supreme Court decisions after the 1952 Patent Act have rejected a “purely literal reading” of the process provision and emphasized that not every “process” is patentable.
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.
Following the lead of the Supreme Court, this court and our predecessor court have refused to find processes patentable when they merely claimed a mental process standing alone and untied to another category of statutory subject matter even when a practical application was claimed.
The Federal Circuit said that “[i]t 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 noted that some of the claims, under the broadest reasonable interpretation, recite the use of a machine, and remanded these claims so that the § 101 question could be addressed in the first instance by the PTO.
COMMENT: THE FEDERAL CIRCUIT REMOVED CONFUSING LANGUAGE FROM THE ORIGINAL OPINION TO THE EFFECT THAT MATTER THAT WAS NOT PROPER SUBJECT MATTER UNDER § 101 WAS OBVIOUS. INSTEAD THE FEDERAL CIRCUIT DECIDED THE CASE (AN APPEAL OF AN OBVIOUSNESS REJECTION) ENTIRELY ON § 101 GROUNDS, WITHOUT ANY DISCUSSION OF OBVIOUSNESS.