When Mr. Carl A. Lundgren’s claims to a method of determining bonus amounts to issue to managers were rejected by the USPTO as outside statutory subject matter due failing the “technological arts” standard, he appealed to the Board of Patent Appeals and Interferences (BPAI). While Judge Smith, dissenting in the precedential BPAI case of Ex Parte Lundgren, equated the Constitutional “useful arts” standard with the “technological arts” standard as modernly applied by the USPTO Examining Corp. and while Judge Barrett, dissenting-in-part, did not recognize the “technological arts” standard but neither did the Judge Barrett, find Mr. Lundgren’s claims being steps of a machine-implemented process having a useful, tangible, and concrete result, the majority of the Board writing the opinion found no statutory or case law basis for the “technological arts” standard for statutory process/method claims.
http://www.uspto.gov/web/offices/dcom/bpai/prec/2003-2088.pdf
So since Lundgren, one might naturally infer that so long as a business method claim is directed to a useful, tangible (real-world), and concrete (repeatable) result and that result was unexpected (see KSR) and/or provided for a new functionality in light of all published, pertinent references, then there was a chance at patentability once the multiple-year backlog was worked down in class 705.
But then enter Mr. Comiskey:
When the US Patent Examiner continued to reject the claims of Mr. Stephen W. Comiskey directed to a method and system for mandatory arbitration involving legal documents, such as wills or contracts, for being unpatentably obvious, Mr. Comiskey appealed to the BPAI (Ex Parte Comiskey) and the BPAI upheld the Examiner’s finding the claims to be obvious. Mr. Comiskey then appealed to the US Court of Appeals for the Federal Circuit (In re Comiskey, ___F.3d ___(Fed. Cir. 2007)). http://fedcir.gov/opinions/06-1286.pdf
Unfortunately for Mr. Comiskey, the Federal Circuit wished to consider the patentability of the subject matter being claimed. The USPTO urged the Federal Circuit consider the case on statutory subject matter ground because the PTO felt Mr. Comiskey’s independent method claims were directed to an unpatentable abstract idea, rather than a patentable process because neither independent method claim was tied to a particular machine or operated to change materials to a different state or thing (referencing Parker v. Flook, 437 U.S. 584 (1978)). Finding the method claims to be directed to an unpatenable mental process, Mr. Comiskey was given leave by the Federal Circuit to amend his method claims to combine the mental steps with a machine. Thereafter, the PTO can determine whether the amended claims yield a patentable combination or whether they are unpatentable for being the routine addition of modern electronics to an otherwise unpatentable invention.
More Statutory Subject Matter news from the Federal Circuit
As a manufactured representation of information, can a signal be statutory subject matter, say perhaps like the statutory “article of manufacture?” Unfortunately for Mr. Petrus Nuijten (and for Philips), after the BPAI affirmed his Patent Examiner's rejection of a signal being afforded patent protection, two judges of his three-judge panel of the US Court of Appeals for the Federal Circuit found a signal to be outside the statutory categories for patentability noting that “[a] transient electric or electromagnetic transmission does not fit within that definition.” So, claims are not statutory if they start with “A signal with embedded supplemental data…” (In re Nuijten, ___ F.3d___ (Fed. Cir. 2007)).
