Academic journal article Rutgers Computer & Technology Law Journal

One Claim, One Statutory Class of Invention: How the Machine-or-Transformation Test Impacts Indefinite Analysis

Academic journal article Rutgers Computer & Technology Law Journal

One Claim, One Statutory Class of Invention: How the Machine-or-Transformation Test Impacts Indefinite Analysis

Article excerpt

Patent claims define the scope of an inventor's rights under the patent. (1) "A single patent may include claims directed to one or more of the classes of patentable subject matter, but no single claim may cover more than one subject matter class." (2) This is done to apprise one of ordinary skill in the art of the claim's scope, thereby putting others on notice of the patent owner's rights. (3)

Intellectual property law is constantly evolving with technological developments and advancements; (4) patent law is no exception. (5) An example of the evolving concept of what constitutes patentable subject matter can be seen in the recent Bilski v. Kappos decision, where the Supreme Court held that 1) business method claims were patentable under 35 U.S.C. [section] 101 (6) and 2) the machine-or-transformation test was not the sole test for determining the patent-eligibility of a process, but "a useful and important clue, [and] an investigative tool" for making such determinations. (7)

The Court of Appeals for the Federal Circuit attempted to clarify matters with the machine-or-transformation test by stating that a process is patentable only if "(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." (8) While the Supreme Court cautioned against courts taking the liberty of reading limitations and conditions into patent law that Congress has not expressed, (9) the recent decision raises the question of how to reconcile the machine-or-transformation test with the Federal Circuit and United States Patent and Trademark Office's (USPTO) position that "no single claim may cover more than one subject matter class." (10)

This Note will examine the impact of the Supreme Court's recent decision in Bilski on 35 U.S.C. [section] 112 analysis. Part one will detail the evolution of patentability analysis leading up to the Bilski decision, and how these cases lead to both the Federal Circuit and the Supreme Court's decisions in the Bilski matter. Part two will examine the impact of the Bilski decision, including the guidelines set forth by the USPTO and recent district court decisions applying the Bilski holding. In part three, background information on 35 U.S.C. [section] 112, [paragraph] 2 and indefinite analysis will be provided; specifically, when claims appear to encroach on more than one statutory class of invention. Finally, this Note will address how these two apparently contradictory holdings can co-exist.

I. 35 U.S.C. [section] 101 AND A HISTORY OF PROCESS CLAIMS

A. The Evolution of Process Claims

The term process was not part of the original Patent Act and was not codified in federal patent law until 1952. (11) The Patent Act of 1793 provided patent protection to anyone that invented "any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement [thereof]." (12) However, process patents were historically afforded patent protection. (13)

In 1853, the Supreme Court deemed that process claims fell under the "useful art" statutory class of invention, thereby ensuring patent protection for these types of claims. (14) The Reconstruction Era Court took things further and defined process as:

   [A] mode of treatment of certain materials to produce a
   given result. It is an act, or a series of acts, performed
   upon the subject-matter to be transformed and reduced to
   a different state or thing. If new and useful, it is just as
   patentable as is a piece of machinery. In the language of
   the patent law, it is an art. The machinery pointed out as
   suitable to perform the process may or may not be new or
   patentable; whilst the process itself may be altogether
   new, and produce an entirely new result. The process
   requires that certain things should be done with certain
   substances, and in a certain order; but the tools to be used
   in doing this may be of secondary consequence. … 
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