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Keywords

patenttrademark
statutepatent

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In re Bilski, 545 F.3d 943, 2008-2 USTC P 50,621, 88 U.S.P.Q.2d 1385

Facts

Issue

Whether a patent claim is drawn to patent-eligible subject matter is a threshold inquiry, and any claim of an application failing the statutory requirements must be rejected even if it meets all of the other legal requirements of patentability.

Rule

The machine-or-transformation test is the applicable standard for determining the patent-eligibility of process claims. A claimed process is patent-eligible if it is tied to a particular machine or apparatus, or if it transforms a particular article into a different state or thing. Claims that do not meet these criteria are considered to be directed to abstract ideas and thus not patent-eligible.

The proper inquiry to determine patent-eligibility of process claims is not whether the process claim recites sufficient physical steps, but rather whether the claim meets the machine-or-transformation test; thus, it is simply inapposite to the analysis whether process steps performed by software on a computer are sufficiently physical.

Analysis

In applying the machine-or-transformation test, the court found that the claimed process did not involve a specific machine or apparatus and did not transform any article into a different state or thing. The claims were deemed to encompass a purely mental process of performing mathematical calculations without any physical transformation, which is not patent-eligible. The court emphasized that the claims effectively pre-empted all applications of the hedging method, further supporting the conclusion that they were not directed to patent-eligible subject matter.

The machine-or-transformation test is a two-branched inquiry; an applicant may show that a process claim satisfies the statute either by showing that his claim is tied to a particular machine, or by showing that his claim transforms an article.

Conclusion

We affirm the decision of the Board because we conclude that Applicants' claims are not directed to patent-eligible subject matter.

Who won?

The Patent and Trademark Office prevailed in this case as the court upheld the rejection of the applicants' patent claims. The court reasoned that the claims did not meet the requirements for patent eligibility, as they were not tied to a specific machine or did not transform any article into a different state or thing. The court's application of the machine-or-transformation test clarified the standards for determining patent eligibility, reinforcing the notion that abstract ideas and purely mental processes cannot be patented.

The Board concluded that Applicants' claims 'preempt[ ] any and every possible way of performing the steps of the [claimed process], by human or by any kind of machine or by any combination thereof,' and thus concluded that they only claim an abstract idea ineligible for patent protection.

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