Acting en banc, the court today vacated the September 20, 2007, judgment in
this case, and the panel’s original opinion, which is reported at 499 F.3d 1365 (Fed. Cir.
2007), was withdrawn. The en banc court reassigned the opinion to the panel for
The en banc order has a dissent written by Judge Moore, joined by Judges Newman and Rader.
The decision continues:
We do not reach the Board’s obviousness
rejection of the independent claims under § 103. We 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. With respect to independent claims 17 and 46
(and dependent claims 18-29, 31, 47-57, and 59) and dependent claims 15, 30, 44, and
58, we remand to the PTO to consider the § 101 question in the first instance.
We do not reach the ground relied on by the Board below—that the claims were
unpatentable as obvious over Ginter in view of Walker, Perry, and “Arbitration Fee
Schedule”—because we conclude that many of the claims are “barred at the threshold
by § 101.” Diamond v. Diehr, 450 U.S. 175, 188 (1981).
Chenery is cited:
Over sixty years ago in Securities & Exchange Commission v. Chenery Corp.,
318 U.S. 80 (1943), the Supreme Court made clear that a reviewing court can (and
should) affirm an agency decision on a legal ground not relied on by the agency if there
is no issue of fact, policy, or agency expertise.
Business method patents come up-->
Comiskey’s application may be viewed as falling within the general category of
“business method” patents.
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. The Supreme Court has held that “[a]n idea of itself is not
patentable.” Rubber-Tip Pencil, 87 U.S. at 507 (emphasis added).
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.
However, mental processes—or processes of human thinking—standing alone
are not patentable even if they have practical application.
Comiskey has conceded that these claims do not require a machine, and these claims
evidently do not describe a process of manufacture or a process for the alteration of a
composition of matter. 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
Thus, like the claims that the Supreme Court found
unpatentable in Benson and Flook and the claims found unpatentable in our own cases,
Comiskey’s independent claims 1 and 32 seek to patent the use of human intelligence
in and of itself. Like the efforts to patent “a novel way of conducting auctions” which
Schrader, 22 F.3d at 291, found to be directed to an abstract idea itself rather than a
statutory category, Comiskey’s independent claims 1 and 32 describe an allegedly
novel way of requiring and conducting arbitration and are unpatentable.
The dissent to the order notes:
This case goes to the fundamental role of the appellate court—to review the
decision appealed. In this case, the court declined to address the only ground for
rejecting the patent claims decided below and appealed by the parties (§ 103). Instead,
the court reached out to decide a new ground of rejection (§ 101), raised sua sponte by
the court. The court evaluated both the process and machine claims under its chosen
ground, § 101, concluding that the process claims were not directed to patentable
subject matter, but that the machine claims, in light of our well-established precedent
were directed to patentable subject matter.
Footnote 3 mentioned Bilski:
We recognized in our en banc decision in Bilski that “although our decision
in Comiskey may be misread by some as requiring in every case that the examiner
conduct a § 101 analysis before assessing any other issue of patentability, we did not
so hold.” In re Bilski, No. 2007-1130, slip op. at 4-5 n.1 (Fed. Cir. Oct. 30, 2008) (en
banc). In fact, the Supreme Court itself declined to address complicated § 101 issues
even where fully briefed and argued because the obviousness rejection (also fully
briefed and argued) provided an easier ground upon which to affirm
Judge Newman had a separate dissent to the order, which began:
Reconsideration of this appeal was stayed while the en banc court decided In re
Bilski, 545 F.3d 943 (Fed. Cir. 2008), and although the original Comiskey opinion was
withdrawn because it was producing “misunderstanding,” id. at 960, the revised opinion
does not clarify, changes no result, adds no analysis, but simply deletes its reasoning,
leaving silence rather than understanding. The court continues to present a broad and
ill-defined exclusion of “business methods” from access to the patent system, an
exclusion that is poorly adapted to today’s new and creative modalities of data handling
and knowledge utilization. I must protest this further contribution to the uncertainty that
this court’s decisions are producing.
If the replacement of “process” with “system” or “module” in the Comiskey claims
suffices to provide Bilski’s “meaningful limits” under Section 101, we should be explicit.
Instead, the panel chose to delete its statement that the “routine addition of modern
electronics” to a patent-ineligible invention is “prima facie obvious.” Comiskey, 499 F.3d
at 1380, and also deleted the citation to KSR v. Teleflex, 550 U.S. 398 (2007) from
which this statement came, confounding the difference between unpatentability under
Section 103 and ineligibility under Section 101. Instead of the half-decision of the
panel, the issue of Section 101 should either be remanded as to all claims, or decided
as to all claims. And in all events, the court should decide the Section 103 ground on
which the appeal was taken.
Judge Newman notes: The panel broadly removes “business methods” from eligibility for patenting.
Judge Newman gets into history:
As I discussed in connection
with the Bilski decision, 545 F.3d at 985-89, serious inaccuracies are embodied in the
statements that the Statute of Monopolies of 1623 was intended by the Framers as a
limit to process patents under Article I, §8 of the United States Constitution. The panel
now imports this theory into a decision of the court, ruling that “the Framers consciously
acted to bar Congress from granting letters patent in particular types of business.” Op.
at 15. Thus the panel holds that the Statute of Monopolies forbids United States
patents on business method inventions, and that the Framers so intended.
Judge Newman concludes:
The artificial distinction drawn by the Comiskey panel adds neither strength nor
rigor to the pragmatic needs of economic growth, and simply serves as a further
disincentive to innovation. Thus I must, respectfully, dissent from the court’s denial of
the petition for rehearing en banc.