Supreme Court has held that this is not the only test
The Supreme Court has held that the machine-or-transformation test is not the sole test for the patent-eligibility of processes. TheIt is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a "different state or thing." We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents.The government had made an argument in its brief in ''Benson'' that the Court should so hold and that it was impossible to rationalize the case law any other way. The Court, in its ruling, refused or failed to agree with that argument.
Outstanding issues
The ''Benson'' and ''Bilski'' opinions left important details of the machine-or-transformation test unexplained. The details include what kind of transformation is sufficient to confer patent-eligibility and what are the characteristics of a "particular machine" that confers patent-eligibility.Transformation
Transformation of an article from one thing or state to another is said to be a clue to patent eligibility. Thus, in ''Benson'', the court stated that "Transformation and reduction of an article `to a different state or thing' is the clue to the patentability of a process claim...." A hundred years earlier, the Court had said, "A process is ... an act, or a series of acts, performed upon the subject matter to be transformed and reduced to a different state or thing."
What is an article?
The ''Benson'' opinion indicated that the article had to be a physical object, such as a lump of rubber (to be transformed from raw to cured state), a piece of leather (to be transformed from untanned skin to tanned leather), or a pile of flour (to be transformed from coarse to superfine particles). The Federal Circuit's ''In re Schrader'' opinion, however, indicated that the article could be an electronic signal representative of a physical parameter, such as an EKG ("electrocardiograph signals representative of human cardiac activity ") or seismogram ("seismic reflection signals representative of discontinuities below the earth's surface") signal. Thus, the ''Schrader'' opinion chided the Supreme Court for speaking of physical "articles" rather than "subject matter," and thus only "imperfectly" reflecting the relevant legal principle. The ''Bilski'' court appears to adhere to the ''Schrader'' formulation, rather than that of ''Benson'', so that it seems to consider a signal transformation patent-eligible when the signal is representative of certain types of physical actions. But a transformation of signals representative of monetary or legal relations does not qualify, given the affirmance of the PTO's rejection of Bilski's claim and perhaps the ''Bilski'' court's treatment of ''State Street Bank'', as well.
How much of a transformation is needed?
Judge Rader asked in his ''Bilski'' dissent, "What form or amount of 'transformation' suffices?" The court did not answer his question. It may be that a "substantial" physical or chemical change of properties that is material to the objectives of the invention is required, but this is still to be resolved.
A "particular machine"
''Benson'' and ''Bilski'' speak about the process being tied to "a particular machine" while ''Flook'' says that the mechanical implementation of a natural principle must be "inventive":Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application.In ''Flook'' the implementation was conceded to be conventional and no departure from the prior art. Therefore, the principle with or plus a conventional implementation was patent-ineligible. The ''Flook'' Court also cited and relied on the same principle as being illustrated in ''Funk Brothers Seed Co. v. Kalo Inoculant Co.,'' in which the natural principle was implemented in a manner so trivial on its face that the patent on the implementing article of manufacture was tantamount to a patent on the natural principle. This aspect of the machine-or-transformation test remains to some extent an uncertain and controversial issue. For a time it was asserted that it remains "unclear whether tying a process to a general purpose computer is sufficient to pass the machine-or-transformation test." But in 2014 the Supreme Court expressly held in the ''
Respondents filed in the patent office an application for an invention that was described as being related "to the processing of data by program and more particularly to the programmed conversion of numerical information" in general purpose digital computers. . . . The claims were not limited to any particular art or technology, to any particular apparatus or machinery, or to any particular end use. They purported to cover any use of the claimed method in a general purpose digital computer of any type.Arguably, this language disposes of the issue. Some pre- and post-''Bilski'' decisions of the PTO appellate board (BPAI) take the position that a programmed general-purpose digital computer is not a "particular machine," and that corresponding ''Beauregard'' claims to an encoded medium are equally nonstatutory. In '' CyberSource Corp. v. Retail Decisions, Inc.'', a California federal district court held that limitation of a process to implementation "over the Internet" does not satisfy the machine-or-transformation test. First, the Internet is not a "particular machine." The Internet is an intangible abstraction. Second, the limitation to a particular technological environment is a mere field-of-use limitation, which does not suffice under sec. 101. Third, the use of the Internet does not impose meaningful limits on the preemptive scope of the claims. The same court held that a "''Beauregard''" claim directed to the instructions for performing a method that does not pass the machine-or-transformation test will also fail to pass that test. The court pointed out that the PTO appellate board had similarly interpreted ''Bilski''. The subsequent ''Alice'' decision appears to have substantially resolved these questions in favor of a determination of patent ineligibility. An imperfectly resolved issue is whether the machine-or-transformation test is narrowly misnamed, since the relevant case law includes comparable implementations of natural-principle processes with other types of physical objects besides a machine. In ''Funk'', on which ''Flook'' relied, the implementation of the natural principle was with a package — an article of manufacture. There is no principled reason why a natural-principle process must be implemented physically with a machine and not with an article of manufacture or composition of matter. The test explained in ''Bilski'' thus should be regarded as a ''physical object or transformation'' test or a device-or-transformation test.
Is satisfying the test a necessary condition for patent-eligibility, a sufficient condition, both or neither?
It is debatable whether the decision of the Federal Circuit in ''In re Bilski'' made the machine-or-transformation test a necessary condition for patent-eligibility, a sufficient condition, or both a necessary and sufficient condition. The ''Bilski'' opinion ''seems'' to declare a rule that a claimed invention is patent-eligible ''if and only if'' it satisfies the machine-or-transformation test. Both prongs of if-and-only-if have been challenged, and in its opinion on appellate review of the Federal Circuit's opinion the Supreme Court held that the machine-or-transformation test was only a helpful clue and not in itself dispositive. A commentator asserted that an example illustrating the proposition that satisfying the machine-or-transformation test is not a sufficient condition for patent-eligibility occurs in U.S. Pat. No. 6,701,872. This patent covers a method and apparatus (machine) for entertaining a cat by using a moving laser beam (relatively high technology). The method is implemented with a "particular machine"—"a rotating laser source mounted directly on a shaft driven directly by a motor mounted on a portable pedestal" (method claim 14). But it is debatable whether entertaining a cat may be considered a useful Art, and some may argue that this "discovery" is not the kind of discovery that the Patent Clause contemplates. Attempts have been made, also, to describe processes that fail to satisfy the machine-or-transformation test but nonetheless seem clearly to be patent-eligible.A method of removing dirt from a soiled garment, comprising:The question has been raised, also, whether beating the garment with a stick constitutes use of a "particular machine." That question is illustrated by the following hypothetical claim that is a variation on the preceding example:
placing a soiled garment in flowing water; and
shaking said garment for at least five minutes.
A method of removing dirt from a soiled garment, comprising:The point of this type of analysis is that the machine-or-transformation test does not work for all cases. There are some unusual outliers that satisfy the test but are patent-ineligible and some that do not satisfy the test but are patent-eligible. The Supreme Court's subsequent analyses in the ''Bilski'' and ''Alice'' cases confirms the inability of the machine-or-transformation test to cover all possible cases, as the foregoing examples suggest. Therefore, these " thought experiment" patent claims show that, while the machine-or-transformation test is a valuable and useful clue, as the ''Alice'' case states, and it may well cover most practical cases, it is neither a necessary nor sufficient test of patent eligibility.
submerging a soiled garment in water; and
beating said garment for at least five minutes with a stick.
The "corollaries"
''Bilski'' points out, and the PTO recently emphasized in a memorandum to its Examining Staff, that there are two "corollaries" to the machine-or-transformation test. First, a mere field-of-use limitation is generally insufficient to make an otherwise ineligible method claim patent-eligible. The PTO Guidance Memo explains that " is means the machine or transformation must impose meaningful limits on the method claim's scope or itto pass the test." What makes a limitation meaningful is unstated, but perhaps that concept can be defined in terms of whether the limitation places only an insubstantial limitation on claim scope or preemptiveness. The second corollary is that insignificant extra-solution activity will not transform a patent ineligible principle into a patentable process. The PTO Guidance Memo explains that " is means reciting a specific machine or a particular transformation of a specific article in an insignificant step, such as data gathering or outputting, is not sufficient to pass the test." It is unclear whether this concept would apply to such acts as gathering temperature data from thermocouples inside a mold or opening the lid of a mold upon the completion of a curing process. It is reasonable to assume that whether a given step is ''insignificant'' or ''central to'' a claimed process will be a controversial issue in post-''Bilski'' cases testing the meaning of the machine-or-transformation test.Possible interaction between the machine-or-transformation test and the exhausted combination doctrine
It has not yet been explored in litigation whether claiming a computer-related advance as anReferences
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