The
Benson and
Bilski opinions left important details of the machine-or-transformation test unexplained.
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." The Federal Circuit's
Bilski opinion explicitly left the question unresolved. In the opening words of the
Benson opinion, however, this statement occurs: 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: placing a soiled garment in flowing water; and shaking said garment for at least five minutes. The question has been raised, also, whether beating the garment with a stick constitutes use of a "particular machine." 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 "[t]his means the machine or transformation must impose meaningful limits on the method claim's scope [for it] to 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 "[t]his 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 an
exhausted combination provides a way to prevent the claimed advance from being classified as
nonstatutory subject matter. A so-called exhausted combination claim is one to a device in which a novel group of elements cooperates in a conventional manner with some old elements—for example, a new kind of motor and an old disk drive. Placing a process that fails the machine-or-transformation test in a machine environment overcomes the absence of implementation by a specific machine, as required by
In re Bilski and the Supreme Court decisions on which it is based. The format of the processes claimed in
Diamond v. Diehr, would have required apparatus as did that in the
Diehr case. Similarly, the claim in
Benson could have been to a method of operating a telephone switch box or perhaps even a method of providing binary-coded-decimal numerical signals to a binary-coded operating device. Again, by providing a seemingly nontrivial mechanical environment, even though it was just an exhausted combination, the claims drafter might have avoided the holding of nonstatutory subject matter (patent-ineligibility). It is thus possible that careful claims drafting techniques will succeed in elevating form over substance, to avoid the impact of the machine-or-transformation test. The subsequent unanimous Supreme Court decisions in the
Mayo and
Alice cases, by reaffirming the doctrine of the
Flook case, cast doubt on the likelihood of success of the drafting techniques described above. That doctrine is that a claim to the implementation of a principle that is patent ineligible in itself must be inventive rather than routine and conventional, in order to make that claim patent eligible. == References ==