Exhausted Combination Doctrine - Exhausted Combinations and Nonstatutory Subject Matter

Exhausted Combinations and Nonstatutory Subject Matter

Claiming a computer-related advance as an exhausted combination may provide a way to prevent the claimed advance from being classified as nonstatutory subject matter under section 101 of the US patent law. Placing a process that fails the machine-or-transformation test in a machine environment may overcome 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 successfulness of this expedient depends on acceptance of the Federal Circuit's abolition of the exhausted combination doctrine.)

For example, the form of the processes claimed in Diamond v. Diehr, Parker v. Flook, and Gottschalk v. Benson may appropriately be compared. In Diehr, the claim is to “a method of operating a rubber-molding press” and the claim contains at least minimal references to the press and other apparatus. In Flook, the claim is to a "method for updating the value of at least one alarm limit," where an “’alarm limit’ is a number.” The claim does not say anything about a reaction vessel or even temperature measuring devices. In Benson, the claim is to “a data processing method for converting binary coded decimal number representations into binary number representations.” One claim mentions a reentrant shift register and the other claim mentions no apparatus at all. In Flook, the claim could have instead been to “a method of operating a hydrocracking plant wherein hydrocarbon feedstock is placed into a chemical reactor, heat is applied, etc.” The claim, although to an exhausted combination, 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 mechanical environment, even though it was an exhausted combination, the claims drafter might have avoided the holding of nonstatutory subject matter. It is possible that careful claims drafting techniques will succeed in elevating form over substance, to avoid the impact of the machine-or-transformation test.

Read more about this topic:  Exhausted Combination Doctrine

Famous quotes containing the words exhausted, combinations, subject and/or matter:

    History teaches us that men and nations behave wisely once they have exhausted all other alternatives.
    Abba Eban (b. 1915)

    Europe has a set of primary interests, which to us have none, or a very remote relation. Hence she must be engaged in frequent controversies, the causes of which are essentially foreign to our concerns. Hence, therefore, it must be unwise in us to implicate ourselves, by artificial ties, in the ordinary vicissitudes of her politics or the ordinary combinations and collisions of her friendships or enmities.
    George Washington (1732–1799)

    And thou, thou rich-haired youth of morn,
    And all thy subject life was born!
    William Collins (1721–1759)

    Resolve to win—period—because that is the American system. You take either side—it doesn’t even matter which one—and you go on the attack.
    Donald Freed, U.S. screenwriter, and Arnold M. Stone. Robert Altman. Richard Nixon (Philip Baker Hall)