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 subject matter, exhausted, combinations, subject and/or matter:
“Morality for the novelist is expressed not so much in the choice of subject matter as in the plot of the narrative, which is perhaps why in our morally bewildered time novelists have often been timid about plot.”
—Jane Rule (b. 1931)
“A small man can be just as exhausted as a great man.”
—Arthur Miller (b. 1915)
“You should try to understand every thing you see and hear; to act and judge for yourselves; to remember you each have a soul of your own to account for; M a mind of your own to improve. When you once get these ideas fixed, and learn to act upon them, no man or set of men, no laws, customs, or combinations of them can seriously oppress you.”
—Jane Grey Swisshelm (1815–1884)
“When a thing ceases to be a subject of controversy, it ceases to be a subject of interest.”
—William Hazlitt (1778–1830)
“To me it seems that to give happiness is a far nobler goal that to attain it: and that what we exist for is much more a matter of relations to others than a matter of individual progress: much more a matter of helping others to heaven than of getting there ourselves.”
—Lewis Carroll [Charles Lutwidge Dodgson] (1832–1898)