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:

    Spring up sway forward
    follow the quickest one,
    aye, though you leave the trail
    and drop exhausted at our feet.
    Hilda Doolittle (1886–1961)

    ...black women write differently from white women. This is the most marked difference of all those combinations of black and white, male and female. It’s not so much that women write differently from men, but that black women write differently from white women. Black men don’t write very differently from white men.
    Toni Morrison (b. 1931)

    That is what the highest criticism really is, the record of one’s own soul. It is more fascinating than history, as it is concerned simply with oneself. It is more delightful than philosophy, as its subject is concrete and not abstract, real and not vague. It is the only civilised form of autobiography.
    Oscar Wilde (1854–1900)

    Personal columnists ... are jackals and no jackal has been known to live on grass once he had learned about meat—no matter who killed the meat for him.
    Ernest Hemingway (1899–1961)