Mental Processes Must Be Combined with Machine For Patentable Subject Matter
The applicant conceded that claims 1 and 32 from U.S. Patent Application No. 09/461,742 do "not require a machine, and these claims evidently do not describe a process of manufacture or a process for the alteration of a composition of matter":
1. A method for mandatory arbitration resolution regarding one or more unilateral documents comprising the steps of:
enabling a person to enroll or register himself or herself and his or her one or more unilateral documents in a mandatory arbitration system;
providing arbitration language for insertion in the unilateral document wherein the arbitration language provides that any challenge to the unilateral document is to be presented to the mandatory arbitration system for binding arbitration;
enabling a complaintant to submit a request for arbitration resolution;
conducting arbitration resolution;
providing support to the arbitration; and
determining an award or a decision that is final and binding.
Claim 32, also held to recite nonstatutory subject matter, was the same as claim 1, except that it refers to bilateral contractual documents rather than unilateral documents, and the arbitration language would cover a challenge to the contractual document "by any party to the Contract or by any alleged third party beneficiary of the Contract." It also notes that the party submitting a request for arbitration resolution could be "a party to the Contractual document [or] a party so designated in the contractual document."
According to the opinion by Circuit Judge Dyk,
Comiskey’s independent claims 1 and 32 claim the mental process of resolving a legal dispute between two parties by the decision of a human arbitrator. They describe in essence "conducting arbitration resolution for [a] contested issue" and "determining an award or a decision for the contested issue" through a pre-determined "mandatory" arbitration system, and thus claim the use of mental processes to resolve a legal dispute. Thus, like the claims that the Supreme Court found unpatentable in Benson and Flook and the claims found unpatentable in our own cases, Comiskey’s independent claims 1 and 32 seek to patent the use of human intelligence in and of itself. Like the efforts to patent "a novel way of conducting auctions" which Schrader found to be directed to an abstract idea itself rather than a statutory category, Comiskey’s independent claims 1 and 32 describe an allegedly novel way of requiring and conducting arbitration and are unpatentable. See Schrader, 22 F.3d at 291.
We consider independent claims 17 and 46 separately. They recite the use of "modules," including "a registration module for enrolling" a person, "an arbitration module for incorporating arbitration language," and "an arbitration resolution module for requiring a complainant [or party] to submit a request for arbitration resolution to the mandatory arbitration system." Claim 17 also recites "a means for selecting an arbitrator from an arbitrator database." These claims, under the broadest reasonable interpretation, could require the use of a computer as part of Comiskey’s arbitration system. See Alan Freedman, The Computer Glossary 268 (8th ed. 1998) (defining module as "[a] self-contained hardware or software component that interacts with a larger system); id. at 90 (defining database as "any electronically-stored collection of data"). Similarly, even though Comiskey did not separately argue his dependent claims, our decision is based on a different ground than the Board’s, and we think it is appropriate to separately consider dependent claims 15, 30, 44, and 58. Each of these claims adds the following limitation to its corresponding independent claim: "wherein access to the mandatory arbitration is established through the Internet, intranet, World Wide Web, software applications, telephone, television, cable, video [or radio], magnetic, electronic communications, or other communications means."
When an unpatentable mental process is combined with a machine, the combination may produce patentable subject matter, as the Supreme Court’s decision in Diehr and our own decisions in State Street Bank and AT&T have confirmed. See Diehr, 450 U.S. at 178-79, 192-93 (holding patentable a process for curing rubber that used a mathematical algorithm to determine when to open the molding press); AT&T, 172 F.3d at 1355, 1361 (holding patentable a method for determining whether long-distance calls were being made between long-distance carriers or within a single long-distance carrier that used a mathematical algorithm and "require[d] the use of switches and computers"); State Street Bank, 149 F.3d at 1371 (holding patentable a "system that allows an administrator to monitor and record the financial information flow and make all calculations necessary for maintaining a partner fund financial services configuration" where a "computer or equivalent device [wa]s a virtual necessity to perform the task."). While the mere use of the machine to collect data necessary for application of the mental process may not make the claim patentable subject matter, see In re Grams 888 F.2d 835, 839-840 (Fed. Cir. 1989), these claims in combining the use of machines with a mental process, claim patentable subject matter.
While independent claims 17 and 46 and dependent claims 15, 30, 44, and 58 claim patentable subject matter under § 101, the other requirements for patentability, including non-obviousness, must still be satisfied. See Diehr, 450 U.S. at 191. Here, claims 17 and 46 at most merely add a modern general purpose computer to an otherwise unpatentable mental process and claims 15, 30, 44, and 48 merely add modern communication devices. The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness.16 Moreover, there is no pertinent evidence of secondary considerations because the only evidence offered is of long-felt need for the unpatentable mental process itself, not long-felt need for the combination of the mental process and a modern communication device or computer.17 See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983) ("A nexus is required between the merits of the claimed invention and the evidence offered, if that evidence is to be given substantial weight enroute to conclusion on the obviousness issue."); Bourns, Inc. v. United States, 537 F.2d 486, 497 (Ct. Cl. 1976) (noting that secondary considerations must be "attributable to the combination of the . . . claims" to be worthy of consideration)
Thus, it may be that these claims are unpatentable as obvious under § 103. However, we do not now decide this issue. Rather, having concluded that independent claims 17 and 46 and dependent claims 15, 30, 44, and 58 claim patentable subject matter, we remand to the PTO to determine in the first instance whether the addition of general purpose computers or modern communication devices to Comiskey’s otherwise unpatentable mental process would have been non-obvious to a person of ordinary skill in the art.