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Archived updates for Wednesday, February 13, 2008

An Enablement Approach to Signal Patentability

In "ANALYZING THE PATENTABILITY OF 'INTANGIBLE' YET 'PHYSICAL' SUBJECT MATTER" Sam Han proposes that, if a signal is in any way "made by man" (e.g., generated from an electronic transmitter, manipulated by a medical imaging system, etc.), then that signal would be statutory subject matter, and further analysis would be needed to determine patentability:

Once it is determined that the subject matter in question is statutory, the next inquiry would be to determine "[i]f he has truly stated the principle, nature and extent of his art or invention." O’Reilly v. Morse, 56 U.S. 62 (1853). This, in essence, is a § 112 analysis to determine whether the inventor has, through his written disclosure, sufficiently "enable[d] any person skilled in the art to which it pertains . . . to make and use the . . . invention."

It is worthwhile to note that the § 112 analyses is wholly independent of the § 101 analysis. § 101 simply determines whether the subject matter is "made by man," while § 112 determines whether the description of that subject matter is sufficiently complete. Thus, in the context of signals, if the signal in question is "made by man," the next step is to determine whether the written disclosure sufficiently enables one of ordinary skill in the art to generate such a signal.

. . . Consistent with Congress' intent, it appears that the language in § 101 provides for almost limitless possibilities in patentable subject matter. On the other hand, §§ 112, 102, and 103 contain limiting language on the issuing of patents (i.e., the invention must be sufficiently described, novel, and nonobvious).

"A signal is a physical phenomenon," comments Malcolm Mooneyon the Patently-O Blog. "You can patent the phonograph. You can patent a novel compartment for listening to music. But you can't patent the echo in the room. Besides, it's just a fat lady singing."

"A signal must be produced by some device or process," counters Raoul. "If the signal is new and non-obvious, mustn't it follow that also new/non-obvious are: the method for producing it, a tangible media storing it, a device for receiving and decoding it, something to generate the signal, you get the idea."
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Anonymous Michael Risch said...

Much as like to see my name in lights - I think you have the wrong attribution. Malcolm Mooney discussed the "echo in the room".

My comment was:
Judge Linn made many good points in both dissents, but herein lies the problem:

"As the Court discussed in Diamond v. Chakrabarty, patentable subject matter includes 'anything under the sun that is made by man' except for certain enumerated exceptions: 'The laws of nature, physical phenomena, and abstract ideas have been held not patentable.'"

Even if the "enumerated categories" could be reliably applied (doubtful), this statement is not tied to the statute in any sense. Chakrabarty could not have meant to say that the 101 categories no longer matter.

February 13, 2008 1:41 PM  

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