Nodal, Session 7, M-or-T Discussion

Nodal, Session 7, considers a prosecution in which the Applicant apparently relied on claim recitations of a motor, a thermometer, and a control unit in traversing a 35 USC 101 rejection.  We noted these recitations are not necessarily sufficient to overcome this rejection.  (Apparently, the Examiner agreed with us.)  Why not?

Almost 50 years ago, the Supreme Court stated in Gottschalk v. Benson, “Transformation and reduction of an article ‘to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines.”  409 U.S. 63, 70 (1972) (emphasis supplied).  Thus, eligibility was believed based on a transformation or the inclusion of a particular machine.

This test was cited approvingly in Diamond v. Diehr, 450 U.S. 175, 184 (1981).  Diehr considered the eligibility of a method for curing rubber using the Arrhenius equation.  The claim recited, in part, “constantly providing a temperature (Z); repetitively calculating the Arrhenius equation, which is ln v = CZ + x, where v is the total required cure time; repetitively comparing each said calculation of the total required cure time and an elapsed time; and opening a press automatically.”  Id. (cleaned up).  The Supreme Court held the Diehr claim was patent eligible.

Although eligibility in the intervening years would focus on other issues (e.g., in State Street Bank), the Court of Appeals for the Federal Circuit explained in 2008 the “machine-or-transformation” (M-or-T) test was the only test for eligibility.  In re Bilski, 545 F.3d 943 (en banc).  Thus, the stage had been set to unwind this strict test.

First, the Supreme Court reversed the Federal Circuit’s Bilski decision in Bilski v. Kappos, explaining the “machine-or-transformation” test was a test but not the sole test.  561 U.S. 593 (2010) (slip op. at 8).  Thus, eligibility had been freed from the machine-or-transformation test.

The Court then went further in Mayo v. Prometheus, characterizing Benson as holding that “implementing a mathematical principle on a physical machine, namely a computer, was not a patentable application of that principle.”  566 U.S. 66 (2012) (slip op. at 16).  That is, after Mayo, some particular machines, such as some computers, would be insufficient to provide patent eligibility.

The Supreme Court continued down this line in Alice v. CLS Bank.  573 U.S. 208 (2014).  There, the Court explained the Diehr eligibility as premised on “additional” steps implemented by a thermocouple (not explicitly recited in Diehr Claim 1!) and a computer.  Slip op. at 12-13.  That is, Alice did not view the Diehr eligibility as premised on opening the press.  (Indeed, our contemporary view would likely consider opening the press to be post-solution activity.)  Alice’s characterization of Diehr suggested a computer could provide eligibility: eligibility did not require a “particular” machine like a press.

The Federal Circuit seemed to venture further in DDR Holdings v.  773 F.3d 1245 (Fed. Cir. 2014).  Specifically, the DDR Federal Circuit viewed Mayo as holding that eligibility is not necessarily granted by every particular machine: that is, computers are not the only machines that do not grant eligibility.  Slip op. at 17 (“in Mayo, the Supreme Court emphasized that satisfying the machine-or-transformation test, by itself, is not sufficient to render a claim patent-eligible, as not all transformations or machine implementations infuse an otherwise ineligible claim with an ‘inventive concept.’”).  After DDR, the operations of some “particular” machines are still insufficient to provide eligibility.

To be clear, the Supreme Court does not seem to have addressed recently the ineligibility of a claim directed to a non-computer machine in the electrical or mechanical arts.  However, such a holding seems consistent with Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U.S. 86 (1939). 

The USPTO reached conclusions similar to ours in MPEP 2106.05(b).  There, the USPTO concludes, “if a claim fails the Alice/Mayo test . . . , then the claim is ineligible even if it passes the M-or-T test.”

If Modal can assist you in addressing a rejection under 35 USC 101, please contact us.

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