When is a Process Claim Directed to an Unpatentable “Abstract Idea” Under 35 U.S.C. § 101?

In Bilski (130 S. Ct. 3218 (2010)), the Supreme Court criticized the Federal Circuit’s “machine or transformation” test for patent eligibility under § 101.  In doing so, the Supreme Court emphasized that the § 101 patent eligibility inquiry is only a threshold test, and that only three exceptions to the Patent Act’s broad patent-eligibility principles have been articulated: “laws of nature”, “physical phenomena”, and “abstract ideas”.   However, Bilski provided minimal guidance for determining abstractness.  Research Corp v. Microsoft Corp is the Federal Circuit’s first interpretation of the Supreme Court’s Bilski decision in a case related to the question of abstractness in computer-implemented process claims.

In Research Corp, the Federal Circuit reversed the District Court’s holding that claims directed to certain digital imaging halftoning processes (processes which allow computers to present many shades and color tones with a limited number of pixel colors) were invalid under 35 U.S.C. § 101.

A representative claim (claim 1) recited:

A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images.

In applying Bilski, the Federal Circuit reasoned that section 101 eligibility should not become a substitute for a patentability analysis related to prior art or adequate disclosure, and does not permit a court to reject subject matter categorically because it finds that a claim is not worthy of a patent.  The Federal Circuit further stated that it “will not presume to define ‘abstract’ beyond the recognition that this disqualifying characteristic should exhibit itself so manifestly as to override the broad statutory categories of eligible subject matter and the statutory context that directs primary attention on the patentability criteria of the rest of the Patent Act.”   In that context, the court found nothing abstract in the claimed subject matter.

In support of its decision, the Federal Circuit noted that the claims at issue present “functional and palpable applications” in the field of computer technology and address a need in the art, and explicitly stated that “inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.”  However, the court also cautioned that an invention that is “not so manifestly abstract as to override the statutory language of section 101” may nonetheless lack sufficient concrete disclosure under section 112.

This holding suggests that under Bilski it will be difficult to invalidate computer-implemented process claims under section 101 for being unpatentable abstract ideas.  Instead, accused infringers may want to focus on the written description, enablement, and definiteness requirements under section 112.

Furthermore, the U.S. Patent and Trademark Office has generally required that implementation by a computer be positively claimed, even if the claims are clearly directed to a computer-implemented process.   However, because drafters often assume that a person of ordinary skill in the art would recognize that complex image processing algorithms and the like must be computer-implemented, many relevant patent applications do not even mention a computer in the claims or even the specification.  As a result, amendment of the claims to add computer-implementation in response to a section 101 rejection was sometimes difficult.

In Research Corp, a number of the claims at issue did not explicitly recite a computer (see, e.g., claim 1, above).  Nevertheless, the Federal Circuit found that the claims were directed to a computer-implemented process based on review of the application as a whole.  Thus, this case provides authority that the need for explicit recitation of a computer in a claim is not required if the invention is clearly computer-implemented.

Read/download the decision here

Prepared by Lisa E. Stahl, Ph.D.