I
The Patent Law of the United States has always embodied the philosophy that
“ingenuity should receive a liberal encouragement.” Writings of Thomas Jefferson 75-
76 (Washington ed. 1871); see also Diamond v. Chakrabarty, 447 U.S. 303, 308-09
(1980). True to this principle, the original Act made “any new and useful art, machine,
manufacture or composition of matter” patent eligible. Act of Feb. 21, 1793, ch. 11, § 1,
1 Stat. 318 (emphasis supplied). Even as the laws have evolved, that bedrock principle
remains at their foundation. Thus, the Patent Act from its inception focused patentability
on the specific characteristics of the claimed invention—its novelty and utility—not on its
particular subject matter category.
The modern incarnation of section 101 holds fast to that principle, setting forth
the broad categories of patent eligible subject matter, and conditioning patentability on
the characteristics, not the category, of the claimed invention:
Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.
35 U.S.C. § 101 (2006) (emphases supplied). As I have suggested, the Supreme Court
requires this court to rely on the “ordinary, contemporary, common meaning” of these
words. Diamond v. Diehr, 450 U.S. 175, 182 (1981). If this court would follow that
Supreme Court rule, it would afford broad patent protection to new and useful inventions
that fall within the enumerated categories and satisfy the other conditions of
patentability. That is, after all, precisely what the statute says.
In Diehr, the Supreme Court adopted a very useful algorithm for determining
patentable subject matter, namely, follow the Patent Act itself. After setting forth the
2007-1130 2