Page 53

method for manufacturing lottery tickets). Id. col.1. The other early-issued patents cited

in the amicus briefs are similarly distinguishable.

Likewise, Supreme Court decisions before the 1952 Patent Act assumed that the

only processes that were patentable were those involving other types of patentable

subject matter. In later cases the Supreme Court has recognized that these cases set

forth the standard for process patents in the pre-1952 period. Diehr, 450 U.S. at 182-

84; Gottschalk, 409 U.S. at 69-70. The leading case is Corning v. Burden, 56 U.S. 252

(1853). There, the Supreme Court discussed the patentability of processes:

A process, eo nomine, is not made the subject of a patent in our act

of Congress. It is included under the general term ‘useful art.’ An art may
require one or more processes or machines in order to produce a certain
result or manufacture. The term machine includes every mechanical
device or combination of mechanical powers and devices to perform some
function and produce a certain effect or result. But where the result or
effect is produced by chemical action, by the operation or application of
some element or power of nature, or of one substance to another, such
modes, methods, or operations, are called ‘processes.’ A new process is
usually the result of discovery; a machine, of invention. The arts of
tanning, dyeing, making water-proof cloth, vulcanizing India rubber,
smelting ores, and numerous others are usually carried on by processes,
as distinguished from machines. . . . It is for the discovery or invention of

See, e.g., Complemental Accident Insurance Policy, U.S. Patent No.

389,818 (issued Sept. 18, 1888) (claiming a “complemental insurance policy” as an
apparatus consisting of two separate cards secured together); Insurance System, U.S.
Patent No. 853,852 (issued May 14, 1907) (claiming a “two-part insurance policy” as “an
article of manufacture”).

A number of the amici also refer to the discussion and the patents cited in “A

USPTO White Paper” (the “White Paper”) to establish the historical foundation of
business method patents. See, e.g., Br. of Amicus Curiae Accenture 14-15 n. 11. As
Judge Mayer notes, dissenting op. at 7 n.4, the White Paper does not show this
proposition. As the White Paper itself recognizes, the early financial patents it
discusses were largely mechanical products and methods related to financial paper, not
methods for organizing human activity. White Paper at 2. Thus, while the White Paper
shows that inventions in the business realm of finance and management historically
enjoyed patent protection, it does little to establish that business methods directed to
the organization of human activity not involving manufactures, machines or the creation
of compositions of matter were similarly patentable.

2007-1130 17