United States Court of Appeals for the Federal Circuit
2007-1130
(Serial No. 08/883,892)
IN RE BERNARD L. BILSKI
and RAND A. WARSAW
Appeal from the United States Patent and Trademark Office, Board of Patent Appeals
and Interferences.
NEWMAN, Circuit Judge, dissenting.
The court today acts en banc to impose a new and far-reaching restriction on the
kinds of inventions that are eligible to participate in the patent system. The court
achieves this result by redefining the word “process” in the patent statute, to exclude all
processes that do not transform physical matter or that are not performed by machines.
The court thus excludes many of the kinds of inventions that apply today’s electronic
and photonic technologies, as well as other processes that handle data and information
in novel ways. Such processes have long been patent eligible, and contribute to the
vigor and variety of today’s Information Age. This exclusion of process inventions is
contrary to statute, contrary to precedent, and a negation of the constitutional mandate.
Its impact on the future, as well as on the thousands of patents already granted, is
unknown.
This exclusion is imposed at the threshold, before it is determined whether the
excluded process is new, non-obvious, enabled, described, particularly claimed, etc.;
that is, before the new process is examined for patentability. For example, we do not