"'mixing' two elements or compounds to produce a chemical substance or mixture is
clearly a statutory transformation although no apparatus is claimed to perform the step
and although the step could be performed manually." Id. But the Board concluded that
Applicants' claims do not involve any patent-eligible transformation, holding that
transformation of "non-physical financial risks and legal liabilities of the commodity
provider, the consumer, and the market participants" is not patent-eligible subject
matter. Id. at 43. The Board also held that Applicants' claims "preempt[] any and every
possible way of performing the steps of the [claimed process], by human or by any kind
of machine or by any combination thereof," and thus concluded that they only claim an
abstract idea ineligible for patent protection. Id. at 46-47. Finally, the Board held that
Applicants' process as claimed did not produce a "useful, concrete and tangible result,"
and for this reason as well was not drawn to patent-eligible subject matter. Id. at 49-50.
Applicants timely appealed to this court under 35 U.S.C. § 141. We have
jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
II.
Whether a claim is drawn to patent-eligible subject matter under § 101 is a
threshold inquiry, and any claim of an application failing the requirements of § 101 must
be rejected even if it meets all of the other legal requirements of patentability. In re
Comiskey, 499 F.3d 1365, 1371 (Fed. Cir. 2007)
(quoting Parker v. Flook, 437 U.S.
1
Although our decision in Comiskey may be misread by some as requiring
in every case that the examiner conduct a § 101 analysis before assessing any other
issue of patentability, we did not so hold. As with any other patentability requirement,
an examiner may reject a claim solely on the basis of § 101. Or, if the examiner deems
it appropriate, she may reject the claim on any other ground(s) without addressing
§ 101. But given that § 101 is a threshold requirement, claims that are clearly drawn to
unpatentable subject matter should be identified and rejected on that basis. Thus, an
2007-1130 4