to a novel test which itself is neither suggested nor supported by statutory text,
legislative history, or judicial precedent, raise more questions than they answer. These
new standards add delay, uncertainty, and cost, but do not add confidence in reliable
standards for Section 101.
Other aspects of the changes of law also contribute uncertainty. We aren’t told
when, or if, software instructions implemented on a general purpose computer are
deemed “tied” to a “particular machine,” for if Alappat’s guidance that software converts
a general purpose computer into a special purpose machine remains applicable, there
is no need for the present ruling. For the thousands of inventors who obtained patents
under the court’s now-discarded criteria, their property rights are now vulnerable.
The court also avoids saying whether the State Street Bank and AT&T v. Excel
inventions would pass the new test. The drafting of claims in machine or process form
was not determinative in those cases, for “we consider the scope of §101 to be the
same regardless of the form—machine or process—in which a particular claim is
drafted.” AT&T v. Excel, 172 F.3d at 1357. From either the machine or the
transformation viewpoint, the processing of data representing “price, profit, percentage,
cost, or loss” in State Street Bank is not materially different from the processing of the
Bilski data representing commodity purchase and sale prices, market transactions, and
risk positions; yet Bilski is held to fail our new test, while State Street is left hanging.
The uncertainty is illustrated in the contemporaneous decision of In re Comiskey, 499
F.3d 1365, 1378-79 (Fed. Cir. 2007), where the court held that “systems that depend for
their operation on human intelligence alone” to solve practical problems are not within
the scope of Section 101; and In re Nuijten, 500 F.3d 1346, 1353-54 (Fed. Cir. 2007),
2007-1130
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