issued patents by eliminating access to patenting for large classes of past, present, and
future inventions, the remedy would appear to be excessive.
A straightforward, efficient, and ultimately fair approach to the evaluation of “new
and useful” processes—quoting Section 101—is to recognize that a process invention
that is not clearly a “fundamental truth, law of nature, or abstract idea” is eligible for
examination for patentability. I do not suggest that basic scientific discoveries are a
proper subject matter of patents (the Court in Chakrabarty mentioned E=mc
2
and the
law of gravity), and I do not attempt an all-purpose definition of the boundary between
scientific theory and technological application. But it is rare indeed that a question
arises at the boundary of basic science; more usual is the situation illustrated by
Samuel Morse’s telegraph, in which the Court simply held that Morse’s general claim
was “too broad,” exceeding the scope of his practical application.
Bilski’s process for determining risk in commodity transactions does not become
an abstraction because it is broadly claimed in his first claim. It may be claimed so
broadly that it reads on the prior art, but it is neither a fundamental truth nor an
abstraction. Bilski’s ten other claims contain further details and limitations, removing
them farther from abstraction. Although claim 1 may have been deemed
“representative” with respect to Section 101, the differences among the claims may be
significant with respect to Sections 102, 103, and 112. Bilski’s application, now pending
for eleven years, has yet to be examined for patentability.
CONCLUSION
In sum, the text of Section 101, its statutory history, its interpretation by the
Supreme Court, and its application by the courts, contravene this court's redefinition of
2007-1130
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