Whither The CCPA? The Influence Of CCPA Decisions On Subject Matter Eligibility

• Published date: 12 September 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Angeline Premraj, Amanda Murphy, Stacy Lewis and Thomas Irving

I. Introduction

One of the requirements for patentability under United States law is subject matter eligibility, as prescribed by 35 U.S.C. ' 101. Under Section 101, an invention is eligible for a patent if it is a "new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." Accordingly, an invention must fall within one of the four statutory categories of a process, machine, manufacture, or composition of matter. Section 101 has also been interpreted by courts to exclude certain categories of inventions, such as laws of nature, physical phenomena, and abstract ideas, i.e., the so-called exceptions. See Bilski v. Kappos, 130 S. Ct. 3218, 3227-28 (2010).

While it is important to look to recent cases for further clarification on subject matter eligibility, practitioners would be remiss to ignore an entire body of precedent by the United States Court of Customs and Patent Appeals ("CCPA") that may provide additional guidance on this requirement for patentability. What follows is a discussion of key cases heard by the CCPA¹ and what they can teach us about subject matter eligibility, especially as it relates to subject matter most recently at the forefront of ' 101 issues: software.

II. The Importance of Characterizing the Claimed Subject Matter

In one of the CCPA's earliest cases dealing with software, the patent at the center of the dispute was directed to the quantitative spectrographic analysis of a qualitatively-known mixture to determine unknown component concentrations with minimum error. In re Prater, 415 F.2d 1393, 1395 (CCPA 1969). The Examiner initially rejected the claims under ' 101 based on In re Abrams, 188 F.2d 165 (CCPA 1951), which established that purely mental acts relied on for patentable novelty of the claim are not eligible for patent protection. Id. at 1398. However, the Court found that Abrams did not apply because the claims included a properly programmed general-purpose computer for carrying out the claimed process without human intervention. Id. at 1400-01. Thus, the claims in Prater were found to be eligible for patent protection under ' 101 when they were characterized as a machine-implemented process, rather than a software process.

III. The CCPA Pulls Back from Abrams

That same year, the CCPA decided another case involving the patentability of a software-based invention: In re Bernhart, 417 F.2d 1395, 1396 (CCPA 1969). In Benhart, the patent was directed to a method and...