Appeal No. 95-2552
Application 07/886,228
As previously noted, § 105 has nothing to do with determining statutory subject matter. It is true that
the mere use of the word "system" does not make a claim to a system statutory. See In re Walter,
618 F.2d 758, 205 USPQ 397 (CCPA 1980) ("system" for seismic prospecting nonstatutory). However,
here we are satisfied that the system is statutory subject matter under the § 101 class of a "manufacture."
As to the examiner's comment that "it appears that the 'novelty' lies in the arrangement of the satellites,"
patentable subject matter is based on the claimed subject matter as a whole, not on the point of novelty.
Diamond v. Diehr, 450 U.S. 175, 188, 209 USPQ 1, 9 (1981) ("It is inappropriate to dissect the claims
into old and new elements and then to ignore the presence of the old elements in the analysis.").
Our conclusion that a "communication system including a constellation of a plurality of artificial
satellites orbiting the Earth, each artificial satellite having communication means providing
communication with the Earth," as recited in claims 1 and 15, is a "manufacture" is bolstered by the
discussion in Interferometrics, Inc. v. Mobile Communications Holdings, Inc., 1994 U.S. App.
LEXIS 7504 (4th Cir. 1994) (unpublished). Interferometrics involved a dispute between
Interferometrics, Inc. ("IF") and Mobile Communications Holdings, Inc. ("MCHI") involving a
partnership formed by the parties in the Ellipsat Corporation ("Ellipsat"). Ellipsat was formed to
contruct an elliptical orbit satellite system, known as Ellipso, the final objective being to establish a
communication system for cellular phone systems. The partnership agreement provided that IF would
select "the most appropriate Interferometrics satellite class that is determined in the orbital system
hereof" to be used in the Ellipso system. The parties also prepared an FCC application for the Ellipso
system. "For filing purposes, the Ellipso system was divided into two constellations, Ellipso I and
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