Appeal 2006-2107
Application 09/969,833
1459. In sum, the Federal Circuit has never ruled that methods without any
transformation or machine implementation are eligible, and appears in
Schrader to have rejected that proposition.
We believe that “process” should not be broadened so as to include
any method that may be deemed useful only in a general sense. The
Supreme Court’s and Federal Circuit’s articulated eligibility tests keep the
interpretation of “process” in pari materia with the other three categories of
inventions – manufacture, machine, and composition of matter. 4 In other
to that question is still provided by Schrader, and that answer, so far, is
negative. While AT&T indicated that Schrader is “unhelpful” because it did
not reach the question whether a “useful, concrete, and tangible result”
occurred, the reason that case did not need to reach that question was
because it found that Schrader’s method claims were unpatentable for lack
of any transformation. In addition, Schrader’s claims did not require
machine-implementation, unlike AT&T’s claims. See AT&T, 172 F.3d at
1358, 50 USPQ2d at 1452 (“AT&T’s claimed process” uses “switching and
recording mechanisms to create a signal useful for billing purposes.”).
Moreover, it is axiomatic that dicta in one Federal Circuit panel decision
cannot overrule the holding of an earlier panel decision. George E. Warren
Corp. v. United States, 341 F.3d 1348, 1351 (Fed. Cir. 2003) (“We cannot
simply overrule [a prior panel] decision, even if we were persuaded . . . that
it is appropriate; to overrule a precedent, the court must rule en banc” (citing
Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 765, 9 USPQ2d 1417, 1423
(Fed.Cir.1988)).
4 “A machine is a concrete thing, consisting of parts, or of certain
devices and combination of devices.” Burr v. Duryee, 68 U.S. 531, 570
(1863). The term “manufacture” refers to “‘the production of articles for use
from raw or prepared materials by giving to these materials new forms,
qualities, properties, or combinations, whether by hand-labor or by
machinery.’” Diamond v. Chakrabarty, 447 U.S. 303, 308, 206 USPQ 193,
196-97 (1980) (quoting American Fruit Growers, Inc. v. Brogdex Co., 283
U.S. 1, 11, 8 USPQ 131, 133 (1931)). A “composition of matter” by its own
terms requires matter. Chakrabarty, 447 U.S. at 308, 206 USPQ at 196-97.
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