Appeal 2007-1089
Application 10/348,277
matter.”7 Id. at 295, 30 USPQ2d at 1459. In sum, the Federal Circuit has
never ruled that methods without any transformation are eligible, and
appears in Schrader to have rejected that proposition.
We believe that “process” should not be broadened so as to include
any and every method that may be deemed useful. 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. In other words,
interpreting “process” as either transforming subject matter or implemented
by one of the other three categories of inventions is rationally consistent
7 Although the FWA test is no longer considered particularly probative
in the context of computer-implemented process inventions in view of Diehr
(see, e.g., State Street, 149 F.3d at 1374, 47 USPQ2d at 1601 ), the erosion
of FWA provides no support for the position that a non-machine
implemented process, not involving any transformation, might be patentable.
The answer 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)).
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