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In re Comiskey (499 F.3d 1365, 2007 Sep 20)

Decision Parameters

  • Case: In re Comiskey
  • Date: 2007 Sep 20
  • Code: 499 F.3d 1365
  • Court: Federal Circuit
  • Vote: 3-0
  • URL: casetext.com/case/in-re-comiskey-2
  • Patent:

Decisions It Cites

    Le Roy v. Tatham [55 U.S. 14, 1852]
    Rubber-Tip Pencil Co. v. Howard [87 U.S. 498, 1874]
    Gottschalk v. Benson [409 U.S. 63, 1972]
    Parker v. Flook [437 U.S. 584, 1978]
    Diamond v. Chakrabarty [447 U.S. 303, 1980]
    Diamond v. Diehr [450 U.S. 175, 1981]
    Leapfrog Enterprises v. Fisher-Price [485 F.3d 1157, 2007]

Decisions That Cite It

Rules & Quotes

[USEFUL] {1} First, when an abstract concept has no claimed practical application, it is not patentable.

[PROCESS] {2} In Diehr, the Supreme Court noted that a process claim reciting an algorithm could state statutory subject matter if it: (1) is tied to a machine or (2) creates or involves a composition of matter or manufacture.

[MENTAL] {3} Thus, a claim that involves both a mental process and one of the other categories of statutory subject matter (i.e., a machine, manufacture, or composition) may be patentable under Section 101.

[MENTAL] {4} It is thus clear that the present statute does not allow patents to be issued on particular business systems — such as a particular type of arbitration — that depend entirely on the use of mental processes. In other words, the patent statute does not allow patents on particular systems that depend for their operation on human intelligence alone, a field of endeavor that both the framers and Congress intended to be beyond the reach of patentable subject matter. Thus, it is established that the application of human intelligence to the solution of practical problems is not in and of itself patentable.

[OBVIOUS] {5} The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness.

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