Machine-or-transformation test

Numerous legal commentators praised the "machine-or-transformation" test for its simplicity, objectivity, reliability, and independence of the result from time and prior art availability.

[18] Thus, the Schrader opinion chided the Supreme Court for speaking of physical "articles" rather than "subject matter," and thus only "imperfectly" reflecting the relevant legal principle.

For a time it was asserted that it remains "unclear whether tying a process to a general purpose computer is sufficient to pass the machine-or-transformation test.

"[1] But in 2014 the Supreme Court expressly held in the Alice case that simply adding to a claim "do it with a computer" could not make for patent eligibility.

The Alice case and its progeny also cast doubt on the assertion that use of the "programmed computer claim format" overcomes the patent-eligibility problem.

[26] Some pre- and post-Bilski decisions of the PTO appellate board (BPAI) take the position that a programmed general-purpose digital computer is not a "particular machine," and that corresponding Beauregard claims to an encoded medium are equally nonstatutory.

[27] In CyberSource Corp. v. Retail Decisions, Inc.,[28] a California federal district court held that limitation of a process to implementation "over the Internet" does not satisfy the machine-or-transformation test.

An imperfectly resolved issue is whether the machine-or-transformation test is narrowly misnamed, since the relevant case law includes comparable implementations of natural-principle processes with other types of physical objects besides a machine.

There is no principled reason why a natural-principle process must be implemented physically with a machine and not with an article of manufacture or composition of matter.

The Bilski opinion seems to declare a rule that a claimed invention is patent-eligible if and only if it satisfies the machine-or-transformation test.

A commentator asserted that an example illustrating the proposition that satisfying the machine-or-transformation test is not a sufficient condition for patent-eligibility occurs in U.S. Pat.

[31] This patent covers a method and apparatus (machine) for entertaining a cat by using a moving laser beam (relatively high technology).

[32] Attempts have been made, also, to describe processes that fail to satisfy the machine-or-transformation test but nonetheless seem clearly to be patent-eligible.

Bilski points out, and the PTO recently emphasized in a memorandum to its Examining Staff,[34] that there are two "corollaries" to the machine-or-transformation test.

[35] The PTO Guidance Memo explains that "[t]his means the machine or transformation must impose meaningful limits on the method claim's scope [for it] to pass the test."

A so-called exhausted combination claim is one to a device in which a novel group of elements cooperates in a conventional manner with some old elements—for example, a new kind of motor and an old disk drive.

[38] The format of the processes claimed in Diamond v. Diehr,[6] Parker v. Flook,[5] and Gottschalk v. Benson[2] illustrate the concept and its practical application.

The Court held both claims patent-ineligible, however, on the ground that the computer-equipment limitation was too trivial to avoid preempting the idea, since the method could not feasibly be used except with a computer.

In Flook, the claim could have instead been to "a method of operating a hydrocracking plant wherein hydrocarbon feedstock is fed into a chemical reactor, heat is applied, etc."

Again, by providing a seemingly nontrivial mechanical environment, even though it was just an exhausted combination, the claims drafter might have avoided the holding of nonstatutory subject matter (patent-ineligibility).

It is thus possible that careful claims drafting techniques will succeed in elevating form over substance, to avoid the impact of the machine-or-transformation test.