In re Nuijten

concurring-in-part and dissenting-in-part.

I am pleased to join Part II.A of the majority opinion because I agree that a “signal,” as used in the claims at issue, refers to something with a “physical form.” Majority Op. at 1352-53. However, I respectfully disagree with the majority’s holding that the claims in suit are not directed to statutory subject matter under 35 U.S.C. § 101. I therefore dissent in part from Part II.B of the opinion and from the judgment.

This case presents challenging questions that go beyond the single patent claim at issue. In determining the scope of patentable subject matter, we must reconcile cutting-edge technologies with a statute, the language of which dates back to the beginning of the Republic. Moreover, we decide this case against a backdrop of ongoing controversy regarding the wisdom of software patenting and our decision in State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed.Cir.1998). I appreciate the majority’s desire to draw an exclusionary line. However, mindful of our duty to interpret the law as Congress wrote it rather than attempt “to preempt congressional action by judicially decreeing what accords with ‘common sense and the public weal,’ ” Tenn. Valley Auth. v. Hill, 437 U.S. 153, 195, 98 S.Ct. 2279, 57 L.Ed.2d 117 (1978), I respectfully disagree that the majority’s holding is compelled by or consistent with precedent or the language of the statute. Indeed, I fear that it risks further confusing an already uncertain set of doctrines.

The majority bases its holding on the Century Dictionary definition of “manufacture” quoted by the Supreme Court in American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11, 51 S.Ct. 328, 75 L.Ed. 801 (1931), and again in Diamond v. Chakrabarty, 447 U.S. 303, 308, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980): “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.” I respectfully disagree that this definition limits the term “manufacture” to non-transitory, tangible things. When it defined “manufacture” as above, the Supreme Court emphasized that “[i]n choosing such expansive terms as ‘manufacture’ ... modified by the comprehensive ‘any,’ Congress plainly contemplated that the patent laws would be given wide scope.” Chakrabarty, 447 U.S. at 308, 100 S.Ct. 2204. Because the patent claim at issue contemplates “some physical carrier of information,” Majority Op. at 1353, the claim requires that some input “material”— whether a pulse of energy or a stone tablet — has been given a “new form[ ],” “qual-it[y],” or “property]” by direct human action or by a machine. The resulting signal is thus a “manufacture” in the “expansive” sense of § 101. See also Am. Fruit, 283 U.S. at 11, 51 S.Ct. 328 (offering as a second definition of “manufacture,” “anything made for use from raw or prepared materials”).

Because I believe the claimed signal is a manufacture, it is necessary for me also to examine the alternative argument that the claimed signal is an unpatentable “abstract idea” under Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972). The answer to this argument is best found in § 101’s textual requirements that statutory subject matter be “new” and “useful,” which are limits on the four statutory categories that otherwise encompass “anything under the sun that is made by man.” Chakrabarty, 447 U.S. at 309, 100 S.Ct. 2204 (quoting S.Rep. No. 1979, 82d Cong., 2d Sess., at 5 (1952), U.S.Code Cong. & Admin. News 1952, at 2398-99 ; H.R.Rep. No. 1923, 82d Cong., 2d Sess., at 6 (1952)). As I explain in the following analysis, it is my view that the claim at issue is both *1359“new” and “useful” and is not an abstract idea.

Because I conclude that the claim at issue is directed to a “new and useful” “manufacture,” I believe it is patentable under 35 U.S.C. § 101. Accordingly, I would reverse.

I. The Definition of “Manufacture”

I agree with the majority that the subject of Nuijten’s signal claims is not a “machine,” “process,” or “composition of matter” as used in 35 U.S.C. § 101. As the majority recognizes, however, “[t]he question of whether the claimed signals are ‘manufactures’ is more difficult.” Majority Op. at 1356. As mentioned, the Supreme Court quoted in American Fruit the following definition of “manufacture,” upon which the majority relies today: “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.” 283 U.S. at 11, 51 S.Ct. 328 (quoting 5 Century Dictionary 3620 (William Dwight Whitney ed., 1895)), quoted in Diamond v. Chakrabarty, 447 U.S. 303, 308, 100 S.Ct. 2204, 65 L.Ed.2d 144 (1980). Based on this definition and the associated definition of “article,” the majority concludes that manufactures must be “tangible,” a definition that excludes “[a] transient electric or electromagnetic transmission.” Majority Op. at 1356. With all due respect, I believe that these conclusions are erroneous.

First, the majority’s holding is unsupported by the authority it cites. Even if accepted as controlling, see infra at 1360-61, the American Fruit definition of “manufacture” is not limited to tangible or non-transitory inventions by its own terms, nor does the claimed signal fail to be “material” in the relevant sense. The raw “materials” that take new form to become “manufactures” need not be tangible or permanent inputs: the Century Dictionary defines “material” to mean, inter alia, “that which composes or makes a part of anything.”1 “Material” II.2, 5 Century Dictionary 3657.

The majority’s definition for “article”— “a particular substance or commodity”— likewise provides no indication that the substance must last any longer than is necessary to be useful. See Majority Op. at 1356. Moreover, an article does not cease to be an article when it “must be measured ... by equipment capable of detecting and interpreting” it. Id. Myriad inventions, particularly in the chemical arts, can only be detected using equipment — this is inevitable if patents are to cover advanced technologies. Indeed, we have squarely held that transitory inventions are patentable under § 101. For example, in In re Breslow, we held that chemical intermediates are patentable compositions of matter under § 101 even if they are “transitory, unstable, and non-isolatable.” 616 F.2d 516, 519, 521-22 (C.C.P.A.1980). In so holding, we recognized that the compounds “can as well be considered ‘manufactures’ as ‘composition[s] of matter’ ”. Id. at 522; see also Zenith Labs. v. Bristol-Myers Squibb Co., 19 F.3d 1418, 1422 (Fed.Cir.1994) (noting that infringement may occur where a pharmaceutical is converted into a claimed chemical compound in vivo).

*1360In any event, it is doubtful that looking to a definition of “article” is necessary. The American Fruit Court quoted a second definition for “manufacture” from the Century Dictionary in addition to the one repeated in Chakrabarty: “anything made for use from raw or prepared materials.” 283 U.S. at 11, 51 S.Ct. 328. This definition does not, by its terms, require that a “manufacture” be an “article” or a transformed “raw material,” only that it be something — “anything”—made from them.

Second, the majority simply assumes, without reference to its own construction of the claim, that Nuijten’s signal is “fleeting.” Majority Op. at 1356. The claim refers to multiple “samples,” one “preceding” the next, in a specified relationship. In conjunction with the specification’s references to “prediction” of a watermark bit’s effect on subsequent bits of the input signal and the invention’s preferred use for audio or video signals, it is apparent that the claimed signal must extend over some interval of time. In In re Hruby, 54 C.C.P.A. 1196, 373 F.2d 997 (1967), we held that it was not the dynamic position of any given water droplet, but rather the overall pattern, that was patentable; likewise, here, it is the overall signal, not the physical manifestation of a single bit, that constitutes the invention. Just as the design of a fountain lasts so long as the water is flowing, the signal lasts so long as the transmission of the signal is in progress. In many embodiments — for example, when the signal encodes an audio or video signal representing a symphony or a full-length motion picture that is being watched in real time — the transmission may be in progress for a significant period of time. And as the majority holds, the claim makes no assumptions about what physical form the signal might take. The claim therefore encompasses embodiments, such as inscriptions on paper, in which the signal itself may last indefinitely.

Third, neither American Fruit Growers nor Chakrabarty confronted or decided a question of tangibility or permanence. The question in American Fruit Givwers was whether “an orange, the rind of which has become impregnated with borax, through immersion in a solution, and thereby rendered resistant to blue mold decay,” was a “manufacture” within the meaning of the predecessor to § 101. 283 U.S. at 11, 51 S.Ct. 328. The court answered the question in the negative, not because an orange is not “tangible,” but because treated citrus fruits do not “possess[] a new or distinctive form, quality, or property,” and thus are not made by man. Id. Likewise, in Chakrabarty, the Court held that a genetically-engineered bacterium was patentable because it was “a nonnaturally occurring manufacture or composition of matter — a product of human ingenuity having a distinctive name, character [and] use.” 447 U.S. at 309-10, 100 S.Ct. 2204 (quotation marks omitted) (alteration in original). Indeed, as I will discuss below, the Chakrabarty Court cited the American Fruit definition of “manufacture” only in support of the proposition that the term was “expansive” and that “Congress plainly contemplated that the patent laws would be given wide scope.” Id. at 308, 100 S.Ct. 2204. In neither case did the Court decide or discuss the question that is before us today.

Fourth, the language we are called to interpret is venerable. As the majority recognizes, with the exception of the substitution of “process” for “art,” the four categories of statutory subject matter in § 101 have remained unchanged since the 1793 Patent Act. Act of Feb. 21, 1793, ch. 11, § 1, 1 Stat. 318. “Manufacture” was a statutory category even in the very first United States Patent Act of 1790. Act of Apr. 10, 1790, ch. 7, § 1, 1 Stat. 109. Indeed, “manufactures” were the subject of the British Statute of Monopolies of *13611623, 21 Jac. 1, eh. 3. See generally Ex parte Lundgren, No.2003-2088, 2004 WL 3561262, *13-20, 2005 Pat.App. LEXIS 34, at *32-*50 (B.P.A.I. April 20, 2004) (Barrett, A.P.J., concurring-in-part and dissenting-in-part) (discussing history of statutory subject matter).

In part because of this, I question whether this case can be decided by reference to a dictionary definition of “manufacture.” See Alappat, 33 F.3d at 1553 (Archer, C.J., concurring-in-part and dissenting-in-part) (“These terms may not be read in a strict literal sense entirely divorced from the context of the patent law.”). To the extent such a definition might be helpful, however, it should be one that is contemporary with the statutory language, and thus a dictionary that dates to the eighteenth century. See, e.g., St. Francis Coll. v. Al-Khazraji, 481 U.S. 604, 610-12, 107 S.Ct. 2022, 95 L.Ed.2d 582 (1987) (using mid-nineteenth-century dictionaries to construe 1866 Civil Rights Act).

One example of a contemporary dictionary is Samuel Johnson, A Dictionary of the English Language (3d ed. 1768), available at http://books.google.com?id= bXsCAAAAQAAJ, which defines manufacture as “[a]ny thing made by art.”2 “Art,” in turn, is defined as “[t]he power of doing something not taught by nature and instinct”; “[a] science”; “[a] trade”; “[a]rt-fulness, skill, dexterity.” Id. This connection is significant because of the parallel use of “art” and “manufacture” in the 1790 and 1793 Patent Acts and because of the use of the term “useful Arts” in the Patent Clause of the Constitution.3 U.S. Const., art. I, cl. 8; see also In re Comiskey, 499 F.3d 1365, 1375 (Fed.Cir.2007) (“The Constitution explicitly limited patentability to ‘the national purpose of advancing the useful arts — -the process today called technological innovation.’ ”) (quoting Paulik v. Rizkalla, 760 F.2d 1270, 1276 (Fed.Cir.1985) (en banc)); Karl B. Lutz, Patents and Science: A Clarification of the Patent Clause of the U.S. Constitution, 18 Geo. Wash. L.Rev. 50, 54 (1949) (“The term ‘useful arts,’ as used in the Constitution ... is best represented in modern language by the word ‘technology.’ ”).

*1362Thus, it appears that rather than delineate specific, narrow categories, Congress has consistently intended statutory subject matter to cover the full scope of technological ingenuity, however it might best be claimed. Thus, “art” and “process[es]” might be viewed, in rough terms, as the exercise of technological skill, “manufacture[s]” and “composition[s] of matter” as the products of that skill, and “machine[s]” as the tools through which that skill is exercised. See Comiskey, 499 F.3d at 1377 (observing that a method claim involving a mental process or algorithm qualifies as a “process” under § 101 when it “(1) is tied to a machine or (2) creates or involves a composition of matter or manufacture”).

We and the Supreme Court have each recognized and applied this broad approach, frequently declining to decide in which statutory category a claim belongs. See, e.g., Chakrabarty, 447 U.S. at 307-08, 100 S.Ct. 2204 (deciding the patentability of a claimed microorganism without determining whether it was a “manufacture” or “composition of matter”); Gottschalk v. Benson, 409 U.S. at 67-68, 93 S.Ct. 253 (quoting a principle of patentability from Funk Bros. Seed Co. v. Kalo Co., 333 U.S. 127, 68 S.Ct. 440, 92 L.Ed. 588 (1948), and stating, “We dealt there with a ‘product’ claim, while the present case deals with a ‘process’ claim. But we think the same principle applies.”); State Street Bank, 149 F.3d at 1375 (“The question of whether a claim encompasses statutory subject matter should not focus on which of the four categories of subject matter a claim is directed to ... but rather on the essential characteristics of the subject matter .... ” (emphasis omitted)).

Of course, as we noted in State Street Bank, a claim must be drafted to at least one of the four categories. 149 F.3d at 1375 n. 9. As the allowed and disallowed claims in this ease demonstrate, however, claims to essentially the same invention can frequently be drafted, with at most subtle differences in scope, to either processes or manufactures. Patentability does not depend on which form the claim takes. Cf. Parker v. Flook, 437 U.S. 584, 588-90, 593, 98 S.Ct. 2522, 57 L.Ed.2d 451 (1978) (holding that where the “only novel feature” of an “otherwise conventional” method is an unpatentable algorithm, the mere addition of the conventional method steps to an unpatentable claim does not confer patentability, because to do otherwise “would make the determination of patentable subject matter depend simply on the draftman’s art”).

Fifth, and finally, I believe the majority does not follow the guidance that the Supreme Court provided in Chakrabarty as to how we should interpret § 101. As the Court observed, “Congress plainly contemplated that the patent laws would be given wide scope.” 447 U.S. at 308, 100 S.Ct. 2204. Accordingly, Chakrabarty embraces the notion that the scope of patentable subject matter includes “anything under the sun that is made by man.” Id. at 309 100 S.Ct. 2204 (quoting S.Rep. No. 82-1979, at 5 (1952), U.S.Code Cong. & Admin.News 1952, At 2398-99; H.R.Rep. No. 82-1923, at 6 (1952)). Granted, Chakra-barty also cautions that there are exceptions to these sweeping pronouncements: “This is not to suggest that § 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable.” Id. But altogether, the most straightforward interpretation of the Supreme Court’s guidance in Chakrabarty is that an invention qualifies as patentable subject matter if it (1) is “made by man,” and (2) does not involve an attempt to patent “laws of nature, physical phenomena, [or] abstract ideas.” Indeed, this is the analysis the Chakrabarty Court appears to follow: “Judged in this light, respondent’s micro-organism plainly qualifies *1363as patentable subject matter. His claim is not to a hitherto unknown natural phenomenon, but to a nonnaturally occurring manufacture or composition of matter — a product of human ingenuity ‘having a distinctive name, character, [and] use.’ ” Id. at 309-10, 100 S.Ct. 2204; see also AT & T Corp. v. Excel Commc’ns, Inc., 172 F.3d 1352, 1355, 1361 (Fed.Cir.1999) (applying § 101 by subtracting from “anything under the sun that is made by man” only the three exceptions enumerated by the Supreme Court). The Court’s analysis leaves little room for the term “manufacture” to impose additional limitations on the scope of patentable subject matter.

II. “Abstract Ideas” and the Requirements of Section 101

I now turn to the question of whether Nuijten’s claimed signal falls within one of the exceptions from patentable subject matter. To best answer this question, I consider the text of the statute. See Diamond v. Diehr, 450 U.S. 175, 182, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981).

35 U.S.C. § 101 provides:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

In addition to the requirement that patentable subject matter fall within one of the four statutory categories (“process, machine, manufacture, or composition of matter”), it must also be “new and useful.”4 As with the term “manufacture,” we must be sensitive to the fact that modern everyday usage may be a poor guide to the meaning of such old and oft-interpreted text. Nonetheless, the terms “new” and “useful” define and delimit the exceptions from statutory subject matter.

A. “New”

“Novelty,” as a patent doctrine, is ordinarily regarded as a requirement not of § 101 but of § 102. See Diehr, 450 U.S. at 189, 101 S.Ct. 1048 (“It has been urged that novelty is an appropriate consideration under § 101-Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection ‘subject to the conditions and requirements of this title.’ Specific conditions for patentability follow and § 102 covers in detail the conditions relating to novelty.”). Nonetheless, precedent supports attributing to the term “new” in § 101 a separate requirement that statutory subject matter be a type of invention that can be described as a “new” creation rather than the discovery of a pre-existing principle. See Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 780-81 (Fed.Cir.1985) (emphasizing the requirement of § 101 that “what is sought to be patented, as determined by the claims, be new” and observing that “[s]ection 102, the usual basis for rejection for lack of novelty or anticipation, lays down certain principles for determining the novelty required by § 101”); cf. Diehr, 450 U.S. at 211, 101 S.Ct. 1048 (Stevens, J., dissenting) (dis*1364cussing the difference between the so-called “discovery” requirement of § 101 and the “novelty” requirement of § 102). This accords with the language of the legislative history, discussed above, that patentable subject matter comprises “anything under the sun that is made by man.” Chakrabarty, 447 U.S. at 309 (emphasis added). To be “made by man,” something must not be pre-existing in nature; it must be, literally, an invention.

As the Supreme Court observed in Funk Bros., “patents cannot issue for the discovery of the phenomena of nature” because such phenomena “are part of the storehouse of knowledge of all men. They are manifestations of laws of nature, free to all men and reserved exclusively to none.... If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.” 333 U.S. at 130, 68 S.Ct. 440, quoted in Chakrabarty, 447 U.S. at 309, 100 S.Ct. 2204. Thus, a discovery or invention can fail to be “new” in the § 101 sense even if it has not previously been known to man or recorded in the prior art — that is, even if it is “novel” under § 102. Certain innovations, no matter how new to human thought, are not the type of technological invention to which Congress has extended patent protection, but instead are considered to be abstract truths that were not “made by man.” “The underlying notion is that a scientific principle ... reveals a relationship that has always existed.” Flook, 437 U.S. at 593 n. 15, 98 S.Ct. 2522.

This insight, I believe, is at the core of the judicial doctrine by which laws of nature, natural phenomena, and abstract ideas are excluded from patentable subject matter. For example, in Gottschalk v. Benson, the Supreme Court considered a proposed patent claim for a method for converting binary-coded decimal numbers (“BCD”) into pure binary numbers. Quoting Funk Bros., the Court distinguished “a hitherto unknown phenomenon of nature” from “the application of the law of nature to a new and useful end,” 409 U.S. at 67, 93 S.Ct. 253 (quoting 333 U.S. at 130, 68 S.Ct. 440). Applying this distinction, the Court observed that the “claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary conversion.” Id. at 68, 93 S.Ct. 253. Thus, the effect of allowing the patent would be to allow “a patent on the algorithm itself,” and such a patent was impermissible. Id. at 72, 93 S.Ct. 253. Although the Court did not make this connection explicit, I believe that one reason why the method for converting between the binary and binary-coded decimal systems was deemed to' be unpatentably abstract was that the claims attempted to monopolize a timeless mathematical relationship among integers,'even if the particular representations of the integers may have been new to computer science. See id. at 67-68, 93 S.Ct. 253. In other words, the algorithm might have been novel under § 102, but — like all purely mathematical algorithms — it was not “new” under § 101.5

*1365B. “Useful”

Section 101 also requires that patented subject matter be “useful.” Although we have treated the utility requirement of § 101 as a distinct concept from the question of whether an invention qualifies as patentable subject matter, a patent claim directed to a law of nature, a physical phenomenon, or an abstract idea will ordinarily have practical applications that are too attenuated from the subject of the claim to be “useful.” We recognized this in In re Alappat and State Street Bank by requiring that patentable subject matter manifest a “useful, concrete, and tangible result,” but the principle is not new to those cases. For example, in Funk Bros., the Supreme Court distinguished an un-patentable “hitherto unknown phenomenon of nature” from a patentable “application of the law of nature to a new and useful end.” 333 U.S. at 130, 68 S.Ct. 440 (emphases added).

Even where a person of ordinary skill in the art might readily conceive of some application of an abstract principle, it is the application rather than the principle itself that must be patented. In Benson, the Supreme Court rejected patent claims to a system for converting binary-coded decimals to pure binary numbers because the claim was “so abstract as to cover both known and unknown uses of the ... conversion. The end use may (1) vary from the operation of a train to verification of drivers’ licenses to researching the law books for precedents and (2) be performed through any existing machinery or future-devised machinery or without any apparatus.” 409 U.S. at 68, 93 S.Ct. 253. Put differently, although mathematical algorithms and similarly abstract principles may be useful (in the casual sense of the term) in a wide variety of contexts, their utility is too far removed from what is claimed for them to be “useful” under § 101. See Brenner v. Manson, 383 U.S. 519, 534-35, 86 S.Ct. 1033, 16 L.Ed.2d 69 (1966) (requiring that the “specific benefits” to be conferred by a claimed invention “exist[ ] in [the invention’s] currently available form”); see also In re Fisher, 421 F.3d 1365, 1371 (Fed.Cir.2005) (requiring that a claimed invention have “specific and substantial utility to satisfy § 101,” and rejecting a claim to a gene sequence where the sequence has only been shown to have “biological activity”).

A similar concept of whether the utility of claimed subject matter is too attenuated from what is actually claimed undergirds the “printed matter” doctrine. At oral argument, the PTO invoked printed matter cases in the context of why Nuijten’s claim 15, to “a storage medium having stored thereon” a signal, was allowable even though (according to the PTO) claim 14, to the signal simpliciter, was not. Oral Arg. at 00:44:41-00:45:18, available at http:// www.cafc.uscourts.gov/oralargu-ments/mp3/06-1371.mp3 (citing In re Lowry, 32 F.3d 1579 (Fed.Cir.1994), and In re Beauregard, 53 F.3d 1583 (Fed.Cir.1995) (order)). Under the “printed matter” doctrine, if the only distinction between a prior art storage medium and a claimed storage medium is the information stored thereon^ — rather than a different “functional relationship between the printed matter and the substrate” — then the claimed storage medium (with associated information) is unpatentably obvious over the prior art because the information lacks “patentable weight.” In re Gulack, 703 F.2d 1381, 1387 (Fed.Cir.1983). The “printed matter” rejection has been treated as a doctrine under § 103 rather than § 101, but it seems potentially more apposite as a consequence of the “useful” requirement of § 101. The Supreme Court has applied similar reasoning in § 101 cases. See, e.g., *1366Flook, 437 U.S. at 592, 98 S.Ct. 2522 (“We think this case must also be considered as if the principle or mathematical formula were well known.”).

In Lowry, the case upon which the PTO relied principally at oral argument, we considered the allowability of patent claims for a computer memory storage system containing a particular set of data structures that were useful for more quickly storing and retrieving data in a database system. 32 F.3d at 1580-82. We concluded that

Lowry’s data structures impose a physical organization on the data.... More than mere abstraction, the data structures are specific electrical or magnetic structural elements in a memory. According to Lowry, the data structures provide tangible benefits: data stored in accordance with the claimed data structures are more easily accessed, stored, and erased [and] represent complex data accurately and enable powerful nested operations. In short, Lowry’s data structures are physical entities that provide increased efficiency in computer operation.

Id. at 1583-84. Consequently, we held, the PTO’s printed matter rejection was erroneous. From this, the PTO apparently takes the position that functional but intangible software, data structures, signals, and the like are patentable under