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Patentable subject matter in the United States is governed by 35 U.S.C. 101. The current patentable subject matter practice in the U.S. is very different from the corresponding practices by WIPO/Patent Cooperation Treaty and by the European Patent Office, and it is considered to be broader in general.
Patentable subject matter in the United States is governed by 35 U.S.C. 101. The two particularly contentious areas, with numerous reversals of prior legislative and judicial decisions, have been computer-based and biological inventions. [9] [10] The US practice of patentable subject matter is very different from that of the European Patent Office.
One author of the US Patent Act of 1952 stated that patentable subject matter should encompass "anything under the sun that is made by man." [16] At that time, the USPTO and US courts interpreted both "anything" and "made by man" quite broadly. However, the meaning of these terms has been narrowed substantially over the years.
35 U.S.C. 103 Conditions for patentability; non-obvious subject matter. (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would ...
Accordingly, the claimed subject matter did not fit within any of the statutory categories of section 101, which defines patentable subject matter. [43] Moreover, it was intangible, and in the Digitech case, the Federal Circuit had held that except for processes, "eligible subject matter must exist in some physical or tangible form." [44]
Bilski v. Kappos, 561 U.S. 593 (2010), was a case decided by the Supreme Court of the United States holding that the machine-or-transformation test is not the sole test for determining the patent eligibility of a process, but rather "a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101."
The "novelty" of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter. It has been urged that novelty is an appropriate consideration under § 101.
In other words, the paradigm claims on appeal are not directed to statutory subject matter under 35 U.S.C. § 101 because they are not directed to subject matter within the four recognized categories of patentable inventions. Therefore, the paradigm claims, claims 24-35, are not patentable under 35 U.S.C. § 101 for at least this reason.