Chapter §3.05 Manufactures Within §101

• Jurisdiction: United States

§3.05 Manufactures Within §101

[A] Definition of a Manufacture

A manufacture in patent law parlance is something of a catch-all category for those inventions that are human-made but do not neatly fall into the other three categories of 35 U.S.C. §101. A manufacture is generally thought of as a human-made item without moving parts, in contrast to a machine. In Chakrabarty, the Supreme Court "read the term 'manufacture' in §101 in accordance with its dictionary definition to mean '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.' "⁸³⁰

[B] Embedded Software

Is computer software embodied in a particular medium, such as a disk, a potentially patentable manufacture within the meaning of 35 U.S.C. §101? In In re Beauregard, the applicant sought allowance of the following claim to object code on a floppy disk:⁸³¹

1. An article of manufacture comprising:

a computer usable medium having computer readable program code means embodied therein for causing a polygon having a boundary definable by a plurality of selectable pels on a graphics display to be filled, the computer readable program code means in said article of manufacture comprising:

computer readable program code means for causing a computer to effect, with respect to one boundary line at a time, a sequential traverse of said plurality of selectable pels of each respective said boundary line;

computer readable program code means for causing the computer to store in an array during said traverse a value of an outer pel of said boundary of said plurality of selectable pels for each one of a plurality of scan lines of said polygon; and

computer readable program code means for causing the computer to draw a fill line, after said traverse, between said outer pels having said stored values, for each said one of said scan lines.

After the USPTO initially rejected this claim as unpatentable under the printed matter doctrine,⁸³² Beauregard appealed. Before the Federal Circuit heard oral argument in the case, however, the USPTO changed its policy. The agency withdrew its rejection and told the court that "computer programs embodied in a tangible medium, such as floppy diskettes, are patentable subject matter under 35 U.S.C. §101 and must be examined under 35 U.S.C. §§102 and 103."⁸³³ The agency agreed with Beauregard that the printed matter doctrine was therefore inapplicable.

Because it no longer had a case or controversy before it, the Federal Circuit did not decide the issue. It appeared that the court approved of these types of claims, however, for it had sustained the patentability (albeit under §103) of related types of manufactures such as a computer "memory" that stored a "data structure."⁸³⁴

More than 15 years after dismissing the appeal in In re Beauregard without deciding its merits, the Federal Circuit in 2011 issued a decision in Cybersource Corp. v. Retail Decisions, Inc.⁸³⁵ that called the legitimacy of some Beauregard claims into serious question. The appellate court reasoned in Cybersource that if a claimed method is not patent-eligible because it is merely an abstract idea under the Supreme Court's decision in Bilski v. Kappos,⁸³⁶ then a Beauregard-type claim to a "computer-readable medium" containing computer program instructions to carry out the method is likewise not patent-eligible. The Federal Circuit in Cybersource emphasized that it will look to the nature of the underlying invention, not the literal terminology of the claim at issue.⁸³⁷

Any notion that software is not patentable is no longer accurate, at least in the United States.⁸³⁸ An unapplied mathematical algorithm is not potentially patentable subject matter within §101, but the physical embodiment of that algorithm on a floppy disk, claimed as a manufacture, is considered potentially patentable by the USPTO. As is the case with claims to business methods discussed supra, the most difficult challenge for such patents is whether the claimed software inventions are novel and nonobvious, rather than their threshold qualification within 35 U.S.C. §101.

[C] Electrical Signals

Does an electronic signal qualify as a potentially patentable "manufacture" under §101? The Federal Circuit held (by 2-1 vote) in In re Nuijten that claims covering "transitory electrical and electromagnetic signals...