In Re Petrus A.C.M. Nuijten, (2006-1371) Fenruary 11, 2008
In a 9-3 decision, the CAFC denied Nuijten's petition for panel rehearing and rehearing en banc. Judges Linn, Newman and Rader dissented from the denial, stating that the law surrounding 35 U.S.C. §101 is in a "conflicted" state:
[O]ur decision conflicts with our own precedents as well as those of the Supreme Court . . . It conflicts with our own precedent because our predecessor court’s decision in In re Breslow, 616 F.2d 516 (C.C.P.A. 1980), forecloses the majority’s conclusion . . . that something "transient" or "fleeting" cannot constitute a "manufacture" under 35 U.S.C. § 101. And it conflicts with Supreme Court precedent because it ignores the Supreme Court’s analysis of how, in general terms, § 101 is to be construed. As the Court discussed in Diamond v. Chakrabarty, patentable subject matter includes "anything under the sun that is made by man" except for certain enumerated exceptions: "The laws of nature, physical phenomena, and abstract ideas have been held not patentable." 447 U.S. 303, 309 (1980). The majority’s narrow construction of "manufacture" ignores this framework.Also, the dissent argued that the Nuijten holding muddles the distinction between § 101 and § 103, as the PTO considers data per se to be "printed matter" under Lowry, and thus cannot form the sole basis for nonobviousness:
In addition, this case raises important questions about the relationship between § 101 and § 103. In this case, we affirm the PTO’s rejection of claims to a signal simpliciter, but the PTO has allowed a claim to a storage medium containing the very same signal, on the grounds that the storage medium is a manufacture that can be rejected, if at all, only under some provision other than § 101. In particular, the PTO considers the patentability of such claims under the "printed matter" doctrine of § 103. See In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994). These distinctions make no practical sense and are poorly supported by precedent, which, to the contrary, requires a more holistic approach to the question of whether a claim is directed only to an unpatentable abstraction or whether it is directed to a patentable application of such an abstraction to an otherwise statutory invention . . . The distinctions that are drawn between signals and storage media containing those signals would appear to apply equally to the distinctions between software and hardware and are artificial at best.The stage is set: with the current denial, the case may likely go to the Supreme Court for certiorari review. If certiorari is not sought or granted, expect further inter-panel disputes until the matter is resolved by an en banc court.
Download the opinion here (link)
For an example of the PTO's treatment of §§101/103 issues, see Ex Parte Nehls et al., Appeal 2007-1823, Decided: January 28, 2008 (alleged non-statutory feature to be considered for the purposes of 101, but same feature considered "nonfunctional descriptive material" for the purposes of 103) (link)