United States Court of Appeals for the Federal Circuit 

 *Revised: January 26, 2009 

 

2006-1286 

(Serial No. 09/461,742) 

IN RE STEPHEN W. COMISKEY 

 Thomas J. Scott, Jr., Goodwin Procter LLP, of Washington, DC, argued for 

appellant. With him on the brief was Robert L. Kinder, Jr., Dickstein Shapiro LLP, of 

Washington, DC. Of counsel was Yisun Song, Hunton & Williams LLP, of Washington, 

DC. 

 Raymond T. Chen, Associate Solicitor, United States Patent and Trademark 

Office, of Arlington, Virginia, argued for the Director of the United States Patent and 

Trademark Office. With him on the brief was Thomas W. Krause, Associate Solicitor. 

Appealed from: United States Patent and Trademark Office 

 Board of Patent Appeals and Interferences 

* Thomas J. Scott, Jr., formerly of Hunton & Williams LLP, is now affiliated with 

Goodwin Procter LLP, of Washington, DC, and Robert L. Kinder, Jr., Dickstein Shapiro 

LLP, of Washington, DC. 
 

 

United States Court of Appeals for the Federal Circuit 

2006-1286 

(Serial No. 09/461,742) 

IN RE STEPHEN W. COMISKEY 

Appeal from the United States Patent and Trademark Office, Board of Patent Appeals 

and Interferences. 

___________________________ 

DECIDED: January 13, 2009 

___________________________ 

Before MICHEL, Chief Judge, DYK and PROST, Circuit Judges. 

DYK, Circuit Judge. 

 Acting en banc, the court today vacated the September 20, 2007, judgment in 

this case, and the panel’s original opinion, which is reported at 499 F.3d 1365 (Fed. Cir. 

2007), was withdrawn. The en banc court reassigned the opinion to the panel for 

revision. The panel’s original opinion is revised as follows: 

Appellant Stephen W. Comiskey (“Comiskey”) appeals the decision of the Board 

of Patent Appeals and Interferences (“Board”) affirming the examiner’s rejection of 

claims 1-59 of his patent application as obvious in view of the prior art and therefore 

unpatentable under 35 U.S.C. § 103. We do not reach the Board’s obviousness 

rejection of the independent claims under § 103. We conclude that Comiskey’s 

independent claims 1 and 32 and most of their dependent claims are unpatentable 
 

 

 

subject matter under 35 U.S.C. § 101. With respect to independent claims 17 and 46 

(and dependent claims 18-29, 31, 47-57, and 59) and dependent claims 15, 30, 44, and 

58, we remand to the PTO to consider the § 101 question in the first instance. We 

therefore affirm-in-part, vacate-in-part, and remand. 

BACKGROUND 

I 

 Comiskey’s patent application No. 09/461,742 claims a method and system for 

mandatory arbitration involving legal documents, such as wills or contracts. According 

to the application, the claimed “program . . . requires resolution by binding arbitration of 

any challenge or complaint concerning any unilateral document . . . [or] contractual 

document.” 

 Independent claim 1 recites a “method for mandatory arbitration resolution 

regarding one or more unilateral documents” involving the following steps. First, the 

unilateral document and its author are enrolled. Second, arbitration language is 

incorporated in the unilateral document requiring that any contested issue related to the 

document be presented to the pre-chosen arbitration program for binding arbitration. 

Third, the method “requir[es] a complainant [sic] to submit a request for arbitration 

resolution.” Fourth, the method conducts arbitration resolution. Fifth, the method 

provides “support to the arbitration.” Finally, the method determines “an award or 

decision . . . [that] is final and binding.”1

 Independent claim 32 is practically identical to 

1

 Claim 1 states in full: 

A method for mandatory arbitration resolution regarding one or more 

unilateral documents comprising the steps of: 

2006-1286 2
 

 

 

claim 1, except that it refers to contractual documents rather than unilateral 

documents.2 Although the application’s written description references “an automated 

system and method for requiring resolution through binding arbitration” and “a 

mandatory arbitration system through a computer on a network,” claims 1 and 32 do not 

enrolling a person and one or more unilateral documents associated with 

the person in a mandatory arbitration system at a time prior to or as of the 

time of creation of or execution of the one or more unilateral documents; 

incorporating arbitration language, that is specific to the enrolled person, 

in the previously enrolled unilateral document wherein the arbitration 

language provides that any contested issue related to the unilateral 

document must be presented to the mandatory arbitration system, in 

which the person and the one or more unilateral documents are enrolled, 

for binding arbitration wherein the contested issue comprises one or more 

of a challenge to the documents, interpretation of the documents, 

interpretation or application of terms of the documents and execution of 

the documents or terms of the documents; 

requiring a complainant to submit a request for arbitration resolution to the 

mandatory arbitration system wherein the request is directed to the 

contested issue related to the unilateral document containing the 

arbitration language; 

conducting arbitration resolution for the contested issue related to the 

unilateral document in response to the request for arbitration resolution; 

providing support to the arbitration resolution; and 

determining an award or a decision for the contested issue related to the 

unilateral document in accordance with the incorporated arbitration 

language, wherein the award or the decision is final and binding with 

respect to the complainant.

2

 In addition, Claim 32 notes that the inserted arbitration language would 

cover a challenge to the contractual document “by any party to the Contract or by any 

alleged third party beneficiary of the Contract.” It also notes that the party submitting a 

request for arbitration resolution could be “a party to the Contractual document [or] a 

party so designated in the contractual document.” 

2006-1286 3
 

 

evice such as a computer. 

 

reference, and the parties agree that these claims do not require, the use of a 

mechanical d

 Independent claim 17 recites a “system for mandatory arbitration resolution 

regarding one or more unilateral documents.” It includes the following limitations: (1) “a 

registration module” to register the unilateral document and its executor; (2) “an 

arbitration module” for incorporating arbitration language that requires any contested 

issue related to the unilateral document be presented to the system; (3) “an arbitration 

resolution module” that requires “a complainant to submit a request for arbitration 

resolution”; and (4) “a means for selecting an arbitrator from an arbitrator database” and 

“providing support to the arbitrator . . . where the arbitrator determines an award or a 

decision . . . [that] is final and binding.”3 Independent claim 46 is practically identical to 

3

 Claim 17 states in full: 

A system for mandatory arbitration resolution regarding one or more 

unilateral documents comprising: 

a registration module for enrolling a person who is executing and one or 

more unilateral documents associated with the person in a mandatory 

arbitration system at a time prior to or as of the time of creation of or 

execution of the one or more unilateral documents; 

an arbitration module for incorporating arbitration language, that is specific 

to the enrolled person, in the previously enrolled unilateral document 

wherein the arbitration language provides that any contested issue related 

to the unilateral document must be presented to the mandatory arbitration 

system, in which the person and the one or more unilateral documents are 

enrolled, for binding arbitration wherein the contested issue comprises one 

or more of a challenge to the documents, interpretation of the documents, 

interpretation or application of terms of the documents and execution of 

the documents or terms of the documents; and for providing this 

arbitration language to the enrolled person; 

2006-1286 4
 

 

 

claim 17, except that it refers to contractual documents rather than unilateral 

documents.4 Four dependent claims (claims 15, 30, 44, and 58) also explicitly require 

use of a computer or other machine. Each states, in full: “[t]he method[/system] of claim 

[1, 17, 32, or 46] wherein access to the mandatory arbitration is established through the 

Internet, intranet, World Wide Web, software applications, telephone, television, cable, 

video [or radio], magnetic, electronic communication, or other communication means.”

II 

 Comiskey filed his patent application with the United States Patent and 

Trademark Office (“PTO”) on December 16, 1999. On March 28, 2001, the examiner 

issued a first office action rejecting claims 1-9, 11-24, 26-38, 40-52, and 54-59 under 35 

U.S.C. § 103(a) as unpatentable over Ginter, U.S. Patent No. 6,185,683 (’683 patent), 

in view of Perry, U.S. Patent No. 5,241,466 (’466 patent), and Walker, U.S. Patent No. 

5,794,207 (’207 patent). Ginter discloses an electronic system for securely delivering 

documents from the sender to the recipient through the electronic equivalent of a 

an arbitration resolution module for requiring a complainant to submit a 

request for arbitration resolution to the mandatory arbitration system 

wherein the request is directed to the contested issue related to the 

unilateral document containing the arbitration language; and 

a means for selecting an arbitrator from an arbitrator database to conduct 

an arbitration resolution for the contested issue related to the unilateral 

document in response to the request for arbitration resolution, for 

providing support to the arbitrator, and where the arbitrator determines an 

award or a decision for the contested issue related to the unilateral 

document in accordance with the incorporated arbitration language, 

wherein the award or the decision is final and binding with respect to the 

complainant. 

4

 Claim 46 also notes that the party submitting a request for arbitration may 

be “a party to the contractual document [or] a party so designated in the contractual 

document.” 

2006-1286 5
 

 

“personal document carrier” that can validate transactions as well as actively participate 

in the transaction by, among other things, providing arbitration. ’683 patent “Abstract.” 

Walker discloses an electronic system that allows buyers to submit binding purchase 

offers and sellers to create contracts by accepting a purchase offer on its terms. It also 

teaches the inclusion of language in the purchase offers “requiring that both parties 

submit to binding arbitration of all disputes” and suggests that a “central 

controller . . . can support the arbitration process by providing an arbiter for each 

dispute.” ’207 patent col.30 ll.47-54. Perry discloses an electronic central depository 

for secure storage and rapid retrieval of unilateral documents such as wills. The 

examiner also found claims 10, 25, 39, and 53 (which added the additional limitation of 

displaying an “arbitration schedule”) unpatentable over Ginter in view of a document 

entitled “Arbitration Fee Schedule.” The examiner’s final office action on May 30, 2001, 

provided the same basis for rejection. 

Comiskey filed an amendment after final rejection on August 29, 2001, “to more 

distinctly claim and particularly point out” the aspects of his invention that he believed 

were novel, namely pre-enrolling the person in a mandatory arbitration system, 

including language in the document requiring submission of disputes to this pre-chosen 

system, and enabling a person to submit a dispute pertaining to the document to this 

pre-chosen system for binding arbitration. On December 31, 2001, the examiner mailed 

a final rejection of the amended claims, which rejected the claims on the same basis. 

After Comiskey filed a request for continued examination, the finality of the prior office 

action was withdrawn, and the examiner mailed another non-final rejection on July 9, 

2002, based again on the same grounds. In response, Comiskey submitted a 

2006-1286 6
 

 

“declaration of long felt need” on October 1, 2002, claiming that based on his 

experience representing clients involved in family disputes concerning unilateral 

documents, he believed his invention addressed an area of long felt need. On 

November 6, 2002, the examiner mailed a final rejection based on the same reasons as 

the prior office actions and rejected Comiskey’s assertion of long felt need on the 

ground that the cited prior art references had recognized and addressed the problem 

prior to Comiskey. 

 Comiskey appealed, and on November 30, 2005, the Board affirmed the 

examiner’s rejection. The Board concluded that because all of the independent claims 

were argued together they stood or fell together, and it chose claim 32 as 

representative. It concluded that the combination of Ginter and Walker rendered this 

claim obvious. Despite concluding that all of the independent claims stood or fell 

together, the Board proceeded to consider claims 1 and 17, directed to unilateral 

documents, separately. It concluded that the addition of Perry to Ginter and Walker 

rendered these claims obvious. Finally, the Board considered and affirmed the 

examiner’s rejection of claims 10, 25, 39, and 53 as obvious in light of Ginter, Perry, 

Walker, and the “Arbitration Fee Schedule.” 

 Comiskey timely appealed to this court. We have jurisdiction under 28 U.S.C. 

§ 1295(a)(4)(A) (2000). After oral argument, we requested supplemental briefing 

directed at the patentability of the subject matter of Comiskey’s application under 35 

U.S.C. § 101. In the supplemental briefing, Comiskey argued for the first time that we 

lacked the power to consider a ground for rejection not relied on below. Alternatively, 

Comiskey argued that his application was patentable under § 101, and that the subject 

2006-1286 7
 

 

matter of his application did not fall within an exception to patentability, such as an 

abstract idea, natural phenomena, or law of nature. 

 The PTO urged that this court could properly consider the § 101 issue. Indeed, 

the PTO urged that this court resolve the case on this ground to “give the Office needed 

guidance in this area.” PTO Supp. Br. 15. The PTO argued that Comiskey’s 

independent claims were directed at an unpatentable abstract idea, and not a 

patentable process, because they neither were tied to a particular machine nor operated 

to change materials to a different state or thing. Rather the claims impermissibly 

“encompasse[d] a method of controlling how humans interact with each other to resolve 

a dispute, based on a human arbitrator’s perception of the dispute.” PTO Supp. Br. 12. 

DISCUSSION 

We do not reach the ground relied on by the Board below—that the claims were 

unpatentable as obvious over Ginter in view of Walker, Perry, and “Arbitration Fee 

Schedule”—because we conclude that many of the claims are “barred at the threshold 

by § 101.” Diamond v. Diehr, 450 U.S. 175, 188 (1981). It is well-established that “[t]he 

first door which must be opened on the difficult path to patentability is § 101.” State St.

Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 1372 n.2 (Fed. Cir. 

1998) (quoting In re Bergy, 596 F.2d 952, 960 (CCPA 1979)). Only if the requirements 

of § 101 are satisfied is the inventor “allowed to pass through to” the other requirements 

for patentability, such as novelty under § 102 and, of pertinence to this case, nonobviousness under § 103. See id. As the Supreme Court stated in Parker v. Flook, 

“[t]he obligation to determine what type of discovery is sought to be patented [so as to 

determine whether it is “the kind of ‘discoveries’ that the statute was enacted to protect”] 

2006-1286 8
 

 

must precede the determination of whether that discovery is, in fact, new or obvious.” 

437 U.S. 584, 593 (1978) (emphases added). 

The PTO acknowledges that the examiner, consistent with his obligation under 

the cases, must have addressed the predicate issue of patentable subject matter and 

implicitly concluded that the claims met the requirements of § 101. See Oral Arg. Tr. 

18:40. For the reasons discussed below, we disagree that § 101 is satisfied. See also

Manual of Patent Examining Procedures (“MPEP”) § 2106 “Guidelines Flowchart” (Rev. 

5, Aug. 2006) (listing the steps an examiner should follow in determining patentability, 

with “determine whether the claimed invention complies with . . . 101” listed before 

“determine whether the claimed invention complies with 35 U.S.C. 102 and 103”). 

I 

 We first address Comiskey’s argument that we cannot properly address the issue 

of patentable subject matter. At oral argument, Comiskey admitted that the court “could 

affirm on [the § 101] ground if in fact [we] came to the conclusion that . . . the subject 

matter of this claim does not address the statutory subject matter.” In his supplemental 

briefing, Comiskey attempts to “withdraw[] any statement made at oral argument which 

would infer that this Court could even consider a new statutory grounds for rejecti[on].” 

Appellant’s Supp. Br. 19. Comiskey now asserts that “[t]his Court lacks the power to 

sua sponte raise and thereafter decide a statutory ground of patentability never raised 

during the agency proceeding below” because our review of the Board’s decision is 

required to be “on the record before the Patent and Trademark Office” under 35 U.S.C. 

§ 144 and the Administrative Procedure Act (“APA”), 5 U.S.C. § 706. Id. at 16-17. 

2006-1286 9
 

 

 Over sixty years ago in Securities & Exchange Commission v. Chenery Corp., 

318 U.S. 80 (1943), the Supreme Court made clear that a reviewing court can (and 

should) affirm an agency decision on a legal ground not relied on by the agency if there 

is no issue of fact, policy, or agency expertise. The Court said: 

In confining our review to a judgment upon the validity of the grounds 

upon which the Commission itself based its action, we do not disturb the 

settled rule that, in reviewing the decision of a lower court, it must be 

affirmed if the result is correct although the lower court relied upon a 

wrong ground or gave a wrong reason. . . . It would be wasteful to send a 

case back to a lower court to reinstate a decision which it had already 

made but which the appellate court concluded should properly be based 

on another ground within the power of the appellate court to formulate. 

But it is also familiar appellate procedure that where the correctness of the 

lower court's decision depends upon a determination of fact which only a 

jury could make but which has not been made, the appellate court cannot 

take the place of the jury. Like considerations govern review of 

administrative orders. If an order is valid only as a determination of policy 

or judgment which the agency alone is authorized to make and which it 

has not made, a judicial judgment cannot be made to do service for an 

administrative judgment. 

Id. at 88 (emphases added; internal citations and quotation marks omitted). We have 

repeatedly applied Chenery and have said that “[w]e may, however, where appropriate, 

affirm the [agency] on grounds other than those relied upon in rendering its decision, 

when upholding the [agency’s] decision does not depend upon making a determination 

of fact not previously made by the [agency].” Killip v. Office of Pers. Mgmt., 991 F.2d 

1564, 1568-69 (Fed. Cir. 1993) (emphases added); see also Newhouse v. Nicholson, 

497 F.3d 1298, 1301 (Fed. Cir. 2007) (“[T]he Chenery doctrine is not implicated when 

the new ground for affirmance is not one that calls for a determination or judgment 

which an administrative agency alone is authorized to make.” (internal quotation marks 

omitted)); Spears v. Merit Sys. Prot. Bd., 766 F.2d 520, 523 (Fed. Cir. 1985). We note 

2006-1286 10
 

 

that the APA specifically states that “the reviewing court shall decide all relevant 

questions of law.” 5 U.S.C. § 706. The Supreme Court has emphasized that in general 

the PTO should be treated like other administrative agencies, and that patent cases are 

subject to the same general administrative law legal principles. Dickinson v. Zurko, 527 

U.S. 150, 154-55 (1999). Thus, the same rules governing affirmance of agency action 

on a ground not relied on below necessarily apply in the PTO context as in the 

administrative context generally. 

As Comiskey points out, some of our cases have concluded that “it is 

inappropriate for this court to consider rejections that had not been considered by or 

relied upon by the Board.” In re Margolis, 785 F.2d 1029, 1032 (Fed. Cir. 1986). But 

these statements referred to situations that required factual determinations not made by 

the agency. For example, in Margolis and other cases the new grounds for decision 

would require this court to make factual determinations involving “the scope and content 

of the prior art [and] differences between the prior art and the claims at issue,” Dippin’ 

Dots, Inc. v. Mosey, 476 F.3d 1337, 1343 (Fed. Cir. 2007), which had not been 

2006-1286 11
 

 

considered by the PTO.5 We decline to read these cases as rejecting the breadth of the 

Chenery decision on which they explicitly relied. 

It is well-established that “whether the asserted claims . . . are invalid for failure 

to claim statutory subject matter under 35 U.S.C. § 101, is a question of law which we 

review without deference.” AT&T Corp. v. Excel Commc’ns, Inc., 172 F.3d 1352, 1355 

(Fed. Cir. 1999). As a question of law, lack of statutory subject matter is a “ground [for 

affirmance] within the power of the appellate court to formulate.” Chenery, 318 U.S. at 

88. While there may be cases in which the legal question as to patentable subject 

matter may turn on subsidiary factual issues, Comiskey has not identified any relevant 

fact issues that must be resolved in order to address the patentability of the subject 

matter of Comiskey’s application. Moreover, since we would review a Board decision 

on the issue of patentability without deference, see AT&T, 172 F.3d at 1355, the legal 

 5

 See In re Thrift, 298 F.3d 1357, 1367 (Fed. Cir. 2002) (refusing to sustain 

an obviousness rejection based on a new prior art reference not relied on by the Board 

because it would require a determination of the scope of that reference and whether it 

provided a motivation to combine); Margolis, 785 F.2d at 1031-32 (refusing to consider 

anticipation and obviousness grounds based on prior art references submitted to the 

examiner but not considered by the examiner or the Board); In re Hounsfield, 699 F.2d 

1320, 1324 (Fed. Cir. 1983) (refusing to consider new ground for affirmance that would 

require determination of scope of a prior patent and a comparison between the claims of 

the prior patent and the claims of the application); Application of Fisher, 448 F.2d 1406, 

1407 (CCPA 1971) (refusing to consider technical authorities urged by the PTO on 

appeal but not in the record). In other cases the issue, while perhaps now viewed as 

legal, was not at the time seen as legal in nature. See Application of Fleissner, 264 

F.2d 897, 900 (CCPA 1959) (noting that a finding of indefiniteness with respect to a 

means plus function claim requires an examination of the “record” to ascertain 

corresponding structure); see also Hazeltine Research, Inc. v. Dage Elec. Co., 271 F.2d 

218, 220-21 (7th Cir. 1959) (finding “no evidence in this record” to support the district 

court’s “finding[] of fact” that the “language of the claims of the patent in suit is invalid in 

that it is vague and indefinite”). 

2006-1286 12
 

 

issue concerning patentability is not “a determination of policy or judgment which the 

agency alone is authorized to make.” Chenery, 318 U.S. at 88. 

In these circumstances, Chenery not only permits us to supply a new legal 

ground for affirmance, but encourages such a resolution where, as here, “[i]t would be 

wasteful to send” the case back to the agency for a determination as to patentable 

subject matter. 318 U.S. at 88.6 We therefore may consider the patentability of 

Comiskey’s claims under § 101, and we turn to the merits of that question.7

II 

 Comiskey’s application may be viewed as falling within the general category of 

“business method” patents. At one time, “[t]hough seemingly within the category of 

process or method, a method of doing business [was] rejected as not being within the 

statutory classes.” State St. Bank, 149 F.3d at 1377 (quoting MPEP § 706.03(a) 

(1994)). In State Street Bank, we addressed the “business method” exception to 

statutory subject matter, and stated that “[w]e take this opportunity to lay this illconceived exception to rest.” Id. at 1375. State Street Bank involved “a data 

processing system for managing a financial services configuration of a portfolio 

established as a partnership,” and “[g]iven the complexity of the calculations, a 

 6

 The situation is quite different where a party seeks for the first time on 

appeal to raise a new ground on appeal for setting aside agency action. See Boston 

Scientific Scimed, Inc. v. Medtronic Vascular, Inc., 497 F.3d 1293, 1298 (Fed. Cir. 

2007). 

7

 As we recently noted in our en banc decision in In re Seagate Technology, 

LLC, “a court may consider an issue ‘antecedent to . . . and ultimately dispositive of’ the 

dispute before it, even an issue the parties fail to identify and brief.” 497 F.3d 1360, 

1372 (Fed. Cir. 2007) (quoting U.S. Nat’l Bank of Or. v. Indep. Ins. Agents of Am., Inc., 

508 U.S. 439, 447 (1993) (quoting Arcadia v. Ohio Power Co., 498 U.S. 73, 77 (1990))). 

The § 101 issue is an antecedent question to the § 103 issue, as discussed above. 

2006-1286 13
 

 

computer or equivalent device [wa]s a virtual necessity to perform the task.” Id. at 1371. 

We held that this system was patentable, concluding that patentability does “not turn on 

whether the claimed subject matter does ‘business’ instead of something else.” Id. at 

1377. 

Although it has been suggested that State Street Bank supports the patentability 

of business methods generally,8 State Street Bank explicitly held that business methods 

are “subject to the same legal requirements for patentability as applied to any other 

process or method.” Id. at 1375; see also MPEP § 2106(I) (Rev. 4, Oct. 2005) (“Claims 

should not be categorized as methods of doing business. Instead, such claims should 

be treated like any other process claims.”). We must then consider the requirements of 

§ 101 in determining whether Comiskey’s claims 1 and 32 for a method of mandatory 

arbitration for unilateral and contractual documents claim statutory subject matter. 

A 

The very constitutional provision that authorized Congress to create a patent 

system, Article I, § 8, also limited the subject matter eligible for patent protection to the 

“useful Arts.”9

 According to the Supreme Court, this constitutional limitation on 

patentability “was written against the backdrop of the [English] practices—eventually 

 8

 See, e.g., Leo J. Raskind, The State Street Bank Decision: The Bad 

Business of Unlimited Patent Protection for Methods of Doing Business, 10 Fordham 

Intell. Prop. Media & Ent. L.J. 61, 61 (1999). 

9

 Article I, § 8 states in full: “The Congress shall have Power . . . To promote 

the Progress of Science and useful Arts, by securing for limited Times to Authors and 

Inventors the exclusive Right to their respective Writings and Discoveries.” The 

Supreme Court has concluded that the references to “Science” (i.e., knowledge 

generally) and “Writings” creates the right to copyright protection and the references to 

“useful Arts” and “Discoveries” creates the right to patent protection. See Graham v. 

John Deere Co. of Kansas City, 383 U.S. 1, 5 (1966). 

2006-1286 14
 

 

curtailed by the Statute of Monopolies—of the Crown in granting monopolies to court 

favorites in goods or businesses which had long before been enjoyed by the public.” 

Graham, 383 U.S. at 5. In the 16th and 17th centuries, the English Crown granted 

monopolies over entire types of business to specific individuals, for example the grant 

by James I to Darcy in 1600 of the exclusive right to manufacture or sell playing cards 

or the exclusive right to the printing business held by the London guild of booksellers 

and printers. See Peter Meinhardt, Inventions, Patents, and Monopoly 31 (2d ed. 

1950); Eldred v. Ashcroft, 537 U.S. 186, 200 n.5 (2003). The purpose of such 

monopolies “was to enrich the King . . . as well as the grantee, at the expense of the 

community.” Meinhardt, supra, at 31. With this background in mind, the framers 

consciously acted to bar Congress from granting letters patent in particular types of 

business. The Constitution explicitly limited patentability to “the national purpose of 

advancing the useful arts—the process today called technological innovation.” Paulik v. 

Rizkalla, 760 F.2d 1270, 1276 (Fed. Cir. 1985) (en banc). 

Beginning with the first patent act, the Patent Act of 1790, “Congress [] 

responded to the bidding of the Constitution,” Graham, 383 U.S. at 6, by including 

provisions limiting patentable subject matter. See An Act to Promote the Progress of 

Useful Arts, Ch. 7, 1 Stat. 109, 110 (1790). The standard used by the Patent Act of 

1793, which limited patentability to “any new and useful art, machine, manufacture, or 

composition of matter, or any new or useful improvement [thereof],” is essentially the 

same as that used today. An Act to Promote the Progress of Useful Arts; and to Repeal 

the Act Heretofore Made for that Purpose, Ch. 11, 1 Stat. 318, 319 (1793). The Patent 

2006-1286 15
 

 

Act of 1952 did replace the word “art” with the word “process” so that current § 101 

states: 

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.10

However, the Supreme Court has made clear that the 1952 language change had no 

substantive effect, stating that “[a]nalysis of the eligibility of a claim of patent protection 

for a ‘process’ did not change with the addition of that term to § 101.” Diehr, 450 U.S. at 

184. 

 Patentable subject matter under the 1952 Act is extremely broad. Given the 

breadth of the categories listed in § 101, it is not surprising that the legislative history of 

the 1952 Act noted that “Congress intended statutory subject matter to include anything 

under the sun that is made by man.” Chakrabarty, 447 U.S. at 309 (quoting S. Rep. No. 

1979, 82d Cong., 2d Sess., 5 (1952); H.R. Rep. No. 1923, 82d Cong., 2d Sess., 6 

(1952) (internal quotation marks omitted)). On the other hand, the Supreme Court has 

made clear that this statement does “not . . . suggest that § 101 has no limits or that it 

embraces every discovery.” Id.

Specifically, Supreme Court decisions after the 1952 Patent Act have rejected a 

“purely literal reading” of the process provision and emphasized that not every “process” 

 10 The Supreme Court has defined “manufacture” 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 machinery” and 

“composition of matter” to mean “all compositions of two or more substances and all 

composite articles, whether they be results of chemical union, or of mechanical mixture, 

or whether they be gases, fluids, powders or solids.” Diamond v. Chakrabarty, 447 U.S. 

303, 308 (1980) (quotation marks and alteration omitted).

2006-1286 16
 

 

is patentable. Flook, 437 U.S. at 589. Instead “[t]he question is whether the method 

described and claimed is a ‘process’ within the meaning of the Patent Act.” Gottschalk 

v. Benson, 409 U.S. 63, 64 (1972); see also Flook, 437 U.S. at 593 (“[R]espondent 

incorrectly assumes that if a process application implements a principle in some specific 

fashion, it automatically falls within the patentable subject matter of § 101.”). “Abstract 

ideas” are one type of subject matter that the Supreme Court has consistently held fall 

beyond the broad reaches of patentable subject matter under § 101. As early as Le 

Roy v. Tatham, 55 U.S. 156, 175 (1852), the Supreme Court explained that “[a] 

principle, in the abstract, is a fundamental truth; an original cause; a motive; these 

cannot be patented, as no one can claim in either of them an exclusive right.” Since 

then, the unpatentable nature of abstract ideas has repeatedly been confirmed. See, 

e.g., Diehr, 450 U.S. at 185; Chakrabarty, 447 U.S. at 309; Flook, 437 U.S. at 589; 

Benson, 409 U.S. at 67; Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498, 507 (1874). 

The very cases of this court that recognized the patentability of some business methods 

have reaffirmed that abstract ideas are not patentable. See AT&T, 172 F.3d at 1355; 

State St. Bank, 149 F.3d at 1373; see also In re Alappat, 33 F.3d 1526, 1542-43 (Fed. 

Cir. 1994) (en banc). 

The prohibition against the patenting of abstract ideas has two distinct (though 

related) aspects. First, when an abstract concept has no claimed practical application, it 

is not patentable. The Supreme Court has held that “[a]n idea of itself is not 

patentable.” Rubber-Tip Pencil, 87 U.S. at 507 (emphasis added). In Benson, the claim 

was for a method of converting binary-coded decimal numerals into pure binary 

numerals that was “not limited to any particular art or technology, to any particular 

2006-1286 17
 

 

apparatus or machinery, or to any particular end use.” 409 U.S. at 64. Since the claim 

would therefore “wholly pre-empt the mathematical formula and in practical effect would 

be a patent on the algorithm itself,” the claim was unpatentable because its “practical 

effect” was to “patent an idea” in the abstract. Id. at 71-72.11 See also AT&T, 172 F.3d 

at 1358 (holding that a mathematical algorithm must produce “a useful, concrete, and 

tangible result” to be patentable); State St. Bank, 149 F.3d at 1373 (same); MPEP

§ 2106 (Rev. 5, Aug. 2006) (“[C]laims define nonstatutory processes if they . . . simply 

manipulate abstract ideas . . . without some claimed practical application.”). 

Second, the abstract concept may have a practical application. The Supreme 

Court has reviewed process patents reciting algorithms or abstract concepts in claims 

directed to industrial processes. In that context, the Supreme Court has held that a 

claim reciting an algorithm or abstract idea can state statutory subject matter only if, as 

employed in the process, it is embodied in, operates on, transforms, or otherwise 

involves another class of statutory subject matter, i.e., a machine, manufacture, or 

composition of matter. 35 U.S.C. § 101. As the PTO notes, “[t]he Supreme Court has 

recognized only two instances in which such a method may qualify as a section 101 

process: when the process ‘either [1] was tied to a particular apparatus or [2] operated 

to change materials to a ‘different state or thing.’’” See PTO Supp. Br. 4 (quoting Flook, 

437 U.S. at 588 n.9). In Diehr, the Supreme Court confirmed that a process claim 

reciting an algorithm could state statutory subject matter if it: (1) is tied to a machine or 

 11 In Benson, the Supreme Court reversed a decision by our predecessor 

court that had, in turn, relied on earlier decisions, such as Application of Musgrave, 431 

F.2d 882, 893 (CCPA 1970), suggesting that a process of human thinking in and of itself 

could be patentable. 

2006-1286 18
 

 

(2) creates or involves a composition of matter or manufacture.12 450 U.S. at 184. 

There, in the context of a process claim for curing rubber that recited an algorithm, the 

Court concluded that “[t]ransformation and reduction of an article ‘to a different state or 

thing’ is the clue to the patentability of a process claim that does not include particular 

machines.” Id. (quoting Benson, 409 U.S. at 70);13 see also In re Schrader, 22 F.3d 

290, 295 (Fed. Cir. 1994) (holding when a claim does not invoke a machine, “§ 101 

requires some kind of transformation or reduction of subject matter”). Thus, a claim that 

involves both a mental process and one of the other categories of statutory subject 

matter (i.e., a machine, manufacture, or composition) may be patentable under § 101. 

See Diehr, 450 U.S. at 184 (holding a process that involved calculations using the 

“Arrhenius equation” patentable because the claim “involve[d] the transformation of an 

article, in this case raw, uncured synthetic rubber, into a different state or thing”). For 

example, we have found processes involving mathematical algorithms used in computer 

 12 Of course, process claims not limited to claiming an abstract concept or 

algorithm (i.e., a mental process) may not be subject to the same requirements. 

13 See also Diehr, 450 U.S. at 184 (“Industrial processes . . . are the types 

which have historically been eligible to receive the protection of our patent laws.” 

(emphasis added)); Tilghman v. Proctor, 102 U.S. 707, 722 (1880) (“A manufacturing

process is clearly an art, within the meaning of the law.” (emphasis added)); Cochrane 

v. Deener, 94 U.S. 780, 788 (1876) (“A process is a mode of treatment of certain 

materials to produce a given result. It is an act, or a series of acts, performed upon the 

subject-matter to be transformed and reduced to a different state or thing.”).

2006-1286 19
 

 

technology patentable because they claimed practical applications and were tied to 

specific machines.14

However, mental processes—or processes of human thinking—standing alone 

are not patentable even if they have practical application. The Supreme Court has 

stated that “[p]henomena of nature, though just discovered, mental processes, and 

abstract intellectual concepts are not patentable, as they are the basic tools of scientific 

and technological work.” Benson, 409 U.S. at 67 (emphasis added). In Flook the 

patentee argued that his claims did not seek to patent an abstract idea (an algorithm) 

because they were limited to a practical application of that idea—updating “alarm limits” 

for catalytic chemical conversion of hydrocarbons. 437 U.S. at 586, 589-90. The Court 

rejected the notion that mere recitation of a practical application of an abstract idea 

makes it patentable, concluding that “[a] competent draftsman could attach some form 

of post-solution activity to almost any mathematical formula.” Id. at 590. Since all other 

features of the process were well-known, including “the use of computers for ‘automatic 

monitoring-alarming,’” the Court construed the application as “simply provid[ing] a new 

and presumably better method for calculating alarm limit values.” Id. at 594-95. The 

 14 See AT&T, 172 F.3d at 1355, 1358 (holding patentable “a process that 

uses the Boolean principle in order to determine the value of the PIC indicator” and that 

“require[d] the use of switches and computers”); State St. Bank, 149 F.3d at 1373 (“[W]e 

hold that the transformation of data . . . by a machine through a series of mathematical 

calculations into a final share price, constitutes a practical application of a mathematical 

algorithm.” (emphases added)); Alappat, 33 F.3d at 1544 (“This is not a disembodied 

mathematical concept which may be characterized as an ‘abstract idea,’ but rather a 

specific machine to produce a useful, concrete, and tangible result.” (emphases 

added)); Arrhythmia Research Tech., Inc. v. Corazonix Corp., 958 F.2d 1053, 1058-59 

(Fed. Cir. 1992) (holding patentable a method for analyzing electrocardiograph signals 

for the detection of a specific heart condition that used “electronic equipment 

programmed to perform mathematical computation”). 

2006-1286 20
 

 

Court held the application unpatentable because “if a claim [as a whole] is directed 

essentially to a method of calculating, using a mathematical formula, even if the solution 

is for a specific purpose, the claimed method is nonstatutory.” Id. at 595 (quoting In re 

Richman, 563 F.2d 1026, 1030 (CCPA 1977)). 

Following the lead of the Supreme Court, this court and our predecessor court 

have refused to find processes patentable when they merely claimed a mental process 

standing alone and untied to another category of statutory subject matter even when a 

practical application was claimed. In Schrader we held unpatentable a “method 

constitut[ing] a novel way of conducting auctions” by allowing competitive bidding on a 

plurality of related items. 22 F.3d at 291. In doing so, we rejected the patentee’s 

argument that the process used a machine. Two of the alleged machines—a “display” 

in the front of the auction room and “a closed-circuit television system” for bidders in 

different cities—were not claimed by the patent, and the third—a “record” in which bids 

could be entered—could be “a piece of paper or a chalkboard.” Id. at 293-94. We 

therefore concluded that the patent impermissibly claimed unpatentable subject matter. 

Similarly, in In re Warmerdam, 33 F.3d 1354, 1359-60 (Fed. Cir. 1994), we held 

unpatentable a process for controlling objects so as to avoid collisions because the key 

steps of “‘locating’ a medial axis” and “‘creating’ a bubble hierarchy” described “nothing 

more than the manipulation of basic mathematical constructs, the paradigmatic ‘abstract 

idea.’” A machine was not required, id. at 1358, nor was there any indication that the 

process operated on a manufacture or composition of matter. 

Decisions of our predecessor court are in accord. In re Meyer, 688 F.2d 789, 

795-96 (CCPA 1982), held that “a mental process that a neurologist should follow” was 

2006-1286 21
 

 

not patentable because it was “not limited to any otherwise statutory process, machine, 

manufacture, or composition of matter.” Similarly, In re Maucorps held that an invention 

“[u]ltimately . . . directed toward optimizing the organization of sales representatives in a 

business” was unpatentable. 609 F.2d 481, 482, 486 (CCPA 1979); see also Alappat, 

33 F.3d at 1541 (“Maucorps dealt with a business methodology for deciding how 

salesmen should best handle respective customers and Meyer involved a ‘system’ for 

aiding a neurologist in diagnosing patients. Clearly, neither of the alleged ‘inventions’ in 

those cases falls within any § 101 category.”).15

It is thus clear that the present statute does not allow patents to be issued on 

particular business systems—such as a particular type of arbitration—that depend 

entirely on the use of mental processes. In other words, the patent statute does not 

allow patents on particular systems that depend for their operation on human 

intelligence alone, a field of endeavor that both the framers and Congress intended to 

be beyond the reach of patentable subject matter. Thus, it is established that the 

application of human intelligence to the solution of practical problems is not in and of 

itself patentable. 

B 

 Having considered the governing legal principles, we now turn to Comiskey’s 

application and begin with independent claims 1 and 32 which recite “[a] method for 

mandatory arbitration resolution” regarding unilateral and contractual documents. 

 15 In Musgrave, our predecessor court concluded that the claims at issue in 

that case included non-mental steps and claimed patentable subject matter. 431 F.2d 

at 893. To the extent that language in the opinion might suggest that mental processes 

standing alone are patentable, the broad language in the opinion was significantly 

cabined by Benson. See 1 Chisum on Patents § 1.03[6][c]. 

2006-1286 22
 

 

Comiskey has conceded that these claims do not require a machine, and these claims 

evidently do not describe a process of manufacture or a process for the alteration of a 

composition of matter. Comiskey’s independent claims 1 and 32 claim the mental 

process of resolving a legal dispute between two parties by the decision of a human 

arbitrator. They describe in essence “conducting arbitration resolution for [a] contested 

issue” and “determining an award or a decision for the contested issue” through a predetermined “mandatory” arbitration system, and thus claim the use of mental processes 

to resolve a legal dispute. Thus, like the claims that the Supreme Court found 

unpatentable in Benson and Flook and the claims found unpatentable in our own cases, 

Comiskey’s independent claims 1 and 32 seek to patent the use of human intelligence 

in and of itself. Like the efforts to patent “a novel way of conducting auctions” which 

Schrader, 22 F.3d at 291, found to be directed to an abstract idea itself rather than a 

statutory category, Comiskey’s independent claims 1 and 32 describe an allegedly 

novel way of requiring and conducting arbitration and are unpatentable. 

C 

We consider independent claims 17 and 46 separately. They recite the use of 

“module[s],” including “a registration module for enrolling” a person, “an arbitration 

module for incorporating arbitration language,” and “an arbitration resolution module for 

requiring a complainant [or party] to submit a request for arbitration resolution to the 

mandatory arbitration system.” Claim 17 also recites “a means for selecting an 

arbitrator from an arbitrator database.” These claims, under the broadest reasonable 

interpretation, could require the use of a machine as part of Comiskey’s arbitration 

system. See Alan Freedman, The Computer Glossary 268 (8th ed. 1998) (defining 

2006-1286 23
 

 

module as “[a] self-contained hardware or software component that interacts with a 

larger system); id. at 90 (defining database as “any electronically-stored collection of 

data”). Similarly, even though Comiskey did not separately argue his dependent claims, 

our decision is based on a different ground than the Board’s, and we think it is 

appropriate to separately consider dependent claims 15, 30, 44, and 58. Each of these 

claims adds the following limitation to its corresponding independent claim: “wherein 

access to the mandatory arbitration is established through the Internet, intranet, World 

Wide Web, software applications, telephone, television, cable, video [or radio], 

magnetic, electronic communication, or other communications means.” 

As to all of these claims, which under the broadest reasonable interpretation 

recite the use of a machine, we think that the § 101 question should be addressed in the 

first instance by the PTO. We therefore remand to the PTO to consider whether 

independent claims 17 and 46 (with dependent claims 18-29, 31, 47-57, and 59) and 

dependent claims 15, 30, 44, and 58 recite patentable subject matter under § 101. 

CONCLUSION 

 We conclude that Comiskey’s independent claims 1 and 32 and dependent 

claims 2-14, 16, 33-43, and 45 do not claim patentable subject matter. With respect to 

independent claims 17 and 46 (with dependent claims 18-29, 31, 47-57, and 59) and 

dependent claims 15, 30, 44, and 58, we remand to the PTO to determine in the first 

instance whether § 101 is satisfied. If the Board had relied on the new § 101 ground for 

rejection in the first instance, Comiskey would have had the opportunity to amend his 

application under 37 C.F.R. § 41.50(b). We think that it is appropriate to afford 

2006-1286 24
 

 

2006-1286 25

Comiskey the same protections in this respect as he would have had before the Board 

with respect to the claims that we have held unpatentable. 

AFFIRMED-IN-PART, VACATED-IN-PART, AND REMANDED

COSTS 

 No costs.