page_title: Machine-or-transformation test
section_title: Is satisfying the test a necessary condition for patent-eligibility, a sufficient condition, both or neither?
hierarchical_section_title: Machine-or-transformation test / Outstanding issues / Is satisfying the test a necessary condition for patent-eligibility, a sufficient condition, both or neither?
caption_attribution_description: English: This is Figure 1 in U.S. Pat. No. 6,701,872. It is intended to illustrate a concept explained in Machine-or-transformation test.
context_page_description: In United States patent law, the machine-or-transformation test is a test of patent eligibility under which a claim to a process qualifies for consideration if it is implemented by a particular machine in a non-conventional and non-trivial manner or transforms an article from one state to another.
  The test was first articulated under its present form in the government's brief in Gottschalk v. Benson. In its reply brief on the merits in that case, the government said, "we submit that the cases follow such a rule—implicitly or explicitly—and that they cannot be rationalized otherwise." The court declined to adopt the proposed rule as categorical and as an exclusive test. It opined that future cases might present fact patterns calling for a different rule from that applicable to past cases, and therefore the machine-or-transformation test was just a "clue" to eligibility for a patent.
  The test has been recently articulated in Bilski, but dates back to the nineteenth century. The test is articulated also in the patent-eligibility trilogy—Gottschalk v. Benson, Parker v. Flook, and Diamond v. Diehr. In the wake of the Supreme Court's opinion in Bilski v.
context_section_description: It is debatable whether the decision of the Federal Circuit in In re Bilski made the machine-or-transformation test a necessary condition for patent-eligibility, a sufficient condition, or both a necessary and sufficient condition. The Bilski opinion seems to declare a rule that a claimed invention is patent-eligible if and only if it satisfies the machine-or-transformation test. Both prongs of if-and-only-if have been challenged, and in its opinion on appellate review of the Federal Circuit's opinion the Supreme Court held that the machine-or-transformation test was only a helpful clue and not in itself dispositive.
  A commentator asserted that an example illustrating the proposition that satisfying the machine-or-transformation test is not a sufficient condition for patent-eligibility occurs in U.S. Pat. No. 6,701,872. This patent covers a method and apparatus (machine) for entertaining a cat by using a moving laser beam (relatively high technology). The method is implemented with a "particular machine"—"a rotating laser source mounted directly on a shaft driven directly by a motor mounted on a portable pedestal" (method claim 14). But it is debatable whether entertaining a cat may be considered a useful Art, and some may argue that this "discovery" is not the kind of discovery that the Patent Clause contemplates.
  Attempts have been made, also, to describe processes that fail to satisfy the machine-or-transformation test but nonetheless seem clearly to be patent-eligible.
  A method of removing dirt from a soiled garment, comprising:
  placing a soiled garment in flowing water; and
  
  shaking said garment for at least five minutes.
  The question has been raised, also, whether beating the garment with a stick constitutes use of a "particular machine." That question is illustrated by the following hypothetical claim that is a variation on the preceding example:
  A method of removing dirt from a soiled garment, comprising:
  submerging a soiled garment in water; and
  
  beating said garment for at least five minutes with a stick.
  The point of this type of analysis is that the machine-or-transformation test does not work for all cases. There are some unusual outliers that satisfy the test but are patent-ineligible and some that do not satisfy the test but are patent-eligible. The Supreme Court's subsequent analyses in the Bilski and Alice cases confirms the inability of the machine-or-transformation test to cover all possible cases, as the foregoing examples suggest. Therefore, these "thought experiment" patent claims show that, while the machine-or-transformation test is a valuable and useful clue, as the Alice case states, and it may well cover most practical cases, it is neither a necessary nor sufficient test of patent eligibility.
caption: Method and apparatus for exercising a cat
exif: {}