Fitting Software Claims Into Statutory Categories

June 17, 2015 | Patentable Subject Matter

Most patents and applications directed at software frame the claims in terms of processes. This is a safe choice because the US Code that defines patentable subject matter limits the number of categories for what is patentable:

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.

Software, unless it has specific ties to machines, generally falls within the “process” category, if claimed properly. The Federal Circuit elaborated on this in Allvoice Developments US, LLC v. Microsoft Corp. where it decided that certain software claims were not patentable subject matter because they did not fall into one of the above categories.

The patent claims at issue

Specifically, the court considered these two claims:

A universal speech-recognition interface that enables operative coupling of a speech-recognition engine to at least any one of a plurality of different computer-related applications, the universal speech-recognition interface comprising:
– input means for receiving speech-recognition data including recognised words;
– output means for outputting the recognised words into at least any one of the plurality of different computer-related applications to allow processing of the recognised words as input text; and
– audio playback means for playing audio data associated with the recognised words.

A speech-recognition interface that enables operative coupling of a speech-recognition engine to a computer-related application, the interface comprising:
– input means for receiving speech-recognition data including recognised words;
– output means for outputting the recognised words into a computer-related application to allow processing of the recognised words as input text, including changing positions of the recognized words; and
– means, independent of the computer-related application, for determining positions of the recognized words in the computer-related application.

The analysis under Section 101: Are the claims directed to a process, machine, article of manufacture, or composition of matter?

Without much analysis, the court merely stated that the claims were not directed to a process, then considered the other categories: “To be considered a machine under section 101, the claimed invention must be a ‘concrete thing, consisting of parts, or of certain devices and combination of devices.” Similarly, “[t]o qualify as a manufacture, the invention must be a tangible article that is given a new form, quality, property, or combination through man-made or artificial means. Likewise, a composition of matter requires the combination of two or more substances and includes all composite articles.”

The court reached this conclusion over the argument from the patent owner “that the claimed software must necessarily be in a machine readable, physical state in order to exist, and that the district court therefore should have concluded that these claims are directed to [an article of] manufacture, one of the four categories of patentable inventions.”

The Federal Circuit responded to this by following its own precedent that “instructions, data, or information alone, absent a tangible medium, is not [an article of] manufacture.”

Nonprecedential Opinion

The Federal Circuit can make any opinion nonprecedential, which means that the court considers the opinion to “not add significantly to the body of law.” While parties may cite nonprecedential decisions before the court, the court “will not give one of its own nonprecedential dispositions the effect of binding precedent.” In short, the court doesn’t have to follow the decision, or as Daffy Duck might say (in an exercise that I’ve just discovered is called shm-reduplication), “Rules shmules.”

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