Federal Circuit Addresses Patentability in Terms of Non-Statutory Subject MatterJuly 13, 2018

On June 20, 2018, in In re Wang, the United States Court of Appeals for the Federal Circuit (CAFC) held that patent application claims describing a phonetic symbol system were not patentable because it was directed to non-statutory subject matter. Patentable subject matter is laid out in 35 U.S.C. § 101, which states that patentable inventions must be a “process, machine, manufacture, or composition of matter”.

The phonetic symbol system consists of using a single letter or a combination of letters of the English alphabet to represent phonetic symbols. Each vowel and consonant in the English alphabet is then represented by a distinct phonetic symbol.

In its reasoning, the CAFC highlights the fact that an invention is only patentable if it is a process, machine, manufacture, or composition of matter. The CAFC points out that to be a machine, manufacture, or composition of matter, it must exist in a physical or tangible form. The CAFC says that a machine is a “concrete thing,” a manufacture is a “tangible article,” and a composition of matter is a “combination of two or more substances”. Since the phonetic symbol system described in the claims is none of those things, the CAFC then considered whether it represented a process.

A “process” in terms of patentability is defined in 35 U.S.C. § 100(b), which states that a process is any “process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material”. The CAFC then cites relevant case law that describes a process as a series of acts or steps and as something that must be performed. The CAFC determines that none of the claims describing the phonetic symbol system require an act, or step, or anything that would need to be performed. Therefore, the invention is not a process, machine, manufacture, or composition of matter, and is not patentable. The CAFC also points out that the claims contain no additional inventive concept that may make the claims patentable.

At a time when patent eligibility is topic of discussion, it is important for the courts to continue to decide cases on the matter to provide clarity.

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