Ex parte Lundgren - Is the issue one of what should be patentable or one of access to prior art?

The Board of Patent Appeals and Interferences at the United States Patent and Trademark Office recently issued a precedential opinion holding that there is no separate “technological arts” test when determining whether a claimed invention meets the subject matter requirement of 35 U.S.C. s. 101 (Ex Parte Lundgren, BPAI 2003–2088; view and/or download a .pdf of the opinion here).

The Board distinguished a 1970 decision of the Court of Customs and Patent Appeals (a predecessor of today’s Court of Appeals for the Federal Circuit) that says that Section 101 only requires that a claimed process be “in the technological arts.”  In Lundgren, the Board rejected this earlier case as establishing a general test for patentable subject matter.

The Lundgren opinion casts a critical eye on the scope of patentable processes despite its holding, particularly business methods.  One Administrative Patent Judge expresses a belief that Section 101 is not satisfied by a process unless the human physical actions involved in the process transform some physical subject matter to a different state.

When considering Section 101 issues, I often wonder if the real issue is accessibility to prior art.  What if Examiners had perfect accessibility to prior art when examining claims to a process?  I wonder if that would change any beliefs on what lies within Section 101 and what does not.

Is the question really one of access to prior art rather than one of what should and should not be considered patentable?

Consider one of the examples discussed in the opinion — the “patented” move of an athlete.  Sportscasters often use the phrase “…and there’s his patented move…” to describe an athletic move for which an athlete is known.  But, as described in the opinion, the PTO has tried to resist patenting such human performed subject matter* (because there is no transformation of physical matter?).

What if an athlete submitting a claim for a “method of [entertaining][performing in an athletic event][etc.]” that covered his “move” AND the Examiner had absolute perfect access to the relevant prior art (e.g., it is relatively easy for the Examiner to review video footage of athletes performing similar moves).

Would this change things?

Of course, perfect access to relevant prior art cannot be achieved.  Maybe Section 101 can/should/is/will be used as a gatekeeper of this deficiency.

* I have never seen nor heard of an issued patent or an application claiming an athletic move.  If you have, I’d appreciate a reference by e-mail (jmbesq AT gmail DOT com).

by J. Matthew Buchanan.