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decision on its request for interim exten-sion under 35 U.S.C. § 156(e)(1). Becausethe Director issued his decision on July 12,2007, Somerset has withdrawn the portionof its appeal that sought to compel theDirector to act on its request for interimrelief. Therefore, we dismiss that aspectof Somerset’s appeal as moot.

[1–3] Nonetheless, Somerset continuesto press its appeal regarding the denial ofinjunctive relief compelling the Director togrant its request for an interim extension.We review the denial of a preliminaryinjunction for an abuse of discretion.Ranbaxy Pharms., Inc. v. Apotex, Inc.,350 F.3d 1235, 1239 (Fed.Cir.2003). Toestablish entitlement to a preliminary in-junction a movant must establish a reason-able likelihood of success on the merits.Nat’l Steel Car, Ltd. v. Canadian Pac. Ry.,Ltd., 357 F.3d 1319, 1325 (Fed.Cir.2004)(‘‘[A] movant is not entitled to a prelimi-nary injunction if he fails to demonstrate alikelihood of success on the merits.’’).Somerset cannot establish a reasonablelikelihood of success on the merits in thiscase.

Section 156(e)(2) providesIf the term of a patent for which anapplication has been submitted undersubsection (d)(1) would expire before acertificate of extension is issued or de-nied under paragraph (1) respecting theapplication, the Director shall extend,until such determination is made, theterm of the patent for periods of up toone year if he determines that the pat-ent is eligible for extension.

35 U.S.C. § 156(e)(2). This section onlygives the Director the authority to extenda patent’s term beyond that provided forby section 154 when the patent for which aterm extension is sought ‘‘would expire

before a certificate of extension is TTT

denied.’’ Id. § 156(e)(2).

In this case, the Director has deniedSomerset’s application for extension.Therefore, the Director has no statutoryauthority to issue the interim extensionSomerset seeks. Thus, Somerset has notdemonstrated a reasonable likelihood ofsuccess on the merits.1 Because the dis-trict court did not abuse its discretion indenying Somerset’s motion for a prelimi-nary injunction, that denial is

AFFIRMED

COSTS

Each party shall bear its own costs.

,

In re Petrus A.C.M. NUIJTEN.

No. 2006–1371.Serial No. 09/211,928.

United States Court of Appeals,Federal Circuit.

Sept. 20, 2007.

Background: Applicant appealed decisionof the Board of Patent Appeals and Inter-ferences rejecting claims in his patent ap-plication for a signal with embedded digitalwatermark encoded according to a givenencoding process as unpatentable subjectmatter.

Holdings: The Court of Appeals, Gajarsa,Circuit Judge, held that:

1. Nothing in this opinion is intended to ad-dress any claim that Somerset may have onthe underlying merits of the Director’s July

12, 2007 denial of its request for patent termextension under 35 U.S.C. § 156(e)(1).

1347IN RE NUIJTENCite as 500 F.3d 1346 (Fed. Cir. 2007)

(1) claims required some carrier uponwhich the information was embedded,and

(2) claims were not directed to statutorysubject matter.

Affirmed.Linn, Circuit Judge, filed opinion concur-ring in part and dissenting in part.

1. Patents O324.5Whether a patent claim is valid in

light of statute requiring patentable sub-ject matter is a question of law that Courtof Appeals reviews de novo. 35 U.S.C.A.§ 101.

2. Patents O101(2)Claims in patent application for a sig-

nal with embedded digital watermark en-coded according to a given encoding pro-cess required some carrier upon which theinformation was embedded; so long assome object or transmission carried thespecified information, it fell within theclaim’s scope regardless of its physicalform.

3. Patents O7.14Claims in patent application for a sig-

nal with embedded digital watermark en-coded according to a given encoding pro-cess were not directed to statutory subjectmatter; claims included physical but tran-sitory forms of signal transmission such asradio broadcasts, electrical signals througha wire, and light pulses through a fiber-optic cable, so long as those transmissionsconveyed information encoded in the man-ner disclosed and claimed by the applicant.35 U.S.C.A. § 101.

4. Patents O5If a claim in a patent application cov-

ers material not found in any of the fourstatutory categories, that claim falls out-side the plainly expressed scope of patent-able subject matter, even if the subjectmatter is otherwise new and useful. 35U.S.C.A. § 101.

5. Patents O7.1

Patentable ‘‘process’’ under the patentstatute required reference to an act orseries of steps. 35 U.S.C.A. § 100.

See publication Words and Phras-es for other judicial constructionsand definitions.

6. Patents O7.14Claims in patent application for a sig-

nal with embedded digital watermark en-coded according to a given encoding pro-cess were not directed to a patentableprocess; claim’s recitation of a encodingprocess did not transform a claim coveringthe signal itself into one covering the pro-cess by which that thing was made. 35U.S.C.A. § 101.

7. Patents O11‘‘Machine’’ within meaning of statute

defining patentable subject matter in-cludes every mechanical device or combi-nation of mechanical powers and devices toperform some function and produce a cer-tain effect or result. 35 U.S.C.A. § 101.


8. Patents O11A propagating electromagnetic signal

is not a ‘‘machine’’ as that term is used instatute defining patentable subject matter.35 U.S.C.A. § 101.

9. Patents O13Artificiality is insufficient by itself to

render something a ‘‘manufacture’’ withinmeaning of statute defining patentablesubject matter. 35 U.S.C.A. § 101.


10. Patents O13Signals with embedded digital water-

mark encoded according to a given encod-ing process, as claimed in patent applica-


tion, were not ‘‘manufactures’’ withinmeaning of statute defining patentablesubject matter; signals did not themselvescomprise some tangible article or commod-ity. 35 U.S.C.A. § 101.

11. Patents O14A signal comprising a fluctuation in

electric potential or in electromagneticfields is not a ‘‘chemical union,’’ nor a gas,fluid, powder, or solid, and thus is not a‘‘composition of matter’’ within meaning ofstatute defining patentable subject matter.35 U.S.C.A. § 101.


Jack E. Haken, Philips IntellectualProperty & Standards, of Briarcliff Manor,NY, argued for appellant. Of counsel wasLarry Liberchuk.

Raymond T. Chen, Associate Solicitor,United States Patent and Trademark Of-fice, of Arlington, VA, argued for the Di-rector of the United States Patent andTrademark Office. With him on the briefwas Thomas W. Krause, Associate Solici-tor.

Robert R. McKelvie, Covington andBurling LLP, of Washington, DC, for ami-cus curiae. With him on the brief wasPeter Swanson. Of counsel on the briefwere Marc S. Adler and Richard F. Phil-lips, Intellectual Property Owners Associa-tion, of Washington, DC. Of counsel wasHerbert C. Wamsley.

Before GAJARSA, LINN, and MOORE,Circuit Judges.

Opinion for the court filed by CircuitJudge GAJARSA. Opinion concurring-in-part and dissenting-in-part filed by CircuitJudge LINN.

GAJARSA, Circuit Judge.

The issue before the court is whether ornot a signal is patentable subject matter.

Petrus A.C.M. Nuijten appeals the deci-sion of the Board of Patent Appeals andInterferences (‘‘Board’’) of the UnitedStates Patent and Trademark Office(‘‘PTO’’), which rejected claims 14, 22, 23,and 24 in his patent application Serial No.09/211,928 as unpatentable subject matteroutside the scope of 35 U.S.C. § 101. Theclaims seek to patent any ‘‘signal’’ that hasbeen encoded in a particular manner. Be-cause we agree with the Board that the‘‘signal’’ claims in Nuijten’s application arenot directed to statutory subject matter,we affirm.

I. BACKGROUND

A. Nuijten’s Invention and Patent Ap-plication

Nuijten’s patent application discloses atechnique for reducing distortion inducedby the introduction of ‘‘watermarks’’ intosignals. In the context of signal process-ing, watermarking is a technique by whichan original signal (such as a digital audiofile) is manipulated so as to embed withinit additional data. The additional data ispreferably imperceptible to someone whoviews or listens to the signal—for instance,a listener who plays back a watermarkeddigital audio file would, if the watermark issufficiently unobtrusive, not be able to dis-tinguish between the watermarked and un-watermarked versions. However, an anal-ysis of the file by software capable ofdetecting the watermark will reveal themark’s contents. This ability to encodeadditional data into a signal is useful topublishers of sound and video recordings,who can use watermarks to embed in themedia they distribute information intendedto protect that media against unauthorizedcopying. For these publishers and others,watermarking represents a trade-off: thedesired additional data is encoded directlyinto the signal, but like any change to asignal, the watermark introduces some lev-el of distortion. Thus, a key goal of water-


marking techniques is to minimize the dis-tortion so that the resulting diminution insignal quality is as minimal as possible.

Nuijten’s technique improves existingwatermark technology by further modify-

ing the watermarked signal in a way thatpartially compensates for distortion intro-duced by the watermark. A helpful illus-tration is found in the diagrams of Nui-jten’s application:

This diagram, Figure 2 of the applica-tion, demonstrates a relatively simple formof digital audio encoding called ‘‘delta mod-ulation.’’ 1 The smooth line in the uppergraph (labeled ‘x’) represents a very smallslice of the sound wave to be encoded.The lower graph represents a digital en-coding of that signal. It takes on only twovalues. They are labeled here as ‘1’ and ‘–1,’ rather than the usual labeling of thesebinary values as one and zero. The soundwave is reconstructed from the digital sig-nal one step at a time, left to right. If thedigital signal has value ‘1,’ the reconstruct-ed sound wave’s value is increased slightly,and if the digital signal has value ‘–1,’ thesound wave is decreased by the sameamount. The recording is therefore repre-sented by the change (or ‘‘delta’’) over a

very small increment of time, either ‘1’ foran increase or ‘–1’ for a decrease. Hence,the encoding scheme is known as ‘‘deltamodulation.’’ The result is a close butimperfect approximation of the originalsound wave, illustrated on the upper graphby ‘x’ with a caret above it. The fidelity ofthe reconstructed sound wave to the origi-nal will depend in large part on the ‘‘sam-ple rate’’—the length of the time intervalrepresented by each discrete value in thedigital signal. Representing all of the nu-ances of the original sound wave in orderto produce a rich, clear recording mayrequire tens or hundreds of thousands ofsamples per second.

The above-illustrated signal has no wa-termark. Nuijten’s application next illus-trates in Figure 3 what occurs when thesignal is modified to add a watermark:

1. More complex forms of encoding are alsodiscussed in Nuijten’s patent application.For simplicity, we focus here on delta modu-

lation.


The watermark Nuijten posits here isimposed on the signal by altering, if neces-sary, every hundredth value of the digitalsignal. A reader seeking to extract thewatermark from the digital signal wouldtherefore view only every hundredth value,disregarding the other 99 along the way;by stringing together all such values, thewatermarked data may be discerned. Ev-ery point where a portion of the water-mark is found represents a possibility thatthe signal may be distorted. If the water-mark value designated for a certain posi-tion and the original value at that sameposition happen to coincide, there is no

need to modify the original and hence nodistortion. About half of the time, though,those values will not coincide and the digi-tal signal will be altered. The result isshown in the diagram: the digital value atthe point labeled ‘21’ and illustrated by avertical dashed line has been changed from‘1’ in the original to ‘–1.’ The reconstructedsignal is thus decreased where it should beincreased, and the encoded signal departsfrom the original in a pronounced manner.

Nuijten’s application teaches that thisdeparture may be minimized by making anadditional change to the watermarked digi-tal signal, as shown in Figure 4:

Here, the value preceding the one that wasmodified by the watermark has also been

modified: it was ‘–1’ in the original signal,but is now ‘1.’ The signal is therefore


increased, then decreased (where in theoriginal it was decreased, then increased).The resulting encoding has the same wa-termark as the above example, but as thediagram indicates, it tracks the originalsound wave much more accurately. Thereis still some small loss in encoding qualityrelative to the unwatermarked original,but the magnitude of that loss has beengreatly decreased.

The above-described procedure is mostnaturally expressed as a series of steps foradding a low-distortion watermark to asignal, and indeed Nuijten has already ob-tained allowance of ten claims (Claims 1–10) directed to such a process. Claim 1 isthe broadest process claim allowed. Itreads:

A method of embedding supplementaldata in a signal, comprising the steps of:encoding the signal in accordance withan encoding process which includes thestep of feeding back the encoded signalto control the encoding; and modifyingselected samples of the encoded signalto represent the supplemental data priorto the feedback of the encoded signaland including the modifying of at leastone further sample of the encoded signalpreceding the selected sample if the fur-ther sample modification is found to im-prove the quality of the encoding pro-cess.

Nuijten’s Claims 11–13, also allowed bythe PTO, are directed to ‘‘[a]n arrange-ment for embedding supplemental data ina signal,’’ including ‘‘encoder means forencoding the signal’’ and other structuralfeatures that carry out the above process.Finally, Nuijten’s allowed Claim 15 is di-rected to ‘‘[a] storage medium havingstored thereon a signal with embeddedsupplemental data,’’ where the stored sig-nal has essentially the encoding propertiesdescribed above. Thus, Nuijten has beenallowed claims to the process he invented,a device that performs that process, and a

storage medium holding the resulting sig-nals. None of these claims is before us onappeal.

B. The Claims on Appeal

The claims whose disallowance Nuijtenappeals are not traditional step-by-stepprocess claims, nor are they directed toany apparatus for generating, receiving,processing, or storing the signals. Asmentioned above, such claims have beenallowed. The claims on appeal seek tocover the resulting encoded signals them-selves. Claim 14 of Nuijten’s application isthe only independent claim of the fourrejected by the PTO. It reads:

A signal with embedded supplementaldata, the signal being encoded in accor-dance with a given encoding process andselected samples of the signal represent-ing the supplemental data, and at leastone of the samples preceding the select-ed samples is different from the samplecorresponding to the given encodingprocess.

(emphasis added). Claims 22, 23, and 24depend on Claim 14, respectively addingrequirements that the embedded data be awatermark, that the signal be a video sig-nal, and that the signal be an audio signal.

C. Procedural History

The Examiner rejected a number ofclaims in Nuijten’s application for obvious-ness-type double patenting, and rejectedClaims 14, 15, and 22–24 as directed tononstatutory subject matter under § 101.On appeal, the Board reversed the double-patenting rejections. As to Claim 15, itfound that ‘‘[t]he storage medium in claim15 nominally puts the claim into the statu-tory category of a ‘manufacture’ ’’ and thusreversed the Examiner’s § 101 rejection ofthat claim. However, it affirmed the Ex-aminer’s § 101 rejections of Claims 14 and22–24 on two grounds. First, it noted that‘‘[t]he signal TTT has no physical attributes


and merely describes the abstract charac-teristics of the signal and, thus, it is con-sidered an ‘abstract idea’ ’’ unpatentableunder Diamond v. Diehr, 450 U.S. 175,185, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981).Second, the Board determined that theclaims at issue fell into none of the fourstatutory categories of patentable subjectmatter: ‘‘process, machine, manufacture,or composition of matter.’’ 35 U.S.C.§ 101. In the Board’s view, the claimswere not directed to a process becausethey did not ‘‘recite acts’’; not a machinebecause ‘‘the signal TTT has no concretetangible physical structure’’; and ‘‘notcomposed of matter and [therefore] clearlynot a ‘composition of matter.’ ’’ Finally,the Board noted that ‘‘[t]he signal does nothave any physical structure or substanceand does not fit the definition of a ‘manu-facture’ which requires a tangible object.’’Accordingly, the Board rejected Claims 14and 22–24 solely on the basis of unpatenta-bility under § 101. Nuijten timely appeal-ed the Board’s decision to this court, whichhas jurisdiction under 28 U.S.C.§ 1295(a)(4)(A).

II. DISCUSSION

[1] Whether a claim is valid in light of§ 101 is a question of law that we reviewde novo. AT & T Corp. v. ExcelCommc’ns, Inc., 172 F.3d 1352, 1355 (Fed.Cir.1999). Section 101 states:

Whoever invents or discovers any newand useful process, machine, manufac-ture, or composition of matter, or anynew and useful improvement thereof,may obtain a patent therefor, subject tothe conditions and requirements of thistitle.

Language setting forth a variety of catego-ries of matter deemed patentable has ex-isted throughout the history of Americanpatent law. The country’s first patent stat-

ute permitted a patent on ‘‘any art, manu-facture, engine, machine or device.’’ Pat-ent Act of 1790 § 4, 1 Stat. 109, 111 (1790).Soon thereafter, Congress amended thepatent laws, changing the language to al-low a patent for ‘‘any new and useful art,machine, manufacture or composition ofmatter.’’ Patent Act of 1793 § 1, 1 Stat.318, 319 (1793).2 The next substantialamendment to the patent laws left thisstatutory language unchanged. PatentAct of 1836 § 6, 5 Stat. 117, 119 (1836).This four-category language has persistedto the present day, with the exception ofthe technical change of ‘‘art’’ to ‘‘process,’’defined as ‘‘process, art or method,’’ in1952. 35 U.S.C. § 100; see Part II.B.1,infra.

The claims on appeal cover transitoryelectrical and electromagnetic signalspropagating through some medium, suchas wires, air, or a vacuum. Those types ofsignals are not encompassed by any of thefour enumerated statutory categories:‘‘process, machine, manufacture, or compo-sition of matter.’’ Before addressing indetail our rationale for this rejection,though, we begin by resolving a disputebetween Nuijten and the PTO about theclaims’ scope.

A. Claim Construction

As in any other context in which thescope and meaning of the claims bears onthe ultimate determination at hand, wemust start by considering the issue ofclaim construction. See State St. Bank &Trust Co. v. Signature Fin. Group, 149F.3d 1368, 1370 (Fed.Cir.1998) (statingthat ‘‘whether the TTT patent is invalid forfailure to claim statutory subject matterunder § 101[ ] is a matter of both claimconstruction and statutory construction’’).Claim construction is a question of law

2. ‘‘This bill was probably one written byThomas Jefferson himself.’’ P.J. Federico,

The Patent Act of 1793, 18 J. Pat. Off. Soc’y,Feb. 1936, at 77.


reviewed de novo on appeal. In re BakerHughes, Inc., 215 F.3d 1297, 1301 (Fed.Cir.2000); Cybor Corp. v. FAS Techs.,Inc., 138 F.3d 1448, 1451 (Fed.Cir.1998)(en banc ).

[2] The claim construction dispute be-tween Nuijten and the PTO turns on asomewhat esoteric and metaphysical point,namely: are the claims at issue limited tocovering only physical instances of signals,or do they also cover intangible, immateri-al strings of abstract numbers? The PTOsuggests that ‘‘claim 14 can be read toclaim a signal that is merely data’’—thatis, merely numerical information withoutany physical embodiment. Nuijten dis-agrees, arguing that ‘‘a signal must havesufficient physical substance to be dis-cerned and recognized by a recipient.’’That is, a signal can be sensed and re-ceived by some physical apparatus, if notdirectly by a person.

Nuijten’s position on this issue is correctin a limited way. A ‘‘signal’’ implies sig-naling—that is, the conveyance of informa-tion. To convey information to a recipient aphysical carrier, such as an electromagnet-ic wave, is needed. Thus, in order to be a‘‘signal,’’ as required by the claim, somecarrier upon which the information is em-bedded is required. See Arrhythmia Re-search Tech., Inc. v. Corazonix Corp., 958F.2d 1053, 1059 (Fed.Cir.1992) (‘‘The viewthat there is nothing necessarily physicalabout ‘signals’ is incorrect.’’ (quotationmarks omitted)).

However, while the claims are limited soas to require some physical carrier of in-formation, they do not in any way specifywhat carrier element is to be used. Theonly limitations in Claim 14 address thesignal’s informational content. Specifical-ly, the signal must encode some supple-mental data, it must have been encodedaccording to a ‘‘given encoding process,’’and a sample, or single data point, locatedbefore the location of the supplemental

data must be different from the original.The text of the claims is not limited by anyspecified physical medium, nor do the de-pendent claims add any physical limita-tions. They again require only that thesignal carry certain information—a water-mark, video, or audio. Therefore, anytangible means of information carriage willsuffice for all of the claims at issue. Nui-jten’s claims can of course be embodied byconventional, known means, such as elec-trical signals, modulated electromagneticwaves, and pulses in fiber optic cable. Solong as some object or transmission carriesthe information specified by Nuijten’sclaim, it falls within that claim’s scoperegardless of its physical form. In sum-mary, some physical form for the signal isrequired, but any form will do, so long as arecipient can understand the message—the nature of the signal’s physical carrieris totally irrelevant to the claims at issue.

B. The Appealed Claims are Not in AnyStatutory Category

[3] Nuijten and the PTO agree thatthe claims include physical but transitoryforms of signal transmission such as radiobroadcasts, electrical signals through awire, and light pulses through a fiber-opticcable, so long as those transmissions con-vey information encoded in the mannerdisclosed and claimed by Nuijten. Wehold that such transitory embodiments arenot directed to statutory subject matter.

[4] Our inquiry here, like that of theBoard, will consider whether a transitory,propagating signal is within any of the fourstatutory categories: process, machine,manufacture, or composition of matter.Before embarking on an analysis consider-ing each of the four categories, we mustaddress a prior statement of this courtwhich Nuijten argues forecloses such ananalysis. In State Street Bank & TrustCo. v. Signature Financial Group, Inc.,


149 F.3d 1368, 1375 (Fed.Cir.1998), we not-ed that ‘‘[t]he question of whether a claimencompasses statutory subject mattershould not focus on which of the fourcategories of subject matter a claim isdirected to—process, machine, manufac-ture, or composition of matter—but ratheron the essential characteristics of the sub-ject matter, in particular, its practical utili-ty.’’ However, we do not consider thisstatement as a holding that the four statu-tory categories are rendered irrelevant,non-limiting, or subsumed into an over-arching question about patentable utility.Indeed, State Street recognized that ‘‘the[claimed] subject matter must fall into atleast one category of statutory subjectmatter,’’ id. at 1375 n. 9, and specificallyfound that the claim at issue was directedto a machine, id. at 1375. In telling courtswhere they ‘‘should not focus’’ their analy-sis, State Street was advising not to beconcerned about debates over ‘‘which ofthe four categories,’’ id. (emphasis added),subject matter falls into—that is, not to beoverly concerned with pigeonholing subjectmatter once the court assures itself thatsome category has been satisfied. If, forinstance, a court determines that a claimencompasses either a process or machinebut is unsure which category is appropri-ate, it need not resolve the ambiguity.The claim must be within at least onecategory, so the court can proceed to otheraspects of the § 101 analysis.3 See StateStreet, 149 F.3d at 1371 (‘‘[I]t is of littlerelevance whether claim 1 is directed to a‘machine’ or a ‘process.’ ’’). State Streetsets forth a sound premise, but this casepresents a different situation. The es-sence of the dispute between the parties iswhether a transitory signal is covered byany statutory category. The four catego-ries together describe the exclusive reach

of patentable subject matter. If a claimcovers material not found in any of thefour statutory categories, that claim fallsoutside the plainly expressed scope of§ 101 even if the subject matter is other-wise new and useful. We must thereforedetermine whether any of the four catego-ries encompass the claims on appeal, and itis appropriate to consider each of the cate-gories in turn.

1. Process

[5, 6] Nuijten suggests that a signal ofthe type covered by the claims is a ‘‘pro-cess’’ under that term’s statutory meaning,arguing both that a process need not bedefined by reference to an act or series ofsteps, and that his signal claims do refer tothe performance of acts. Nuijten firstnotes that ‘‘process’’ is defined as ‘‘process,art or method,’’ 35 U.S.C. § 100, and sug-gests that an ‘‘art’’ is somehow broaderthan the usual understanding of ‘‘process,’’transcending any requirement of steps oraction. The presence of ‘‘art’’ in the statu-tory definition and its meaning can best beunderstood by reference to the legislativehistory of the Patent Act of 1952. Thereport of the Senate Committee on theJudiciary notes:

The present law [i.e., the pre–1952 pat-ent statute] states that any person whohas invented or discovered any ‘‘new anduseful art, machine, manufacture, or anynew or useful improvement thereof’’may obtain a patent. That language hasbeen preserved except that the word‘‘art’’ which appears in the present stat-ute has been changed to the word ‘‘pro-cess.’’ ‘‘Art’’ in this place in the presentstatute has a different meaning than thewords ‘‘useful art’’ in the Constitution,

3. Of course, a claim that is so unclear as to beambiguous about whether it covers a processor a machine might be invalid for failure to‘‘particularly point[ ] out and distinctly

claim[ ] the subject matter which the appli-cant regards as his invention,’’ 35 U.S.C.§ 112 ¶ 2, but claim definiteness is a require-ment separate from patentability under § 101.


and a different meaning than the use ofthe word ‘‘art’’ in other places in thestatutes, and it is interpreted by thecourts to be practically synonymous withprocess or method. The word ‘‘process’’has been used to avoid the necessity ofexplanation that the word ‘‘art’’ as usedin this place means ‘‘process or method,’’and that it does not mean the samething as the word ‘‘art’’ in other places.The definition of ‘‘process’’ has beenadded in section 100 to make it clearthat ‘‘process or method’’ is meant, andalso to clarify the present law as to thepatentability of certain types of process-es or methods as to which some insub-stantial doubts have been expressed.

S.Rep. No. 82–1979, at 5 (1952), U.S.CodeCong. & Admin.News 1952, pp. 2394, 2398–99. The Supreme Court and this courthave consistently interpreted the statutoryterm ‘‘process’’ to require action. SeeGottschalk v. Benson, 409 U.S. 63, 70, 93S.Ct. 253, 34 L.Ed.2d 273 (1972) (‘‘A pro-cess is a mode of treatment of certainmaterials to produce a given result. It isan act, or a series of acts, performed uponthe subject-matter to be transformed andreduced to a different state or thing.’’ (em-phasis added) (quoting Cochrane v. Deen-er, 94 U.S. 780, 788, 24 L.Ed. 139 (1876)));NTP, Inc. v. Research in Motion, Ltd., 418F.3d 1282, 1316 (Fed.Cir.2005) (‘‘A processis a series of acts.’’ (quoting Minton v.Nat’l Ass’n of Sec. Dealers, Inc., 336 F.3d1373, 1378 (Fed.Cir.2003))); In re Kollar,286 F.3d 1326, 1332 (Fed.Cir.2002) (‘‘[A]process TTT consists of a series of acts orstepsTTTT It consists of doing something,and therefore has to be carried out orperformed.’’). Nuijten’s argument that hisclaims might be covered by the ‘‘process’’category even if they do not recite actstherefore lacks merit.

Nuijten also notes that his signal claimsrecite acts, noting that the claimed signalmust be ‘‘encoded in accordance with agiven encoding process.’’ But all that reci-

tation implies is that these are potentiallyproduct-by-process claims ‘‘in which theproduct is defined at least in part in termsof the method or process by which it ismade.’’ SmithKline Beecham Corp. v.Apotex Corp., 439 F.3d 1312, 1315 (Fed.Cir.2006) (quoting Bonito Boats, Inc. v.Thunder Craft Boats, Inc., 489 U.S. 141,158, 109 S.Ct. 971, 103 L.Ed.2d 118 (1989)).Such claims are still directed to the ulti-mate product, not the underlying process.See Id. at 1317 (‘‘Regardless of how broad-ly or narrowly one construes a product-by-process claim, it is clear that such claimsare always to a product, not a process.’’).The presence of acts recited in the claimdoes not transform a claim covering athing—the signal itself—into one coveringthe process by which that thing was made.

Since a process claim must cover an actor series of acts and Nuijten’s signalclaims do not, the claims are not directedto a process.

2. Machine

[7, 8] The Supreme Court has definedthe term ‘‘machine’’ as ‘‘a concrete thing,consisting of parts, or of certain devicesand combination of devices.’’ Burr v. Du-ryee, 68 U.S. (1 Wall.) 531, 570, 17 L.Ed.650 (1863). This ‘‘includes every mechani-cal device or combination of mechanicalpowers and devices to perform some func-tion and produce a certain effect or re-sult.’’ Corning v. Burden, 56 U.S. 252,267, 15 How. 252, 14 L.Ed. 683 (1853). Atransitory signal made of electrical or elec-tromagnetic variances is not made of‘‘parts’’ or ‘‘devices’’ in any mechanicalsense. While such a signal is physical andreal, it does not possess concrete structurein the sense implied by these definitions.No part of the signal—the crests ortroughs of the electromagnetic wave, orperhaps the particles that make it up(modern physics teaches that both featuresare present simultaneously) is a mechani-


cal ‘‘device’’ or ‘‘part.’’ A propagatingelectromagnetic signal is not a ‘‘machine’’as that term is used in § 101.4

3. Manufacture

[9] The question of whether theclaimed signals are ‘‘manufactures’’ ismore difficult. They are man-made, in thesense of having been encoded, generated,and transmitted by artificial means. How-ever, artificiality is insufficient by itself torender something a ‘‘manufacture.’’ TheSupreme Court has defined ‘‘manufacture’’(in its verb form) as ‘‘the production ofarticles for use from raw or prepared ma-terials by giving to these materials newforms, qualities, properties, or combina-tions, whether by hand-labor or by ma-chinery.’’ Diamond v. Chakrabarty, 447U.S. 303, 308, 100 S.Ct. 2204, 65 L.Ed.2d144 (1980) (emphasis added) (quoting Am.Fruit Growers, Inc. v. Brogdex Co., 283U.S. 1, 11, 51 S.Ct. 328, 75 L.Ed. 801(1931)).5 The term is used in the statutein its noun form, Bayer AG v. HouseyPharms., Inc., 340 F.3d 1367, 1373 (Fed.Cir.2003), and therefore refers to ‘‘articles’’resulting from the process of manufacture.The same dictionary the Supreme Court

relied on for its definition of ‘‘manufac-ture’’ in turn defines ‘‘article’’ as ‘‘a partic-ular substance or commodity: as, an arti-cle of merchandise; an article of clothing;salt is a necessary article.’’ 1 CenturyDictionary 326 (William Dwight Whitneyed., 1895) (emphasis in original).

[10] These definitions address ‘‘arti-cles’’ of ‘‘manufacture’’ as being tangiblearticles or commodities. A transient elec-tric or electromagnetic transmission doesnot fit within that definition. While such atransmission is man-made and physical—itexists in the real world and has tangiblecauses and effects—it is a change in elec-tric potential that, to be perceived, must bemeasured at a certain point in space andtime by equipment capable of detectingand interpreting the signal. In essence,energy embodying the claimed signal isfleeting and is devoid of any semblance ofpermanence during transmission.6 More-over, any tangibility arguably attributed toa signal is embodied in the principle that itis perceptible—e.g., changes in electricalpotential can be measured. All signalswithin the scope of the claim do not them-selves comprise some tangible article orcommodity.7 This is particularly true

4. An apparatus that generates the signal is ofcourse a machine. Nuijten has obtained al-lowance of claims covering such a device, andthose claims are not before us on appeal.

5. The dissent criticizes our use of this defini-tion and would prefer one from ‘‘a dictionarythat dates to the eighteenth century.’’ Dissentat 1361. However, this statutory languagewas re-enacted in 1952 after the SupremeCourt defined ‘‘manufacture’’ in AmericanFruit Growers. By reenacting the languageused in previous versions of the statute with-out change to the meaning of the word ‘‘man-ufacture,’’ Congress ‘‘incorporated the defini-tion of [manufacture] that had evolved in thecourts.’’ In re Schrader, 22 F.3d at 295.Even were this not the case, the Court hasreaffirmed the American Fruit Growers defini-tion in Chakrabarty. Thus, we must apply theFruit Growers/Chakrabarty definition. Indep.Ink, Inc. v. Ill. Tool Works, Inc., 396 F.3d

1342, 1351 (Fed.Cir.2005), vacated 547 U.S.28, 126 S.Ct. 1281, 164 L.Ed.2d 26 (2006) (‘‘Itis the duty of a court of appeals to follow theprecedents of the Supreme Court until theCourt itself chooses to expressly overrulethem.’’).

6. Of course, such a signal could be stored forlater use, but the result of such storage wouldbe a ‘‘storage medium’’ containing the signal.Such a storage medium would likely be cov-ered by allowed Claim 15 of Nuijten’s applica-tion, which is not before us on appeal.

7. The dissent perpetuates a common mischar-acterization of the holding in Alappat, 33 F.3dat 1544 by suggesting that we have conflatedthe ‘‘result’’ of the ‘‘useful, concrete, andtangible result’’ inquiry with a ‘‘thing’’ thatmust be useful, concrete and tangible. Thedissent is wrong. In Alappat, we decided the


when the signal is encoded on an electro-magnetic carrier and transmitted througha vacuum—a medium that, by definition, isdevoid of matter.8 Thus, we hold thatNuijten’s signals, standing alone, are not‘‘manufacture[s]’’ under the meaning ofthat term in § 101.9

4. Composition of matter

[11] As to the final statutory category,Nuijten does not challenge in his openingbrief the Board’s conclusion that ‘‘[t]hesignal is not composed of matter and isclearly not a ‘composition of matter.’ ’’ Wenote, however, that the Supreme Court hasdefined ‘‘composition of matter’’ to mean‘‘all compositions of two or more sub-stances and all composite articles, whetherthey be the results of chemical union, or ofmechanical mixture, or whether they be

gases, fluids, powders or solids.’’ Chakra-barty, 447 U.S. at 308, 100 S.Ct. 2204. Asignal comprising a fluctuation in electricpotential or in electromagnetic fields is nota ‘‘chemical union,’’ nor a gas, fluid, pow-der, or solid. Nuijten’s signals are not‘‘composition[s] of matter.’’

III. CONCLUSION

A transitory, propagating signal likeNuijten’s is not a ‘‘process, machine, manu-facture, or composition of matter.’’ Thosefour categories define the explicit scopeand reach of subject matter patentableunder 35 U.S.C. § 101; thus, such a signalcannot be patentable subject matter. TheBoard’s rejection of the application’sClaims 14, 22, 23, and 24 is therefore

AFFIRMED.

Each party shall bear its own costs.

question of determining whether a machine,including a number of digital electronic cir-cuits that performed mathematical operationson electrical signals (a function we deemed‘‘true of all digital electrical circuits’’) was an‘‘abstract idea’’ because the function per-formed by the machine was, in essence, amathematical algorithm. Alappat, 33 F.3d at1544. We concluded that the combination ofdigital electronic circuits was ‘‘not a disem-bodied mathematical concept which may becharacterized as an ‘abstract idea,’ but rathera specific machine to produce a useful, con-crete, and tangible result.’’ Id. (emphasisadded). We reiterated these principles infinding that the machine claimed in StateStreet was not an abstract idea. See StateStreet, 149 F.3d at 1368. We have even con-sidered the ‘‘useful, concrete, and tangibleresult’’ factors in determining whether aclaim to a process was patent-eligible. SeeAT & T Corp. v. Excel Commc’ns, 172 F.3d1352, 1358 (Fed.Cir.1999). The dissentagrees that the claimed signal is not a ‘‘ma-chine.’’ We have never held that a manufac-ture is ever required to produce any result.Thus, the ‘‘useful, concrete, and tangible re-sult’’ inquiry is simply inapplicable here.

8. We recognize the wave-particle duality asapplied to electromagnetic energy. However,the fact that photons traveling at or near the

speed of light behave in some ways like parti-cles does not make them tangible articles.

9. Neither In re Hruby, 54 C.C.P.A. 1196, 373F.2d 997 (1967), nor O’Reilly v. Morse, 56U.S. (15 How.) 62, 14 L.Ed. 601 (1853) is tothe contrary. Hruby dealt with a 35 U.S.C.§ 171 design patent for an aesthetically pleas-ing water fountain rather than a § 101 utilitypatent, and is therefore of limited applicabili-ty to this case. The subject of a design patentneed not have any practical utility. Compare§ 101 (‘‘new and useful’’) with § 171 (‘‘newTTT and ornamental’’). We do not decidewhether a signal of the sort addressed in thiscase would merit a design patent. In theMorse telegraph case, the Supreme Court ap-proved Samuel Morse’s Claim 5 covering his‘‘system of signs’’ (i.e., Morse code). 56 U.S.(15 How.) at 86. The written description ofthe patent describes Morse code as part of itsdescription of the actual process of signaling.Id. at 94–95. While its dated language ob-scures the question somewhat, Morse’s Claim5 is a process claim covering the method (or‘‘art’’) of signaling. The analogous claims inNuijten’s patent application are those thatcover the process of generating signals ratherthan the signals themselves. Again, thoseclaims have been approved by the PTO andare not at issue in this appeal.


LINN, Circuit Judge, concurring-in-partand dissenting-in-part.

I am pleased to join Part II.A of themajority opinion because I agree that a‘‘signal,’’ as used in the claims at issue,refers to something with a ‘‘physical form.’’Majority Op. at 1352–53. However, I re-spectfully disagree with the majority’sholding that the claims in suit are notdirected to statutory subject matter under35 U.S.C. § 101. I therefore dissent inpart from Part II.B of the opinion andfrom the judgment.

This case presents challenging questionsthat go beyond the single patent claim atissue. In determining the scope of patent-able subject matter, we must reconcile cut-ting-edge technologies with a statute, thelanguage of which dates back to the begin-ning of the Republic. Moreover, we de-cide this case against a backdrop of ongo-ing controversy regarding the wisdom ofsoftware patenting and our decision inState Street Bank & Trust Co. v. Signa-ture Financial Group, Inc., 149 F.3d 1368(Fed.Cir.1998). I appreciate the majori-ty’s desire to draw an exclusionary line.However, mindful of our duty to interpretthe law as Congress wrote it rather thanattempt ‘‘to preempt congressional actionby judicially decreeing what accords with‘common sense and the public weal,’ ’’Tenn. Valley Auth. v. Hill, 437 U.S. 153,195, 98 S.Ct. 2279, 57 L.Ed.2d 117 (1978), Irespectfully disagree that the majority’sholding is compelled by or consistent withprecedent or the language of the statute.Indeed, I fear that it risks further confus-ing an already uncertain set of doctrines.

The majority bases its holding on theCentury Dictionary definition of ‘‘manu-facture’’ quoted by the Supreme Court inAmerican Fruit Growers, Inc. v. BrogdexCo., 283 U.S. 1, 11, 51 S.Ct. 328, 75 L.Ed.801 (1931), and again in Diamond v. Chak-rabarty, 447 U.S. 303, 308, 100 S.Ct. 2204,65 L.Ed.2d 144 (1980): ‘‘the production of

articles for use from raw or prepared ma-terials by giving to these materials newforms, qualities, properties, or combina-tions, whether by hand-labor or by ma-chinery.’’ I respectfully disagree that thisdefinition limits the term ‘‘manufacture’’ tonon-transitory, tangible things. When itdefined ‘‘manufacture’’ as above, the Su-preme Court emphasized that ‘‘[i]n choos-ing such expansive terms as ‘manufacture’TTT modified by the comprehensive ‘any,’Congress plainly contemplated that thepatent laws would be given wide scope.’’Chakrabarty, 447 U.S. at 308, 100 S.Ct.2204. Because the patent claim at issuecontemplates ‘‘some physical carrier of in-formation,’’ Majority Op. at 1353, the claimrequires that some input ‘‘material’’—whether a pulse of energy or a stone tab-let—has been given a ‘‘new form[ ],’’ ‘‘qual-it[y],’’ or ‘‘propert[y]’’ by direct human ac-tion or by a machine. The resulting signalis thus a ‘‘manufacture’’ in the ‘‘expansive’’sense of § 101. See also Am. Fruit, 283U.S. at 11, 51 S.Ct. 328 (offering as asecond definition of ‘‘manufacture,’’ ‘‘any-thing made for use from raw or preparedmaterials’’).

Because I believe the claimed signal is amanufacture, it is necessary for me also toexamine the alternative argument that theclaimed signal is an unpatentable ‘‘abstractidea’’ under Gottschalk v. Benson, 409 U.S.63, 67, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972).The answer to this argument is best foundin § 101’s textual requirements that statu-tory subject matter be ‘‘new’’ and ‘‘useful,’’which are limits on the four statutory cate-gories that otherwise encompass ‘‘anythingunder the sun that is made by man.’’Chakrabarty, 447 U.S. at 309, 100 S.Ct.2204 (quoting S.Rep. No. 1979, 82d Cong.,2d Sess., at 5 (1952), U.S.Code Cong. &Admin. News 1952, at 2398–99 ; H.R.Rep.No. 1923, 82d Cong., 2d Sess., at 6 (1952)).As I explain in the following analysis, it ismy view that the claim at issue is both


‘‘new’’ and ‘‘useful’’ and is not an abstractidea.

Because I conclude that the claim atissue is directed to a ‘‘new and useful’’‘‘manufacture,’’ I believe it is patentableunder 35 U.S.C. § 101. Accordingly, Iwould reverse.

I. The Definition of ‘‘Manufacture’’

I agree with the majority that the sub-ject of Nuijten’s signal claims is not a‘‘machine,’’ ‘‘process,’’ or ‘‘composition ofmatter’’ as used in 35 U.S.C. § 101. Asthe majority recognizes, however, ‘‘[t]hequestion of whether the claimed signalsare ‘manufactures’ is more difficult.’’ Ma-jority Op. at 1356. As mentioned, theSupreme Court quoted in American Fruitthe following definition of ‘‘manufacture,’’upon which the majority relies today: ‘‘theproduction of articles for use from raw orprepared materials by giving to these ma-terials new forms, qualities, properties, orcombinations, whether by hand-labor orby machinery.’’ 283 U.S. at 11, 51 S.Ct.328 (quoting 5 Century Dictionary 3620(William Dwight Whitney ed., 1895)), quot-ed in Diamond v. Chakrabarty, 447 U.S.303, 308, 100 S.Ct. 2204, 65 L.Ed.2d 144(1980). Based on this definition and theassociated definition of ‘‘article,’’ the ma-jority concludes that manufactures mustbe ‘‘tangible,’’ a definition that excludes‘‘[a] transient electric or electromagnetictransmission.’’ Majority Op. at 1356.With all due respect, I believe that theseconclusions are erroneous.

First, the majority’s holding is unsup-ported by the authority it cites. Even ifaccepted as controlling, see infra at 1360–61, the American Fruit definition of

‘‘manufacture’’ is not limited to tangible ornon-transitory inventions by its ownterms, nor does the claimed signal fail tobe ‘‘material’’ in the relevant sense. Theraw ‘‘materials’’ that take new form tobecome ‘‘manufactures’’ need not be tangi-ble or permanent inputs: the CenturyDictionary defines ‘‘material’’ to mean, in-ter alia, ‘‘that which composes or makes apart of anything.’’ 1 ‘‘Material’’ II.2, 5Century Dictionary 3657.

The majority’s definition for ‘‘article’’—‘‘a particular substance or commodity’’—likewise provides no indication that thesubstance must last any longer than isnecessary to be useful. See Majority Op.at 1356. Moreover, an article does notcease to be an article when it ‘‘must bemeasured TTT by equipment capable ofdetecting and interpreting’’ it. Id. Myriadinventions, particularly in the chemicalarts, can only be detected using equip-ment—this is inevitable if patents are tocover advanced technologies. Indeed, wehave squarely held that transitory inven-tions are patentable under § 101. Forexample, in In re Breslow, we held thatchemical intermediates are patentablecompositions of matter under § 101 even ifthey are ‘‘transitory, unstable, and non-isolatable.’’ 616 F.2d 516, 519, 521–22(C.C.P.A.1980). In so holding, we recog-nized that the compounds ‘‘can as well beconsidered ‘manufactures’ as ‘composi-tion[s] of matter’ ’’. Id. at 522; see alsoZenith Labs. v. Bristol–Myers Squibb Co.,19 F.3d 1418, 1422 (Fed.Cir.1994) (notingthat infringement may occur where a phar-maceutical is converted into a claimedchemical compound in vivo ).

1. Our statement that an invention is patenta-ble subject matter when it ‘‘produce[s] a use-ful, concrete, and tangible result,’’ see In reAlappat, 33 F.3d 1526, 1544 (Fed.Cir.1994)(en banc) (emphasis added), does not imposea requirement that a patentable manufacture

must be a tangible thing. Rather, the factthat an invention gives rise to some tangibleresult is one indication that it is not an unpat-entable abstract idea. Id.; see also infra at1365.


In any event, it is doubtful that lookingto a definition of ‘‘article’’ is necessary.The American Fruit Court quoted a sec-ond definition for ‘‘manufacture’’ from theCentury Dictionary in addition to the onerepeated in Chakrabarty: ‘‘anything madefor use from raw or prepared materials.’’283 U.S. at 11, 51 S.Ct. 328. This defini-tion does not, by its terms, require that a‘‘manufacture’’ be an ‘‘article’’ or a trans-formed ‘‘raw material,’’ only that it besomething—‘‘anything’’—made from them.

Second, the majority simply assumes,without reference to its own constructionof the claim, that Nuijten’s signal is ‘‘fleet-ing.’’ Majority Op. at 1356. The claimrefers to multiple ‘‘samples,’’ one ‘‘preced-ing’’ the next, in a specified relationship.In conjunction with the specification’s ref-erences to ‘‘prediction’’ of a watermarkbit’s effect on subsequent bits of the inputsignal and the invention’s preferred use foraudio or video signals, it is apparent thatthe claimed signal must extend over someinterval of time. In In re Hruby, 54C.C.P.A. 1196, 373 F.2d 997 (1967), weheld that it was not the dynamic positionof any given water droplet, but rather theoverall pattern, that was patentable; like-wise, here, it is the overall signal, not thephysical manifestation of a single bit, thatconstitutes the invention. Just as the de-sign of a fountain lasts so long as thewater is flowing, the signal lasts so long asthe transmission of the signal is in prog-ress. In many embodiments—for exam-ple, when the signal encodes an audio orvideo signal representing a symphony or afull-length motion picture that is beingwatched in real time—the transmissionmay be in progress for a significant periodof time. And as the majority holds, theclaim makes no assumptions about whatphysical form the signal might take. Theclaim therefore encompasses embodiments,such as inscriptions on paper, in which thesignal itself may last indefinitely.

Third, neither American Fruit Growersnor Chakrabarty confronted or decided aquestion of tangibility or permanence.The question in American Fruit Growerswas whether ‘‘an orange, the rind of whichhas become impregnated with borax,through immersion in a solution, andthereby rendered resistant to blue molddecay,’’ was a ‘‘manufacture’’ within themeaning of the predecessor to § 101. 283U.S. at 11, 51 S.Ct. 328. The court an-swered the question in the negative, notbecause an orange is not ‘‘tangible,’’ butbecause treated citrus fruits do not ‘‘pos-sess[ ] a new or distinctive form, quality,or property,’’ and thus are not made byman. Id. Likewise, in Chakrabarty, theCourt held that a genetically-engineeredbacterium was patentable because it was‘‘a nonnaturally occurring manufacture orcomposition of matter—a product of hu-man ingenuity having a distinctive name,character [and] use.’’ 447 U.S. at 309–10,100 S.Ct. 2204 (quotation marks omitted)(alteration in original). Indeed, as I willdiscuss below, the Chakrabarty Court cit-ed the American Fruit definition of ‘‘man-ufacture’’ only in support of the proposi-tion that the term was ‘‘expansive’’ andthat ‘‘Congress plainly contemplated thatthe patent laws would be given widescope.’’ Id. at 308, 100 S.Ct. 2204. Inneither case did the Court decide or dis-cuss the question that is before us today.

Fourth, the language we are called tointerpret is venerable. As the majorityrecognizes, with the exception of the sub-stitution of ‘‘process’’ for ‘‘art,’’ the fourcategories of statutory subject matter in§ 101 have remained unchanged since the1793 Patent Act. Act of Feb. 21, 1793, ch.11, § 1, 1 Stat. 318. ‘‘Manufacture’’ was astatutory category even in the very firstUnited States Patent Act of 1790. Act ofApr. 10, 1790, ch. 7, § 1, 1 Stat. 109.Indeed, ‘‘manufactures’’ were the subjectof the British Statute of Monopolies of


1623, 21 Jac. 1, ch. 3. See generally Exparte Lundgren, No.2003–2088, 2004 WL3561262, *13–20, 2005 Pat.App. LEXIS 34,at *32–*50 (B.P.A.I. April 20, 2004) (Bar-rett, A.P.J., concurring-in-part and dis-senting-in-part) (discussing history of stat-utory subject matter).

In part because of this, I questionwhether this case can be decided by refer-ence to a dictionary definition of ‘‘manufac-ture.’’ See Alappat, 33 F.3d at 1553(Archer, C.J., concurring-in-part and dis-senting-in-part) (‘‘These terms may not beread in a strict literal sense entirely di-vorced from the context of the patentlaw.’’). To the extent such a definitionmight be helpful, however, it should be onethat is contemporary with the statutorylanguage, and thus a dictionary that datesto the eighteenth century. See, e.g., St.Francis Coll. v. Al–Khazraji, 481 U.S. 604,610–12, 107 S.Ct. 2022, 95 L.Ed.2d 582(1987) (using mid-nineteenth-century dic-tionaries to construe 1866 Civil RightsAct).

One example of a contemporary dictio-nary is Samuel Johnson, A Dictionary of

the English Language (3d ed. 1768), avail-able at http://books.google.com?id=bXsCAAAAQAAJ, which defines manufac-ture as ‘‘[a]ny thing made by art.’’ 2 ‘‘Art,’’in turn, is defined as ‘‘[t]he power of doingsomething not taught by nature and in-stinct’’; ‘‘[a] science’’; ‘‘[a] trade’’; ‘‘[a]rt-fulness, skill, dexterity.’’ Id. This connec-tion is significant because of the paralleluse of ‘‘art’’ and ‘‘manufacture’’ in the 1790and 1793 Patent Acts and because of theuse of the term ‘‘useful Arts’’ in the PatentClause of the Constitution.3 U.S. Const.,art. I, cl. 8; see also In re Comiskey, 499F.3d 1365, 1375 (Fed.Cir.2007) (‘‘The Con-stitution explicitly limited patentability to‘the national purpose of advancing the use-ful arts—the process today called techno-logical innovation.’ ’’) (quoting Paulik v.Rizkalla, 760 F.2d 1270, 1276 (Fed.Cir.1985) (en banc)); Karl B. Lutz, Patentsand Science: A Clarification of the PatentClause of the U.S. Constitution, 18 Geo.Wash. L.Rev. 50, 54 (1949) (‘‘The term‘useful arts,’ as used in the ConstitutionTTT is best represented in modern lan-guage by the word ‘technology.’ ’’).

2. The majority criticizes my use of an alter-native dictionary definition to the one theSupreme Court enunciated in Chakrabarty.Majority Op. at 1356 n. 5. However, the al-ternative definition is in no way inconsistentwith the Chakrabarty one, nor with the sec-ond definition of ‘‘manufacture’’ that the Su-preme Court provided in American Fruit,which like Chakrabarty remains good law.Under such circumstances, we do not breachour duty to follow Supreme Court precedentby looking to additional sources to furtherinform our understanding of the statutorylanguage.

3. The majority cites the legislative history ofthe 1952 Patent Act for the proposition that‘‘art’’ is not ‘‘broader than the usual under-standing of ‘process.’ ’’ Majority Op. at1354–55. The drafters of the 1952 patent actchanged ‘‘art’’ to ‘‘process’’ in § 101 in recog-nition of the fact that ‘‘art’’ in § 101 had been

interpreted by the courts to apply to processand method claims. However, the inclusionof ‘‘art’’ in the new § 100(b) definition of‘‘process’’ is a strong suggestion that Con-gress intended the change in language to beclarifying rather than narrowing. Regard-less, this change certainly did not narrow thescope of ‘‘manufacture.’’

Even if the 1952 Senate Committee on theJudiciary was correct that ‘‘art,’’ as used inthe pre–1952 patent statutes, ‘‘has a differentmeaning than the words ‘useful art’ in theConstitution,’’ S.Rep. No. 82–1979, at 5(1952), U.S.Code Cong. & Admin.News 1952,at pp. 1298-99, and applies only to what wenow describe as process claims, I believe thatthe four categories of statutory subject matterhave consistently been intended to comple-ment one another and to protect the fullscope of technological ingenuity—the ‘‘usefulArts.’’


Thus, it appears that rather than delin-eate specific, narrow categories, Congresshas consistently intended statutory subjectmatter to cover the full scope of technolog-ical ingenuity, however it might best beclaimed. Thus, ‘‘art’’ and ‘‘process[es]’’might be viewed, in rough terms, as theexercise of technological skill, ‘‘manufac-ture[s]’’ and ‘‘composition[s] of matter’’ asthe products of that skill, and ‘‘machine[s]’’as the tools through which that skill isexercised. See Comiskey, 499 F.3d at1377 (observing that a method claim in-volving a mental process or algorithmqualifies as a ‘‘process’’ under § 101 whenit ‘‘(1) is tied to a machine or (2) creates orinvolves a composition of matter or manu-facture’’).

We and the Supreme Court have eachrecognized and applied this broad ap-proach, frequently declining to decide inwhich statutory category a claim belongs.See, e.g., Chakrabarty, 447 U.S. at 307–08,100 S.Ct. 2204 (deciding the patentabilityof a claimed microorganism without deter-mining whether it was a ‘‘manufacture’’ or‘‘composition of matter’’); Gottschalk v.Benson, 409 U.S. at 67–68, 93 S.Ct. 253(quoting a principle of patentability fromFunk Bros. Seed Co. v. Kalo Co., 333 U.S.127, 68 S.Ct. 440, 92 L.Ed. 588 (1948), andstating, ‘‘We dealt there with a ‘product’claim, while the present case deals with a‘process’ claim. But we think the sameprinciple applies.’’); State Street Bank, 149F.3d at 1375 (‘‘The question of whether aclaim encompasses statutory subject mat-ter should not focus on which of the fourcategories of subject matter a claim isdirected to TTT but rather on the essentialcharacteristics of the subject matter TTTT’’(emphasis omitted)).

Of course, as we noted in State StreetBank, a claim must be drafted to at leastone of the four categories. 149 F.3d at1375 n. 9. As the allowed and disallowedclaims in this case demonstrate, however,

claims to essentially the same inventioncan frequently be drafted, with at mostsubtle differences in scope, to either pro-cesses or manufactures. Patentabilitydoes not depend on which form the claimtakes. Cf. Parker v. Flook, 437 U.S. 584,588–90, 593, 98 S.Ct. 2522, 57 L.Ed.2d 451(1978) (holding that where the ‘‘only novelfeature’’ of an ‘‘otherwise conventional’’method is an unpatentable algorithm, themere addition of the conventional methodsteps to an unpatentable claim does notconfer patentability, because to do other-wise ‘‘would make the determination ofpatentable subject matter depend simplyon the draftman’s art’’).

Fifth, and finally, I believe the majoritydoes not follow the guidance that the Su-preme Court provided in Chakrabarty asto how we should interpret § 101. As theCourt observed, ‘‘Congress plainly contem-plated that the patent laws would be givenwide scope.’’ 447 U.S. at 308, 100 S.Ct.2204. Accordingly, Chakrabarty embracesthe notion that the scope of patentablesubject matter includes ‘‘anything underthe sun that is made by man.’’ Id. at 309100 S.Ct. 2204 (quoting S.Rep. No. 82–1979, at 5 (1952), U.S.Code Cong. & Ad-min.News 1952, At 2398–99; H.R.Rep. No.82–1923, at 6 (1952)). Granted, Chakra-barty also cautions that there are excep-tions to these sweeping pronouncements:‘‘This is not to suggest that § 101 has nolimits or that it embraces every discovery.The laws of nature, physical phenomena,and abstract ideas have been held not pat-entable.’’ Id. But altogether, the moststraightforward interpretation of the Su-preme Court’s guidance in Chakrabarty isthat an invention qualifies as patentablesubject matter if it (1) is ‘‘made by man,’’and (2) does not involve an attempt topatent ‘‘laws of nature, physical phenome-na, [or] abstract ideas.’’ Indeed, this isthe analysis the Chakrabarty Court ap-pears to follow: ‘‘Judged in this light, re-spondent’s micro-organism plainly qualifies


as patentable subject matter. His claim isnot to a hitherto unknown natural phe-nomenon, but to a nonnaturally occurringmanufacture or composition of matter—aproduct of human ingenuity ‘having a dis-tinctive name, character, [and] use.’ ’’ Id.at 309–10, 100 S.Ct. 2204; see also AT & TCorp. v. Excel Commc’ns, Inc., 172 F.3d1352, 1355, 1361 (Fed.Cir.1999) (applying§ 101 by subtracting from ‘‘anything un-der the sun that is made by man’’ only thethree exceptions enumerated by the Su-preme Court). The Court’s analysisleaves little room for the term ‘‘manufac-ture’’ to impose additional limitations onthe scope of patentable subject matter.

II. ‘‘Abstract Ideas’’ andthe Requirements of

Section 101

I now turn to the question of whetherNuijten’s claimed signal falls within one ofthe exceptions from patentable subjectmatter. To best answer this question, Iconsider the text of the statute. See Dia-mond v. Diehr, 450 U.S. 175, 182, 101 S.Ct.1048, 67 L.Ed.2d 155 (1981).

35 U.S.C. § 101 provides:Whoever invents or discovers any newand useful process, machine, manufac-ture, or composition of matter, or anynew and useful improvement thereof,may obtain a patent therefor, subject tothe conditions and requirements of thistitle.

In addition to the requirement that patent-able subject matter fall within one of thefour statutory categories (‘‘process, ma-chine, manufacture, or composition of mat-

ter’’), it must also be ‘‘new and useful.’’ 4

As with the term ‘‘manufacture,’’ we mustbe sensitive to the fact that modern every-day usage may be a poor guide to themeaning of such old and oft-interpretedtext. Nonetheless, the terms ‘‘new’’ and‘‘useful’’ define and delimit the exceptionsfrom statutory subject matter.

A. ‘‘New’’

‘‘Novelty,’’ as a patent doctrine, is ordi-narily regarded as a requirement not of§ 101 but of § 102. See Diehr, 450 U.S. at189, 101 S.Ct. 1048 (‘‘It has been urgedthat novelty is an appropriate consider-ation under § 101TTTT Section 101, howev-er, is a general statement of the type ofsubject matter that is eligible for patentprotection ‘subject to the conditions andrequirements of this title.’ Specific condi-tions for patentability follow and § 102covers in detail the conditions relating tonovelty.’’). Nonetheless, precedent sup-ports attributing to the term ‘‘new’’ in§ 101 a separate requirement that statuto-ry subject matter be a type of inventionthat can be described as a ‘‘new’’ creationrather than the discovery of a pre-existingprinciple. See Titanium Metals Corp. ofAm. v. Banner, 778 F.2d 775, 780–81 (Fed.Cir.1985) (emphasizing the requirement of§ 101 that ‘‘what is sought to be patented,as determined by the claims, be new’’ andobserving that ‘‘[s]ection 102, the usualbasis for rejection for lack of novelty oranticipation, lays down certain principlesfor determining the novelty required by§ 101’’); cf. Diehr, 450 U.S. at 211, 101S.Ct. 1048 (Stevens, J., dissenting) (dis-

4. An argument can be made that the ‘‘new’’and ‘‘useful’’ requirements also inhere tosome extent in the statutory categories them-selves; the first American Fruit definition of‘‘manufacture’’ refers to ‘‘the production ofarticles for use from raw or prepared materi-als by giving to these materials new forms,qualities, properties, or combinations.’’ 283U.S. at 11, 51 S.Ct. 328 (emphases added);

id. at 12, 51 S.Ct. 328 (rejecting argumentthat an orange impregnated with borax is amanufacture because it ‘‘remains a freshorange fit only for the same beneficial uses astherefore’’). Because the statutory terms‘‘new,’’ ‘‘useful,’’ and ‘‘manufacture’’ appeartogether, this possibility does not alter theanalysis.


cussing the difference between the so-called ‘‘discovery’’ requirement of § 101and the ‘‘novelty’’ requirement of § 102).This accords with the language of the leg-islative history, discussed above, that pat-entable subject matter comprises ‘‘any-thing under the sun that is made by man.’’Chakrabarty, 447 U.S. at 309 (emphasisadded). To be ‘‘made by man,’’ somethingmust not be pre-existing in nature; it mustbe, literally, an invention.

As the Supreme Court observed in FunkBros., ‘‘patents cannot issue for the discov-ery of the phenomena of nature’’ becausesuch phenomena ‘‘are part of the store-house of knowledge of all men. They aremanifestations of laws of nature, free to allmen and reserved exclusively to noneTTTT

If there is to be invention from such adiscovery, it must come from the applica-tion of the law of nature to a new anduseful end.’’ 333 U.S. at 130, 68 S.Ct. 440,quoted in Chakrabarty, 447 U.S. at 309,100 S.Ct. 2204. Thus, a discovery or in-vention can fail to be ‘‘new’’ in the § 101sense even if it has not previously beenknown to man or recorded in the priorart—that is, even if it is ‘‘novel’’ under§ 102. Certain innovations, no matterhow new to human thought, are not thetype of technological invention to whichCongress has extended patent protection,but instead are considered to be abstracttruths that were not ‘‘made by man.’’‘‘The underlying notion is that a scientificprinciple TTT reveals a relationship thathas always existed.’’ Flook, 437 U.S. at593 n. 15, 98 S.Ct. 2522.

This insight, I believe, is at the core ofthe judicial doctrine by which laws of na-ture, natural phenomena, and abstractideas are excluded from patentable subjectmatter. For example, in Gottschalk v.Benson, the Supreme Court considered aproposed patent claim for a method forconverting binary-coded decimal numbers(‘‘BCD’’) into pure binary numbers. Quot-ing Funk Bros., the Court distinguished ‘‘ahitherto unknown phenomenon of nature’’from ‘‘the application of the law of natureto a new and useful end,’’ 409 U.S. at 67,93 S.Ct. 253 (quoting 333 U.S. at 130, 68S.Ct. 440). Applying this distinction, theCourt observed that the ‘‘claim is so ab-stract and sweeping as to cover bothknown and unknown uses of the BCD topure binary conversion.’’ Id. at 68, 93S.Ct. 253. Thus, the effect of allowing thepatent would be to allow ‘‘a patent on thealgorithm itself,’’ and such a patent wasimpermissible. Id. at 72, 93 S.Ct. 253.Although the Court did not make this con-nection explicit, I believe that one reasonwhy the method for converting betweenthe binary and binary-coded decimal sys-tems was deemed to be unpatentably ab-stract was that the claims attempted tomonopolize a timeless mathematical rela-tionship among integers, even if the partic-ular representations of the integers mayhave been new to computer science. Seeid. at 67–68, 93 S.Ct. 253. In other words,the algorithm might have been novel under§ 102, but—like all purely mathematicalalgorithms—it was not ‘‘new’’ under§ 101.5

5. A similar observation answers Justice Brey-er’s apparent criticism of State Street Bank inhis dissent from dismissal of certiorari in Lab-oratory Corp. of America Holdings v. Metabol-ite Laboratories, Inc., ––– U.S. ––––, 126 S.Ct.2921, 165 L.Ed.2d 399 (2006). Justice Breyersummarized State Street Bank as saying that‘‘a process is patentable if it produces a ‘use-ful, concrete, and tangible result,’ ’’ but ob-served that the Supreme Court ‘‘has never

made such a statement’’ and cited, as exam-ples of patent claims that would meet thattest, but that the Supreme Court invalidated,the claims in Benson, Flook, and O’Reilly v.Morse, 56 U.S. (15 How.) 62, 14 L.Ed. 601(1853) (involving a claim to ‘‘the use of elec-tromagnetic current for transmitting mes-sages over long distances’’) (discussed infra at1368). 126 S.Ct. at 2928. The State StreetBank test—which I will discuss more in Part


B. ‘‘Useful’’

Section 101 also requires that patentedsubject matter be ‘‘useful.’’ Although wehave treated the utility requirement of§ 101 as a distinct concept from the ques-tion of whether an invention qualifies aspatentable subject matter, a patent claimdirected to a law of nature, a physicalphenomenon, or an abstract idea will ordi-narily have practical applications that aretoo attenuated from the subject of theclaim to be ‘‘useful.’’ We recognized thisin In re Alappat and State Street Bank byrequiring that patentable subject mattermanifest a ‘‘useful, concrete, and tangibleresult,’’ but the principle is not new tothose cases. For example, in Funk Bros.,the Supreme Court distinguished an un-patentable ‘‘hitherto unknown phenomenonof nature’’ from a patentable ‘‘applicationof the law of nature to a new and usefulend.’’ 333 U.S. at 130, 68 S.Ct. 440 (em-phases added).

Even where a person of ordinary skill inthe art might readily conceive of someapplication of an abstract principle, it isthe application rather than the principleitself that must be patented. In Benson,the Supreme Court rejected patent claimsto a system for converting binary-codeddecimals to pure binary numbers becausethe claim was ‘‘so abstract as to cover bothknown and unknown uses of the TTT con-version. The end use may (1) vary fromthe operation of a train to verification ofdrivers’ licenses to researching the lawbooks for precedents and (2) be performedthrough any existing machinery or future-devised machinery or without any appara-tus.’’ 409 U.S. at 68, 93 S.Ct. 253. Putdifferently, although mathematical algor-ithms and similarly abstract principlesmay be useful (in the casual sense of theterm) in a wide variety of contexts, theirutility is too far removed from what isclaimed for them to be ‘‘useful’’ under

§ 101. See Brenner v. Manson, 383 U.S.519, 534–35, 86 S.Ct. 1033, 16 L.Ed.2d 69(1966) (requiring that the ‘‘specific bene-fits’’ to be conferred by a claimed invention‘‘exist[ ] in [the invention’s] currently avail-able form’’); see also In re Fisher, 421F.3d 1365, 1371 (Fed.Cir.2005) (requiringthat a claimed invention have ‘‘specific andsubstantial utility to satisfy § 101,’’ andrejecting a claim to a gene sequence wherethe sequence has only been shown to have‘‘biological activity’’).

A similar concept of whether the utilityof claimed subject matter is too attenuatedfrom what is actually claimed undergirdsthe ‘‘printed matter’’ doctrine. At oralargument, the PTO invoked printed mattercases in the context of why Nuijten’s claim15, to ‘‘a storage medium having storedthereon’’ a signal, was allowable eventhough (according to the PTO) claim 14, tothe signal simpliciter, was not. Oral Arg.at 00:44:41–00:45:18, available at http://www. cafc.uscourts.gov/oralargu-ments/mp3/06–1371.mp3 (citing In re Low-ry, 32 F.3d 1579 (Fed.Cir.1994), and In reBeauregard, 53 F.3d 1583 (Fed.Cir.1995)(order)). Under the ‘‘printed matter’’ doc-trine, if the only distinction between aprior art storage medium and a claimedstorage medium is the information storedthereon—rather than a different ‘‘function-al relationship between the printed matterand the substrate’’—then the claimed stor-age medium (with associated information)is unpatentably obvious over the prior artbecause the information lacks ‘‘patentableweight.’’ In re Gulack, 703 F.2d 1381,1387 (Fed.Cir.1983). The ‘‘printed matter’’rejection has been treated as a doctrineunder § 103 rather than § 101, but itseems potentially more apposite as a con-sequence of the ‘‘useful’’ requirement of§ 101. The Supreme Court has appliedsimilar reasoning in § 101 cases. See, e.g.,

II.B, infra—speaks only to the ‘‘useful’’ requirement of § 101.


Flook, 437 U.S. at 592, 98 S.Ct. 2522 (‘‘Wethink this case must also be considered asif the principle or mathematical formulawere well known.’’).

In Lowry, the case upon which the PTOrelied principally at oral argument, we con-sidered the allowability of patent claimsfor a computer memory storage systemcontaining a particular set of data struc-tures that were useful for more quicklystoring and retrieving data in a databasesystem. 32 F.3d at 1580–82. We conclud-ed that

Lowry’s data structures impose a physi-cal organization on the dataTTTT Morethan mere abstraction, the data struc-tures are specific electrical or magneticstructural elements in a memory. Ac-cording to Lowry, the data structuresprovide tangible benefits: data stored inaccordance with the claimed data struc-tures are more easily accessed, stored,and erased [and] represent complex dataaccurately and enable powerful nestedoperations. In short, Lowry’s datastructures are physical entities that pro-vide increased efficiency in computer op-eration.

Id. at 1583–84. Consequently, we held,the PTO’s printed matter rejection waserroneous. From this, the PTO apparent-ly takes the position that functional butintangible software, data structures, sig-nals, and the like are patentable underLowry if they are encoded on a tangiblemedium, but unpatentable (as failing atangibility requirement to be ‘‘manufac-tures’’) if the medium is not referenced inthe claims. Absent Lowry, the PTO’s po-sition apparently would be that Nuijten’sclaim 14 (the signal, standing alone) is

unpatentable subject matter under § 101,and that claim 15 (the storage mediumcontaining the signal) is unpatentably obvi-ous under § 103 over prior art storagemedia.6

The PTO’s position makes little sense.As a doctrinal matter, the PTO should notlook to § 101 sometimes and § 103 at oth-er times to accomplish essentially the sameend. As a matter of principle, there islittle reason to allow patent claims to oth-erwise unpatentable, deemed abstractionsjust because those deemed abstractionsare stored in a tangible medium, whilerejecting the same inventions standingalone. Nuijten’s signal involves the samedegree and type of human ingenuitywhether or not it happens to be encoded inthe magnetic fields of a hard disk drive,the optical pits of a compact disc, a streamof photons propagating across a vacuum,or any other specific form that technologymight put it in. The signal is either a‘‘new and useful’’ manufacture or it is not.To allow a patent on a storage mediumcontaining the signal but to deny one tothe real underlying invention ‘‘make[s] thedetermination of patentable subject matterdepend simply on the draftman’s art’’ inthe sense criticized by the Supreme Courtin Flook, 437 U.S. at 593, 98 S.Ct. 2522. Itis incongruous to treat an individual watch-ing a movie containing the signal of claim14 in real time as any less of an infringerthan someone watching the same movieafter a short delay using the recordingfeature of, for example, a TiVob digitalvideo recorder. A better distinction ismade based on the nature of the underly-ing invention, without regard to the partic-ular way it is claimed. The ‘‘utility’’ re-

6. The other case the PTO cited at oral argu-ment, In re Beauregard, was not a decision bythis court as to the merits of patentability.Rather, Beauregard was a precedential orderdismissing an appeal because the PTO con-ceded that ‘‘computer programs embodied in

a tangible medium, such as floppy diskettes,are patentable subject matter under 35 U.S.C.§ 101 and must be examined under 35 U.S.C.§§ 102 and 103.’’ 53 F.3d at 1584. Thisconcession probably derived from Lowry and,perhaps, In re Alappat.


quirement of § 101 provides a basis todifferentiate patentable inventions involv-ing the manipulation or transmission ofinformation from unpatentable inventionswhose only utility lies in the particularinformation they convey—often a difficultline to draw in computer—related arts.

A final word is in order about Alappatand State Street Bank. Alappat recognizedthat ‘‘a general purpose computer in effectbecomes a special purpose computer onceit is programmed to perform particularfunctions pursuant to instructions fromprogram software.’’ 33 F.3d at 1545.State Street Bank found patentability in asoftware system which essentially applieda mathematical algorithm to the implemen-tation of a business method. 149 F.3d at1375–77. In neither case was there anydispute about whether the real innovationlay in particular and unpatentable informa-tion, nor was there any question as towhether the inventions represented princi-ples that too closely reflected the laws ofmathematics and nature to be ‘‘new.’’ Inboth cases, however, the claimed inven-tions achieved real-world results with suffi-cient directness and specificity to be ‘‘use-ful’’ as that term is used in § 101.

From these observations, it can be ap-preciated that, consistent with Flook, theouter limits of statutory subject mattershould not depend on metaphysical distinc-tions such as those between hardware andsoftware or matter and energy, but ratherwith the requirements of the patent stat-ute: is an invention a ‘‘process,’’ ‘‘ma-chine,’’ ‘‘manufacture,’’ or ‘‘composition ofmatter,’’ and is it ‘‘new’’ and ‘‘useful’’?

III. Is a ‘‘Signal’’ PatentableSubject Matter?

Following this analysis, it is my viewthat Nuijten’s claim 14 is directed to a newand useful manufacture.7

Claim 14 is directed to a ‘‘manufacture’’because the signal is, in the broad sensediscussed above, an ‘‘article,’’ ‘‘produc[ed]TTT for use from raw or prepared materi-als by giving to these materials [a] newform[ ].’’ See Chakrabarty, 447 U.S. at 308,100 S.Ct. 2204. Put differently, it is aproduct of human ‘‘art,’’ or ingenuity; it isan application of technology to provokesome purposeful transformation in the realworld. Any contrary conclusion must de-pend on a too-literal reading of either ‘‘ar-ticle’’ or ‘‘material,’’ neither of which ap-

7. In applying my proposed definitions foreach of these terms, I express no opinion as towhether an invention can be a ‘‘manufac-ture,’’ or for that matter whether it can be‘‘useful’’ within the meaning of 35 U.S.C.§ 101 and Article I, clause 8 of the Constitu-tion, without having some discernible effectupon the world or effecting some physicaltransformation. Cf. Comiskey, 499 F.3d at1376 (agreeing with the PTO’s argument thata method claim qualifies as a ‘‘process’’ onlyif it (1) is ‘‘tied to a particular apparatus’’ or(2) ‘‘operate[s] to change materials to a ‘dif-ferent state or thing’ ’’); see also Ex parteBilski, Appeal No.2002–2257, slip op. at 32(B.P.A.I. March 8, 2006) (holding that ‘‘a‘process’ under § 101 requires a transforma-tion of physical subject matter to a differentstate or thing.’’). As the majority holds, Nui-jten’s signal must be detectable to be a ‘‘sig-

nal.’’ Nor do I express an opinion as towhether ‘‘useful’’ may mean ‘‘technological’’and thereby require either a result or an artthat is technological in character. See Comis-key, 499 F.3d at ––––, slip op. at 14 (observingthat ‘‘the framers consciously acted to barCongress from granting letters patent in par-ticular types of business,’’ as compared withthe monopolies granted by the EnglishCrown). But see Lundgren, 2004 WL3561262, *5, 2005 Pat.App. LEXIS 34, at *11(‘‘Our determination is that there is currentlyno judicially recognized separate ‘technologi-cal arts’ test to determine patent eligible sub-ject matter under § 101.’’). The precise con-tours of these doctrines, particularly appliedin the context of software and the virtualworlds it may create, pose difficult questionsfor other days and other cases.


pears in the statute, and neither of whichany precedent—until today—has imposedas a limitation on the otherwise ‘‘expan-sive’’ scope of § 101. No matter whatform the signal of claim 14 may take, itmust involve ‘‘some physical carrier of in-formation’’ that is created or manipulatedthrough human activity, and that physicalcarrier must function ‘‘to convey informa-tion to a recipient’’—it must signal. SeeMajority Op. at 1352–53.

Moreover, claim 14 is not directed to anabstract mathematical or scientific princi-ple that fails to qualify as ‘‘new’’ underFunk Bros. and Benson. The claimed sig-nal is artificial in character. The originalinput signal is ‘‘encoded in accordance witha given encoding process,’’ causing it toundergo at least two transformations re-quired by the language of the claim: first,‘‘selected samples of the signal’’ are madeto represent a second stream of ‘‘supple-mental data’’; and second, in order to re-duce the impact of the first transforma-tion, ‘‘at least one of the samples precedingthe selected samples’’ is made to be ‘‘dif-ferent from the sample corresponding tothe given encoding process.’’ These trans-formations may apply various laws ofphysics or mathematics, but they cannotbe said to be mere representations or prin-ciples of them; neither one is a natural orpre-existing way in which two streams ofdata may combine, for instance. The sig-nal itself is man-made.

The signal is also ‘‘useful’’ in a directand specific way. The invention is direct-ed to encoding and communicating data,and that is precisely what the signal does.Any information that it conveys is whollydistinct from the invention itself; the sig-nal is an information carrier, not an at-tempt to claim information itself. More-over—though my analysis does not rely onthis fact—the claim construction that weunanimously adopt today requires that thesignal have a physical manifestation that is

directly linked to its purpose. Whether asmoke signal, a sound, or a set of encodedand perhaps encrypted bits travelingacross a wireless network in the form ofradio waves, a signal must be detectable inorder to successfully signal anything. Nointermediate steps, layers of interpreta-tion, or speculative eventual uses separatethe signal from the claimed purpose: sim-ply put, the signal signals.

The correctness of these conclusions issupported also by the Supreme Court’sdecision in a surprisingly analogous casefrom over 150 years ago, O’Reilly v.Morse, 56 U.S. (15 How.) 62, 14 L.Ed. 601(1853). In Morse, Samuel Morse (ofMorse code fame) was allowed a patent‘‘for a process of using electromagnetismto produce distinguishable signs for teleg-raphy.’’ Benson, 409 U.S. at 68, 93 S.Ct.253 (discussing Morse, 56 U.S. (15 How.)at 111). The Supreme Court disallowedMorse’s eighth claim, for the use of ‘‘elec-tromagnetism, however developed formarking or printing intelligible characters,signs, or letters, at any distances,’’ as theimpermissible patenting of a scientificprinciple. Morse, 56 U.S. (15 How.) at112. As the Court later reiterated in TheTelephone Cases, however, claims to spe-cific uses of electromagnetism were pat-entable: ‘‘The effect of that decision[Morse ] was, therefore, that the use ofmagnetism as a motive power, without re-gard to the particular process with whichit was connected in the patent, could notbe claimed, but that its use in that connec-tion could.’’ 126 U.S. 1, 534, 8 S.Ct. 778,31 L.Ed. 863 (1888). In particular, theCourt permitted Morse’s fifth claim, to theuse of telegraphy to convey Morse code:‘‘the system of signs, consisting of dots andspaces, and of dots, spaces, and horizontallines, for numerals, letters, words, or sen-tences, substantially as herein set forth

1369GP INDUSTRIES, INC. v. ERAN INDUSTRIES, INC.Cite as 500 F.3d 1369 (Fed. Cir. 2007)

and illustrated, for telegraphic purposes.’’56 U.S. (15 How.) at 86.8

The ‘‘system’’ and constituent ‘‘signs’’ ofMorse’s fifth claim are not ‘‘tangible arti-cles or commodities.’’ See Majority Op. at1356. Rather, the claim is directed to asignal—a particular way of encoding infor-mation so that it can be conveyed (in thiscase in the form of electrical impulses on atelegraph wire) in a useful manner at adistance. Morse’s signaling system con-veyed certain important parts of a mes-sage—‘‘numerals, letters, words, or sen-tences,’’ but not lowercase letters, pictures,sound, etc.—under a particular set of con-straints. Nuijten’s signal does the same—it conveys two streams of data, one pri-mary stream and one lower-bandwidth‘‘supplemental’’ stream—in a manner suchthat the supplemental stream is conveyedlosslessly, and the primary stream is con-veyed so as to minimize the effects of lostbits upon certain underlying encodings ofdata. Both Morse’s signal and Nuijten’sare ‘‘new’’ and ‘‘useful,’’ and both are pat-entable.

IV. Conclusion

For these reasons, I would reverse.

,

GP INDUSTRIES, INC.,Plaintiff–Appellee,

and

A Gutter Solution, LLC, Central Alumi-num Supply Corporation, Exovationsof Atlanta, LLC, First Choice Guttersand Siding, Inc., General Stamping,Inc., Gutters for Less, Incorporated,Gutter Defender, Inc. (doing businessas Gutter Protectors), Guttersdi-

rect.Com, LLC, Lakeside Gutter Prod-ucts, Inc., Scott Katz (doing businessas CKC Cleaning Specialists), OmahaGutter & Siding Company, Sela Roof-ing and Remodeling, Inc., James L.Sipes, Specialty Tool and Machine,Inc., Daniel Stava, Gregory M. Stava,Sul–Co, Inc. (doing business as PolarProducts), Doyle J. Sullivan, RooneUnger, WW Distributors, LLC, LanceD. Bailey, Randall R. Bailey, Brian M.Beck, David R. Herdrich, and JoshuaHesse, Third–Party Defendants–Ap-pellees,

and

Mark Hurd, Third–Party Defendant,

v.

ERAN INDUSTRIES, INC. and JamesE. Bachman, Defendants/Third–

Party Plaintiffs–Appellants.

No. 2007–1087.

United States Court of Appeals,Federal Circuit.

Sept. 20, 2007.

Background: Patent assignee’s competi-tor brought action against assignee for adeclaratory judgment of noninfringement,invalidity, and unenforceability of the pat-ent, tortious interference with business re-lationships, and violations of the NebraskaDeceptive Trade Practices Act. Subse-quently, assignee brought action againstcompetitor for patent infringement andmisappropriation of a trade secret, andactions were consolidated. The UnitedStates District Court for the District ofNebraska, Joseph F. Bataillon, ChiefJudge, granted competitor’s motion forpreliminary injunction barring assigneefrom communicating with customers and

8. Intriguingly, Morse’s claim was permittedas an ‘‘art’’ rather than a ‘‘manufacture.’’ 56

U.S. (15 How.) at 101. See supra at 1360 &n. 3.

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