The Federal Circuit voted 7-5 against rehearing In re Comiskey en banc. Judge Moore issued a well-reasoned dissent from the denial.
Background
Comiskey filed a patent application in 1999 directed to methods and systems for requiring and conducting mandatory arbitration. The patent examiner rejected the claims as being obvious over the prior art and the Board of Appeals affirmed the rejection. During the many years of prosecution, there was no mention by the PTO or by the inventor as to whether the claims were directed to statutory subject matter. Comiskey appealed the rejection to the Federal Circuit.
At oral argument at the Federal Circuit, the court, for the first time, raised the question of whether the claims were directed to statutory subject matter, although neither party had appealed that issue. Judge Moore characterizes the exchange in footnote 1 of her dissent:
In fact, during oral argument, counsel for the PTO was clearly puzzled by the panel’s suggestion that it could affirm on an alternative ground: “When I think about a question like that, I think of this court’s role as an appellate court which is supposedly empowered to review the decisions of the lower tribunal.” Oral Arg. 21:48-22:00, available at http://oralarguments.cafc.uscourts.gov/mp3/2006-1286.mp3. When
pressed, counsel added: “[I]t would be unusual—I’ve never seen it my nine years—where this court has affirmed on a completely different ground.” Id. at 22:07-22:21. After surprising Mr. Comiskey and the PTO with its questions directed to § 101 during oral argument, the panel asked the parties to submit letter briefs of no more than 7000 words limited to the issue of whether Mr. Comiskey’s claims were directed to patentable subject matter under § 101. Nowhere in its brief did the PTO address the propriety of this court reaching a new ground of rejection on appeal, likely because of the limited scope of the supplemental briefing. Nonetheless, Mr. Comiskey spent half of his short brief objecting to the panel reaching a different ground of rejection on appeal. Mr. Comiskey had no opportunity to consider or respond to any of the PTO arguments on this entirely new ground of rejection as both briefs were due simultaneously.
The opinion issued by the Federal Circuit panel that included Judges Dyk, Michel, and Prost did not address the PTO’s obviousness rejection at all. In fact, the panel concluded that the method claims in Comiskey’s application were not directed to statutory subject matter, so they were unpatentable. The panel held that the system claims were directed to patentable subject matter because they included a machine. Then, the panel held decided to
remand to the PTO to determine whether the addition of a general purpose computer or modern communication devices to Comiskey’s otherwise unpatentable mental process would have been obvious.
The original panel decision is here.
What? The PTO had already concluded that all of the claims were obvious over the prior art, both the examiner and the Board of Appeals had so ruled. Now, the Federal Circuit does not address this question on appeal, but directs the PTO to consider the question again? What are they supposed to do, say “we still think they’re obvious.”
Rehearing
The Federal Circuit deferred decision on the petition for rehearing in Comiskey until after they decided Bilski. The court realized that what the original panel did didn’t make sense. The original panel decision was withdrawn and reissued as to the final determination. The new opinion still holds that the process claims are not patentable subject matter, but now simply remands the system claims to the PTO to make a determination as to whether they are directed to patentable subject matter. The panel still does not address the obviousness rejection, but at least now doesn’t tell the PTO to reconsider that question without ruling on it. Now, the PTO is to consider the 101 question on the system claims. This still begs the question as to why the court could rule on the process claims but not the system claims.
Judge Moore’s Dissent
In her dissent, Judge Moore states that the original panel had an obligation to consider the obviousness rejection that had been appealed to them. If the panel found a flaw in the PTO’s logic on the obviousness question, it could have affirmed on other grounds, namely non-statutory subject matter. She considers the remand to the PTO to be wasteful because the PTO’s obviousness rejection was not reviewed and still stands. She notes that the court did not point out a need for additional evidence, fact findings, or legal analysis. She also states that it is not the Federal Circuit’s job to direct the PTO’s examination process.
She also cannot understand why the system claims were remanded, but not the process claims. Why the distinction? What additional information does the panel need from the PTO? Neither Bilski, nor any other case, has changed the rule that machine claims are patent eligible subject to the exceptions to patentability (abstract idea, natural phenomenon, or law of nature).
On remand, even if the PTO agrees with the original panel decision that yes, the system claims are patentable subject matter, what then? Comiskey still won’t get his patent because the PTO’s obviousness rejection remains. Does he have to re-appeal the same rejection again to the Federal Circuit? The court has put Comiskey in an impossible situation that will require him to win two additional appeals to get his patent. Prosecuting a patent application for nearly ten years at the PTO and then having to appeal to the Federal Circuit multiple times is not cheap. Is this evidence that the Federal Circuit is also against patent owners?
