第22回：基本～特許主題適格性（１）～（2023年5月17日）

U.S. Const. Art. I, sec. 8, cl. 8
The Congress shall have Power ... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries[.]

【参考訳】
米国憲法第1章第8条第8項
米国議会は、著作者及び発明者に対して各自の執筆物及び発見に対する排他権を一定期間保証することにより、科学及び実用的な技術の進歩を奨励する権限を有する。

(注1) Thomas B. Nachbar, Annotation on the Patent and Copyright Clause at https://www.heritage.org/constitution/#!/ ("There is little direct evidence about the Patent and Copyright Clause's original meaning. The clause neither represented a legal tradition of great historical and practical significance to the Framers, unlike the availability of habeas corpus (see Article I, Section 9, Clause 2), nor was it one of the great structural innovations of the Constitution that attracted so much attention because of its gravity and novelty. Rather, the clause appears to have been largely an afterthought. ... The clause's text has been of limited help in resolving modern disputes over its meaning."); Bilski v. Kappos, 561 U.S. 593, 614, 635 (2010) (Stevens, J., concurring in the judgment) ("Some scholars have remarked, as did Thomas Jefferson, that early patent statutes neither included nor reflected any serious debate about the precise scope of patentable subject matter. See, e.g., Graham, 383 U.S., at 9–10 (discussing Thomas Jefferson's observations).")

Patent Act of 1790, Sec. 1: "any useful art, manufacture, engine, machine, or device, or any improvement therein"（実用的な技術、生産物、エンジン、機械、若しくは装置、又は、その改善）

Patent Act of 1793, Sec. 1: "any new and useful art, machine, manufacture or composition of matter, or any new and useful improvement on any art, machine, manufacture or composition of matter"（新規でかつ実用的な技術、機械、生産物若しくは物質の組成物、又は、新規でかつ実用的な技術、機械、生産物若しくは物質の組成物の改善）

Patent Act of 1836, Sec. 6: "any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter"（新規でかつ実用的な技術、機械、生産物若しくは物質の組成物、又は、新規でかつ実用的な技術、機械、生産物若しくは物質の組成物の改善）

Patent Act of 1870, Sec. 24: "any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement thereof"（新規でかつ実用的な技術、機械、生産物若しくは物質の組成物、又は、新規でかつ実用的なその改善）

Patent Act of 1952, Sec. 101: "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof"（新規でかつ実用的なプロセス、機械、生産物若しくは物質の組成物、又は、新規でかつ実用的なその改善）

(注2) Diamond v. Chakrabarty, 447 U.S. 303, 308-309 (1980) ("The Patent Act of 1793, authored by Thomas Jefferson, defined statutory subject matter as "any new and useful art, machine, manufacture, or composition of matter, or any new or useful improvement [thereof]." Act of Feb. 21, 1793, § 1, 1 Stat. 319. The Act embodied Jefferson's philosophy that "ingenuity should receive a liberal encouragement." 5 Writings of Thomas Jefferson 75–76 (Washington ed. 1871). See Graham v. John Deere Co., 383 U.S. 1, 7–1[0] (1966). Subsequent patent statutes in 1836, 1870, and 1874 employed this same broad language. In 1952, when the patent laws were re-codified, Congress replaced the word "art" with "process," but otherwise left Jefferson's language intact.").

35 U.S.C. 101 Inventions patentable (1952 ed.)
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

【参考訳】
特許法第101条　特許可能な発明
何人も、新規でかつ実用的なプロセス、機械、生産物若しくは物質の組成物、又は、新規でかつ実用的なその改善を発明又は発見する者は、本法の定める条件及び要件に従い、一の特許を取得することができる。

35 U.S.C. 161 Patents for plants.
Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title. ...
(Amended Sept. 3, 1954, 68 Stat. 1190.)

【参考訳】
特許法第161条　植物に対する特許
何人も、無性生殖する、独特でかつ新規な植物種（栽培変種、突然変異体、雑種及び新規の種苗を含み、塊根植物及び非栽培状態で発見された植物を除く）を発明又は発見し、かつ、無性的に育成する者は、本法の定める条件及び要件に従い、一の特許を取得することができる。

(注3) J.P. Federico, Commentary on the New Patent Act, 75 JPTOS 161, 186 (1993) (reprinted from 35 U.S.C.A. (1954 ed.)) ("[the] language [of section 101] (other than the terminal phrase) closely follows the wording of the corresponding part of the old statute, with the exceptions that the reference to plant patents has been omitted for inclusion in another section, and the word "process" is used in place of the word "art" which appeared in the old statute.").

35 U.S.C. 171 Patents for designs　
(a) IN GENERAL.—Whoever invents any new, original, and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title.
(b) APPLICABILITY OF THIS TITLE.—The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.
(c) FILING DATE.—The filing date of an application for patent for design shall be the date on which the specification as prescribed by section 112 and any required drawings are filed.
(Amended Dec. 18, 2012, Public Law 112-211, sec. 202(a), 126 Stat. 1535.)

【参考訳】
特許法第171条　意匠に対する特許
(a) 原則：何人も、新規で、独創的で、かつ装飾的な意匠を創作する者は、本法の定める条件及び要件に従い、一の特許を取得することができる。
(b) 本法の適用：発明に対する特許についての本法の規定は、特段の定めのない限り、意匠に対する特許にも適用する。
(c) 出願日：意匠に対する特許の出願日は、第112条に規定される明細書及び必要な図面が全て提出された日とする。

Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 483 (1974)　
"[N]o patent is available for a discovery, however useful, novel, and nonobvious, unless it falls within one of the express categories of patentable subject matter of 35 U.S.C. § 101[.]"

Gottschalk v. Benson, 409 U.S. 63 (1972)
"Claims 8 [,which reads "[t]he method of converting signals from binary coded decimal form into binary,"] and 31 [,which reads: "[a] data processing method for converting binary coded decimal number representations into binary number representations,"] were rejected by the Patent Office but sustained by the Court of Customs and Patent Appeals, ... The question is whether the method described and claimed is a ‘process’ within the meaning of the Patent Act. ... [I]f the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself." (emphasis added)

Bilski v. Kappos, 561 U.S. 593 (2010)
"Petitioners' application seeks patent protection for a claimed invention that explains how buyers and sellers of commodities in the energy market can protect, or hedge, against the risk of price changes. The key claims are claims 1 and 4. Claim 1 describes a series of steps instructing how to hedge risk. Claim 4 puts the concept articulated in claim 1 into a simple mathematical formula. ... [P]etitioners' claims are not patentable processes because they are attempts to patent abstract ideas." (emphasis added)

Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012)
"The patent claims seek to embody this research in a set of processes. [W]e take as typical claim 1 of the ’623 Patent, which describes one of the claimed processes as follows: "A method of optimizing therapeutic efficacy for treatment of an immune-mediated gastrointestinal disorder ... . [W]e conclude that the patent claims at issue here effectively claim the underlying laws of nature themselves. The claims are consequently invalid." (emphasis added)

Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014)
"[T]he patents in suit claim (1) the[] method for exchanging obligations (the method claims), (2) a computer system configured to carry out the method for exchanging obligations (the system claims), and (3) a computer-readable medium containing program code for performing the method of exchanging obligations (the media claims). [T]he relevant question is whether the [method] claims here do more than simply instruct the practitioner to implement the abstract idea of intermediated settlement on a generic computer. They do not. ... Because petitioner's system and media claims add nothing of substance to the underlying abstract idea, we hold that they too are patent ineligible under § 101." (emphasis added)

Corning v. Burden, 15 How. 252, 267–268 (1854)
"A process, eo nomine, is not made the subject of a patent in our act of congress. It is included under the general term ‘useful art.’ An art may require one or more processes or machines in order to produce a certain result or manufacture. The term machine includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result. But where the result or effect is produced by chemical action, by the operation or application of some element or power of nature, or of one substance to another, such modes, methods, or operations, are called processes. A new process is usually the result of discovery; a machine of invention. The arts of tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores, and numerous others, are usually carried on by processes as distinguished from machines. One may discover a new and useful improvement in the process of tanning, dyeing, etc., irrespective of any particular form of machinery or mechanical device. And another may invent a labor-saving machine by which this operation or process may be performed, and each may be entitled to his patent. As, for instance, A has discovered that by exposing India rubber to a certain degree of heat, in mixture or connection with certain metallic salts, he can produce a valuable product, or manufacture; he is entitled to a patent for his discovery, as a process or improvement in the art, irrespective of any machine or mechanical device. B, on the contrary, may invent a new furnace or stove, or steam apparatus, by which this process may be carried on with much saving of labor, and expense of fuel; and he will be entitled to a patent for his machine, as an improvement in the art. Yet A could not have a patent for a machine, or B for a process; but each would have a patent for the means or method of producing a certain result, or effect, and not for the result or effect produced. It is for the discovery or invention of some practical method or means of producing a beneficial result or effect, that a patent is granted, and not for the result or effect itself. It is when the term process is used to represent the means or method of producing a result that it is patentable, and will include all methods or means which are not effected by mechanism or mechanical combinations. " (emphasis added).

Diamond v. Diehr, 450 U.S. 175, 182-184 (1981)
"Although the term "process" was not added to 35 U.S.C. § 101 until 1952 a process has historically enjoyed patent protection because it was considered a form of "art" as that term was used in the 1793 Act[.] In defining the nature of a patentable process, the Court stated: "That a process may be patentable, irrespective of the particular form of the instrumentalities used, cannot be disputed.... A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing. If new and useful, it is just as patentable as is a piece of machinery. In the language of the patent law, it is an art. The machinery pointed out as suitable to perform the process may or may not be new or patentable; whilst the process itself may be altogether new, and produce an entirely new result. The process requires that certain things should be done with certain substances, and in a certain order; but the tools to be used in doing this may be of secondary consequence." Cochrane v. Deener, 94 U.S. 780, 787–78[8] (1877)." (emphasis added).

（注4）たとえば、Webster's New World College Dictionary 5th Ed. (2014)によれば、"process"は、"a particular method of doing something, generally involving a number of steps or operations"という、広範な意味を有する。

35 U.S.C. 100  Definitions.　
When used in this title unless the context otherwise indicates - ...
(b) The term "process" means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.

【参考訳】
特許法第100条　定義
本法においては、特段の定めのある場合を除き、…「プロセス」という用語は、プロセス（process）、技術（art）、又は方法（method）を意味し、かつ、この用語は、公知のプロセス（process）、機械（machine）、生産品（manufacture）、組成物（composition of matter）又は物質（material）の新規な使用を含む。

（注5）ただし、具体的な「ステップ」を明記することなく、単に公知のプロセス、機械、生産品又は物質の組成物の新規な「使用」とクレームに記載するだけでは、USPTOの実体審査を通過できないおそれがある点に留意すべきである。Manual of Patent Examining Procedure (MPEP) 2173.05(q) [R-11.2013] ("Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b)[.] For example, a claim which read: "[a] process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon" was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parteErlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). Other decisions suggest that a more appropriate basis for this type of rejection is 35 U.S.C. 101. In Ex parteDunki, 153 USPQ 678 (Bd. App. 1967), the Board held the following claim to be an improper definition of a process: "The use of a high carbon austenitic iron alloy having a proportion of free carbon as a vehicle brake part subject to stress by sliding friction." In Clinical Products Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966), the district court held the following claim was definite, but that it was not a proper process claim under 35 U.S.C. 101: "The use of a sustained release therapeutic agent in the body of ephedrine absorbed upon polystyrene sulfonic acid."").

Parker v. Flook, 437 U.S. 584, 588-589 (1978)　
"The plain language of § 101 does not answer the question. It is true, as respondent argues, that his method is a "process" in the ordinary sense of the word.[] But that was also true of the algorithm, which described a method for converting binary-coded decimal numerals into pure binary numerals, that was involved in Gottschalk v. Benson. The holding that the discovery of that method could not be patented as a "process" forecloses a purely literal reading of § 101.[] Reasoning that an algorithm, or mathematical formula, is like a law of nature, Benson applied the established rule that a law of nature cannot be the subject of a patent. ... The line between a patentable "process" and an unpatentable "principle" is not always clear. Both are "conception[s] of the mind, seen only by [their] effects when being executed or performed." Tilghman v. Proctor, 102 U.S. 707, 728, 26 L.Ed. 279."

Gottschalk v. Benson, 409 U.S. 63, 70 (1972)　
"Transformation and reduction of an article ‘to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines. So it is that a patent in the process of ‘manufacturing fat acids and glycerine from fatty bodies by the action of water at a high temperature and pressure’ was sustained in Tilghman v. Proctor, 102 U.S. 707, 721[.]"(emphasis added)

In re Bilski, 545 F.3d 943, 964 (Fed. Cir. 2008)(en banc)　
"[T]he machine-or-transformation test is the only applicable test and must be applied, in light of the guidance provided by the Supreme Court and this court, when evaluating the patent-eligibility of process claims." (emphasis added)

Bilski v. Kappos, 561 U.S. 593, 604 (2010)　
"The Court of Appeals incorrectly concluded that this Court has endorsed the machine-or-transformation test as the exclusive test. It is true that Cochrane v. Deener, 94 U.S. 780, 78[8] (1877), explained that a "process" is "an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing." More recent cases, however, have rejected the broad implications of this dictum; and, in all events, later authority shows that it was not intended to be an exhaustive or exclusive test. Gottschalk v. Benson, 409 U.S. 63, 7[0] (1972), noted that "[t]ransformation and reduction of an article ‘to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines." At the same time, it explicitly declined to "hold that no process patent could ever qualify if it did not meet [machine or transformation] requirements." Id., at 71[.] ... This Court’s precedents establish that the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101. The machine-or-transformation test is not the sole test for deciding whether an invention is a patent-eligible "process."" (emphasis added)

Bilski v. Kappos, 561 U.S. 593, 612 (2010)　
"Today, the Court once again declines to impose limitations on the Patent Act that are inconsistent with the Act's text. The patent application here can be rejected under our precedents on the unpatentability of abstract ideas. The Court, therefore, need not define further what constitutes a patentable "process," beyond pointing to the definition of that term provided in § 100(b) and looking to the guideposts in Benson, Flook, and Diehr." (emphasis added)

Corning v. Burden, 15 How. 252, 267–268 (1854)　
"The term machine includes every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result."

Burr v. Duryee, 68 U.S. 531, 570-571 (1863)　
"A machine is a concrete thing, consisting of parts, or of certain devices and combination of devices. The principle of a machine is properly defined to be "its mode of operation," or that peculiar combination of devices which distinguish it from other machines. A machine is not a principle or an idea. The use of ill-defined abstract phraseology is the frequent source of error. It requires no great ingenuity to mystify a subject by the use of abstract terms of indefinite or equivocal meaning. Because the law requires a patentee to explain the mode of operation of his peculiar machine, which distinguishes it from others, it does not authorize a patent for a "mode of operation as exhibited in a machine." Much less can any inference be drawn from the statute, that an inventor who has made an improvement in a machine, and thus effects the desired result in a better or cheaper manner than before, can include all previous inventions, and have a claim to the whole art, discovery, or machine which he has improved. All others have an equal right to make improved machines, provided they do not embody the same, or substantially the same devices, or combination of devices, which constitute the peculiar characteristic of the previous invention."

(注6) 35 U.S.C. 112(f) ("ELEMENT IN CLAIM FOR A COMBINATION.—An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.").

Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)　
"[T]his Court has read the term "manufacture" in § 101 in accordance with its dictionary definition to mean "the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery." American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 1[1] (1931)."

Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)　
""[C]omposition of matter" has been construed consistent with its common usage to include "all compositions of two or more substances and . . . all composite articles, whether they be the results of chemical union, or of mechanical mixture, or whether they be gases, fluids, powders or solids." Shell Development Co. v. Watson, 149 F.Supp. 279, 280 (D.C.1957) (citing 1 A. Deller, Walker on Patents § 14, p. 55 (1st ed. 1937))."

(注7) その際、米国最高裁判所は、"manufacture"及び"composition of matter"を広く解釈することが立法者の意図に沿うとしても、自然法則、自然現象及び抽象概念は、特許可能な主題から除外されると釘を刺している。このルールは、後のMayo事件において、排除則（exclusionary principle）と命名される。See Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) ("This is not to suggest that § 101 has no limits or that it embraces every discovery. The laws of nature, physical phenomena, and abstract ideas have been held not patentable.").

Diamond v. Chakrabarty, 447 U.S. 303, 309-310 (1980)　
"[Chakrabarty]'s micro-organism plainly qualifies as patentable subject matter. His claim is not to a hitherto unknown natural phenomenon, but to a nonnaturally occurring manufacture or composition of matter—a product of human ingenuity "having a distinctive name, character [and] use."" (emphasis added)

(注8) See, e.g., Manual of Patent Examining Procedure (MPEP) 2105 [R-10.2019], I. ("Prior to 1980, it was widely believed that living subject matter was not eligible for patenting[] because such subject matter did not fall within a statutory category, or because it was a judicial exception to patent eligibility. However, the decision of the Supreme Court in Diamond v. Chakrabarty, 447 U.S. 303, 206 USPQ 193 (1980), made it clear that the question of whether an invention embraces living matter is irrelevant to the issue of patent eligibility. Note, however, that Congress has excluded claims directed to or encompassing a human organism from eligibility. See The Leahy-Smith America Invents Act (AIA), Pub. L. 112-29, sec. 33(a), 125 Stat. 284 (September 16, 2011)."). (emphasis added)

Id., at 313　
"Congress[] recognized that the relevant distinction was not between living and inanimate things, but between products of nature, whether living or not, and human-made inventions. Here, [Chakrabarty]'s micro-organism is the result of human ingenuity and research." (emphasis added)

(注9) See the Consolidated Appropriations Act of 2004, § 634, 118 Stat. 101 ("None of the funds appropriated or otherwise made available under this Act may be used to issue patents on claims directed to or encompassing a human organism"); Leahy-Smith America Invents Act of 2011 (Public Law 112-29), Sec. 33(a) ("Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.").

J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 534 U.S. 124, 147 (2001) (Breyer, J., dissenting)　
"The question before us is whether the words "manufacture" or "composition of matter" contained in the utility patent statute, 35 U.S.C. § 101 (1994 ed.) (Utility Patent Statute), cover plants that also fall within the scope of two more specific statutes, the Plant Patent Act of 1930(PPA), 35 U.S.C. § 161 et seq. (1994 ed. and Supp. V), and the Plant Variety Protection Act (PVPA), 7 U.S.C. § 2321 et seq."

Id., at 145-146　
"[W]e hold that newly developed plant breeds fall within the terms of § 101, and that neither the [Plant Patent Act of 1930] nor the [Plant Variety Protection Act of 1970] limits the scope of § 101's coverage. As in Chakrabarty, we decline to narrow the reach of § 101 where Congress has given us no indication that it intends this result. 447 U.S., at 315–316[.]" (emphasis added)

(注10) See Asgrow Seed Co. v. Winterboer, 513 U.S. 179, 181 (1995) ("asexually reproduced plant varieties [are] varieties reproduced by propagation or grafting").

(注11) See id., at 181 ("sexually reproduced plants [are] plants grown from seed").

1. A method of embedding supplemental data in a signal, comprising the steps of:
encoding the signal in accordance with an encoding process which includes the step of feeding back the encoded signal to control the encoding; and modifying selected samples of the encoded signal to represent the supplemental data prior to the feedback of the encoded signal and including the modifying of at least one further sample of the encoded signal preceding the selected sample if the further sample modification is found to improve the quality of the encoding process.

14. A signal with embedded supplemental data, the signal being encoded in accordance with a given encoding process and selected samples of the signal representing the supplemental data, and at least one of the samples preceding the selected samples is different from the sample corresponding to the given encoding process.

【参考訳】
14. 埋め込み補助データを備える信号であって、前記信号は所定の符号化プロセス及び前記補助データを代表する前記信号の選択サンプルに従い符号化されたものであり、かつ、前記選択サンプルに先行するサンプルのうちの少なくとも１つは前記所定の符号化プロセスに対応する前記サンプルとは異なる。

In re Nuijten, 500 F.3d 1346, 1356-1358 (Fed. Cir. 2007)　
"[The claimed signals] are man-made, in the sense of having been encoded, generated, and transmitted by artificial means. However, artificiality is insufficient by itself to render something a "manufacture." The Supreme Court has defined "manufacture" (in its verb form) as "the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery." Diamond v. Chakrabarty, 447 U.S. 303, 30[8] (1980) (emphasis added)[.] The term is used in the statute in its noun form[,] and therefore refers to "articles" resulting from the process of manufacture. The same dictionary the Supreme Court relied on for its definition of "manufacture" in turn defines "article" as "a particular substance or commodity: as, an article of merchandise; an article of clothing; salt is a necessary article." 1 Century Dictionary 326 (William Dwight Whitney ed., 1895) (emphasis in original).

 These definitions address "articles" of "manufacture" as being tangible articles or commodities. A transient electric or electromagnetic transmission does not fit within that definition. While such a transmission is man-made and physical—it exists in the real world and has tangible causes and effects—it is a change in electric potential that, to be perceived, must be measured at a certain point in space and time by equipment capable of detecting and interpreting the signal. In essence, energy embodying the claimed signal is fleeting and is devoid of any semblance of permanence during transmission[.] Moreover, any tangibility arguably attributed to a signal is embodied in the principle that it is perceptible—e.g., changes in electrical potential can be measured. All signals within the scope of the claim do not themselves comprise some tangible article or commodity[.] This is particularly true when the signal is encoded on an electromagnetic carrier and transmitted through a vacuum—a medium that, by definition, is devoid of matter[.] Thus, we hold that Nuijten’s signals, standing alone, are not "manufacture[s]" under the meaning of that term in § 101[.]"

U.S. Patent No. 6,154,844　

1. A method comprising:

receiving by an inspector a Downloadable;

generating by the inspector a first Downloadable security profile that identifies suspicious code in the received Downloadable; and

linking by the inspector the first Downloadable security profile to the Downloadable before a web server makes the Downloadable available to web clients.

Finjan v. Blue Coat Sys., 879 F.3d 1299, 1305-1306 (Fed. Cir. 2018)　
"Apple, Affinity Labs, and other similar cases hearken back to a foundational patent law principle: that a result, even an innovative result, is not itself patentable. ... Here, the claims recite more than a mere result. Instead, they recite specific steps—generating a security profile that identifies suspicious code and linking it to a downloadable—that accomplish the desired result. Moreover, there is no contention that the only thing disclosed is the result and not an inventive arrangement for accomplishing the result. There is no need to set forth a further inventive concept for implementing the invention. The idea is non-abstract and there is no need to proceed to step two of Alice."

Gottschalk v. Benson, 409 U.S. 63, 71-72 (1972)　
"The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself." (emphasis added)

MPEP ,Fifth edition (Rev. 6, October 1987), 2106　
"[A] bare set of computer instructions does not set forth a sequence of steps which could be viewed as a statutory process. Such a computer language listing of instructions, when not associated with a computing machine to accomplish a specific purpose, would not constitute a machine implemented process, but would constitute non-statutory subject matter as the mere idea or abstract intellectual concept of a programmer, or as a collection of printed matter." (emphasis added)

In re Beauregard, 53 F.3d 1583 (1995)　
"Briefly, on August 4, 1994, the Board rejected Beauregard's computer program product claims on the basis of the printed matter doctrine. Beauregard appealed. The Commissioner now states "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." The Commissioner states that he agrees with Beauregard's position on appeal that the printed matter doctrine is not applicable. Thus, the parties are in agreement that no case or controversy presently exists.

Accordingly,

IT IS ORDERED THAT:

The Board's decision is vacated and the case is remanded for further proceedings in accordance with the Commissioner's concessions."

(注12) See U.S. Const. Art. III, sec. 2, cl. 1 ("The judicial Power shall extend to all Cases, in Law and Equity, arising under this Constitution, the Laws of the United States, and Treaties made, or which shall be made, under their Authority;--to all Cases affecting Ambassadors, other public Ministers and Consuls;--to all Cases of admiralty and maritime Jurisdiction;--to Controversies to which the United States shall be a Party;--to Controversies between two or more States;--between a State and Citizens of another State;--between Citizens of different States;--between Citizens of the same State claiming Lands under Grants of different States, and between a State, or the Citizens thereof, and foreign States, Citizens or Subjects.")

Alice Corp. v. CLS Bank Int'l, 573 U.S. 208, 214 (2014)　
"[T]he patents in suit claim (1) the foregoing method for exchanging obligations (the method claims), (2) a computer system configured to carry out the method for exchanging obligations (the system claims), and (3) a computer-readable medium containing program code for performing the method of exchanging obligations (the media claims). All of the claims are implemented using a computer; the system and media claims expressly recite a computer, and the parties have stipulated that the method claims require a computer as well."

Id., at 227　
"Because petitioner's system and media claims add nothing of substance to the underlying abstract idea, we hold that they too are patent ineligible under § 101." (emphasis added)

In re Nuijten, 500 F.3d 1346, 1357 (2007)　
"A transitory, propagating signal like Nuijten's is not a "process, machine, manufacture, or composition of matter." Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject matter."

David J., Kappos, "Subject Matter Eligibility of Computer Readable Media" (January 26, 2010)　
"The USPTO recognizes that applicants may have claims directed to computer readable media that cover signals per se, which the USPTO must reject under 35 U.S.C. § 101 as covering both non-statutory subject matter and statutory subject matter. In an effort to assist the patent community in overcoming a rejection or potential rejection under 35 U.S.C. § 101 in this situation, the USPTO suggests the following approach. A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation "non-transitory" to the claim. CJ: Animals -Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (suggesting that applicants add the limitation "non-human" to a claim covering a multi-cellular organism to avoid a rejection under 35 U.S.C. § 101). Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se. The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure. See, e.g., Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998)." (emphasis added)

J.P. Federico, Commentary on the New Patent Act, 75 JPTOS 161, 186 (1993) (reprinted from 35 U.S.C.A. (1954 ed.))　
"The word "invent", as used in section 101 for example, does not incorporate "new" within its meaning (section 101 states "Whoever invents . . . any new . . . machine, etc."), but novelty is a separate requirement. The novelty required is not novelty in an absolute sense, as the statute defines what is to be looked to in order to show that an invention is not new. The general part of the Committee Report states that section 102 "may be said to describe the statutory novelty required for patentability, and includes, in effect, an amplification and definition of 'new' in section 101."" (emphasis added)

Diamond v. Diehr, 450 U.S. 175, 188-190 (1981)　
"In determining the eligibility of respondents’ claimed process for patent protection under § 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made. The "novelty" of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.¹²

It has been urged that novelty is an appropriate consideration under § 101. Presumably, this argument results from the language in § 101 referring to any "new and useful" process, machine, etc. Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection "subject to the conditions and requirements of this title." Specific conditions for patentability follow and § 102 covers in detail the conditions relating to novelty[.] The question therefore of whether a particular invention is novel is "wholly apart from whether the invention falls into a category of statutory subject matter." In re Bergy, 596 F.2d 952, 961 (Cust. & Pat.App., 1979) (emphasis deleted). "

"12 It is argued that the procedure of dissecting a claim into old and new elements is mandated by our decision in Flook which noted that a mathematical algorithm must be assumed to be within the "prior art." It is from this language that the petitioner premises his argument that if everything other than the algorithm is determined to be old in the art, then the claim cannot recite statutory subject matter. The fallacy in this argument is that we did not hold in Flook that the mathematical algorithm could not be considered at all when making the § 101 determination. To accept the analysis proffered by the petitioner would, if carried to its extreme, make all inventions unpatentable because all inventions can be reduced to underlying principles of nature which, once known, make their implementation obvious. The analysis suggested by the petitioner would also undermine our earlier decisions regarding the criteria to consider in determining the eligibility of a process for patent protection. See, e. g., Gottschalk v. Benson, supra ; and Cochrane v. Deener, 94 U.S. 780, 24 L.Ed. 139 (1877)."

Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 90 (2012)　
"We recognize that, in evaluating the significance of additional steps, the § 101 patent-eligibility inquiry and, say, the § 102 novelty inquiry might sometimes overlap. But that need not always be so. And to shift the patent-eligibility inquiry entirely to these later sections risks creating significantly greater legal uncertainty, while assuming that those sections can do work that they are not equipped to do." (emphasis added).

(注13) 本来であれば、Mayo事件において、Diehr事件における、特許主題適格性の判断に新規性の問題を含めることを否定する旨の判例の変更を明示で宣言すべきだったと筆者は考える。明示の宣言による判例の変更の例としては、特許濫用法理の立法化（特許法 271条(d)項）を背景として、反トラス法上の抱き合せ（tying）の基準についての矛盾する判例を統一したIllinois Tool Works事件（2006年）がある。Illinois Tool Works Inc. v. Independent Ink, Inc., 547 U.S. 28, 42 (2006) ("After considering the congressional judgment reflected in the 1988 amendment, we conclude that tying arrangements involving patented products should be evaluated under the standards applied in cases like Fortner II and Jefferson Parish rather than under the per se rule applied in Morton Salt and Loew's.")