How many tests does it take to determine if a process claim is patent eligible under §101? According to the Federal Circuit, only one two-prong test. In re Bilski, Fed. Cir., No. 2007-1130, October 30, 2008.
Bilski et al. filed a U.S. patent application with claims essentially drawn to a method of hedging risks in the field of commodities trading. The examiner rejected the claims under 35 USC 101 for not being limited to a practical application of an abstract idea. Bilksi et al. appealed the rejection to the Board of Patent Appeals and Interferences (Board). The Board affirmed that the claims were not patent eligible under §101, but also noted that the examiner had come to the conclusion of patent ineligibility of the claims using a "technological arts" test not supported by the case law. Bilski et al. appealed the Board's decision to the Federal Circuit. The Federal Circuit also affirmed that the claims were not patent eligible under §101.
In the appeal, the Federal Circuit was under pressure to answer one question definitively: what is the proper test for determining patent eligibility of a process claim under §101? The Federal Circuit considered several known tests related to the §101 question, including useful, concrete, and tangible result test, technological arts test, machine-or-transformation test, Freeman-Walter-Abele test, physical limitations test, physical steps test, and machine-or-implementation test. Explaining why the other tests are inadequate, the Federal Circuit concluded that the definitive test for determining patent eligibility of a process claim under §101 is the machine-or-transformation test.
The machine-or-transformation test conveniently avoids having to explicitly determine whether a process claim is directed to a judicial exception or a practical application of a judicial exception. As such, the Office will have to reassess how it evaluates process claims for patent eligibility under §101. Notably, the second step of Mr. John Love's two-step process for determining patent eligibility of process claims will no longer be needed.