In re Comiskey

• Citation: 499 F.3d 1365
• Decision Date: 20 September 2007
• Docket Number: No. 2006-1286.,Serial No. 09/461,742.,2006-1286.
• Parties: In re Stephen W. COMISKEY.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

499 F.3d 1365

In re Stephen W. COMISKEY.

No. 2006-1286.

Serial No. 09/461,742.

United States Court of Appeals, Federal Circuit.

September 20, 2007.

Thomas J. Scott, Jr., Hunton & Williams LLP, of Washington, DC, argued for appellant. With him on the brief was Robert L. Kinder. Of counsel was Yisum Song.

Raymond T. Chen, Associate Solicitor, United States Patent and Trademark Office, of Arlington, Virginia, argued for the Director of the United States Patent and Trademark Office. With him on the brief was Thomas W. Krause, Associate Solicitor.

Before MICHEL, Chief Judge, DYK and PROST, Circuit Judges.

DYK, Circuit Judge.

Appellant Stephen W. Comiskey ("Comiskey") appeals the decision of the Board of Patent Appeals and Interferences ("Board") affirming the examiner's rejection of claims 1-59 of his patent application as obvious in view of the prior art and therefore unpatentable under 35 U.S.C. § 103. We do not reach the Board's obviousness rejection of the independent claims under § 103 because we conclude that Comiskey's independent claims 1 and 32 and most of their dependent claims are unpatentable subject matter under 35 U.S.C. § 101. We conclude that independent claims 17 and 46 (and their dependent claims) and dependent claims 15, 30, 44, and 58 recite statutory subject matter but 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. We therefore affirm-in-part, vacate-in-part, and remand.

BACKGROUND

I

Comiskey's patent application No. 09/461,742 claims a method and system for mandatory arbitration involving legal documents, such as wills or contracts. According to the application, the claimed "program . . . requires resolution by binding arbitration of any challenge or complaint concerning any unilateral document . . . [or] contractual document."

Independent claim 1 recites a "method for mandatory arbitration resolution regarding one or more unilateral documents" involving the following steps. First, the unilateral document and its author are enrolled. Second, arbitration language is incorporated in the unilateral document requiring that any contested issue related to the document be presented to the pre-chosen arbitration program for binding arbitration. Third, the method "requir[es] a complainant [sic] to submit a request for arbitration resolution." Fourth, the method conducts arbitration resolution. Fifth, the method provides "support to the arbitration." Finally, the method determines "an award or decision. . . [that] is final and binding."¹ Independent claim 32 is practically identical to claim 1, except that it refers to contractual documents rather than unilateral documents.² Although the application's written description references "an automated system and method for requiring resolution through binding arbitration" and "a mandatory arbitration system through a computer on a network," claims 1 and 32 do not reference, and the parties agree that these claims do not require, the use of a mechanical device such as a computer.

Independent claim 17 recites a "system for mandatory arbitration resolution regarding one or more unilateral documents." It includes the following limitations: (1) a registration module to register the unilateral document and its executor; (2) an arbitration module for incorporating to store and provide arbitration language that requires any contested issue related to the unilateral document be presented to the system; (3) "an arbitration resolution module" that enables "a complainant to submit a request for arbitration resolution"; and (4) "a means for selecting an arbitrator from an arbitrator database" and "providing support to the arbitrator . . . where the arbitrator determines an award or a decision. . .[that] is final and binding."³ Independent claim 46 is practically identical to claim 17, except that it refers to contractual documents rather than unilateral documents.⁴ Four dependent claims (claims 15, 30, 44, and 58) also explicitly require use of a computer or other machine. Each states, in full: "[t]he method[/system] of claim [1, 17, 32, or 46] wherein access to the mandatory arbitration is established through the Internet, intranet, World Wide Web, software applications, telephone, television, cable, video [or radio], magnetic, electronic communication, or other communication means."

II

Comiskey filed his patent application with the United States Patent and Trademark Office ("PTO") on December 16, 1999. On March 28, 2001, the examiner issued a first office action rejecting claims 1-9, 11-24, 26-38, 40-52, and 54-59 under 35 U.S.C. § 103(a) as unpatentable over Ginter, U.S. Patent No. 6,185,683 ('683 patent), in view of Perry, U.S. Patent No. 5,241,466 ('466 patent), and Walker, U.S. Patent No. 5,794,207 ('207 patent). Ginter discloses an electronic system for securely delivering documents from the sender to the recipient through the electronic equivalent of a "personal document carrier" that can validate transactions as well as actively participate in the transaction by, among other things, providing arbitration. '683 patent "Abstract." Walker discloses an electronic system that allows buyers to submit binding purchase offers and sellers to create contracts by accepting a purchase offer on its terms. It also teaches the inclusion of language in the purchase offers "requiring that both parties submit to binding arbitration of all disputes" and suggests that a "central controller . . . can support the arbitration process by providing an arbiter for each dispute." '207 patent col.30 ll.47-54. Perry discloses an electronic central depository for secure storage and rapid retrieval of unilateral documents such as wills. The examiner also found claims 10, 25, 39, and 53 (which added the additional limitation of displaying an "arbitration schedule") unpatentable over Ginter in view of a document entitled "Arbitration Fee Schedule." The examiner's final office action on May 30, 2001, provided the same basis for rejection.

Comiskey filed an amendment after final rejection on August 29, 2001, "to more distinctly claim and particularly point out" the aspects of his invention that he believed were novel, namely pre-enrolling the person in a mandatory arbitration system, including language in the document requiring submission of disputes to this pre-chosen system, and enabling a person to submit a dispute pertaining to the document to this pre-chosen system for binding arbitration. On December 31, 2001, the examiner mailed a final rejection of the amended claims, which rejected the claims on the same basis. After Comiskey filed a request for continued examination, the finality of the prior office action was withdrawn, and the examiner mailed another non-final rejection on July 9, 2002, based again on the same grounds. In response, Comiskey submitted a "declaration of long felt need" on October 1, 2002, claiming that based on his experience representing clients involved in family disputes concerning unilateral documents, he believed his invention addressed an area of long felt need. On November 6, 2002, the examiner mailed a final rejection based on the same reasons as the prior office actions and rejected Comiskey's assertion of long felt need on the ground that the cited prior art references had recognized and addressed the problem prior to Comiskey.

Comiskey appealed, and on November 30, 2005, the Board affirmed the examiner's rejection. The Board concluded that because all of the independent claims were argued together they stood or fell together, and it chose claim 32 as representative. It concluded that the combination of Ginter and Walker rendered this claim obvious. Despite concluding that all of the independent claims stood or fell together, the Board proceeded to consider claims 1 and 17, directed to unilateral documents, separately. It concluded that the addition of Perry to Ginter and Walker rendered these claims obvious. Finally, the Board considered and affirmed the examiner's rejection of claims 10, 25, 39, and 53 as obvious in light of Ginter, Perry, Walker, and the "Arbitration Fee Schedule."

Comiskey timely appealed to this court. We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A) (2000). After oral argument, we requested supplemental briefing directed at the patentability of the subject matter of Comiskey's application under 35 U.S.C. § 101. In the supplemental briefing, Comiskey argued for the first time that we lacked the power to consider a ground for rejection not relied on below. Alternatively, Comiskey argued that his application was patentable under § 101, and that the subject matter of his application did not fall within an exception to patentability, such as an abstract idea, natural phenomena, or law of nature.

The PTO urged that this court could properly consider the § 101 issue. Indeed, the PTO urged that this court resolve the case on this ground to "give the Office needed guidance in this area." PTO Supp. Br. 15. The PTO argued that Comiskey's independent claims were directed at an unpatentable abstract idea, and not a patentable process, because they neither were tied to a particular machine nor operated to change materials to a different state or thing. Rather the claims impermissibly "encompasse[d] a method of controlling how humans interact with each other to resolve a dispute, based on a human arbitrator's perception of the dispute." PTO Supp. Br. 12.

DISCUSSION

We do not reach the ground relied on by the Board below—that the claims were unpatentable as obvious over Ginter in view of Walker, Perry, and "Arbitration Fee Schedule"—because we conclude that many of the claims are "barred at the threshold by § 101." Diamond v. Diehr, 450 U.S. 175, 188, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981). It is well-established that "[t]he first door which must be opened on the difficult path to...