Discussing a particularly convincing dissent, commentators frequently are compelled to close with: “But it was a dissent.” The most influential dissent in recent months may well be Judge Rader’s dissent in In re Bilski, 545 F.3d 943, 1011 (Fed. Cir. 2008). It was cited twice in the opinion of the court in the recent Supreme Court decision which held that the “machine or transformation” test was overly limiting on processes and that the Bilski claims were directed to an abstract idea (unpatentable under s. 101).
This is exactly how Rader would have disposed of Bilski when the appeal was before the Federal Circuit. He opens his dissent:
“This court labors for page after page, paragraph after paragraph, explanation after explanation to say what could have been said in a single sentence: ‘Because Bilski claims merely an abstract idea, this court affirms the Board’s rejection.’”
The Supreme Court’s Bilski decision has been criticized for providing little in the way of guidance as to exactly when an invention falls into the “abstract idea” category. Judge Rader spends more time on this problem than did the Supreme Court:
“[A]bstract ideas can never qualify for patent protection because the Act intends, as section 101 explains, to provide ‘useful’ technology. An abstract idea must be applied to (transformed into) a practical use before it qualifies for protection. …When considering the eligibility of ‘processes,’ this court should focus on the potential for an abstract claim. Such an abstract claim would appear in a form that is not even susceptible to examination against prior art under the traditional tests for patentability. Thus this court would wish to ensure that the claim supplied some concrete tangible technology for examination. Indeed the hedging claim at stake in this appeal is a classic example of abstractness. Bilski’s method for hedging risk in commodities trading is either a vague economic concept or obvious on its face. …In any event, this facially abstract claim does not warrant the creation of new eligibility exclusions.”
The Supreme Court could not have agreed more. The problem is that Bilski’s claim does not seem all that abstract. It is certainly not in the same league as abstract ideas like The Golden Rule or “The love you take is equal to the love you make.” These abstract ideas are philosophical propositions that no one would expect an Examiner to be able to examine, even though their value to society can be debated ad infinitum. But some claims to new methods of directing or organizing human behavior to achieve (e.g., a business or a healthcare outcome) can certainly be searched against a body of prior art, although it may be difficult to do so. The Supreme Court did not rule out patents on this type of invention. It will remain for future decisions to put legal flesh on the bones of “some concrete tangible technology.” We now know that it has to be more real than a “useful, tangible and concrete result.” Just how much more real remains to be seen.