Adopting the machine-or-transformation test as the sole test for what constitutes a “process” (as opposed to just an important and useful clue) violates these statutory interpretation principles. Section 100(b) provides that “[t]he term ‘process’ means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.” The Court is unaware of any “‘ordinary, contemporary, common meaning,’” Diehr, supra, at 182, of the definitional terms “process, art or method” that would require these terms to be tied to a machine or to transform an article. (pp.6-7)

The Court further held:

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.” (p.8)

The Court left the door open for the Federal Circuit Court of Appeals to create a limitation consistent with §101:

Indeed, if the Court of Appeals were to succeed in defining a narrower category or class of patent applications that claim to instruct how business should be conducted, and then rule that the category is unpatentable because, for instance, it represents an attempt to patent abstract ideas, this conclusion might well be in accord with controlling precedent. See ibid. But beyond this or some other limitation consistent with the statutory text, the Patent Act leaves open the possibility that there are at least some processes that can be fairly described as business methods that are within patentable subject matter under §101. (p.12)

It is clear from a reading of the opinion that all of the members of the court agreed on two points: (1) Bilski’s patent application was unpatentable because it claimed an abstract idea; and (2) the Federal Circuit Court of Appeals exclusive reliance on the machine-or-transformation test in determining patent eligibility was incorrect.

The Court recognized that unlike the opinion delivered by the Federal Circuit Court of Appeals, judicial restraint was the best path to avoid a broad impact of unforeseen consequences:

Rather than adopting categorical rules that might have wide-ranging and unforeseen impacts, the Court resolves this case narrowly on the basis of this Court’s decisions in Benson, Flook, and Diehr, which show that petitioners’ claims are not patentable processes because they are attempts to patent abstract ideas. Indeed, all members of the Court agree that the patent application at issue here falls outside of §101 because it claims an abstract idea. (p.13)

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. (p.16)

Based on my reading of the oral arguments from last November, the opinion delivered by the Court today is not a surprise.  It is, however, a welcome correction of the Federal Circuit Court of Appeals error in this case.

The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.

The court uses this language to support a written description requirement wherein the patent specification itself must demonstrate possession of the invention.  The court explains that, “while the description requirement does not demand any particular form of disclosure, or that the specification recite the claimed invention in haec verba, a description that merely renders the invention obvious does not satisfy the requirement.”  The court also holds that the enablement requirement separately requires the patent specification enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention.

From a practical perspective the court recognizes “perhaps there is little difference in some fields between describing an invention and enabling one to make and use it, but that is not always true of certain inventions, including chemical and chemical-like inventions.”

As a result of this holding, it is as important as ever to ensure that your patent application includes an enabling disclosure that clearly demonstrates possession of the invention.  These requirements apply to all utility patents regardless of whether they start as provisional or non-provisional utility patent applications.