Chapter 8: Patent Protection of Software:
Statutory Subject Matter in the
Supreme Court and the Federal Circuit

D. Statutory Subject Matter in Computerized
Methods of Doing Business

Giles S. Rich, Principles of Patentability
28 Geo. WASH. L. REV. 393-94 (1960)

Section 101, entitled "Inventions patentable," enumerates the categories of inventions subject to patenting. Of course, not every kind of an invention can be patented. Invaluable though it may be to individuals, the public, and national defense, the invention of a more effective organization of the materials in, and the techniques of teaching a course in physics, chemistry, or Russian is not a patentable invention because it is outside of the enumerated categories of "process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." Also outside that group is one of the greatest inventions of our times, the diaper service.

Joseph E. Seagram & Sons, Inc. v. Marzall
United States Court of Appeals for the District of Columbia Circuit
180 F.2d 26 (D.C. Cir. 1950)

Judges: Before CLARK, PRETTYMAN and WASHINGTON, Circuit Judges.

WASHINGTON, Circuit Judge

This case involves a claim for a patent which would cover a method of testing beverages and like products, in order to make advance determination of consumer reactions and preferences.

Joseph E. Seagram & Sons, Inc., the plaintiff below and the appellant here, filed this action in the District Court, alleging that it was entitled to receive a patent which the Commissioner of Patents had refused to grant. The District Court dismissed the complaint, holding the claims of invention unpatentable on the grounds that they constituted nonstatutory subject matter; that they were indefinite; and that the claims lacked the invention necessary to patentability, as the prior art disclosed methods substantially similar to those proposed by the claimant. Seagram brings this appeal.

Several claims of invention were filed. Claim 10 is representative, and is as follows: