In re Stephen W. Comiskey,
Fed. Cir. 2009 (Revised Opinion, Jan. 26, 2009).

By: Karin C. Khan

Stephen Comiskey’s (“Comiskey”) patent application for a method and system for mandatory arbitration involving legal documents was rejected by the examiner during prosecution in light of certain prior art references and under 35 U.S.C. § 103. When Comiskey appealed the examiner’s decision to the Board of Patent Appeals and Interferences, it also affirmed the examiner’s rejections.

Comiskey’s application contained 4 independent claims, namely Claims 1 and 32 and Claims 17 and 46. Claims 1 and 32 covered a method for mandatory arbitration resolution involving unilateral and contractual documents. Notably, Claims 1 and 32 did not require the use of a computer or other machine. Claims 17 and 46 related to the system for mandatory arbitration resolution involving unilateral and contractual documents via a registration module, in which their dependent claims specifically required the use of a computer or other machine.

On appeal to the Court of Appeals, Comiskey had initially argued during his briefing that the Court could affirm the claims based on § 101, which he later tried to retract during his supplemental briefing. In fact, Comiskey had argued that § 101 would be a new statutory ground not raised in the proceedings at the U.S. Patent & Trademark Office (“PTO”). However, the Court noted that considering Comiskey’s claims under § 101 were not solely under the purview of the PTO, such as an issue of fact, policy or agency expertise. Furthermore, the Court noted the PTO’s argument that implicit in the prosecution before the PTO was that the examiner had considered and decided that Comiskey’s application met the § 101 requirement.

The Court explained in detail the limitations on patentable material involving business methods and mental processes. Based on this, the Court concluded that claims 1 and 32 merely claimed a mental process of resolving a legal dispute between two parties by a human arbitrator, which it affirmed comprised unpatentable subject matter. As to claims 17 and 46, the Court held that since these claims recited such items as modules, a database and the use of the Internet, that the claims could be interpreted to require the use of a machine. Accordingly, the Court remanded to the PTO the issue of whether Claims 17 and 46, as well as their dependent claims, satisfy § 101.