United States Court of Appeals for the Federal Circuit
2006-1371
(Serial No. 09/211,928)
IN RE PETRUS A.C.M. NUIJTEN
Jack E. Haken, Philips Intellectual Property & Standards, of Briarcliff Manor, New
York, filed a petition for rehearing en banc for the appellant. Of counsel was Larry
Liberchuk.
Stephen Walsh, Acting Solicitor, United States Patent and Trademark Office, of
Arlington, Virginia, filed a response to the petition for the Director of the United States
Patent and Trademark Office. With him on the response were Thomas W. Krause and
Raymond T. Chen, Associate Solicitors.
Appealed from: United States Patent and Trademark Office
Board of Patent Appeals and Interferences
United States Court of Appeals for the Federal Circuit
2006-1371
(Serial No. 09/211,928)
IN RE PETRUS A.C.M. NUIJTEN
Appeal from the United States Patent and Trademark Office, Board of Patent Appeals
and Interferences.
ON PETITION FOR REHEARING EN BANC
Before MICHEL, Chief Judge, NEWMAN, MAYER, LOURIE, RADER, SCHALL,
BRYSON, GAJARSA, LINN, DYK, PROST, and MOORE, Circuit Judges.
PER CURIAM.
LINN, Circuit Judge, with whom NEWMAN and RADER, Circuit Judges, join, dissents
from the denial of the petition for rehearing en banc.
ORDER
A petition for rehearing en banc was filed by the Appellant, and a response
thereto was invited by the court and filed by the Director of the United States Patent and
Trademark Office. The petition for rehearing was referred to the panel that heard the
appeal, and thereafter the petition for rehearing en banc and response were referred to
the circuit judges who are authorized to request a poll whether to rehear the appeal en
banc. A poll was requested, taken, and failed.
Upon consideration thereof,
IT IS ORDERED THAT:
(1) The petition for panel rehearing is denied.
(2) The petition for rehearing en banc is denied.
(3) The mandate of the court will issue on February 19, 2008.
FOR THE COURT
February 11, 2008 /s/ Jan Horbaly
Date Jan Horbaly
Clerk
cc: Jack E. Haken, Esq.
Stephen Walsh, Esq.
2006-1371 2
United States Court of Appeals for the Federal Circuit
2006-1371
(Serial No. 09/211,928)
IN RE PETRUS A.C.M. NUIJTEN
Appeal from the United States Patent and Trademark Office, Board of Patent Appeals
and Interferences.
LINN, Circuit Judge, with whom NEWMAN and RADER, Circuit Judges, join, dissenting
from the denial of the petition for rehearing en banc.
I respectfully dissent from the court’s decision not to rehear this case en banc.
As I explained in my dissent from the panel opinion in this case, our decision conflicts
with our own precedents as well as those of the Supreme Court. See In re Nuijten,
500 F.3d 1346, 1358 (Fed. Cir. 2007) (Linn, J., concurring-in-part and dissenting-in-
part). It conflicts with our own precedent because our predecessor court’s decision in In
re Breslow, 616 F.2d 516 (C.C.P.A. 1980), forecloses the majority’s conclusion, see
Nuijten, 500 F.3d at 1356, that something “transient” or “fleeting” cannot constitute a
“manufacture” under 35 U.S.C. § 101. And it conflicts with Supreme Court precedent
because it ignores the Supreme Court’s analysis of how, in general terms, § 101 is to be
construed. As the Court discussed in Diamond v. Chakrabarty, patentable subject
matter includes “anything under the sun that is made by man” except for certain
enumerated exceptions: “The laws of nature, physical phenomena, and abstract ideas
have been held not patentable.” 447 U.S. 303, 309 (1980). The majority’s narrow
construction of “manufacture” ignores this framework.
In addition, this case raises important questions about the relationship between
§ 101 and § 103. In this case, we affirm the PTO’s rejection of claims to a signal
simpliciter, but the PTO has allowed a claim to a storage medium containing the very
same signal, on the grounds that the storage medium is a manufacture that can be
rejected, if at all, only under some provision other than § 101. In particular, the PTO
considers the patentability of such claims under the “printed matter” doctrine of § 103.
See In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994). These distinctions make no practical
sense and are poorly supported by precedent, which, to the contrary, requires a more
holistic approach to the question of whether a claim is directed only to an unpatentable
abstraction or whether it is directed to a patentable application of such an abstraction to
an otherwise statutory invention. Cf. Parker v. Flook, 437 U.S. 584, 591 (1978) (“The
process itself, not merely the mathematical algorithm, must be new and useful.”); cf.
also In re Abele, 684 F.2d 902, 909 (C.C.P.A. 1982) (“As was the case in [Diamond
v. ]Diehr[, 450 U.S. 174 (1981),] . . . the algorithm is but a part of the overall claimed
process.”). The distinctions that are drawn between signals and storage media
containing those signals would appear to apply equally to the distinctions between
software and hardware and are artificial at best.
For these reasons, I would rehear this case en banc.
2006-1371 2