In re Comiskey (Fed Cir 9/20/07)  Decision
The PTO affirmed the examiner's rejection of claims 1-59 of Comiskey's application as obvious.  The Federal Circuit affirmed in part, vacated in part, and remanded.

The '742 application claims a method and system for mandatory arbitration involving legal documents, such as wills or contracts.  According to the application, the claimed program requires resolution by binding arbitration of any challenge or complaint concerning the unilateral document or contract.  The Board found the claims obvious in view of Ginter, Walker, and Perry.

Contrary to Comiskey's assertion, the Federal Circuit was permitted to supply a new legal ground for affirmance.  Regarding the merits of the question of patentability, Comiskey's application could be viewed as falling within the general category of business method patents.  The present statute did not allow patents to be issued on particular business systems (such as a particular type of arbitration) that depended entirely on the use of mental processes.  In other words, the patent statute did not allow patents on particular systems that depended for their operation on human intelligence alone.  Comiskey conceded that claims 1 and 32 did not require a machine and did not describe a process of manufacture or a process for the alteration of a composition of matter.  Instead, these claims described the mental process of resolving a legal dispute between two parties via the decision of a human arbitrator.  Thus, claims 1 and 32 sought to patent the use of human intelligence in and of itself.  However, independent claims 17 and 46, under the broadest reasonable interpretation, could require the use of a computer as part of the system.  These claims, in combining the use of machines with a mental process, recited statutory subject matter.  Remand was necessary to determine whether the addition of a computer or communication device to the otherwise unpatentable mental process would have been obvious.