Today the Federal Circuit issued a curious revised opinion in In re Comiskey, an appeal of a Board of Patent Appeals and Interferences decision affirming an examiner's rejection of Mr. Comiskey's patent claims.
What's curious, of course, is not the fact of the revision, but what was revised: where the original opinion had stated that certain of Comiskey's claims described "patentable subject matter under §101," the revised opinion deleted that discussion and instead remanded the claims to the PTO for that question to be addressed "in the first instance."
The bulk of the revised opinion is very similar to the original, in that it affirms the rejection of two independent and a number of dependent claims as not claiming patentable subject matter because they attempted "to patent the use of human intelligence" and described "an allegedly novel way of requiring and conducting an arbitration."
The original opinion then went on to consider two additional independent claims and 29 dependent claims, declared that they "claim patentable subject matter under §101," and remanded the case to the PTO for a consideration of whether the remanded claims are obvious.
In the revised opinion, however, the Federal Circuit removed this entire section discussing these additional claims, and replaced it with a paragraph remanding them to the PTO for the question of patentability under §101 to be considered "in the first instance."
So in the span of 13 days, 31 claims went from enjoying the imprimatur of "claim[ing] patentable subject matter under §101" to worrying in the uncertainty of a remand so that same issue could be "addressed in the first instance by the PTO."
What makes this change so very curious is the court's discussion at the beginning of the opinion. Mr. Comiskey had initially argued that the Federal Circuit lacked the power to consider §101 as a ground for rejection because that ground was not relied on by the BPAI. The court explained that the question of whether the claims were invalid for failure to claim statutory subject matter was "a question of law which we review without deference," and so was a ground that the court had the power to raise. (This reasoning is somewhat tortured, and has come under attack.) The court also noted that raising and resolving the §101 issue made sense where it "'would be wasteful to send' the case back to the agency for a determination as to patentable subject matter."
The court did acknowledge that in some cases, it would not be appropriate for the appellate court to raise and resolve the patentability issue sua sponte, for example where there were additional factual determinations needed that had not been made by the BPAI. In its revised opinion, however, it did not direct the PTO to make any such factual determinations, nor did in indicate that the lack of such facts prevented the Federal Circuit from making its own determination of whether the additional claims satisfied §101 in the same manner as it had no problem doing with the first set of claims.
As a final curiousity, this was a Bilksi-free opinion, perhaps because this is the second/third go-round for this opinion, which vacated the court's 2007 pre-Bilski opinion.