Earlier this year, I wrote that the U.S. Supreme Court ruled that Bilski's claims were abstract, and that abstract claims are unpatentable under 35 U.S.C. § 101. According to the Federal Circuit in Research Corp. Tech. v. Microsoft Corp., software-related claims are not abstract.
In yesterday's decision, the Federal Circuit held that some claims present "functional and palpable applications in the field of computer technology" and so are not excluded under 35 U.S.C. § 101. Moreover, according to the decision,
inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.
The decision also quoted the Supreme Court's reiteration of Diamond v. Diehr:
claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.
The court then went on to state that even though claims may be patent-eligible under 35 U.S.C. § 101, they may nevertheless fail under 35 U.S.C. § 112, e.g., if they do “not provide sufficient particularity and clarity to inform skilled artisans of the bounds of the claim.” (Quoting Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.)