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“Fabricated Energy Structure” Not Patentable Subject Matter

May 11, 2001

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Last Month at the Federal Circuit - June 2001

Judges: Lourie (author), Bryson, and Linn

In In re Bonczyk, No. 01-1061 (Fed. Cir. May 11, 2001) (nonprecedential decision), the Federal Circuit affirmed the Board’s rejection of claims relating to a “fabricated energy structure” of U.S. Patent Application No. 08/578,325 (“the ‘325 application”) for failure to meet the requirements of patentable subject matter under 35 U.S.C. § 101.

Frank R. Bonczyk’s ‘325 application includes claims to “[a] fabricated energy structure for a uniform energy of the type having a single nature separated to oppose itself by a precise alternate time duration of existence . . . .”

The PTO rejected the claims in the ‘325 application under section 101, finding that the claimed subject matter did not correspond to any of the defined four statutory classes of subject matter: a process, a machine, an article of manufacture, or a composition of matter. In response, Mr. Bonczyk amended some claims to replace the word “model” with the word “structure” and argued that the subject matter in the claims related to a composition of matter. The PTO, however, did not agree and issued a final rejection. Mr. Bonczyk appealed to the Board, but the Board affirmed the PTO’s rejection, concluding that the invention’s subject matter did not fall into any statutory class.

The Federal Circuit rejected Mr. Bonczyk’s argument that his invention was a composition of matter and concluded that Mr. Bonczyk had not shown that his invention was tangible, corporeal, or material, or a composition of two or more such substances. The Court also disagreed with Mr. Bonczyk’s argument that his invention was an article of manufacture, noting that Mr. Bonczyk had not explained how his invention was manufactured or from what materials it was manufactured. Mr. Bonczyk also argued that the claim was directed to a combination of interrelated elements reciting a specific “machine,” but the Court concluded that Mr. Bonczyk’s vague assertions of functionality and references to various structures did not convert the invention into a machine.

The Federal Circuit also rejected Mr. Bonczyk’s argument that the Board had erred in determining that the claimed invention was both a theoretical energy model and a new way of describing something that already existed in nature. The Court concluded that even if Mr. Bonczyk is correct, inconsistent statements made by the PTO during prosecution, without more, do not entitle an applicant to a patent. Moreover, any inconsistencies in the PTO’s position were caused by the conceptionally difficult and intangible nature of the claimed subject matter and Mr. Bonczyk’s failure to use conventional terms to define his invention.

Finally, in response to Mr. Bonczyk’s request that the Court determine the proper statutory class for his invention, the Court held that Mr. Bonczyk was attempting to claim an energy state rather than a composition of matter, an article of manufacture, or a machine, and, thus, his invention did not fall under any of these statutory classes.