In re Bonczyk

10 F. App'x 908
CourtCourt of Appeals for the Federal Circuit
DecidedMay 11, 2001
DocketNo. 01-1061
StatusPublished

This text of 10 F. App'x 908 (In re Bonczyk) is published on Counsel Stack Legal Research, covering Court of Appeals for the Federal Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
In re Bonczyk, 10 F. App'x 908 (Fed. Cir. 2001).

Opinion

DECISION

LOURIE, Circuit Judge.

Frank R. Bonczyk appeals from the decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences rejecting the claims of U.S. Patent Application Serial No. 08/578,-325 for failure to meet the requirements of patentable subject matter under 35 U.S.C. § 101. Ex parte Bonczyk, Appeal No.1988-2474, slip op. at 7 (Bd. of Pat. App. & Inter. July 31, 2000) (Paper No. 15) (“Bonczyk”). Because the Board’s decision is correct as a matter of law, we affirm.

DISCUSSION

Mr. Bonczyk is the named inventor of the ’325 application, which relates to a “fabricated energy structure.” The appealed claims stand or fall with claim 1 because Bonczyk has not argued them separately. See In re Schrader, 22 F.3d 290, 292 n. 3, 30 USPQ2d 1455, 1456 n. 3 (Fed.Cir.1994); 37 C.F.R. § 1.192(c)(7) (2000). Claim 1 reads as follows:

1. 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 that creates the dual nature for supporting and extending the Fabricated energy comprising a unitary structure of a single Base Particle (Bp) set to a time opposed opposite (Bp’) of itself that together provides the functions of energy molded from decayed energy from ‘The Unified PO Realm’ and including a lattice strand portion in the form of a consequential open strip adapted to curve in attempt to bind at the ends in a trivial or nontrivial bundle to form the ring strand, producing a trivial or nontrivial structure, that will act as an energy root stock, said strand portion including a symbiotic mass assembly portion (rib) at one end thereof as residual, and an integral orthogonal stem portion extending from said strand portion to support and structure one (+) and the other (-) energy nature in the elevated position to monitor, interpret, adapt, maintain other neighboring energy structures and to duplicate of itself.

The United States Patent and Trademark Office (“PTO”) rejected the claims under 35 U.S.C. § 101, stating that a theoretical energy model did not correspond to any of the statutory classes of subject matter defined in § 101, viz., processes, machines, manufactures, or compositions of matter. Bonczyk, proceeding pro se, amended some claims to replace the word “model” with the word “structure” and replied that the “structured Fabrication of Energy” was a composition of matter and therefore directed to statutory subject matter. The PTO issued a final rejection, holding that Bonczyk had failed to disclose any new composition of matter in his description of the energy model. The Board affirmed the rejection under 35 U.S.C. [910]*910§ 101 because it agreed that the invention’s subject matter did not fall into any statutory category, stating “that the invention appears to be a conceptual model completely divorced from any physical structure or practical application.” Bonczyk at 7. Bonczyk appeals that judgment; we have jurisdiction pursuant to 28 U.S.C.A. § 1295(a)(4)(A) (West Supp.2000).

On appeal, Bonczyk argues that the Board erred in determining that his invention is not a composition of matter. Alternatively, he argues that his invention is a “manufacture” under the Supreme Court’s interpretation of § 101 in Diamond v. Chakrabarty, 447 U.S. 303, 100 S.Ct. 2204, 65 L.Ed.2d 144, 206 USPQ 193 (1980). Bonczyk also argues that his claim is directed to a combination of interrelated elements reciting a specific “machine.” Bonczyk also requests this court to determine the proper statutory category for this invention. Finally, he argues that the Board erred in determining that the claimed invention was both a theoretical energy model and a new way of describing something that already exists in nature.

We review the Board’s legal conclusion whether a claim is directed to statutory subject matter de novo. Arrhythmia Research Tech. v. Corazonix Corp., 958 F.2d 1053, 1055, 22 USPQ2d 1033, 1035 (Fed.Cir.1992). We conclude that the Board did not err in rejecting the claims for failing to recite subject matter within any of the four statutory classes defined by § 101, which authorizes the grant of a patent to “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof....” 35 U.S.C. § 101 (1994). Pursuant to its authorization under art. I, § 8, cl. 8, of the United States Constitution to promote the progress of science and useful arts, Congress has specified the types of subject matter that may be patented in § 101. Patentable subject matter must fall within one of these statutory categories.

The Board candidly concluded that, “though we have tried mightily, from appellant’s arguments and from the instant disclosure, to comprehend what appellant regards as his invention, we simply do not understand the nature of the invention.” Bonczyk’s arguments on appeal do not clarify the Board’s lack of understanding; rather, they demonstrate Bonczyk’s own confusion as to the nature of his invention. He argues variously that his invention is a composition of matter, an article of manufacture, and a machine. His conclusory assertions are not supported by the specification or the cited cases.

Bonczyk’s amendment of the originally filed claims to replace the term “model” with “structure” does not convert his invention into a composition of matter, absent a showing that the invention is tangible, corporeal, or material, or a composition of two or more such substances. See Diamond v. Chakrabarty, 447 U.S. at 308, 100 S.Ct. 2204, 65 L.Ed.2d 144, 206 USPQ at 196-197 (defining “composition of matter”). Nor are we persuaded that the invention is an article of manufacture. Bonczyk cites Chakrabarty for the definition of an article of “manufacture” as made “from raw materials prepared by giving to these materials new forms, qualities, properties, or combinations whether by hand labor or by machinery,” id., but he does not explain how his invention is manufactured or from what materials it is manufactured.

Bonczyk next asserts that his invention is a machine, stating that it is directed to the function of a combination of interrelated elements and corresponds to a structure disclosed in the specification. We do not agree that the appealed claims [911]*911define a machine-like structure or that they should be classified as a machine. Bonczyk’s vague assertions of functionality correlating to the function of seeds and references to various structures do not convert the disembodied concepts in the description of his invention to a machine, which is a concrete thing, consisting of parts or of certain devices and combinations of devices. See Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570, 17 L.Ed. 650 (1863) (defining “machine”).

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Related

O'Reilly v. Morse
56 U.S. 62 (Supreme Court, 1854)
Burr v. Duryee
68 U.S. 531 (Supreme Court, 1864)
Diamond v. Chakrabarty
447 U.S. 303 (Supreme Court, 1980)
Diamond v. Diehr
450 U.S. 175 (Supreme Court, 1981)
In Re Rex D. Schrader and Eugene D. Klingaman
22 F.3d 290 (Federal Circuit, 1994)
In Re Thomas P.H. Warmerdam and Bernard J.H. Verwer
33 F.3d 1354 (Federal Circuit, 1994)
In Re Perrigo
48 F.2d 965 (Customs and Patent Appeals, 1931)

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