As I read CLS Bank v. Alice, I wondered if 35 USC 101 is really a question about the claims or about the specification? 35 USC 101 states:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
This section does not say anything about the claims and while the claims define the invention they are not the invention. To suggest otherwise is to confuse reality and elevate the draftsman’s art above the inventor’s work.
Now you might argue that even if this is true, what is important is whether the claims are directed to statutory subject matter, not whether the specification or the inventor’s actual creation is directed to statutory subject matter. I disagree. If the specification describes patent eligible subject matter and the claims do not, then the claims fail under 35 USC 112(b), not under 35 USC 101.
The CAFC and the Supreme Court are being contradictory when they state that the manner or cleverness of drafting the claims cannot overcome a 35 USC 101 issue and then examine those same claims to make a 35 USC 101 determination.
An example will help clarify this matter. Assume you invent the first LASER. Your patent attorney correctly describes how to make and operate the LASER, but his claims state, “I claim a painting of a woman with an enigmatic smile.” Clearly, the claim is not directed to statutory subject matter, but a 35 USC 101 rejection is inappropriate, because the specification describes a LASER, which is statutory subject matter. I believe the correct determination is that under 35 USC 112(b) the inventor failed to draft claims to the invention and his claims do not have support in the specification.
So what do you think? Should a 35 USC 101 determination be made by looking at the claims or the specification of the patent?