Here, the Supreme Court examined whether a method for updating an alarm limit (used to signal abnormal conditions) in a catalytic conversion process was patentable. The only difference between the prior art and the invention was the algorithm that calculated the new alarm limit. The Court held that this was not patentable even though an additional step was included in the claim beyond merely the calculation step. The Court explicitly rejected the notion that "post-solution activity [alone]... can transform an unpatentable principle into a patentable process." Specifically, the court held that the invention could not be patented "not because it contains a mathematical algorithm as one component, but because once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention." Diamond v. Diehr (S. Ct. 1981) In this 1981 case, the U.S. Supreme Court ordered the P.T.O. to grant a patent on an invention even though computer software was utilized. The invention in this case relates to a method for determining how rubber should be heated in order to be best "cured." The invention utilizes a computer to calculate and control the heating times for the rubber. However, the invention (as defined by the claims) included not only the computer program, but also included steps relating to heating rubber, and removing the rubber from the heat. The Supreme Court stated that in this case, the invention was not merely a mathematical algorithm, but was a process for molding rubber, and hence was patentable. This was true even though the only "novel" feature of this invention was the timing process controlled by the computer. State Street Bank & Trust Co. v. Signature Financial Group, Inc. (Fed. Cir. 199 In this case, the Federal Circuit determined that software programs that transform data are patentable subject matter under Section 101 of the Patent Act even when there is no physical transformation of an article. The court emphasized that software or other processes that yield a useful, concrete and tangible result should be considered patentable. The court also "laid to rest" the business method exception. This means that while prior courts considered business methods inventions to be unpatentable, the State Street court found that these inventions are as patentable as any other inventions. In re Comiskey (Fed. Cir. 2007) The Federal Circuit held that some of claims relating to mandatory arbitration in certain legal contracts were unpatentable subject matter under Section 101 of the Patent Act. The claims that were directed toward unpatentable subject matter related entirely to mental processes (i.e., they covered only the use of human intelligence). Other claims described the same process but further included some type of physical device (such as a "module" or a computer were considered to be statutory subject matter because the claims referred to a machine, manufacturer, or a composition of matter. One of the most interesting parts of this case is the statement that "[t]he routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness."If considered good law, this staement would impact the ability to patent any software in the United States. In re Bilski (Fed. Cir. 200 This case analyzed the patentability of processes where the process steps are not not necessarily performed on a computer. The majority decision has set forth a single test for determining the patentability of processes. This test holds that a process is patentable if "(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." This test could have major implications for the patentability of computer implemented business methods specifically, and computer software in general. Unfortunately, the majority opinion decided not to determine whether a software process operating on a general purpose computer is considered to be tied to a "particular machine or apparatus." In other words, the decision as to whether a general purpose computer is a "particular machine" is to be left for another day. If a general purpose computer is not a particular machine, then many software implemented process patent claims could be invalid. A further question to be determined is what effect this would have on "apparatus" claims for computer implemented software. Ex parte Bo Li (BPAI 200 In this post-Bilski decision, the Board of Patent Appeals and Interferences holds that Beauregard claims are still considered patentable subject matter. Beauregard claims are apparatus claims in which a tangible computer storage media is claimed containing software programming steps. While not binding on the Federal Circuit, this decision reassures patent attorneys that Bilski need not be interpreted to alter apparatus-related software claims Ex parte Halligan (BPAI 200 This Board of Patent Appeals and Interferences has no precedential value to the Federal Circuit and therefore should not be considered to be a definitive statement on the law. However, this decision is interesting because it is the first instance in which judges have been asked to decide what the Federal Circuit chose not to in In re Bilski: namely whether the recitation of a general purpose computer in a method step allows the method claim to become statutory subject matter. In this decision, the Board decided that it did not. The claims at issue recited "a programmed computer method" in which each of the process steps was performed by the programmed computer. The Board felt that, if the addition of a programmed computer to steps that were otherwise unpatentable under Bilski were to change the claim from unpatentable under Section 101 to patentable, this would "exalt form over substance." This is just a "field-of-use limitation" which is "insufficient to render an otherwise ineligible process claim patent eligible. " Ex parte Cornea-Hasegan (BPAI 2009) In this case, the Board of Patent Appeals and Interferences effectively ignored its holding in Bo Li, and instead applies Bilski to determine that apparatus claims are not patentable subject matter if they do not meet the particular machine or transformation test. The BPAI held that an apparatus claim to a "computer readable media" must still be analyzed by the Bilski machine or transformation test. To support this holding, the BPAI cited the State Street Bank decision, which stated that "we consider the scope of § 101 to be the same regardless of the form--machine or process--in which a particular claim is drafted." The court also held that the mere recitation of a processor in a method claim does not tie the process to a "particular machine" effectively following the decision of Ex parte Halligan. 
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