Appeal No. 2004-0403
Application 09/100,684
object or article. See Schrader, 22 F.3d at 295 & 295 n.12,
30 UPSQ2d at 1459-60 & 1459 n.12 (noting imperfect statements
requiring object or article in 1 William C. Robinson, The Law of
Patents for Useful Inventions § 159 (1890) and Gottschalk v.
Benson, 409 U.S. 63, 175 USPQ 673 (1972)). However, the "subject
matter" transformed does not need to be a physical (tangible)
object or article or substance, but can be physical, yet
intangible, phenomena such as electrical signals or
electromagnetic waves. See Schrader, 22 F.3d at 295 n.12,
30 UPSQ2d at 1459 n.12 ("it is apparent that changes to
intangible subject matter representative of or constituting
physical activity or objects are included in this definition");
In re Ernst, 71 F.2d 169, 170, 22 USPQ 28, 29-30 (CCPA 1934);
In re Prater, 415 F.2d 1378, 1387-88, 159 USPQ 583, 592 (CCPA
1968) (in the Telephone Cases, 126 U.S. 1 (1887), Bell's fifth
claim to a process of transmitting sounds telegraphically by
changing the intensity of a continuous electrical current, i.e.,
a process acting on energy rather than physical matter, was held
valid and infringed). This misunderstanding may be the reason
that the definition has not been accepted as the only test for
statutory subject matter.
It is possible that exceptions exist to the requirements
that a "process" must be tied to a particular machine or
apparatus or must operate to change subject matter to "a
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