Appeal No. 2006-1187
Application No. 10/056,832
35 U.S.C. § 101 defines four categories of inventions that Congress deems to be
the appropriate subject matter of a patent: processes, machines, manufactures
and compositions of matter. The latter three categories define “things” or
“products” while the first category defines “actions” (i.e., inventions that consist of
a series of steps or acts to be performed). See 35 U.S.C. § 100(b) (“The term
‘process’ means process, art, or method, and includes a new use of a known
process, machine, manufacture, composition of matter, or material.”)
As seen, claim 1 on appeal is directed to a process because the claim
sets forth a series of steps or acts to be preformed. Thus, one may wonder why
there is any issue regarding whether claim 1 is directed to statutory subject
matter. The issue arises because the Supreme Court has ". . . recognized limits
to § 101 and every discovery is not embraced within the statutory terms.
Excluded from such patent protection are laws of nature, physical phenomena
and abstract ideas." Diamond v. Diehr, 450 U.S. 175, 185, 209 USPQ 1, 7
(1981).
While claim 1 appears to be a method claim, it is nonetheless directed to
an abstraction and thereby falls within one of the Supreme Court’s exclusion from
patent protection. In particular, claim 1 is drawn to a method of providing a
purchaser of a product with a replica portraying the product (i.e. a method of
selling a replica of a product). However, the steps of this method involve nothing
more than exchanging information, making offers and the broadly
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