Appeal Number: 2007-0133
Application Number: 10/223,466
Our reviewing court further interpreted this as follows:
The Supreme Court has interpreted this statutory range of patentable
subject matter to be quite broad, but hardly universal. “In choosing
such expansive terms as ‘manufacture’ and ‘composition of matter,’
modified by the comprehensive ‘any,’ Congress plainly contemplated
that the patent laws would be given wide scope.” Diamond v.
Chakrabarty, 447 U.S. 303, 308 [206 USPQ 193] (1980). That wide
scope nevertheless excludes laws of nature, natural phenomena, and
abstract ideas. “Such discoveries are ‘manifestations of … nature, free
to all men and reserved exclusively to none.’” Id. at 309, (quoting
Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 [76
USPQ 280] (1948)). See also Diamond v. Diehr, 450 U.S. 175, 185
[209 USPQ 1] (1981); Parker v. Flook, 437 U.S. 584, 589 [198 USPQ
193] (1978).
“Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic
tools of scientific and technological work.” Gottschalk v. Benson, 409
U.S. 63, 67 [175 USPQ 673] (1972).
SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1359-60, 74
USPQ2d 1398, 1417-18 (Fed. Cir. 2005) (concurring opinion, Judge Gajarsa).The
scope of patentable subject matter under section 101 is broad, but not infinitely
broad. “Congress included in patentable subject matter only those things that
qualify as ‘any … process, machine, manufacture, or composition of matter, or any
… improvement thereof….’” In re Warmerdam, 33 F.3d 1354, 1358 (Fed. Cir.
1994) (quoting 35 U.S.C. § 101) (emphasis added). Thus, “[d]espite the oft-
quoted statement in the legislative history of the 1952 Patent Act that Congress
intended that statutory subject matter ‘include anything under the sun that is made
by man,’[citation omitted], Congress did not so mandate.” Id.
In the case where a claim is for a process, as opposed to a product, “[t]he line
between a patentable ‘process’ and an unpatentable ‘principle’ is not always clear.
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013