Appeal 2007-1246
Application 10/014,180
recommendation values and the resulting products are added to a list of
recommendations. Thus, the control values are not aggregated or added or
combined to form a collection; rather, the products of the control values and
the recommendation values form a list or collection. Therefore, Bieganski
fails to disclose each and every limitation of claims 1 through 23, and we
cannot sustain the anticipation rejection of the claims.
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new ground of rejection against Appellants' claims 1 through 23 under
35 U.S.C. § 101 as being nonstatutory.
The Supreme Court has held that claims that, as a whole, are directed
to nothing more than abstract ideas, natural phenomena, or laws of nature
are not statutory under 35 U.S.C. § 101. See Diamond v. Diehr, 450 U.S.
175, 185, 209 USPQ 1, 7 (1981). An application of a law of nature or
mathematical formula to a known structure or process, though, may be
patentable. Id. at 187, 209 USPQ at 8. However, a process that comprises
"no substantial practical application" of an abstract idea is not patentable, as
such a patent would in effect be a patent on the abstract idea itself.
Gottschalk v. Benson, 409 U.S. 63, 71-72, 175 USPQ 673, 676 (1972).
Clearly, the present claims recite neither a natural phenomenon nor a
law of nature, so the issue is whether they are directed to an abstract idea.
We note that mathematical algorithms are considered to be abstract ideas.
Thus, processes that are merely mathematical algorithms are nonstatutory
under 35 U.S.C. § 101. We further note that it is generally difficult to
ascertain whether a process is merely an abstract idea, particularly since
claims are often drafted to include minor physical limitations such as data
gathering steps or post-solution activity. However, if the claims are
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