Appeal No. 2006-1187
Application No. 10/056,832
claimed, disembodied step of transferring the replica to the purchaser. We
consider these to be abstract concepts. Claims directed to nothing more than
abstract ideas, natural phenomena, and laws of nature are not eligible and
therefore are excluded from patent protection. Diehr, 450 U.S. at 185, 209
USPQ at 7; accord, e.g., Diamond v. Chakrabarty, 447 U.S. 303, 309, 206
USPQ 193, 197 (1980); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197
(1978); Gottschalk v. Benson, 409 U.S. 63, 67-68 , 175 USPQ 673, 675 (1972);
Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 76 USPQ 280,
281 (1948).
The conclusion that a particular claim includes a § 101 judicial exception
does not end the inquiry because “[i]t is now commonplace that an application of
a law of nature or mathematical formula to a known structure or process may well
be deserving of patent protection.” Diehr, 450 U.S. at 187, 209 USPQ at 8
(emphasis in original); Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, 197
(1978); Benson, 409 U.S. at 67, 175 USPQ at 675. Thus, “[w]hile a scientific
truth, or the mathematical expression of it, is not a patentable invention, a novel
and useful structure created with the aid of knowledge of scientific truth may be.”
Diehr, 450 U.S. at 188, 209 USPQ at 8-9 (quoting Mackay, 306 U.S. at 94); see
also Corning v. Burden, 56 U.S. (15 How.) 252, 268, 14 L.Ed. 683 (1853)(“It is for
the discovery or invention of some practical method or means of producing a
beneficial result or effect, that a patent is granted . . .”).
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