Appeal No. 2006-1187
Application No. 10/056,832
encompasses transferring ownership to a purchaser. We find that transferring
ownership is an abstract concept and not a tangible concept.
Even when a claim applies an abstraction, as part of a seemingly
patentable process, it must be determined that the claim does not in reality seek
patent protection for the abstraction. Diamond v. Diehr, 450 U.S. 175, 191,
209 USPQ 1, 10 (1981). “Phenomena of nature, though just discovered, mental
processes, 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, 675 (1972). One may not patent a process that
comprises every “substantial practical application” of an abstract idea, because
such a patent “in practical effect would be a patent on the [abstract idea] itself.”
Benson, 409 U.S. at 71-72, 175 USPQ at 676; cf. Diehr, 450 U.S. at 187, 209
USPQ at 8 (stressing that the patent applicants in that case did “not seek to pre-
empt the use of [an] equation,” but instead sought only to “foreclose from others
the use of that equation in conjunction with all of the other steps in their claimed
process”). “To hold otherwise would allow a competent draftsman to evade the
recognized limitations on the type of subject matter eligible for patent protection.”
Diehr, 450 U.S. at 192, 209 USPQ at 10.
In this case claim 1 preempts a § 101 judicial exception. Claim 1 is
directed 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). Musical
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