Appeal No. 2006-1607
Application 10/062,894
The signal of claims 1-10 does not have any tangible physical structure or substance and
does not fit the definition of a "manufacture" which requires a tangible object.
Our conclusion that a "signal" does not fit within any of the four categories of § 101 is
consistent with In re Bonczyk, 10 Fed. Appx. 908 (Fed. Cir. 2001) (unpublished) ("fabricated
energy structure" does not correspond to any statutory category of subject matter and it is
unnecessary to reach the alternate ground of affirmance that the subject matter lacks practical
utility) and with the Interim Guidelines for Examination of Patent Applications for Patent
Subject Matter Eligibility, 1300 Off. Gaz. Patent and Trademark Off. (O.G.) 142, 152
(Nov. 22, 2005), in the section entitled "Electro-Magnetic Signals." Although the Manual of
Patent Examining Procedure § 2106(IV)(B)(1)(c) implies that "signals" may be statutory subject
matter, the MPEP is not binding on the Board. It is noted that the "useful, concrete and tangible
result" test of State St. Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368,
47 USPQ2d 1596 (Fed. Cir. 1998), does not apply because that test was enunciated in the
context of "transformation of data by a machine." We defer to our reviewing court, the U.S.
Court of Appeals for the Federal Circuit to make the decision on whether non-tangible and/or
non-physical things constitute patentable subject matter under 35 U.S.C. § 101. The Federal
Circuit cannot address rejections that it does not see. See Enzo Biochem, Inc. v. Gen-Probe Inc.,
323 F.3d 956, 972, 63 USPQ2d 1609, 1619 (Fed. Cir. 2002) (Lourie, J., concurring in decision
not to hear the case en banc) ("As for the lack of earlier cases on this issue, it regularly happens
in adjudication that issues do not arise until counsel raise them, and, when that occurs, courts are
then required to decide them.").
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