Appeal No. 2006-2240
Application No. 10/232,015
We conclude that the signal of claim 36 is nonstatutory subject matter because (1) it is an
abstract idea, and (2) it does not fall within one of the four statutory categories of subject matter
under 35 U.S.C. § 101.
(1) Abstract idea.
One of the three judicially recognized exceptions is an "abstract idea." Diamond v.
Diehr, 450 U.S. 175, 185, 209 USPQ 1, 7 (1981). The signal of claims 36 has no physical
attributes other than being embodied in a carrier wave. The limitations concerning the code
within the signal are interpreted as reciting the type of information contained in the signal, and
not any particular physical properties, such as an electrical signal. Accordingly, the signal of
claims 36 is nonstatutory subject matter as an "abstract idea."
(2) Not within a § 101 category.
The categories of statutory subject matter are "process, machine, manufacture, or
composition of matter." 35 U.S.C. § 101. "[N]o patent is available for a discovery, however
useful, novel, and nonobvious, unless it falls within one of the express categories of patentable
subject matter of 35 U.S.C. § 101." Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 483,
181 USPQ 673, 679 (1974).
A "process" is a series of acts and, since claim 36 recites a signal, which contains code to
cause a series of acts and does not actually recite performance of the acts, it is not a process.
The three product classes of machine, manufacture, and composition of matter have
traditionally required physical structure or substance. "The term machine includes every
mechanical device or combination of mechanical powers and devices to perform some function
and produce a certain effect or result." Corning v. Burden, 56 U.S. 252, 267 (1854); see also
Burr v. Duryee, 68 U.S. 531, 570 (1863) (a machine is a concrete thing, consisting of parts or of
certain devices and combinations of devices). In modern parlance, electrical circuits and
devices, such as computers, are referred to as machines. The signal of claim 36 has no concrete
tangible physical structure, and does not itself perform any functions that produce useful,
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