Ex Parte Colosky - Page 9





               Appeal No. 2006-2240                                                                                               
               Application No. 10/232,015                                                                                         

               concrete and tangible results.  Therefore, a signal does not fit within the definition of a                        
               "machine."                                                                                                         
                      A "manufacture" and a "composition of matter" are defined in Diamond v. Chakrabarty,                        
               447 U.S. 303, 308, 206 USPQ 193, 196-97 (1980):                                                                    
                      [T]his Court has read the term "manufacture" in accordance with its dictionary definition                   
                      to mean "the production of articles for use from raw or prepared materials by giving to                     
                      these materials new forms, qualities, properties, or combinations, whether by hand-labor                    
                      or by machinery."  American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11 (1931).                      
                      Similarly, "composition of matter" has been construed consistent with common usage to                       
                      include "all compositions of two or more substances and ... all composite articles,                         
                      whether they be results of chemical union, or of mechanical mixture, or whether they be                     
                      gases, fluids, powders or solids."  Shell Development Co. v. Watson, 149 F. Supp. 279,                      
                      280 (D.C. 1957) (citing 1 A. Deller, Walker on Patents § 14, p. 55 (1st ed. 1937).                          
                      [Parallel citations omitted.]                                                                               
                      The signal is not composed of matter and is clearly not a "composition of matter."                          
                      A "manufacture" is the residual category for products.  1 Chisum, Patents § 1.02[3]                         
               (2004) (citing W. Robinson, The Law of Patents for Useful Inventions 270 (1890)).  If a signal                     
               falls within any category of § 101, it must fall within this category.  The definition of                          
               "manufacture" from Diamond v. Chakrabarty requires a tangible article prepared from materials.                     
               The other cases dealing with manufactures also require a tangible physical article.  The CCPA                      
               held in In re Hruby, 373 F.2d 997, 153 USPQ 61 (CCPA 1967) that there was no distinction                           
               between the meaning of "manufacture" in § 101 and "article of manufacture" in § 171 for                            
               designs.  The issue in Hruby was whether that portion of a water fountain which is composed                        
               entirely of water in motion was an article of manufacture.  The CCPA relied on the analysis of                     
               the term "manufacture" in Riter-Conley Mfg. Co. v. Aiken, 203 F. 699 (3d Cir.), cert. denied,                      
               229 U.S. 617 (1913), a case involving a utility patent.  The CCPA stated in Hruby:                                 
                      The gist of it is, as one can determine from dictionaries, that a manufacture                               
                      is anything made "by the hands of man" from raw materials, whether literally by                             
                      hand or by machinery or by art.                                                                             
               373 F.2d at 1000, 153 USPQ at 65.  The CCPA held that the fountain was made of the only                            
               substance fountains can be made of--water--and determined that designs for water fountains                         
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