Appeal 2006-1601
Application 09/828,579
unpatentable under section 101 because (i) they do not qualify as a “process” under
section 101, as that term has been interpreted by case law, (ii) they seek to patent
an abstract idea, and (iii) the “useful, concrete, and tangible result” test does not
apply here, but the claims nevertheless do not meet that test.
Method claim 6 differs from traditional process claims in several respects.
For example, the claim does not recite any particular way of implementing the
steps, nor does it require any machine or apparatus to perform the steps. In
addition, the method claim does not recite any electrical, chemical, or mechanical
acts or results, which are typical in traditional process claims. Finally, the claim
does not call for any physical transformation of an article to a different state or
thing, nor does it require any transformation of data or signals. The question of
whether any of these distinctions takes claim 6 outside the realm of patent-eligible
subject matter has never been squarely addressed by the Federal Circuit.
Appellant’s claims are not the type of method that the Supreme Court or Federal
Circuit has ever found patentable under section 101.
(a)
Reading the Supreme Court’s and Federal Circuit’s Precedents Together,
A Section 101 “Process” Has Always Transformed Subject Matter,
Whether Tangible or Intangible, Or Has Been a Process
That Involved The Other Three Statutory Categories
The scope of patentable subject matter under section 101 is broad, but not
infinitely broad. “Congress included in patentable subject matter only those things
that qualify as ‘any … process, machine, manufacture, or composition of matter, or
any … improvement thereof….’” In re Warmerdam, 33 F.3d 1354, 1358, 31
USPQ2d 1754, 1757 (Fed. Cir. 1994) (quoting 35 U.S.C. § 101) (emphasis added).
21
Page: Previous 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Next
Last modified: September 9, 2013