Appeal 2006-1601
Application 09/828,579
Thus, “[d]espite the oft-quoted statement in the legislative history of the 1952
Patent Act that Congress intended that statutory subject matter ‘include anything
under the sun that is made by man,’[citation omitted], Congress did not so
mandate.” Id.
In the case where a claim is for a process, as opposed to a product, “[t]he
line between a patentable ‘process’ and an unpatentable ‘principle’ is not always
clear. Both are ‘conception[s] of the mind, seen only by [their] effects when being
executed or performed.” Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 198
(1978) (quoting Tilghman v. Proctor, 102 U.S. 707, 728 (1880)). “The holding
that the discovery of [Benson’s] method could not be patented as a ‘process’
forecloses a purely literal reading of § 101.” Flook, 437 U.S. at 589, 198 USPQ at
197. “[W]hen a claim containing [an abstract idea] implements or applies that
[idea] in a structure or process which, when considered as a whole, is performing a
function which the patent laws were designed to protect (e.g., transforming or
reducing an article to a different state or thing), then the claim satisfies the
requirements of § 101.” Diamond v. Diehr, 450 U.S. 175, 192, 209 USPQ 1, 10
(1981); see also Gottschalk v. Benson, 409 U.S. 64, 70, 175 USPQ 673, 676 (1972)
(“Transformation and reduction of an article ‘to a different state or thing’ is the
clue to the patentability of a process claim that does not include particular
machines.”).5
5 The principal exception to this rule, as explained infra, is when the machine-
implemented method merely manipulates abstractions. See Benson, 409 U.S. at
71-72, 175 USPQ at 676-77. In addition, merely attaching a machine to an
otherwise ineligible method may not be sufficient and would depend on how the
machine actually implemented the recited steps. For example, if a nonstatutory
claim were amended so that a recited step of registering a customer was performed
by entering data into a computer rather than using a sign-up sheet, it is hard to
22
Page: Previous 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 Next
Last modified: September 9, 2013