Appeal 2006-1601
Application 09/828,579
while perhaps “useful” in one sense, is simply not the product of any
transformation as understood in the case law. Further, the claims do not recite a
process that employs the other statutory categories. Accordingly, the claims fail to
meet any of the conditions set forth in the case law of either the Supreme Court or
Federal Circuit.
(b)
Appellant’s Claims Run Afoul of the “Abstract Idea” Exception
The Supreme Court has held that “[e]xcluded from such patent protection
are laws of nature, natural phenomena, and abstract ideas.” Diehr, 450 U.S. at 185,
209 USPQ at 7. “An idea of itself is not patentable.’” Diehr, 450 U.S. at 185, 209
USPQ at 7 (quoting Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 507, 22 L.Ed.
410 (1874); Benson, 409 U.S. at 67, 175 USPQ at 675 (“[M]ental processes, and
abstract intellectual concepts are not patentable.”); see also id. at 71, 175 USPQ at
676 (“It is conceded that one may not patent an idea.”). In contrast, “[i]t is now
commonplace that an application of a law of nature or mathematical formula [or
abstract idea] to a known structure or process may well be deserving of patent
protection.” Diehr, 450 U.S. at 187, 209 USPQ at 8 (emphasis in original).
Clever claim drafting cannot circumvent these principles. That is, even
when a claim appears to apply an idea or concept as part of a seemingly patentable
process, one must ensure that it does not in reality seek patent protection for that
idea in the abstract. Diehr, 450 U.S. at 191, 209 USPQ at 10. Similarly, one
cannot patent a process that comprises “every substantial practical application” of
an abstract idea, because such a patent “in practical effect would be a patent on the
28
Page: Previous 21 22 23 24 25 26 27 28 29 30 31 32 33 34 35 Next
Last modified: September 9, 2013