Appeal 2006-1601
Application 09/828,579
[abstract idea] itself.” Benson, 409 U.S. at 71-72, 175 USPQ 676.9 Such
limitations on process patents are important because without them, “a competent
draftsman [could] evade the recognized limitations on the type of subject matter
eligible for patent protection.” Diehr, 450 U.S. at 192, 209 USPQ at 10.
Because Appellant’s claim 6 is completely untethered from any sort of
structure or physical step, it is directed to a disembodied concept. In other words,
the claim is nothing but a disembodied abstract idea until it is instantiated in some
physical way so as to be limited to a practical application of the idea. For example,
the claim does not specify whether the “billing system” is a computer, a human, or
something else. Nor does the claim recite who or what is performing the step of
“identifying” that a future rate plan is to be changed, the step of “selecting” the
future rate plan desired, or the step of “implementing” the future rate change.
Instead, those limitations merely describe steps or goals of the concept. Just as the
concept of “identifying that a future rate plan is to be changed” is an abstract idea,
so too is the notion of “selecting the future rate plan desired” and the notion of
“implementing the future rate change.” Accordingly, the claim is so broad that it is
directed to the abstract idea itself, rather than a practical implementation of the
concept. In addition, the claims are “so abstract and sweeping” that they would
“wholly pre-empt” all applications of the notion of future rate changes in a billing
9 The observation in State Street that “[w]hether the patent’s claims are too
broad to be patentable is not to be judged under § 101, but rather under §§ 102,
103, and 112” did not, nor could it, overrule the Supreme Court’s pre-emption
doctrine. See State Street, 149 F.3d at 1377, 47 USPQ2d at 1604. Rather, pre-
emption was not at issue in State Street since the claim in that case was particularly
confined to a machine implementation, and did not suffer from the same defect as
Appellant’s claim.
29
Page: Previous 22 23 24 25 26 27 28 29 30 31 32 33 34 35 36 Next
Last modified: September 9, 2013