Ex Parte Jakobsson - Page 11

              Appeal 2006-2107                                                                     
              Application 09/969,833                                                               
              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 nominally for a process (i.e., a series of        
              steps), 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.  The Supreme Court has recognized only two instances in                 
              which a method may qualify as a section 101 process: when the process                
              “either [1] was tied to a particular apparatus or [2] operated to change             
              materials to a ‘different state or thing.’” Id. at 588 n.9, 198 USPQ at 196 n.9      
              (quoting Cochrane v. Deener, 94 U.S. 780, 787-88 (1876) (“A process is...an          
              act, or a series of acts, performed upon the subject-matter to be transformed        
              and reduced to a different state or thing”)).  “[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      



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