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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