Appeal 2006-2107
Application 09/969,833
the clue to the patentability of a process claim that does not include
particular machines.”).1
The Supreme Court, however, presumably concerned about barring
patents for future, unforeseeable technologies, declined to rule on whether
its precedent foreclosed any other possible avenues for a method claim to
qualify as a section 101 process: “It is argued that a process patent must
either be tied to a particular machine or apparatus or must operate to change
articles or materials to a ‘different state or thing.’ We do not hold that no
process patent could ever qualify if it did not meet the requirements of our
prior precedents.” Benson, 409 U.S. at 71, 175 USPQ 676. Rather than rule
on this question in Benson and Flook, the Supreme Court decided those
cases based on the abstract idea exception to patentability. Benson, 409 U.S.
at 71-72, 175 USPQ at 676-77; Flook, 437 U.S. at 594-95, 198 USPQ at
199-200.
Since Diehr, the Federal Circuit has reviewed several computer
technology cases, and in acknowledgment of the innovations occurring in
this technological field, identified a third category of method claims that
qualify as a “process.” Extrapolating from the Supreme Court’s
“transformation and reduction of an article” test, the Federal Circuit has held
1 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 imagine how that
alone would satisfy the requirements of § 101 and convert an otherwise
ineligible claim into an eligible one.
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