Appeal 2006-2107
Application 09/969,833
words, interpreting “process” as either transforming subject matter or
implemented by one of the other three categories of inventions is rationally
consistent with and proportional to the types of inventions patented under
the other categories.5 See Tilghman v. Proctor, 102 U.S. 707, 722 (1880)
(“where the result or effect is produced by chemical action, by the operation
or application of some element or power of nature, or of one substance to
another, such modes, methods, or operations are called processes.”); see also
AT&T, 172 F.3d at 1356, 50 USPQ2d at 1450 (“any step-by-step process, be
it electronic, chemical, or mechanical, involves an ‘algorithm’ in the broad
sense of the term.”). Accordingly, we do not believe that the boundaries of
“process” should be so expansive as to accommodate all “useful” methods.
(5)
Appellant’s Method Claims Are Nominally a Process
Appellant’s claims recite a method that employs computations to
transform data in a processor coupled to a memory. Accordingly, the claims
are nominally a process. See 35 U.S.C. § 100:
(“The term “process” means process, art or method, and includes a
new use of a known process, machine, manufacture, composition of
matter, or material.”)
However, no matter which of the four statutory categories a claim nominally
fall within, we must still determine whether the claim is truly within the
5 We do not propose in this decision a comprehensive rule for defining
patentable subject matter in all circumstances. Rather, this decision looks to
whether Appellant’s claims fall outside the currently existing tests for
eligibility and sees no reason to expand the existing tests should this prove to
be the case.
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