Appeal 2006-2107
Application 09/969,833
Howard, 20 Wall. 498, 507, 22 L.Ed. 410 (1874); Benson, 409 U.S. at 67,
175 USPQ at 675 (“[M]ental processes, and abstract intellectual concepts are
not patentable.”); see also id. at 71, 175 USPQ at 676 (“It is conceded that
one may not patent an idea.”). In contrast, “[i]t is now commonplace that an
application of a law of nature or mathematical formula [or abstract idea] to a
known structure or process may well be deserving of patent protection.”
Diehr, 450 U.S. at 187, 209 USPQ at 8 (emphasis in original).
Clever claim drafting cannot circumvent these principles. That is,
even when a claim appears to apply an idea or concept as part of a seemingly
patentable process, one must ensure that it does not in reality seek patent
protection for that idea in the abstract. Diehr, 450 U.S. at 191, 209 USPQ at
10. Similarly, one cannot patent a process that comprises “every substantial
practical application” of an abstract idea, because such a patent “in practical
effect would be a patent on the [abstract idea] itself.” Benson, 409 U.S. at
71-72, 175 USPQ 676.6 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.
Appellant has asked this Board to find that the Examiner erred
because the claims do not involve a “particular” mathematical algorithm. In
essence, Appellant has asked this Board to conclude that even when a claim
pre-empting a “particular” mathematical algorithm would not be statutory
6 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.
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