Appeal 2006-2228
Application 10/231,678
under § 101, it is inevitable that a manufacture under § 101 requires physical
matter.
Some further indirect evidence that Congress intended to limit
patentable subject matter to physical things and steps is found in 35 U.S.C.
§ 112, sixth paragraph, which states that an element in a claim for a
combination may be expressed as a “means or step” for performing a
function and will be construed to cover the corresponding “structure,
material, or acts described in the specification and equivalents thereof.”
“Structure” and “material” indicate tangible things made of matter, not
energy.
By Appellant’s admission, claims 35, 37, and 38, include intangible
embodiments that do not have any tangible physical structure or substance
and do not fit the definition of a “manufacture” which requires a tangible
object.
Our conclusion that a “signal” does not fit within any of the four
categories of § 101 is consistent with In re Bonczyk, 10 Fed. Appx. 908
(Fed. Cir. 2001) (unpublished) (“fabricated energy structure” does not
correspond to any statutory category of subject matter and it is unnecessary
to reach the alternate ground of affirmance that the subject matter lacks
practical utility) and with the Interim Guidelines for Examination of Patent
Applications for Patent Subject Matter Eligibility, 1300 Off. Gaz. Pat. Off.
142, 152 (Nov. 22, 2005), in the section entitled “Electro-Magnetic Signals.”
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013