Appeal Number: 2007-0133
Application Number: 10/223,466
Both are ‘conception[s] of the mind, seen only by [their] effects when being
executed or performed.’” Parker v. Flook, 437 U.S. U.S. 584, 589 (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. 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
(quoting Cochrane v. Deener, 94 U.S. 780, 787-788 (1877) (“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 (1981); see also Gottschalk v. Benson, 409 U.S. 63, 70 (1972)
(“Transformation and reduction of an article ‘to a different state or thing’ is the
clue to the patentability of a process claim that does not include particular
machines.”).
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
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013