Appeal Number: 2007-0133
Application Number: 10/223,466
the product of any transformation as understood in the case law of useful arts.
Accordingly, the claims fail to meet any of the conditions set forth in the case law
of either the Supreme Court or the Federal Circuit.
ii) Appellant’s claims appear to be unpatentable under section 101 because
they seek to patent an abstract idea.
Principles of law defining abstract idea
The Supreme Court has held that “[e]xcluded from such patent protection
are laws of nature, natural phenomena, and abstract ideas.” Diehr, 450 U.S. at 185.
“An idea of itself is not patentable.” Diehr, 450 U.S. at 185 (quoting Rubber-Tip
Pencil Co. v. Howard, 20 Wall. 498, 507, 22 L.Ed. 410 (1874); Benson, 409 U.S.
at 67 (“[M]ental processes, and abstract intellectual concepts are not patentable.”);
see also id. at 71 (“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 (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. 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 71-72.1 Such limitations on process patents are important
1 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
10
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: September 9, 2013