Appeal Number: 2007-0133
Application Number: 10/223,466
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.
Analysis of holding appellants claims as drawn to abstract ideas
Because Appellant’s claims 1, 5 through 15, 35, and 37 are completely
untethered from any sort of structure or physical step, they are directed to a
disembodied concept. In other words, the claim is nothing but a disembodied
abstract idea until it is instantiated in some physical way so as to be limited to a
practical application of the idea. For example, the claims do not specify whether
the “predicting sleep and activity levels” is a computer, a human, or some other
implementation. Nor does the claim recite who or what is performing the step of
“providing” the chart, or the step of “providing lines and shapes.” Instead, those
limitations merely describe steps or goals of the concept. Just as the concept of
inserting a chart drawing step into a prediction method is an abstract idea, so too is
the notion to insert another chart element identifying what that element will be.
“Accordingly, the claim is so broad that it is directed to the abstract idea itself,
rather than a practical implementation of the concept. In addition, the claims are
“so abstract and sweeping” that they would “wholly pre-empt” all applications of
the notion of having a chart drawn to a sleep and activity prediction method. See
Benson, 409 U.S. at 68-72; see also Alappat, 33 F.3d at 1544 (quoting Benson).
It is true that process claims are not necessarily required to recite the means
or structure for performing the claimed steps. See, e.g., AT&T, 172 F.3d at 1359.
But process claims that do not require any machine implementation, and thus are
State Street, 149 F.3d at 1377. Rather, pre-emption was not at issue in State Street
since the claim in that case was particularly confined to a machine implementation,
and did not suffer from the same defect as Appellant’s claims.
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