Appeal Number: 2007-0133
Application Number: 10/223,466
As to the examiner’s argument that the claimed subject matter is not within the
technological arts, the Board of Patent Appeals and Interferences held in the
precedential opinion, Ex parte Lundgren, 76 USPQ2d 1385 (Bd. Pat. App. & Int.
2005), there is currently no judicially recognized separate “technological arts” test
to determine patent eligible subject matter under §101. Therefore, we find the
examiner’s argument unpersuasive.
However, as to the examiner’s argument that presenting ideas on a tangible
medium such as a chart does not, by itself, bring the invention within the scope of
patentable subject matter, we must examine the claims and the law to resolve this
question.
35 U.S.C. §101 provides:
Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.
Our reviewing court further interpreted this as follows:
The Supreme Court has interpreted this statutory range of patentable
subject matter to be quite broad, but hardly universal. “In choosing
such expansive terms as ‘manufacture’ and ‘composition of matter,’
modified by the comprehensive ‘any,’ Congress plainly contemplated
that the patent laws would be given wide scope.” Diamond v.
Chakrabarty, 447 U.S. 303, 308 [206 USPQ 193] (1980). That wide
scope nevertheless excludes laws of nature, natural phenomena, and
abstract ideas. “Such discoveries are ‘manifestations of … nature, free
to all men and reserved exclusively to none.’” Id. at 309, (quoting
Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130 [76
USPQ 280] (1948)). See also Diamond v. Diehr, 450 U.S. 175, 185
[209 USPQ 1] (1981); Parker v. Flook, 437 U.S. 584, 589 [198 USPQ
193] (1978).
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