Appeal 2007-0224
Application 09/754,785
find the instant claimed components are software and/or data structures,
per se.
The issue is whether Appellant’s claims 1-15, 40, 41, and 43-56,
which cover a method and a system, involving no transformation performed
by a machine and no process involving the other three statutory categories
(machine, manufacture, or composition of matter), 1 are patentable subject
matter under 35 U.S.C. § 101. So construed, Appellant’s claims are
unpatentable under section 101 because (i) they do not qualify as a “process”
under section 101, as that term has been interpreted by case law, (ii) they
seek to patent an abstract idea, and (iii) the “useful, concrete, and tangible
result” test does not apply here, but the claims nevertheless do not meet that
test.
Appellant’s method claim 1 differs from traditional process claims in
several respects. For example, the claim does not recite any particular way
of implementing the steps, nor does it require any machine or apparatus to
perform the steps. In addition, the method claim does not recite any
electrical, chemical, or mechanical acts or results, which are typical in
traditional process claims. Finally, the claim does not call for any physical
1 “A machine is a concrete thing, consisting of parts, or of certain devices
and combination of devices.” Burr v. Duryee, 68 U.S. 531, 570 (1863). The
term “manufacture” refers to “‘the production of articles for use from raw or
prepared materials by giving to these materials new forms, qualities,
properties, or combinations, whether by hand-labor or by machinery.’”
Diamond v. Chakrabarty, 447 U.S. 303, 308, 206 USPQ 193, 196-97 (1980)
(quoting American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11, 8
USPQ 131, 133 (1931)). A “composition of matter” by its own terms
requires matter. Chakrabarty, 447 U.S. at 308, 206 USPQ at 196-97.
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