Appeal 2007-0224
Application 09/754,785
transformation of an article to a different state or thing. While claim 1 does
perform a transformation of data by reordering components of a software
module, it does not require any machine or apparatus to perform the steps.
The question of whether any of these distinctions takes claim 1 outside the
realm of patent-eligible subject matter has never been squarely addressed by
the Federal Circuit. Appellant’s claims are not the type of method that the
Supreme Court or Federal Circuit has ever found patentable under section
101.
(b)
Reading the Supreme Court’s and Federal Circuit’s Precedents Together,
A Section 101 “Process” Has Always Transformed Subject Matter,
Whether Tangible or Intangible, Or Has Been a Process
That Involved The Other Three Statutory Categories
(i)
“Process” Definition Principles
The scope of patentable subject matter under section 101 is broad, but
not infinitely broad. “Congress included in patentable subject matter only
those things that qualify as ‘any … process, machine, manufacture, or
composition of matter, or any … improvement thereof….’” In re
Warmerdam, 33 F.3d 1354, 1358, 31 USPQ2d 1754, 1757 (Fed. Cir. 1994)
(quoting 35 U.S.C. § 101) (emphasis added). Thus, “[d]espite the oft-
quoted statement in the legislative history of the 1952 Patent Act that
Congress intended that statutory subject matter ‘include anything under the
sun that is made by man,’[citation omitted], Congress did not so mandate.”
Id.
14
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