Appeal 2007-0224
Application 09/754,785
In the case where a claim is for a process, as opposed to a product,
“[t]he line between a patentable ‘process’ and an unpatentable ‘principle’ is
not always clear. Both are ‘conception[s] of the mind, seen only by [their]
effects when being executed or performed.” Parker v. Flook, 437 U.S. 584,
589, 198 USPQ 193, 198 (1978) (quoting Tilghman v. Proctor, 102 U.S.
707, 728 (1880)). “The holding that the discovery of [Benson’s] method
could not be patented as a ‘process’ forecloses a purely literal reading of
§ 101.” Flook, 437 U.S. at 589, 198 USPQ at 197. “[W]hen a claim
containing [an abstract idea] implements or applies that [idea] in a structure
or process which, when considered as a whole, is performing a function
which the patent laws were designed to protect (e.g., transforming or
reducing an article to a different state or thing), then the claim satisfies the
requirements of § 101.” Diamond v. Diehr, 450 U.S. 175, 192, 209 USPQ 1,
10 (1981); see also Gottschalk v. Benson, 409 U.S. 64, 70, 175 USPQ 673,
676 (1972) (“Transformation and reduction of an article ‘to a different state
or thing’ is the clue to the patentability of a process claim that does not
include particular machines.”).2
2 The principal exception to this rule, as explained infra, is when the
machine-implemented method merely manipulates abstractions. See
Benson, 409 U.S. at 71-72, 175 USPQ at 676-77. In addition, merely
attaching a machine to an otherwise ineligible method may not be sufficient
and would depend on how the machine actually implemented the recited
steps. For example, if a nonstatutory claim were amended so that a recited
step of registering a customer was performed by entering data into a
computer rather than using a sign-up sheet, it is hard to imagine how that
alone would satisfy the requirements of § 101 and convert an otherwise
ineligible claim into an eligible one.
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