Appeal 2007-0224
Application 09/754,785
recite a process that employs the other statutory categories. Accordingly, the
claims fail to meet any of the conditions set forth in the case law of either
the Supreme Court or Federal Circuit.
(c)
Appellant’s Claims Run Afoul of the “Abstract Idea” Exception
(i)
“Abstract Idea” Exception Principles
The Supreme Court has held that “[e]xcluded from such patent
protection are laws of nature, natural phenomena, and abstract ideas.”
Diehr, 450 U.S. at 185, 209 USPQ at 7. “An idea of itself is not patentable.’”
Diehr, 450 U.S. at 185, 209 USPQ at 7 (quoting Rubber-Tip Pencil Co. v.
Howard, 20 Wall. 498, 507, 22 L.Ed. 410 (1874); Benson, 409 U.S. at 67,
175 USPQ at 675 (“[M]ental processes, and abstract intellectual concepts are
not patentable.”); see also id. at 71, 175 USPQ at 676 (“It is conceded that
one may not patent an idea.”). In contrast, “[i]t is now commonplace that an
application of a law of nature or mathematical formula [or abstract idea] to a
known structure or process may well be deserving of patent protection.”
Diehr, 450 U.S. at 187, 209 USPQ at 8 (emphasis in original).
Clever claim drafting cannot circumvent these principles. That is,
even when a claim appears to apply an idea or concept as part of a seemingly
patentable process, one must ensure that it does not in reality seek patent
protection for that idea in the abstract. Diehr, 450 U.S. at 191, 209 USPQ at
10. Similarly, one cannot patent a process that comprises “every substantial
practical application” of an abstract idea, because such a patent “in practical
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