Appeal 2007-0224
Application 09/754,785
effect would be a patent on the [abstract idea] itself.” Benson, 409 U.S. at
71-72, 175 USPQ 676.6 Such limitations on process patents are important
because without them, “a competent draftsman [could] evade the recognized
limitations on the type of subject matter eligible for patent protection.”
Diehr, 450 U.S. at 192, 209 USPQ at 10.
(ii)
“Abstract Idea” Exception and Appellant’s Claims
Because Appellant’s claim 1 is completely untethered from any sort of
structure or physical step, it is directed to a disembodied concept. In other
words, the claim is nothing but a disembodied abstract idea until it is
instantiated in some physical way so as to be limited to a practical
application of the idea. For example, claim 1 does not specify whether the
entity performing the steps of receiving and reordering is a computer, a
human, or something else. Accordingly, the claim is so broad that it is
directed to the abstract idea itself, rather than a practical implementation of
the concept. In addition, the claims are “so abstract and sweeping” that they
would “wholly pre-empt” all applications (whether performed by a machine
or a human) that are directed to reordering components of a software module
to remove at least some of the backward references. See Benson, 409 U.S. at
6 The observation in State Street that “[w]hether the patent’s claims are
too broad to be patentable is not to be judged under § 101, but rather under
§§ 102, 103, and 112” did not, nor could it, overrule the Supreme Court’s
pre-emption doctrine. See State Street, 149 F.3d at 1377, 47 USPQ2d at
1604. Rather, pre-emption was not at issue in State Street since the claim in
that case was particularly confined to a machine implementation, and did not
suffer from the same defect as Appellant’s claim.
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