Appeal 2007-0325
Application 09/780,248
1 Thus, “[d]espite the oft-quoted statement in the legislative history of the 1952
2 Patent Act that Congress intended that statutory subject matter ‘include anything
3 under the sun that is made by man,’[citation omitted], Congress did not so
4 mandate.” Id.
5 In the case where a claim is for a process, as opposed to a product, “[t]he line
6 between a patentable ‘process’ and an unpatentable ‘principle’ is not always clear.
7 Both are ‘conception[s] of the mind, seen only by [their] effects when being
8 executed or performed.’” Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197
9 (1978) (quoting Tilghman v. Proctor, 102 U.S. 707, 728 (1880)).
10 The Supreme Court has held that “[e]xcluded from such patent protection are
11 laws of nature, natural phenomena, and abstract ideas.” Diamond v. Diehr, 450
12 U.S. 175, 185, 209 USPQ 1, 7 (1981). “An idea of itself is not patentable.’”
13 Diehr, 450 U.S. at 185, 209 USPQ at 7 (quoting Rubber-Tip Pencil Co. v. Howard,
14 20 Wall. 498, 507, 22 L.Ed. 410 (1874); Gottschalk v. Benson, 409 U.S. 63, 67,
15 175 USPQ 673, 675 (1972) (“[M]ental processes, and abstract intellectual concepts
16 are not patentable.”); see also id. 409 U.S. at 71, 175 USPQ at 677 (“It is conceded
17 that one may not patent an idea.”)). In contrast, “[i]t is now commonplace that an
18 application of a law of nature or mathematical formula [or abstract idea] to a
19 known structure or process may well be deserving of patent protection.” Diehr,
20 450 U.S. at 187, 209 USPQ at 8 (emphasis in original).
21 Two instances in which our reviewing court affirmed the statutory nature of
22 subject matter are pertinent to the above facts. In Arrhythmia, the court held “the
23 transformation of electrocardiograph signals … by a machine … constituted a
24 practical application of an abstract idea” where “the number obtained is not a
25 mathematical abstraction; it is a measure in microvolts of a specified heart activity,
21
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