Appeal 2007-0345
Application 09/812,417
At the outset, we note that claims 1-4 and 6-8, given their broadest
reasonable interpretation, do not require computer or machine
implementation. The issue is whether these claims, which cover methods of
indicating future program action on a future program information display
involving no transformation and no process involving the other three
statutory categories (machine, manufacture, or composition of matter),6
recite patentable subject matter under 35 U.S.C. § 101. Giving the claim
limitations their broadest reasonable interpretation, we conclude that claims
1-4 and 6-8 are unpatentable under section 101 because (i) they do not
qualify as a “process” under section 101 as that term has been interpreted by
case law, (ii) they seek to patent an abstract idea, and (iii) the “useful,
concrete, and tangible result” test does not apply.7
Method claim 1 differs from traditional process claims in several
respects. For example, the claim does not recite any particular machine or
apparatus to perform the recited steps. In addition, the method claim does
not recite any electrical, chemical, or mechanical acts or results, which are
typical in traditional process claims. Finally, the claim does not call for any
6 “A machine is a concrete thing, consisting of parts, or of certain devices
and combination of devices.” Burr v. Duryee, 68 U.S. 531, 570 (1863). The
term “manufacture” refers to “‘the production of articles for use from raw or
prepared materials by giving to these materials new forms, qualities,
properties, or combinations, whether by hand-labor or by machinery.’”
Diamond v. Chakrabarty, 447 U.S. 303, 308, 206 USPQ 193, 196-97 (1980)
(quoting American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11, 8
USPQ 131, 133 (1931)). A “composition of matter” by its own terms
requires matter. Chakrabarty, 447 U.S. at 308, 206 USPQ at 196-97.
7See Pages 21-24, infra, of this opinion.
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