Ex Parte Burnhouse et al - Page 11

                Appeal 2007-0345                                                                             
                Application 09/812,417                                                                       
                                                                                                            
                physical transformation of an article to a different state or thing, nor does it             
                require any transformation of data or signals.                                               
                      The question of whether any of these distinctions takes claim 1                        
                outside the realm of patent-eligible subject matter has never been squarely                  
                addressed by the Federal Circuit or the U.S. Supreme Court.  Nevertheless,                   
                Appellants’ claims are not the type of method that the Supreme Court or                      
                Federal Circuit has ever found patentable under section 101.                                 

                 Reading the Supreme Court’s and Federal Circuit’s Precedents Together,                      
                    A Section 101 “Process” Has Always Transformed Subject Matter,                           
                          Whether Tangible or Intangible, or Has Been a Process                              
                            That Involved the Other Three Statutory Categories                               

                      The scope of patentable subject matter under section 101 is broad, but                 
                not infinitely broad.  “Congress included in patentable subject matter only                  
                those things that qualify as ‘any … process, machine, manufacture, or                        
                composition of matter, or any … improvement thereof….’”  In re                               
                Warmerdam, 33 F.3d 1354, 1358, 31 USPQ2d 1754, 1757 (Fed. Cir. 1994)                         
                (quoting 35 U.S.C. § 101) (emphasis added).   Thus, “[d]espite the oft-                      
                quoted statement in the legislative history of the 1952 Patent Act that                      
                Congress intended that statutory subject matter ‘include anything under the                  
                sun that is made by man,’[citation omitted], Congress did not so mandate.”                   
                Id.                                                                                          
                      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.                         

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