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.
11
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