Appeal 2007-0345
Application 09/812,417
707, 728 (1880)). “The holding that the discovery of [Benson’s] method
could not be patented as a ‘process’ forecloses a purely literal reading of
§ 101.” Flook, 437 U.S. at 589, 198 USPQ at 197. “[W]hen a claim
containing [an abstract idea] implements or applies that [idea] in a structure
or process which, when considered as a whole, is performing a function
which the patent laws were designed to protect (e.g., transforming or
reducing an article to a different state or thing), then the claim satisfies the
requirements of § 101.” Diamond v. Diehr, 450 U.S. 175, 192, 209 USPQ 1,
10 (1981); see also Gottschalk v. Benson, 409 U.S. 64, 70, 175 USPQ 673,
676 (1972) (“Transformation and reduction of an article ‘to a different state
or thing’ is the clue to the patentability of a process claim that does not
include particular machines.”).8
The Supreme Court, however, presumably concerned about barring
patents for future, unforeseeable technologies, declined to rule on whether
its precedent foreclosed any other possible avenues for a method claim to
qualify as a section 101 process: “It is argued that a process patent must
either be tied to a particular machine or apparatus or must operate to change
articles or materials to a ‘different state or thing.’ We do not hold that no
process patent could ever qualify if it did not meet the requirements of our
8 The principal exception to this rule, as explained infra, is when the
machine-implemented method merely manipulates abstractions. See
Benson, 409 U.S. at 71-72, 175 USPQ at 676-677. In addition, merely
attaching a machine to an otherwise ineligible method may not be sufficient
and would depend on how the machine actually implemented the recited
steps. For example, if a nonstatutory claim were amended so that a recited
step of registering a customer was performed by entering data into a
computer rather than using a sign-up sheet, it is hard to imagine how that
alone would satisfy the requirements of § 101 and convert an otherwise
ineligible claim into an eligible one.
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