Appeal 2007-0345
Application 09/812,417
1459. In sum, the Federal Circuit has never ruled that methods without any
transformation are eligible, and appears in Schrader to have rejected that
proposition.
We believe that “process” should not be broadened so as to include
any method that may be deemed useful, such as Appellants’ indication
claims. The Supreme Court’s and Federal Circuit’s articulated eligibility
tests keep the interpretation of “process” in pari materia with the other three
categories of inventions – manufacture, machine, and composition of matter.
In other words, interpreting “process” as either transforming subject matter
or implemented by one of the other three categories of inventions is
rationally consistent with and proportional to the types of inventions
patented under the other categories.11 See Tilghman v. Proctor, 102 U.S.
707, 722 (1880) (“where the result or effect is produced by chemical action,
by the operation or application of some element or power of nature, or of
one substance to another, such modes, methods, or operations are called
processes.”); see also AT&T, 172 F.3d at 1356, 50 USPQ2d at 1450 (“any
step-by-step process, be it electronic, chemical, or mechanical, involves an
‘algorithm’ in the broad sense of the term.”). Accordingly, we do not
believe that the boundaries of “process” should be so expansive as to
accommodate all “useful” methods.
Following Schrader, Appellant’s claims are unpatentable under
section 101. The claims are similar to those rejected in Schrader, while
11 We do not propose in this decision a comprehensive rule for defining
patentable subject matter in all circumstances. Rather, this decision
illustrates that Appellants’ claims fall outside the currently existing tests for
eligibility and sees no reason to expand the existing tests to cover
Appellants’ claims.
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