Appeal 2007-0345
Application 09/812,417
distinguishable from Arrhythmia, Alappat, State Street, and AT&T. The
claims do not transform any article to a different state or thing. The
indication produced by the claims, while perhaps “useful” in one sense, is
simply not the product of any transformation as understood in the case law.
Further, the claims do not recite a process that employs the other statutory
categories. Accordingly, the claims fail to meet any of the conditions set
forth in the case law of either the Supreme Court or Federal Circuit.
Claims 1-4 and 6-8 Run Afoul of the “Abstract Idea” Exception
The Supreme Court has held that “[e]xcluded from such patent
protection are laws of nature, natural phenomena, and abstract ideas.”
Diehr, 450 U.S. at 185, 209 USPQ at 7. “An idea of itself is not patentable.’”
Diehr, 450 U.S. at 185, 209 USPQ at 7 (quoting Rubber-Tip Pencil Co. v.
Howard, 20 Wall. 498, 507, 22 L.Ed. 410 (1874); Benson, 409 U.S. at 67,
175 USPQ at 675 (“[M]ental processes, and abstract intellectual concepts are
not patentable.”); see also id. at 71, 175 USPQ at 676 (“It is conceded that
one may not patent an idea.”). In contrast, “[i]t is now commonplace that an
application of a law of nature or mathematical formula [or abstract idea] to a
known structure or process may well be deserving of patent protection.”
Diehr, 450 U.S. at 187, 209 USPQ at 8 (emphasis in original).
Clever claim drafting cannot circumvent these principles. That is,
even when a claim appears to apply an idea or concept as part of a seemingly
patentable process, one must ensure that it does not in reality seek patent
protection for that idea in the abstract. Diehr, 450 U.S. at 191, 209 USPQ at
10. Similarly, one cannot patent a process that comprises “every substantial
practical application” of an abstract idea, because such a patent “in practical
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