Appeal 2007-1089
Application 10/348,277
not limited to music, literary works and a compilation or mere arrangement
of data. Both types of descriptive material are nonstatutory when claimed as
descriptive material per se. See In re Warmerdam, 33 F.3d 1354, 1361-62,
31 USPQ2d 1754, 1760 (Fed. Cir. 1994) (claim to a data structure per se
held nonstatutory). Furthermore, we find that instant independent claim 33
is directed to a data structure per se (i.e., “a data packet” merely comprising
two “information” elements).
We consider whether Appellants’ claims 1-5, 7-18, 20-33, and 35,
which cover a method (claims 23-32), a system (claims 1-5, 7-18, 20-22,
and 35), and a “data packet” (claim 33), involving no transformation
performed by a machine and no process involving the other three statutory
categories (machine, manufacture, or composition of matter), 4 are
patentable subject matter under 35 U.S.C. § 101. So construed, Appellants’
claims are unpatentable under section 101 because (i) they do not qualify as
a “process” under section 101, as that term has been interpreted by case law,
(ii) they seek to patent an abstract idea, and (iii) the “useful, concrete, and
tangible result” test does not apply here, but the claims nevertheless do not
meet that test.
4 “A machine is a concrete thing, consisting of parts, or of certain devices
and combination of devices.” Burr v. Duryee, 68 U.S. 531, 570 (1863). The
term “manufacture” refers to “‘the production of articles for use from raw or
prepared materials by giving to these materials new forms, qualities,
properties, or combinations, whether by hand-labor or by machinery.’”
Diamond v. Chakrabarty, 447 U.S. 303, 308, 206 USPQ 193, 196-97 (1980)
(quoting American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11, 8
USPQ 131, 133 (1931)). A “composition of matter” by its own terms
requires matter. Chakrabarty, 447 U.S. at 308, 206 USPQ at 196-97.
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