Appeal 2007-1089
Application 10/348,277
Appellants’ method claim 23 differs from traditional process claims in
several respects. For example, the claim does not recite any particular way
of implementing the steps, nor does it require any machine or apparatus to
perform the steps. In addition, the method claim does not recite any
electrical, chemical, or mechanical acts or results, which are typical in
traditional process claims. Finally, the claim does not call for any physical
transformation of an article to a different state or thing. While claim 23
does perform a transformation of data by “combining a subset of the media
objects to generate a new media object,” it does not require any machine or
apparatus to perform the steps. The question of whether any of these
distinctions takes claim 23 outside the realm of patent-eligible subject matter
has never been squarely addressed by the Federal Circuit. Appellants’
claims are not the type of method that the Supreme Court or Federal Circuit
has ever found patentable under section 101.
(b)
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
(i)
“Process” Definition Principles
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
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