Appeal 2007-1089
Application 10/348,277
composition of matter, or any … improvement thereof….’” In re
Warmerdam, 33 F.3d at 1358, 31 USPQ2d at 1757 (quoting 35 U.S.C.
§ 101) (emphasis added). Thus, “[d]espite the oft-quoted statement in the
legislative history of the 1952 Patent Act that Congress intended that
statutory subject matter ‘include anything under the sun that is made by
man,’[citation omitted], Congress did not so mandate.” Id.
In the case where a claim is for a process, as opposed to a product,
“[t]he line between a patentable ‘process’ and an unpatentable ‘principle’ is
not always clear. Both are ‘conception[s] of the mind, seen only by [their]
effects when being executed or performed.” Parker v. Flook, 437 U.S. 584,
589, 198 USPQ 193, 198 (1978) (quoting Tilghman v. Proctor, 102 U.S.
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. 63, 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.”).5
5 The principal exception to this rule, as explained infra, is when the
machine-implemented method merely manipulates abstractions. See
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