Appeal 2007-1089
Application 10/348,277
with and proportional to the types of inventions patented under the other
categories.8 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.
(ii)
“Process” Definition and Appellants’ Claims
To reiterate, we believe that “process” should not be broadened so as
to include any method that may be deemed useful, such as Appellants’
method and system claims that do not require a machine to perform a
transformation (e.g., combining a subset of the media objects to generate a
new media object). Following Schrader, Appellants’ claims are
unpatentable under § 101. The claims are similar to those rejected in
Schrader, while distinguishable from Arrhythmia, Alappat, State Street, and
AT&T. The claims do not transform any physical article to a different state
or thing. The recited step of “combining a subset of the media objects to
generate a new media object” (see claim 23), while perhaps “useful” in one
8 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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