Appeal 2007-1089
Application 10/348,277
sense, is simply not the product of any transformation as understood in the
case law (i.e., transformation or conversion of subject matter representative
of or constituting physical activity or objects or transformation of data or
signals by a machine). 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.
(c)
Appellants’ Claims Run Afoul of the “Abstract Idea” Exception
(i)
“Abstract Idea” Exception Principles
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).
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