Appeal 2007-1089
Application 10/348,277
Clever claim drafting cannot circumvent these principles. That is,
even when a claim appears to apply an idea or concept as part of a seemingly
patentable process, one must ensure that it does not in reality seek patent
protection for that idea in the abstract. Diehr, 450 U.S. at 191, 209 USPQ at
10. Similarly, one cannot patent a process that comprises “every substantial
practical application” of an abstract idea, because such a patent “in practical
effect would be a patent on the [abstract idea] itself.” Benson, 409 U.S. at
71-72, 175 USPQ at 676.9 Such limitations on process patents are important
because without them, “a competent draftsman [could] evade the recognized
limitations on the type of subject matter eligible for patent protection.”
Diehr, 450 U.S. at 192, 209 USPQ at 10.
(ii)
“Abstract Idea” Exception and Appellants’ Claims
Because Appellants’ claim 23 is completely untethered from any sort
of structure or physical step, it is directed to a disembodied concept. In
other words, the claim is nothing but a disembodied abstract idea until it is
instantiated in some physical way so as to be limited to a practical
application of the idea. For example, claim 23 does not specify whether the
entity performing the steps of receiving, identifying, combining, and
9 The observation in State Street that “[w]hether the patent’s claims are
too broad to be patentable is not to be judged under § 101, but rather under
§§ 102, 103, and 112” did not, nor could it, overrule the Supreme Court’s
pre-emption doctrine. See State Street, 149 F.3d at 1377, 47 USPQ2d at
1604. Rather, pre-emption was not at issue in State Street since the claim in
that case was particularly confined to a machine implementation, and did not
suffer from the same defect as Appellants’ claim.
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