Appeal 2007-1089
Application 10/348,277
BARRETT, Administrative Patent Judge, concurring-in-part and
dissenting-in-part.
I concur in the result of the obviousness decision, but dissent-in-part
from the 35 U.S.C. § 101 decisions.
Legal background
The categories of subject matter eligible for patenting are "process,
machine, manufacture, or composition of matter," 35 U.S.C. § 101, where a
"'process' . . . includes a new use of a known process, machine, manufacture,
composition of matter, or material," 35 U.S.C. § 100(b). The Supreme Court
has recognized "exclusions" only for "laws of nature, natural phenomena,
and abstract ideas." An "exclusion" refers to subject matter that is not within
§ 101 by definition, as opposed to an "exception," which refers to subject
matter that would fall within § 101 "but for" some exceptional condition, but
the terms are often used interchangeably. The Federal Circuit has held that
there are no separate exceptions (exclusions) for "mathematical algorithms"
or "business methods." State St. Bank & Trust Co. v. Signature Fin. Group,
Inc., 149 F.3d 1368, 47 USPQ2d 1596 (Fed. Cir. 1998). The Board held in
Ex parte Lundgren, 76 USPQ2d 1385 (BPAI 2005) (precedential) that there
is no recognized "not within the technological arts" exclusion (in part,
because there is no way to determine what is meant by "technological").
Some man-made subject matter fails to fall within any of the statutory
categories. See In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754,
1760 (Fed. Cir. 1994) (data structure of claim 6 is not in one of the
categories of § 101); In re Bonczyk, 10 Fed. Appx. 908 (Fed. Cir. 2001)
(non-precedential) ("fabricated energy structure" does not correspond to any
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