Appeal 2007-1089
Application 10/348,277
whether the "useful, concrete, and tangible result" test would conflict with
prior Supreme Court decisions. Lab. Corp. of Am. Holdings v. Metabolite
Labs., Inc., 126 S. Ct. 2921, 2928, 79 USPQ2d 1065, 1070 (2006) (Breyer,
J., dissent from dismissal as improvidently granted) (observing that the
Federal Circuit’s statement that "a process is patentable if it produces a
'useful, concrete, and tangible result' . . . , if taken literally, . . . would cover
instances where this Court has held the contrary"). Although it is not known
exactly what is meant by the elements of this test, it is clear that a machine
or machine-implemented process that is nominally within § 101 may
nevertheless be unpatentable under § 101. Claims to machines or
machine-implemented processes, while important, are at least limited to
machines and are less troubling than non-machine-implemented process
claims which preempt any and every way to perform the method.
"Process" claims are directed to "acts" and are inherently more
abstract than a "machine, manufacture, or composition of matter," which
refer to "things." Importantly, not every process in the dictionary sense is a
"process" under §§ 100(b) and 101, i.e., not every claim to a series of steps
is a "process" under the statute. See Parker v. Flook, 437 U.S. 584, 588 n.9,
198 USPQ 193, 196 n.9 (1978) ("The statutory definition of 'process' is
broad. . . . An argument can be made, however, that this Court has only
recognized a process as within the statutory definition when it either was
tied to a particular apparatus or operated to change materials to a 'different
state or thing.'"). The definition of a "process" under § 101 can be discerned
from an old Supreme Court case: "Transformation and reduction of an
article 'to a different state or thing' is the clue to the patentability of a process
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