Appeal 2007-1089
Application 10/348,277
claim that does not include particular machines." Cochrane v. Deener,
94 U.S. 780, 788 (1877). The "subject matter" transformed does not need to
be a physical, tangible object or article or substance, but can be physical, yet
intangible, such an electrical signal or heat (e.g., transforming heat into
motion). This is consistent with the Office's understanding that an "art"
(called a "process" after 1952) historically referred to methods performed by
new and known machines, methods of manufacture (making and treating
machines, manufactures, and compositions of matter), and methods of
controlling natural forces, not just any series of steps without regard to
whether it produces some physical effect. Acts on nonphysical subject
matter, although they may be argued to be a transformation, are not covered;
e.g., transformation of ownership, rights, payments, duties, methods of
government, methods of getting rich, etc., are not the type of acts considered
to be a process under § 101.
A statutory "process" is not required to claim the structure for
performing it. Indeed, it is possible for a statutory "process" to be performed
manually providing the claim as a whole recites a statutory transformation;
e.g., "mixing" two elements or compounds is clearly a statutory
transformation that results in a chemical substance or mixture although no
apparatus is claimed to perform the step and although the step could be
performed manually. Thus, the fact that a method is not performed on a
computer does not mean that it is not a statutory "process."
Another important concept is that a claim that is so broad that it reads
on nonstatutory as well as statutory subject matter should be treated as
unpatentable, just as a claim which is so broad that it reads on obvious and
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