Appeal 2007-1251
Application 09/451,097
structure for calculating the statistics. The Examiner combines Nagasaka
with Takashima but does not rely upon Nagasaka for calculating statistics of
motion vectors. Furthermore, we find no disclosure in Nagasaka that would
have suggested to the skilled artisan a calculating unit for calculating
statistics of motion vectors. Accordingly, Nagasaka fails to cure the
deficiency of Takashima, and we cannot sustain the obviousness rejection of
claims 1 and 27.
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new ground of rejection against Appellant's claim 37 under 35 U.S.C. § 101
as being nonstatutory.
The Supreme Court has held that claims that, as a whole, are directed
to nothing more than abstract ideas, natural phenomena, or laws of nature
are not statutory under 35 U.S.C. § 101. See Diamond v. Diehr, 450 U.S.
175, 185, 209 USPQ 1, 7 (1981). An application of a law of nature or
mathematical formula to a known structure or process, though, may be
patentable. Id. at 187, 209 USPQ at 8. However, a process that comprises
"no substantial practical application" of an abstract idea is not patentable, as
such a patent would in effect be a patent on the abstract idea itself.
Gottschalk v. Benson, 409 U.S. 63, 71-72, 175 USPQ 673, 676 (1972).
Clearly, the present claim recites neither a natural phenomenon nor a
law of nature, so the issue is whether it is directed to an abstract idea. We
note that mathematical algorithms are considered to be abstract ideas. Thus,
processes that are merely mathematical algorithms are nonstatutory under
35 U.S.C. § 101. We further note that it is generally difficult to ascertain
whether a process is merely an abstract idea, particularly since claims are
often drafted to include minor physical limitations such as data gathering
5
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: September 9, 2013