Appeal No. 2007-1287
Application No. 10/161,274
PRINCIPLES OF LAW
Office personnel must rely on Appellants’ disclosure to properly determine
the meaning of the terms used in the claims. Markman v. Westview Instruments,
Inc., 52 F.3d 967, 980, 34 USPQ2d 1321, 1330 (Fed. Cir. 1995). “[I]nterpreting
what is meant by a word in a claim ‘is not to be confused with adding an
extraneous limitation appearing in the specification, which is improper.’” In re
Cruciferous Sprout Litigation, 301 F.3d 1343, 1348, 64 USPQ2d 1202, 1205, (Fed.
Cir. 2002) (emphasis in original) (citing Intervet Am., Inc. v. Kee-Vet Labs., Inc.,
887 F.2d 1050, 1053, 12 USPQ2d 1474, 1476 (Fed.Cir.1989)).
The categories of statutory subject matter are "process, machine,
manufacture, or composition of matter." 35 U.S.C. § 101. "[N]o patent is
available for a discovery, however useful, novel, and nonobvious, unless it falls
within one of the express categories of patentable subject matter of 35 U.S.C.
§ 101." Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 483, 181 USPQ 673, 679
(1974).
The three product classes of machine, manufacture, and composition of
matter have traditionally required physical structure or substance. "The term
machine includes every mechanical device or combination of mechanical powers
and devices to perform some function and produce a certain effect or result."
Corning v. Burden, 56 U.S. 252, 267 (1854); see also Burr v. Duryee, 68 U.S. 531,
570 (1863) (a machine is a concrete thing, consisting of parts or of certain devices
and combinations of devices). In modern parlance, electrical circuits and devices,
such as computers, are referred to as machines.
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