Appeal 2007-1416
Application 09/881,791
the claim limitations their broadest reasonable interpretation, we conclude
that claims 1 to 7 are unpatentable under section 101 because (i) they do not
qualify as a “process” under section 101 as that term has been interpreted by
case law, and (ii) they seek to patent an abstract idea.
In view of the recently decided case, In re Comiskey, --- F.3d ----,
(2007 WL 2728361) (Fed. Cir. Sept. 20, 2007), we must consider the
statutory sufficiency of the recited claims under 35 U.S.C. § 101. More
particularly, apart from the word “automated” in the preamble which, at
best, merely tangentially suggests a machine, claim 1 does not recite any
steps that necessarily involve machine implementation. Without more, the
recited steps can be considered merely a series of mental processes. We will
return to the term “automated” after we analyze the other steps in
representative claim 1.
The method of claim 1 contains the following steps, repeated from
above:
• receiving the specification . . . which includes a plurality of
sentences
• obtaining a sentence from the plurality
• determine whether the obtained sentence is a testable assertion
• mark the obtained sentence when it is a testable assertion
properties, or combinations, whether by hand-labor or by machinery.’”
Diamond v. Chakrabarty, 447 U.S. 303, 308, 206 USPQ 193, 196-97 (1980)
(quoting American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11, 8
USPQ 131, 133 (1931)). A “composition of matter” by its own terms
requires matter. Chakrabarty, 447 U.S. at 308, 206 USPQ at 196-97.
11
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