Appeal 2007-1416
Application 09/881,791
of these steps covering a mental activity, the term “automated” in the
preamble is left without supporting structure or steps.
In Comiskey the Court advises us as follows, “. . . the Supreme Court
has held that a claim reciting an algorithm or abstract idea can state statutory
subject matter only if, as employed in the process, it is embodies in, operates
on, transforms, or otherwise involves another class of statutory subject
matter, i.e., a machine, manufacture, or composition of matter.” In re
Comiskey, --- F.3d ----, (2007 WL 2728361) (Fed. Cir. Sept. 20, 2007). The
Court, favorably quoting the USPTO brief, explains that there are only two
instances where an algorithm method may qualify as a section 101 process:
when the process 1) was tied to a particular apparatus or 2) operated to
change materials to a different state or thing. See also Diamond v. Diehr,
450 U.S. at 184 (1981).
We come to the crux of the matter: do the words “method for
automated acquisition” in the preamble serve to tie the claimed mental steps
“to a particular machine”? We cannot see that they do; “automated” is
merely an expression of intended use that, at best, recites a desired result of
the claimed method. Crucially, however, the claim fails to positively recite
any concrete, physical implementation to achieve this “automated” result as
the term is wholly unsupported by physical steps or structure in the claims.
Perhaps the intended use of the method will involve a machine, but we
decline to infer such intentions suggested in the present specification into the
claims.
Although the “marking” step comes closest to qualifying as statutory
subject matter under Diehr and Comiskey, it still falls short under § 101. We
find this step recites no more than the equivalent of “entering bids in a
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