Appeal 2007-1443
Application 09/813,636
1 manufacture, or composition of matter, or any . . . improvement
2 thereof . . . ." 35 U.S.C. § 101 (1988). Cf. In re Alappat, 33 F.3d 1526
3 (Fed. Cir. 1994) (en banc) ("The use of the expansive term "any" in
4 § 101 represents Congress's intent not to place any restrictions on the
5 subject matter for which a patent may be obtained beyond those
6 specifically recited in § 101 and the other parts of Title 35.")
7 To include some things is to exclude others. The chore of defining
8 exactly what is excluded under § 101, and applying such definitions to
9 specific cases, has caused courts to expend much effort in trying to
10 find the right words to describe some rather abstract notions. In
11 Diamond v. Diehr, 450 U.S. 175, 67 L. Ed. 2d 155, 101 S. Ct. 1048
12 (1981), the Supreme Court summarized the scope of the § 101
13 exclusion and the Court's prior efforts at describing it by saying
14 "[e]xcluded from such patent protection are laws of nature, natural
15 phenomena, and abstract ideas . . . . Our recent holdings in Gottschalk
16 v. Benson [409 U.S. 63, 34 L. Ed. 2d 273, 93 S. Ct. 253 (1972)] and
17 Parker v. Flook [437 U.S. 584, 57 L. Ed. 2d 451, 98 S. Ct. 2522
18 (1978)], both of which are computer-related, stand for no more than
19 these long-established principles." Id. at 185. …
20 [W]e find that regardless whether the claim can be said to recite
21 indirectly or directly a mathematical algorithm, the dispositive issue
22 for assessing compliance with § 101 in this case is whether the claim
23 is for a process that goes beyond simply manipulating "abstract ideas"
24 or "natural phenomena".
25 In re Warmerdam, 33 F.3d 1354, 1358-60, 31 USPQ2d 1754, 1757 (Fed.
26 Cir. 1994).
27 In the case where a claim is for a process, as opposed to a product, “[t]he line
28 between a patentable ‘process’ and an unpatentable ‘principle’ is not always clear.
29 Both are ‘conception[s] of the mind, seen only by [their] effects when being
30 executed or performed.” Parker v. Flook, 437 U.S. U.S. 584, 589 (1978) (quoting
31 Tilghman v. Proctor, 102 U.S. 707, 728 (1880)). “The holding that the discovery
32 of [Benson’s] method could not be patented as a ‘process’ forecloses a purely
33 literal reading of § 101.” Flook, 437 U.S. at 589. The Supreme Court has
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