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Abstract idea

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General Edit

An abstract idea is an idea separated from a complex object, or from other ideas which naturally accompany it.

U.S. patent law Edit

The concept of abstract ideas was discussed by the Federal Circuit Court of Appeals in In re Comiskey[1]:

“Abstract ideas” are one type of subject matter that the Supreme Court has consistently held fall beyond the broad reaches of patentable subject matter under §101. As early as LeRoy v. Tatham, 55 U.S. 156, 14 How. 156, 14 L.Ed. 367 (1852) (full-text), the Supreme Court explained that “[a] principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.” Id. at 175, 55 U.S. 156. Since then, the unpatentable nature of abstract ideas has repeatedly been confirmed. See, e.g.,Diehr, 450 U.S. at 185, 101 S.Ct. 1048; Chakrabarty, 447 U.S. at 309, 100 S.Ct. 2204 (full-text); Flook, 437 U.S. at 589, 98 S.Ct. 2522 (full-text); Benson, 409 U.S. at 67, 93 S.Ct. 253 (full-text); Rubber-Tip Pencil Co. v. Howard, 20 Wall. 498, 87 U.S. 498, 507, 22 L.Ed. 410 (1874) (full-text). The very cases of this court that recognized the patentability of some business methods have reaffirmed that abstract ideas are not patentable. See AT&T, 172 F.3d at 1355 (full-text); State Street Bank, 149 F.3d at 1373 (full-text); see also In re Alappat, 33 F.3d 1526, 1542-43 (Fed. Cir. 1994) (full-text) (en banc).
The prohibition against the patenting of abstract ideas has two distinct (though related) aspects. First, when an abstract concept has no claimed practical application, it is not patentable. The Supreme Court has held that “[a]n idea of itself is not patentable.” Rubber-Tip Pencil, 87 U.S. at 507, 87 U.S. 498. In Benson, the claim was for a method of converting binary-coded decimal numerals into pure binary numerals that was “not limited to any particular art or technology, to any particular apparatus or machinery, or to any particular end use.” 409 U.S. at 64, 93 S.Ct. 253. Since the claim would therefore “wholly preempt the mathematical formula and in practical effect would be a patent on the algorithm itself,” the claim was unpatentable because its “practical effect” was to “patent an idea” in the abstract. Id. at 71-72 93 S.Ct. 253.[2]
Second, the abstract concept may have a practical application. The Supreme Court has reviewed process patents reciting algorithms or abstract concepts in claims directed to industrial processes. In that context, 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 embodied in, operates on, transforms, or otherwise involves another class of statutory subject matter, i.e., a machine, manufacture, or composition of matter. 35 U.S.C. §101. As the PTO notes, “[t]he Supreme Court has recognized only two instances in which such a method may qualify as a section 101 process: when the process ‘either [1] was tied to a particular apparatus' or [2] operated to change materials to a ‘different state or thing.’ ” See PTO Supp. Br. 4 (quoting Flook, 437 U.S. at 588 n. 9, 98 S.Ct. 2522). In Diehr, the Supreme Court confirmed that a process claim reciting an algorithm could state statutory subject matter if it: (1) is tied to a machine or (2) creates or involves a composition of matter or manufacture.[3] 450 U.S. at 184, 101 S.Ct. 1048. There, in the context of a process claim for curing rubber that recited an algorithm, the Court concluded that “[t]ransformation and reduction of an article ‘to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines.” Id. (quoting Benson, 409 U.S. at 70, 93 S.Ct. 253);[4] see also In re Schrader, 22 F.3d 290, 295 (Fed. Cir. 1994) (full-text) (holding when a claim does not invoke a machine, “ §101 requires some kind of transformation or reduction of subject matter”). Thus, a claim that involves both a mental process and one of the other categories of statutory subject matter (i.e., a machine, manufacture, or composition) may be patentable under §101. See Diehr, 450 U.S. at 184, 101 S.Ct. 1048 (holding a process that involved calculations using the “Arrhenius equation” patentable because the claim “involve[d] the transformation of an article, in this case raw, uncured synthetic rubber, into a different state or thing”). For example, we have found processes involving mathematical algorithms used in computer technology patentable because they claimed practical applications and were tied to specific machines.[5]

References Edit

  1. 499 F.3d 1365, 1376-77, 84 U.S.P.Q.2d (BNA) 1670 (Fed. Cir. 2007) (full-text).
  2. In Benson, the Supreme Court reversed a decision by our predecessor court that had, in turn, relied on earlier decisions, such as Application of Musgrave, 57 C.C.P.A. 1352, 431 F.2d 882, 893 (CCPA 1970) (full-text), suggesting that a process of human thinking in and of itself could be patentable. See also AT&T, 172 F.3d at 1358 (holding that a mathematical algorithm must produce “a useful, concrete, and tangible result” to be patentable); State Street Bank, 149 F.3d at 1373 (same); MPEP §2106 (Rev. 5, Aug. 2006) (“[C]laims define nonstatutory processes if they ... simply manipulate abstract ideas . . . without some claimed practical application.”).
  3. Of course, process claims not limited to claiming an abstract concept or algorithm (i.e., a mental process) may not be subject to the same requirements.
  4. See also Diehr, 450 U.S. at 184, 101 S.Ct. 1048 (full-0text) ("Industrial processes . . . are the types which have historically been eligible to receive the protection of our patent laws.” (emphasis added)); Tilghman v. Proctor, 102 U.S. 707, 722, 26 L.Ed. 279 (1880) (full-text) (“A manufacturing process is clearly an art, within the meaning of the law.” (emphasis added)); Cochrane v. Deener, 94 U.S. 780, 788, 24 L.Ed. 139 (1876) (full-text) (“A process is a mode of treatment of certain materials to produce a given result. It is an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.”).
  5. See AT&T, 172 F.3d at 1355, 1358 (holding patentable “a process that uses the Boolean principle in order to determine the value of the PIC indicator” and that “require[d] the use of switches and computers”); State Street Bank, 149 F.3d at 1373 (“[W]e hold that the transformation of data . . . by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm.” (emphases added)); Alappat, 33 F.3d at 1544 (“This is not a disembodied mathematical concept which may be characterized as an ‘abstract idea,’ but rather a specific machine to produce a useful, concrete, and tangible result.” (emphases added)); Arrhythmia Research Tech., Inc. v. Corazonix Corp., 958 F.2d 1053, 1058-59 (Fed. Cir. 1992) (full-text) (holding patentable a method for analyzing electrocardiograph signals for the detection of a specific heart condition that used “electronic equipment programmed to perform mathematical computation”).

See also Edit

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