In its recently decided Digitech Image v. Electronics for Imaging opinion, the Federal Circuit affirmed the prior district court's decision that a claimed "device profile" constituted subject matter ineligible for patent protection. 35 U.S.C. 101 articulates four categories of paent eligible subject matter: (1) a process, (2) a machine, (3) a manufacture, or (4) a composition of matter. As the Fed. Cir. noted, among the four statutory categories, only processes are not some physical or tangible thing. That observation highlights the inherent problem with Digitech's claimed data structure, as seen below:

1. A device profile for describing properties of a device in a digital image reproduction system to capture, transform or render an image, said device profile comprising:
first data for describing a device de-pendent transformation of color infor-mation content of the image to a device independent color space; and
second data for describing a device de-pendent transformation of spatial in-formation content of the image in said device independent color space.

The above claim does no more than claim types of data, ostensibly organized as a "device profile." The profile is not embodied in any particular form, nor put to any use in the claim. Scribbles on a sheet of paper would infringe the claim as directly as electronic data stored in the configuration ROM of an imaging reproduction system. The identification of this claim as being patent-ineligible was no surprise.

However, Digitech had other claims; namely, method claims directed to generating the above device profile, such as claim 10 below:

10.    A method of generating a device profile that describes properties of a device in a digital image reproduction system for capturing, transforming or rendering an image, said method comprising:
generating first data for describing a device dependent transformation of col-or information content of the image to a device independent color space through use of measured chromatic stimuli and device response characteristic functions;
generating second data for describing a device dependent transformation of spatial information content of the image in said device independent color space through use of spatial stimuli and de-vice response characteristic functions; and
combining said first and second data in-to the device profile.

The Fed. Cir. recognized that these claims were directed to a process (as one of the four categories of patent-eligible subject matter) but noted that claims directed to one of the statutory categories may nonetheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas. Regarding claims that include an abstract idea, such claims may be eligible for patent protection if they "include additional inventive features such that the claim scope does not solely capture the abstract idea."

Regarding the Digitech method claims, the Fed. Cir. characterized the claims as being directed to "an ineligible abstract process of gathering and combining data that does not require input from a physical device."