Appeal No. 1998-2848
Application 08/398,862
Appellant did not file a reply brief to challenge these
new reasons by the Examiner. See 37 CFR § 1.193(b) (appellant
may file a reply brief addressing new points of arguments).
Nevertheless, we do not affirm the rejection pro forma.
"[A] series of steps is a 'process' within § 101 unless
it falls within a judicially determined category of
nonstatutory subject matter exceptions." In re Sarkar,
588 F.2d 1330, 1333, 200 USPQ 132, 137 (CCPA 1978). The
recognized exceptions are for "laws of nature, natural
phenomena, and abstract ideas." See In re Alappat,
33 F.3d 1526, 1542, 31 USPQ2d 1545, 1556 (Fed. Cir. 1994) (in
banc) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)).
The key to statutory subject matter is whether the claimed
subject matter is directed to a "practical application," which
the Federal Circuit has said is "a useful, concrete and
tangible result." State Street Bank & Trust Co. v. Signature
Financial Group Inc., 149 F.3d 1368, 1375, 47 USPQ2d 1596,
1602 (Fed. Cir. 1998). Thus, a "process" no longer requires a
physical transformation of something to a different state or
thing (although such transformations fall within the so-called
"safe harbors" of the Guidelines and MPEP § IV.B.2.(b)(i)).
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