Appeal No. 2004-0403
Application 09/100,684
different state or thing." See Gottschalk v. Benson,
409 U.S. 63, 71, 175 USPQ 673, 676 (1972) ("It is argued that a
process patent must either be tied to a particular machine or
apparatus or must operate to change articles or materials to a
'different state or thing.' We do not hold that no process
patent could ever qualify if it did not meet the requirements of
our prior precedents."); Parker v. Flook, 437 U.S. at 588 n.9,
198 USPQ at 196 n.9. However, care should be taken in abandoning
or creating exceptions to a definition which has proven useful
over many years. As far as we can determine, all cases involving
method claims after Gottschalk v. Benson can be explained by the
transformation of subject matter test. The Federal Circuit
stated that a "'physical transformation' ... is not an invariable
requirement, but merely one example of how a mathematical
algorithm may bring about a useful application," AT&T v. Excel
Communications, Inc., 172 F.3d 1352, 1358, 50 USPQ2d 1447, 1452
(Fed. Cir. 1999). However, AT&T involved a method of
transforming data on a machine, not a disembodied method, and it
does not say that no physical transformation of subject matter is
required if no machine is claimed. Transformation of data by a
machine is a special case. It also appears that what was meant
in AT&T is that calculations on a machine can be statutory
subject matter without "physical transformations" performed
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