Appeal No. 2006-1187
Application No. 10/056,832
transformation or reduction of an article to a different thing or state. For eligibility
analysis, physical transformation “is not an invariable requirement, but merely
one example of how a mathematical algorithm [or law of nature] may bring about
a useful application.” AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352,
1358-59, 50 USPQ2d 1447, 1452 (Fed. Cir. 1999). Since the claim does not
entail the transformation of an article, then it must be determined if the claim
provides a practical application that produces a useful, tangible and concrete
result. The Federal Circuit has said “The question of whether a claim
encompasses statutory subject matter should not focus on which of the four
categories of subject matter a claim is directed to …but on the essential
characteristics of the subject matter, in particular its practical utility.” State Street
Bank & Trust Co. v. Signature Financial Group Inc., 149 F.3d 1368, 1375, 47
USPQ2d 1596, 1602 (Fed. Cir. 1998). Further, the Federal Circuit explained
that the claimed invention must produce a useful, concrete and tangible result,
State Street Bank, 149 F.3d 1373, 47 USPQ2d, 1601 (see also AT&T Corp. v.
Excel Communications, Inc., 172 F.3d 1352, 50 USPQ2d 1447 (Fed. Cir. 1999).
In this case, claim 1 is not drawn to a method that produces a tangible
result. Appellant argues, on page 8 of the brief, that the claims “result in the
transfer of a replica of a purchased product to the purchaser.” We disagree. As
stated supra, we consider the claim 1 limitation of “causing the replica including
the visible feature to be transferred to the purchaser” to be broad and
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