Appeal No. 2006-1569 Page 9
Application No. 10/159,997
The Interim Guidelines also defines the terms “useful”, “concrete” and “tangible”
as they are to be applied during examination. See id. We note that the terms “tangible”
and “concrete” do not require physical transformation of objects outside the computer.
See id. (“The tangible requirement does not necessarily mean that a claim . . . must
operate to change articles or materials to a different state or thing”)4 and (to “produce[ ]
a ‘concrete’ result . . . the process must have a result that can be substantially
repeatable or the process must substantially produce the same result again.”).5
The Interim Guidelines, in analyzing the relevant case law, provide the following
guidance for determining whether a claimed process is statutory: “The focus of the
inquiry is on whether the claim, considered as a whole, constitutes ‘a practical
application of an abstract idea.’ . . . [A]n ‘abstract idea’ when practically applied to a
useful end is eligible for a patent.” Id. at 149.6 In addition, “[t]he focus is not on whether
the steps taken to achieve a particular result are useful, tangible and concrete, but
rather that the final result is ‘useful, tangible and concrete.’” Id.7
Here, the result of the claimed process is a dataset of alternate mRNA splice
isoforms of the target gene sequences. The specification states that this dataset is
useful “for identifying which isoforms of a gene will be expressed” (page 6, line 6), for
engineering genes to predictively undergo alternative splicing and thereby control gene
expression (page 6, last paragraph), and for “generating transgenic animals in which
4 Page 21 of the on-line version of the Interim Guidelines.
5 Page 21 of the on-line version of the Interim Guidelines.
6 Page 37 of the on-line version of the Interim Guidelines.
7 Page 38 of the on-line version of the Interim Guidelines.
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