Appeal No. 2006-2541
Application No. 09/832,438
to nothing more than abstract ideas, natural phenomena, or laws of nature.
Clearly, claim 1 recites neither a natural phenomena nor a law of nature, so
the issue is whether they are directed to an abstract idea. We note that it is
generally difficult to ascertain whether a process is merely an abstract idea,
particularly since claims are often drafted to include minor physical
limitations such as data gathering steps or post-solution activity. Claim 1
recites a method performed in a data processing system and as such recites
machine-implemented steps. However, the question is whether the claim as
a whole recites nothing more than abstract ideas. If the claim is considered
to be an abstract idea, then the claim is not eligible for and, therefore, is
excluded from patent protection. If not, then the next step set forth in the
guidelines is to determine whether the claimed invention is directed to a
practical application of an abstract idea, law of nature, or natural
phenomenon. Again the claim involves neither a law of nature nor natural
phenomenon, so the issue is whether it is directed to a practical application
of an abstract idea. The guidelines indicate that either a transformation of
physical subject matter to a different state or thing or the production of a
useful, concrete, and tangible result equates to a practical application of an
abstract idea. We note that the useful, concrete, and tangible result test was
set forth in State Street Bank & Trust Co. v. Signature Finance Group, Inc.,
149 F.3d 1368, 1373; 47 USPQ2d 1596, 1601 (Fed. Cir. 1998), in the
context of a machine implemented process. Independent claim 1 recites a
step of allocating resources of the computer system to maximize profits,
which are generated in response to requests for service. Appellants’
specification, on pages 9 and 10, discusses allocation of resources as
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: September 9, 2013