Appeal Number: 2007-0133
Application Number: 10/223,466
not meet the requirements of our prior precedents.” Benson, 409 U.S. at 71.
Rather than rule on this question in Benson and Flook, the Supreme Court decided
those cases based on the abstract idea exception to patentability. Benson, 409 U.S.
at 71-72; Flook, 437 U.S. at 594-95.
Since Diehr, the Federal Circuit has reviewed several computer technology
cases, and in acknowledgment of the innovations occurring in this technological
field, identified a third category of method claims that qualify as a “process.”
Extrapolating from the Supreme Court’s “transformation and reduction of an
article” test, the Federal Circuit has held that transformation of intangible subject
matter (i.e., data or signals) may also qualify as a § 101 process. See, e.g., State
Street, 149 F.3d at 1373. Responding to the argument that process claims must
recite a “physical transformation,” the Federal Circuit in AT&T ruled that “physical
transformation” “is not an invariable requirement, but merely one example of how
a mathematical algorithm may bring about a useful application.” AT&T, 172 F.3d
at 1358. Quoting the Supreme Court’s language, “e.g., transforming or reducing
an article to a different state or thing” from Diehr, the AT&T court noted the usage
of “e.g.” “denotes an example, not an exclusive requirement.” Id. at 1359. AT&T
went on to cite the transformation of intangible data signals in the method claim of
Arrhythmia Research Technology Inc. v. Corazonix Corp., 958 F.2d 1053 (Fed.
Cir. 1992), as an example that qualifies as a § 101 ‘process” in addition to the
Supreme Court’s test. See id. at 1359.
Accordingly, the Federal Circuit has consistently used its own “data
transformation” test in assessing the eligibility of various machine-implemented
claims. In Alappat, the Court held that “data, transformed by a machine” “to
produce a smooth waveform display” “constituted a practical application of an
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