Appeal Number: 2007-0133
Application Number: 10/223,466
intrinsically more abstract than product claims or method claims reciting structure,
will often need to recite some sort of transformation act in order to clearly show
that the method claim is for some specific application of the idea and represents
something more than just a concept. See, e.g., id. at 1358 (noting that “AT&T’s
claimed process” uses “switching and recording mechanisms to create a signal
useful for billing purposes.”). Here, Appellant’s claims lack the “particularly
claimed combination of elements” recited in Alappat’s claim, the transformation of
data by a machine recited in State Street’s claim, the transformation of electrical
signals in Arrhythmia’s method claim, or the transformation of data useful for
billing purposes in AT&T’s method claim, and therefore lacks those characteristics
that separate a practical application of an idea from just the idea itself.
iii)Appellant’s claims appear to be unpatentable under section 101 because
(iii) the useful, concrete, and tangible result test does not apply here, but, even if it
did, the claims nevertheless do not meet that test.
Principles of Law relating to the Federal Circuit’s “Useful, Concrete, and
Tangible Result”
State Street’s “useful, concrete, and tangible result” test is limited to
machines and machine-implemented methods that transform data. As discussed,
supra, the development of the Federal Circuit’s data transformation test was in
response to a series of cases concerning the eligibility of machines and machine-
implemented methods employing a mathematical algorithm. In assessing the
eligibility of these specific types of claims, the court adopted a rule requiring such
claims to produce a “useful, concrete, and tangible result.” State Street, 149 F.3d
at 1373. The cases applying the useful, concrete, and tangible result test have all
been confined to machine implementation of mathematical algorithms. Thus, the
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