Ex Parte Burnhouse et al - Page 13

                Appeal 2007-0345                                                                             
                Application 09/812,417                                                                       
                                                                                                            
                prior precedents.”  Benson, 409 U.S. at 71, 175 USPQ at 676-677.  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, 175 USPQ at 676-677; Flook, 437 U.S. at 594-95, 198                       
                USPQ at 199-200.                                                                             
                      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 St. Bank & Trust Co. v.                  
                Signature Fin. Group, Inc., 149 F.3d 1368, 1373, 47 USPQ2d 1596, 1601                        
                (Fed. Cir. 1998).  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 Corp. v. Excel Communications, Inc., 172 F.3d 1352,                      
                1358, 50 USPQ2d 1447, 1452 (Fed. Cir. 1999).  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, 50                         
                USPQ2d at 1452.  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, 1059, 22 USPQ2d 1033, 1038 (Fed. Cir.                        



                                                     13                                                      

Page:  Previous  6  7  8  9  10  11  12  13  14  15  16  17  18  19  20  Next

Last modified: September 9, 2013