Appeal 2007-1443
Application 09/813,636
1 the idea. In this case, the claimed methods do not require any machine or
2 apparatus to perform the steps and do not operate to physically transform any
3 material to a different state or thing, and are therefore not processes within the
4 meaning of the patent statutes. As such, they do not fall within any of the statutory
5 categories of patentable subject matter under § 101.
6 The Appellant argues that the claims are statutory because they produce a
7 useful result, i.e., “generating a forward-looking report” (Br. 9). Our reviewing
8 court has applied the “useful, concrete, and tangible result” test only to claims that
9 are directed to machine implementation of mathematical algorithms, and we find
10 no precedent requiring us to extend it to non-machine implemented methods in this
11 case. See In re Alappat, 33 F.3d 1526, 1544, 31 USPQ2d 1545, 1557 (Fed. Cir.
12 1994) (“This [claimed invention] is not a disembodied mathematical concept
13 which may be characterized as an ‘abstract idea,’ but rather a specific machine to
14 produce a useful, concrete, and tangible result”); State Street, 149 F.3d at 1373, 47
15 USPQ2d at 1601 (holding “transformation of data … by a practical application of a
16 mathematical algorithm, formula, or calculation, because it produces ‘a useful,
17 concrete and tangible result.’”); and AT&T Corp. v. Excel Communications, Inc.,
18 172 F.3d 1352, 1358, 50 USPQ2d 1447, 1452 (Fed. Cir. 1999) (“Because the
19 claimed process applies the Boolean principle to produce a useful, concrete, and
20 tangible result without pre-empting other uses of the mathematical principle, on its
21 face the claimed process comfortably falls within the scope of § 101.”
22 Therefore, all of the claims are directed toward ineligible subject matter.
23 Accordingly we sustain the Examiner's rejection of claims 1-12 and 19-22 rejected
24 under 35 U.S.C. § 101 as directed to non-statutory subject matter.
25
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