Appeal No. 1997-1339
Application 08/086,825
State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368, 1374, 47
USPQ2d 1596, 1601 (Fed. Cir. 1998), that "application of the test could be misleading,
because a process, machine, manufacture, or composition of matter employing a law of
nature, natural phenomenon, or abstract idea is patentable subject matter even though a
law of nature, natural phenomenon, or abstract idea would not, by itself, be entitled to such
protection." In other words, "a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula, computer program
or digital computer." Diamond v. Diehr, 450 U.S. 175, 187, 209 USPQ 1, 8 (1981).
Finally, it is apparent that the court in State Street favored a more common sense
approach of determining whether the claimed subject matter "constitutes a practical
application of a mathematical algorithm, formula, or calculation." State Street, 149 F.3d at
1373, 47 USPQ2d at 1601. The court in State Street indicated that the focus of a
statutory subject analysis should be "on the essential characteristics of the subject matter,
in particular, its practical utility.” State Street, 149 F.3d at 1375, 47 USPQ2d at 1602.
Note also the reinforcement of these principles in AT&T Corp. v. Excel Communications,
Inc., 172 F.3d 1352, 50 USPQ2d 1447 (Fed. Cir.1999).
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