Appeal No. 1998-1734
Application No. 07/508,024
a mathematical algorithm, a determination is made as to whether
or not the claims, as a whole, merely recite the mathematical
algorithm.
Between the time of these previous decisions and the present
time, the Federal Circuit has issued its decision in State Street
Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d
1368, 47 USPQ2d 1596 (Fed. Cir. 1998). In our view, State Street
is controlling in the instant case. In accordance with State
Street, the applicability of the “Freeman-Walter-Abele” 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.” State
Street, 149 F.3d at 1374, 47 USPQ2d at 1601. That is, “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 Federal Circuit in State
Street favored a more pragmatic approach of determining whether
the claimed subject matter “constitutes a practical application
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