Appeal No. 1998-1733
Application No. 07/617,303
directed to nonstatutory subject matter. The examiner contends that the claimed
invention is directed to a mathematical algorithm with insignificant pre- and post-
solution activity. Reference is made to pages 4-15 of the answer for the examiner’s
complete explanation of the rejection.
Reference is made to the brief and answer for the respective positions of
appellants and the examiner.
OPINION
The previous Board decision, as well as the vacated Federal Circuit decision,
was based on large part, on an analysis of the claimed subject matter using the
“Freeman-Walter-Abele” test.1 Under the first part of that test for statutory subject
matter, claims are analyzed to determine whether a mathematical algorithm is either
directly or indirectly recited. Under the second step of the two-part test, if the claims
directly or indirectly recite 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
1In re Freeman, 573 F.2d 1237, 1245, 197 USPQ 464, 471 (CCPA 1978); In re Walter, 618 F.2d 758, 766-
767, 205 USPQ 397, 406-407 (CCPA 1980); In re Abele, 684 F.2d 902, 906, 214 USPQ 682, 686 (CCPA 1982).
4
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