Appeal No. 1998-1733
Application No. 07/617,303
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 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 court in State Street favored a more pragmatic
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 indicated therein 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.
These principles appear to have been reinforced in AT&T Corp v. Excel
Communications, Inc., 172 F.3d 1352, 50 USPQ2d 1447 (Fed. Cir. 1999).
Applying these principles to the instant claimed subject matter, we find that the
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007