Appeal No. 1999-2609
Application No. 08/730,289
The examiner maintains that the limitations of claim 1 are directed to a “process
performed by a computer, a process that performs a purely mathematical algorithm is
non statutory despite the fact that it has usefulness in the real estate market analysis.”
(See answer at page 4.) The examiner further maintains that the claimed invention is a
mathematical algorithm and that there is no activity outside the computer in response to
the calculated estimate of a real estate entity. (See answer at page 4.) We disagree
with the examiner’s conclusions. From our review of the claimed invention as
interpreted in light of the disclosed invention, we find that the claimed invention is
directed to more than a mere abstract invention disassociated from an application in the
technological arts. At oral hearing appellants’ representative argued that in a
subsequent case, AT & T Corp. v. Excel Communications Inc., 172 F.3d 1352, 1357,
50 USPQ2d 1447, 1451 (Fed. Cir. 1999), the Federal Circuit established that claims to
an apparatus or process are to be treated similarly when making a determination of the
presence of statutory subject matter. The Court went on to find that it does not matter
whether the claimed invention is directed to a process or machine and that the scope of
35 U.S.C. § 101 is the same for either claimed invention (since both were disclosed in
the specification). (AT & T at 1451.) We agree with appellants that the computer
implemented process of independent claim 1 for determining value of the real estate
entity should be treated similar to an apparatus to carry out a similar claimed scope.
Appellants argue that the claims define a “transformation.” (See brief at page 15.) We
4
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007