Appeal No. 2004-0403
Application 09/100,684
'a useful, concrete and tangible result.'" State St. Bank &
Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 1372,
47 USPQ2d 1596, 1600-01 (Fed. Cir. 1998). The claims do not
expressly or implicitly require performance by a machine.
There seem to be three possible tests for statutory subject
matter of non-machine-implemented process claims: (1) the
definition of a "process" under 35 U.S.C. § 101 as requiring a
physical transformation of physical subject matter, tangible or
intangible, to a different state or thing; (2) the "abstract
idea" exception; and/or (3) the test of whether the claim recites
a "practical application, i.e., 'a useful, concrete and tangible
result" under State Street, which was stated in the context of
transformation of data by a machine or a machine-implemented
process, adapted somehow for a non-machine-implemented method.
Claims which are broad enough to read on statutory subject
matter and on nonstatutory subject matter are considered
nonstatutory. Cf. In re Lintner, 458 F.2d 1013, 1015,
173 USPQ 560, 562 (CCPA 1972) ("Claims which are broad enough to
read on obvious subject matter are unpatentable even though they
also read on nonobvious subject matter."). During prosecution,
applicant can amend to limit the claims to statutory subject
matter. Cf. Prater II, 415 F.2d at 1404 n.30, 162 USPQ at 550
n.30 (Where a patent is at issue: "By construing a [patent] claim
as covering only patentable subject matter, courts are able, in
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