Ex Parte TEDESCO et al - Page 6




          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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