Appeal No. 2004-0403
Application 09/100,684
every possible way of implementing the plan, which indicates that
it is directed to the "abstract idea" or concept itself, rather
than a practical application of the idea. The fact that
(unclaimed) physical steps that would have to be performed to
carry out the method are not read into the claim to make it
statutory. In any case, the mere presence of a physical step
cannot transform an unpatentable principle into a patentable
"process." See Diamond v. Diehr, 450 U.S. at 191-92, 209 USPQ at
10 ("A mathematical formula as such is not accorded the
protection of our patent laws, and this principle cannot be
circumvented by attempting to limit the use of the formula to a
particular technological environment. Similarly, insignificant
post-solution activity will not transform an unpatentable
principle into a patentable process." (Citations omitted.)).
Thus, we hold that claims 22-26 and 28-30 are directed to
nonstatutory subject matter under the "abstract idea" exception.
The State Street test of a "practical application, i.e.,
'a useful, concrete and tangible result," was announced in the
context of transformation of data by a machine. Thus, it is not
clear that the test applies in the present situation. Machines
and machine-implemented processes, have generally been considered
statutory subject matter, except in the special case where
mathematical algorithms were involved. A machine implementation
implicitly requires a physical transformation of subject matter,
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