Appeal No. 2006-1569 Page 8
Application No. 10/159,997
in a physical transformation outside the computer . . . or (B) be limited to a practical
application within the technological arts” (emphasis added).
With regard to the latter, the MPEP states that a “process that merely
manipulates an abstract idea or performs a purely mathematical algorithm” is
nonetheless statutory if “the claimed process [is] limited to a practical application of the
abstract idea or mathematical algorithm in the technological arts. . . . A claim is limited
to a practical application when the method, as claimed, produces a concrete, tangible
and useful result; i.e., the method recites a step or act of producing something that is
concrete, tangible and useful.” MPEP § 2106(IV)(B)(2)(b)(ii).
In addition, we note that the section of the MPEP on which the examiner relies
has been superseded by the Interim Guidelines for Examination of Patent Applications
for Patent Subject Matter Eligibility, 1300 Off. Gaz. Pat. Office 142 (November 22, 2005)
(accessible on-line at www.uspto.gov/go/og/2005/week47/patgupa.htm). The Interim
Guidelines expressly state that “physical transformation ‘is not an invariable
requirement, but merely one example of how a mathematical algorithm [or law of nature]
may bring about a useful application.’” Id. at 1463 (quoting AT&T Corp. v. Excel
Commc’ns, Inc., 172 F.3d 1352, 50 USPQ2d 1447 (Fed. Cir. 1999), alteration in
original). The Interim Guidelines state that a process that does not result in physical
transformation may nonetheless be statutory if it achieves a useful, concrete and
tangible result. Id.
33 Page 20 of the on-line version of the Interim Guidelines.
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