Appeal No. 2006-1595
Application No. 09/798,484
laws of nature, abstract ideas, and natural phenomena -- are not eligible for
patent protection. Diamond v. Diehr, 450 U.S. 175, 185, 209 USPQ 1, 7 (1981).
On the other hand, practical applications of laws of nature, abstract ideas,
or natural phenomena are eligible for patent protection. Diehr, 450 U.S. at 187,
209 USPQ at 8. A practical application of a judicial exception exists if the claim
(1) transforms or reduces an article to a different state or thing, or (2) produces a
useful, concrete, and tangible result. Diehr, 450 U.S. at 183, 209 USPQ at 6;
State Street Bank & Trust Co. v. Signature Financial Group Inc., 149 F.3d 1368,
1374, 47 USPQ2d 1596, 1601 (Fed. Cir. 1998).
In this case, the examiner asserts that the claimed invention does not set
forth a tangible result and is merely “form over substance.”3 At the outset, we
note that a tangible result is a “real-world” result -- not an abstract result. See
Gottschalk v. Benson, 409 U.S. 63, 71-72, 175 USPQ 673, 676-77 (1972).
In our view, the independent claims, taken as a whole, positively recite
statutory subject matter. Claim 1, for example, recites “[a]n apparatus for
automatically specifying the configuration of a mixed-language model to be
simulated in a simulator…, the apparatus comprising...” [emphasis added]. The
preamble of the claim establishes that the claimed subject matter not only is an
3 Although we generally agree with appellants that merely alleging that claimed subject matter is
“form over substance” is not itself a proper basis for determining eligible subject matter under 35
U.S.C. § 101 [see reply brief, page 5], the MPEP in fact uses such language in connection with
analysis of computer-related inventions for patentability under § 101. See MPEP
§ 2106(IV)(B)(1) (“Merely claiming nonfunctional descriptive material stored in a computer-
readable medium does not make it statutory. Such a result would exalt form over substance."
(emphasis added)). But the MPEP’s usage of this language pertains to claiming nonfunctional
descriptive material stored in a computer-readable medium – a situation that is not germane to
the claims on appeal.
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