Appeal Number: 2006-2941
Application Number: 10/170,421
The guidelines first require a determination as to whether the claims as a whole are
directed to nothing more than abstract ideas, natural phenomena, or laws of nature. Clearly
the claims recite neither a natural phenomena nor a law of nature, so the issue is whether
they are directed to an abstract idea. We note that it is generally difficult to ascertain
whether a process is merely an abstract idea, particularly since claims are often drafted to
include minor physical limitations such as data gathering steps or post-solution activity. The
present claims, in fact, include a machine-implemented step of calculating excesses.
However, the question is whether the claims as a whole are nothing more than abstract
ideas.
If the claims are considered to be an abstract idea, then the claims are not eligible for
and, therefore, are excluded from patent protection. If not, then the next step set forth in the
guidelines is to determine whether the claimed invention is directed to a practical application
of an abstract idea, law of nature, or natural phenomenon. Again the claims involve neither
a law of nature nor natural phenomenon, so the issue is whether they are directed to a
practical application of an abstract idea. The guidelines indicate that either a transformation
of physical subject matter to a different state or thing or the production of a useful, concrete,
and tangible result equates to a practical application of an abstract idea. We note that the
useful, concrete, and tangible result test was set forth in State Street Bank & Trust Co. v.
Signature Finance Group, Inc., 149 F.3d 1368, 1373; 47 USPQ2d 1596, 1601 (Fed. Cir.
1998), in the context of a machine implemented process. The claims in the present case do
not require a machine for the entire process, but do include a step of using a computer for
calculating excesses in the fund. Thus, the useful, concrete, and tangible result test would
seem to apply. If the examiner determines that the claims are not directed to a practical
application of an abstract idea (or that they do not transform physical subject matter to a
different state or thing nor produce a useful, concrete, tangible result), then the claims
should be rejected under 35 U.S.C. § 101 as being non-statutory.
Accordingly, it is ORDERED that the application is remanded to the examiner to
consider a rejection under 35 U.S.C. § 101 in view of the guidelines.
This application, by virtue of its "special" status, requires immediate action by the
examiner. See MPEP § 708.01(D) (8th ed., Rev. 5, Aug. 2006). It is important that the
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