Appeal 2006-1601
Application 09/828,579
produce a concrete, tangible and useful result, and are thus statutory in accordance
with 35 USC § 101.”
In turn, the Examiner concluded that the arguments overcame the rejection
under 35 U.S.C. § 101. The rejection was withdrawn at page 7 of the Answer. We
disagree with the Examiner’s conclusion for the reasons discussed infra, and we
apply the rejection of claims 6-10 anew. Additionally, we reject claims 11-20 on
the same ground.
(2)
Rejection of claims 6-10 under 35 U.S.C. § 101
Claims 6-10 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter. Claim 6, reproduced supra, is
representative.
Under a broadest reasonable interpretation, Appellant’s claims do not
require computer-implementation. See Section IV supra. The issue is whether
Appellant’s claims 6-10, which cover methods of providing future rate changes
involving no transformation and no process involving the other three statutory
categories (machine, manufacture, or composition of matter), 4 are patentable
subject matter under 35 U.S.C. § 101. So construed, Appellant’s claims are
4 “A machine is a concrete thing, consisting of parts, or of certain devices and
combination of devices.” Burr v. Duryee, 68 U.S. 531, 570 (1863). The term
“manufacture” refers to “‘the production of articles for use from raw or prepared
materials by giving to these materials new forms, qualities, properties, or
combinations, whether by hand-labor or by machinery.’” Diamond v.
Chakrabarty, 447 U.S. 303, 308, 206 USPQ 193, 196-97 (1980) (quoting
American Fruit Growers, Inc. v. Brogdex Co., 283 U.S. 1, 11, 8 USPQ 131, 133
(1931)). A “composition of matter” by its own terms requires matter.
Chakrabarty, 447 U.S. at 308, 206 USPQ at 196-97.
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