Appeal 2006-1601
Application 09/828,579
The Supreme Court, however, presumably concerned about barring patents
for future, unforeseeable technologies, declined to rule on whether its precedent
foreclosed any other possible avenues for a method claim to qualify as a section
101 process: “It is argued that a process patent must either be tied to a particular
machine or apparatus or must operate to change articles or materials to a ‘different
state or thing.’ We do not hold that no process patent could ever qualify if it did
not meet the requirements of our prior precedents.” Benson, 409 U.S. at 71, 175
USPQ 676. Rather than rule on this question in Benson and Flook, the Supreme
Court decided those cases based on the abstract idea exception to patentability.
Benson, 409 U.S. at 71-72, 175 USPQ at 676-77; Flook, 437 U.S. at 594-95, 198
USPQ at 199-200.
Since Diehr, the Federal Circuit has reviewed several computer technology
cases, and in acknowledgment of the innovations occurring in this technological
field, identified a third category of method claims that qualify as a “process.”
Extrapolating from the Supreme Court’s “transformation and reduction of an
article” test, the Federal Circuit has held that transformation of intangible subject
matter (i.e., data or signals) may also qualify as a § 101 process. See, e.g., State
St. Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368, 1373, 47
USPQ2d 1596, 1601 (Fed. Cir. 1998). Responding to the argument that process
claims must recite a “physical transformation,” the Federal Circuit in AT&T ruled
that “physical transformation” “is not an invariable requirement, but merely one
example of how a mathematical algorithm may bring about a useful application.”
AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352, 1358, 50 USPQ2d
1447, 1452 (Fed. Cir. 1999). Quoting the Supreme Court’s language, “e.g.,
imagine how that alone would satisfy the requirements of § 101 and convert an
otherwise ineligible claim into an eligible one.
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