Appeal 2006-1601
Application 09/828,579
relied upon by regulatory authorities and in subsequent trades.” 149 F.3d at 1373,
47 USPQ2d at 1601. Thus, while Diehr involved the transformation of a tangible
object – curing synthetic rubber – Federal Circuit also regards the transformation
of intangible subject matter to similarly be eligible, so long as data or signals
represent some real world activity.
The Federal Circuit has never held or indicated that a process involving no
transformation can qualify as a “process” under § 101. In fact, confronted with
such claims, it has rejected them consistently. See In re Schrader, 22 F.3d 290,
294-295, 30 USPQ2d 1455, 1458 (Fed. Cir. 1994); In re Grams, 888 F.2d 835,
837, 12 USPQ2d 1824, 1826 (Fed. Cir. 1989) (rejecting claims to method of
evaluating a system that incorporated a mathematical algorithm, where the only
physical step was a data gathering step that was not tied to the algorithm); In re
Maucorps, 609 F.2d 481, 484, 203 USPQ 812, 815 (CCPA 1979); In re Meyer,
688 F.2d 789, 796, 215 USPQ 193, 198 (CCPA 1982); see also In re Alappat, 33
F.3d at 1543, 31 USPQ2d at 1556 (“Maucorps dealt with a business methodology
for deciding how salesmen should best handle respective customers and Meyer
involved a ‘system’ for aiding a neurologist in diagnosing patients. Clearly,
neither of the alleged ‘inventions’ in those cases falls within any § 101
category.”).6
In Schrader, the court affirmed the 101 rejection of a method of
competitively bidding on a plurality of related items, relying in part on the
6 But see State Street, 149 F.3d at 1376 n.14, 47 USPQ2d at 1603 n.14
(observing that “[Maucorp and Meyer] were subject to the Benson era Freeman-
Walter-Abele test – in other words, analysis as it existed before Diehr and
Alappat,” without addressing the fact that it was the Alappat decision itself that
made the observation that these inventions were “clearly” nonstatutory).
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