Appeal 2006-1601
Application 09/828,579
ruled that methods without any transformation are eligible, and appears in
Schrader to have rejected that proposition.
We believe that “process” should not be broadened so as to include any
method that may be deemed useful, such as Appellant’s future rate change claims.
The Supreme Court’s and Federal Circuit’s articulated eligibility tests keep the
interpretation of “process” in pari materia with the other three categories of
inventions – manufacture, machine, and composition of matter. In other words,
interpreting “process” as either transforming subject matter or implemented by one
of the other three categories of inventions is rationally consistent with and
proportional to the types of inventions patented under the other categories.8 See
Tilghman v. Proctor, 102 U.S. 707, 722 (1880) (“where the result or effect is
produced by chemical action, by the operation or application of some element or
power of nature, or of one substance to another, such modes, methods, or
operations are called processes.”); see also AT&T, 172 F.3d at 1356, 50 USPQ2d at
1450 (“any step-by-step process, be it electronic, chemical, or mechanical,
involves an ‘algorithm’ in the broad sense of the term.”). Accordingly, we do not
believe that the boundaries of “process” should be so expansive as to accommodate
all “useful” methods.
Following Schrader, Appellant’s claims are unpatentable under section 101.
The claims are similar to those rejected in Schrader, while distinguishable from
Arrhythmia, Alappat, State Street, and AT&T. The claims do not transform any
article to a different state or thing. The future rate change produced by the claims,
8 We do not propose in this decision a comprehensive rule for defining
patentable subject matter in all circumstances. Rather, this decision illustrates that
Appellant’s claims fall outside the currently existing tests for eligibility and sees
no reason to expand the existing tests to cover Appellant’s claims.
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