Appeal 2006-1601
Application 09/828,579
system.10 See Benson, 409 U.S. at 68-72, 175 USPQ at 675-677; see also Alappat,
33 F.3d at 1544, 31 USPQ2d at 1558 (quoting Benson).
It is true that process claims are not necessarily required to recite the means
or structure for performing the claimed steps. See, e.g., AT&T, 172 F.3d at 1359,
50 USPQ2d at 1452. But process claims that do not require any machine
implementation, and are thus intrinsically more abstract than product claims or
method claims reciting structure, will often need to recite some sort of
transformation act in order to clearly show that the method claim is for some
specific application of the idea and represents something more than just a concept.
See, e.g., id. at 1358, 50 USPQ2d at 1452 (noting that “AT&T’s claimed process”
uses “switching and recording mechanisms to create a signal useful for billing
purposes.”). Here, Appellant’s claim lacks the “particularly claimed combination
of elements” recited in Alappat’s claim, the transformation of data by a machine
recited in State Street’s claim, the transformation of electrical signals in
Arrhythmia’s method claim, or the transformation of data useful for billing
purposes in AT&T’s method claim, and therefore lacks those characteristics that
separate a practical application of an idea from just the idea itself.
10 Indeed, the scope of the claim is so sweeping as to encompass the prior art
utility rate change method described in Ehlers et al. (See Section IV of this
decision).
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