Appeal 2006-1601
Application 09/828,579
(c)
The Federal Circuit’s “Useful, Concrete, and Tangible Result” Test
Has Never Been Applied to This Type of Claim;
Nor Would Appellant’s Claims Satisfy That Test If Applied
(i)
State Street’s “Useful, Concrete, and Tangible Result” Test
Is Limited to Machines and Machine-Implemented
Methods That Transform Data
As discussed above, the development of the Federal Circuit’s data
transformation test was in response to a series of cases concerning the eligibility of
machines and machine-implemented methods employing a mathematical
algorithm. In assessing the eligibility of these specific types of claims, the court
adopted a rule requiring such claims to produce a “useful, concrete and tangible
result.” State Street, 149 F.3d at 1373, 47 USPQ2d at 1600-1601. Based on
inferences drawn from the apparent sweep of the useful, concrete, and tangible
result test in combination with State Street’s repudiation of any business method
exception to patentability, applicants have been filing claims for “processes” that
are not traditional industrial processes, which contain no physical limitations and
do not require any transformation. But this new brand of claims is beyond the
purview of the Federal Circuit’s holdings. The cases applying the useful, concrete,
and tangible result test have all been confined to machine implementation of
mathematical algorithms. Thus, the Federal Circuit has never stated that this is the
general test for patent eligibility. In other words, any claim that might arguably
yield a “useful, concrete, and tangible result” is not necessarily statutory subject
matter.
Specifically, the “useful, concrete, and tangible result” test first appeared in
Alappat, which states: “This [claimed invention] is not a disembodied
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