Appeal 2006-1601
Application 09/828,579
mathematical concept which may be characterized as an ‘abstract idea,’ but rather
a specific machine to produce a useful, concrete, and tangible result.” Alappat, 33
F.3d at 1544, 31 USPQ2d at 1557. The court in Alappat thus devised a standard to
partition patentable inventions using mathematical algorithms from claims for
disembodied mathematical concepts. State Street also involved claims to a
machine employing a mathematical algorithm, but in this instance for managing a
mutual fund investment portfolio. Finding the claim to be valid under § 101, State
Street held that “transformation of data … by a machine through a series of
mathematical calculations into a final share price, constitutes a practical
application of a mathematical algorithm, formula, or calculation, because it
produces ‘a useful, concrete and tangible result.’” State Street at 1373, 47
USPQ2d at 1601. Likewise, AT&T also ties this test to applications of
mathematical algorithms: “Because the claimed process applies the Boolean
principle to produce a useful, concrete, and tangible result without pre-empting
other uses of the mathematical principle, on its face the claimed process
comfortably falls within the scope of § 101.” AT&T, 172 F.3d at 1358, 50
USPQ2d at 1452; see also id. at 1361, 50 USPQ2d at 1453 (concluding that “the
focus is understood to be not on whether there is a mathematical algorithm at work,
but on whether the algorithm-containing invention, as a whole, produces a
tangible, useful result.”).
However, the Federal Circuit has never suggested that its “useful, concrete,
and tangible result” test was applicable outside the context of data transformation
using a mathematical algorithm. Rather, the Federal Circuit has consistently and
specifically linked this test to inventions that perform “a series of mathematical
calculations” to transform data. Indeed, the Federal Circuit recently noted that the
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