Appeal 2006-1601
Application 09/828,579
test was specifically devised to handle eligibility issues for claims encompassing
mathematical algorithms, thereby suggesting that it is not a general test for
eligibility. See NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1324, 75
USPQ2d 1763, 1795 (Fed. Cir. 2005) (“The requirement that a process transform
data and produce a ‘tangible result’ was a standard devised to prevent patenting of
mathematical abstractions” (citing AT&T, 172 F.3d at 1359, 50 USPQ2d at 1452)
(emphasis added)). Furthermore, the “useful, concrete, and tangible result” test
fails to resolve the tension between State Street and Schrader.
In LabCorp the dissent suggested that, if applied as a general criterion, the
“useful, concrete, and tangible result” test would conflict with prior Supreme Court
decisions. Lab. Corp. of Am. Holdings v. Metabolite Labs., Inc., 126 S. Ct. 2921,
2928, 79 USPQ2d 1065, 1070 (2006) (Breyer, J., dissent from dismissal as
improvidently granted) (observing that the Federal Circuit’s statement that “a
process is patentable if it produces a ‘useful, concrete, and tangible result’ . . . , if
taken literally, . . . would cover instances where this Court has held the contrary”).
Accordingly, the best reading of the precedent may limit that test to machines and
machine-implemented methods using mathematical algorithms to transform data,
rather than embracing it as a general test for eligibility.
Accordingly, our understanding of the precedents at present is: Any
computer program claimed as a machine implementing the program (Alappat, State
Street) or as a method of a machine implementing the program (AT&T), is
patentable if it transforms data and achieves a useful, concrete and tangible result
(State Street, AT&T). Exceptions occur when the invention in actuality pre-empts
an abstract idea, as in a mathematical algorithm (Benson, 409 U.S. at 71-72, 175
USPQ at 676-677). Because Appellant’s claims do not require a machine
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