Appeal 2006-1601
Application 09/828,579
implementing a mathematical formula to transform data, the “useful, concrete, and
tangible result” test is irrelevant to considering the eligibility of Appellant’s
claims.
While State Street put the “ill-conceived” business method exception to
patentability “to rest,” 149 F.3d at 1375, 47 USPQ2d at 1602, it did not suggest
that any and all types of “useful” methods for doing business are statutory subject
matter. In accordance with the Supreme Court’s and Federal Circuit’s precedent,
business method claims, like any method claim, must either be machine-
implemented or transform subject matter into a different state or thing. Thus,
while a process for transforming data to assist in differential billing for telephone
users is eligible (AT&T), a method for promoting sales using a “buy one, get one
free” scheme does not qualify as a “process,” regardless of any useful or tangible
result it produces.
(ii)
Appellant’s Claims Do Not Produce a
Useful, Concrete, and Tangible Result
Even if we accept as a given Appellant’s position that he has established the
“importance” (i.e. utility) of the invention by his argument, this does not
automatically establish that the result is also tangible and concrete.
The identifying and selecting steps of claim 6 are performed on “rate plans”
per se which are merely abstractions in the form of pricing information. Therefore,
even if the results of the identifying and selecting steps were relevant to
establishing a tangible result for the claim as a whole, these steps operate on
abstractions and simply can not produce a tangible result.
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