Appeal 2006-2107
Application 09/969,833
customers and Meyer involved a ‘system’ for aiding a neurologist in
diagnosing patients. Clearly, neither of the alleged ‘inventions’ in those
cases falls within any § 101 category.”).2
In Schrader, the court affirmed the 101 rejection of a method of
competitively bidding on a plurality of related items, relying in part on the
Freeman-Walter-Abele (“FWA”) test. However, consistent with
Arrhythmia, Alappat, State Street, and AT&T, the court also inquired into
whether Schrader’s non-machine implemented method claim performed any
kind of transformation. Schrader, 22 F.3d at 294, 30 USPQ2d at 1458 (“we
do not find in the claim any kind of data transformation.”). The court then
distinguished Schrader’s claim from the statutorily eligible claims in
Arrhythmia, In re Abele, 684 F.2d 902, 214 USPQ 682 (CCPA 1982), and In
re Taner, 681 F.2d 787, 214 USPQ 678 (CCPA 1982), pointing out that in
these cases, “[t]hese claims all involved the transformation or conversion of
subject matter representative of or constituting physical activity or objects.
Id. (emphasis in original). Schrader expressly concludes that “a process
claim [in] compliance with Section 101 requires some kind of
transformation or reduction of subject matter.”3 Id. at 295, 30 USPQ2d at
2 But see State Street, 149 F.3d at 1376 n.14, 47 USPQ2d at 1603 n.14
(observing that “[Maucorp and Meyer] were subject to the Benson era
Freeman-Walter-Abele test – in other words, analysis as it existed before
Diehr and Alappat,” without addressing the fact that it was the Alappat
decision itself that made the observation that these inventions were “clearly”
nonstatutory).
3 Although the FWA test is no longer considered particularly probative
in the context of computer-implemented process inventions in view of Diehr
(see, e.g., State Street, 149 F.3d at 1374, 47 USPQ2d at 1601), the erosion of
FWA provides no support for the position that a non-machine implemented
process, not involving any transformation, might be patentable. The answer
15
Page: Previous 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 Next
Last modified: September 9, 2013