Appeal 2006-2107
Application 09/969,833
meaning of the statute. We do so by determining whether the claimed
invention:
(i) Produces a “useful, concrete and tangible result.” State
Street, 149 F.3d at 1373, 47 USPQ2d at 1600-1601; and
(ii) Is directed to one of the three categories of unpatentable
subject matter: “laws of nature, natural phenomena, and abstract
ideas.” Diehr, 450 U.S. at 185, 209 USPQ at 7.
(6)
Appellant’s Method Claims Do Not Produce
“Useful, Concrete, and Tangible Result”
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.
The “useful, concrete, and tangible result” test first appeared in
Alappat, which states: “This [claimed invention] is not a disembodied
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
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