Appeal 2006-3156
Application 09/904,311
recites causing a processor to estimate risk attitudes and to estimate private
information. Since we found no suggestion to include both determinations, the
combination of references fails to render claims 26, 30, 34, and 42 obvious.
Accordingly, we cannot sustain the rejection under 35 U.S.C. § 103 of claims
22, 26, 30, 34, 39, and 42.
We remand this application, however, for the examiner to review the
claims for statutory subject matter under 35 U.S.C. § 101 in view of the
Interim Guidelines for Examination of Patent Applications for Patent
Subject Matter Eligibility (1300 Off. Gaz. Pat. Office 142 (Nov. 22, 2005)).
We will discuss claims 22 and 30 in the explanation infra.
The guidelines first require a determination as to whether the claims as a
whole are directed to nothing more than abstract ideas, natural phenomena, or
laws of nature. Clearly none of the claims recites a natural phenomena nor a
law of nature, so the issue is whether they are directed to an abstract idea. We
note that it is generally difficult to ascertain whether a process is merely an
abstract idea, particularly since claims are often drafted to include minor
physical limitations such as data gathering steps or post-solution activity. The
present claims are machine-implemented. However, the question (even for the
claims which recite a computer system1, such as claim 26, or a storage
1 A general purpose computer or a storage medium (which includes a
computer program capable of performing certain functions when executed
by a machine) falls into the statutory category of machines, manufactures,
and compositions of matter. A claim directed to a new machine structure or
a new storage medium structure is clearly a patentable machine or
manufacture under §101. However, a general purpose machine programmed
to perform particular functions (and thus effectively a special purpose
computer according to In re Alappat, 33 F.3d 1526, 1554, 31 USPQ2d 1545,
1558 (Fed. Cir. 1994) (en banc)) which merely performs an abstract idea,
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