Appeal 2006-3156
Application 09/904,311
medium, such as claim 30) is whether the claims as a whole are nothing more
than abstract ideas.
In claim 22, the steps of accessing data from memory, determining
private information from the data, and determining risk attitudes from the data
sound very much like an abstract idea. The determination of private
information from the accessed data appears to be a sort of calculation with no
specificity as to how the determination is made. The determination of risk
attitudes is substantially the establishment of a mental state. Similarly, claim
30 recites a storage medium including instructions that perform the steps of
retrieving data, estimating private information based on the data, and
estimating risk attitudes based on the data. Estimating private information
again appears to be a mathematical function, and estimating risk attitudes is
substantially the determination of a mental state. Therefore, claims 22 and 30
appear to be nothing more than abstract ideas, and, therefore, are excluded
from patent protection.
Nonetheless, if the claims are found to be directed to more than abstract
ideas, then the next step set forth in the guidelines is to determine whether the
claimed invention is directed to a practical application of an abstract idea, law
such as a mathematical algorithm, has been held nonstatutory as an attempt
to patent the abstract idea itself, see Gottschalk v. Benson, 409 U.S. 63, 71-
72, 175 USPQ 673, 676 (1972) ("nutshell holding") and In re de Castelet,
562 F.2d 1236, 1243, 195 USPQ 439, 445 (CCPA 1977) (discussing nutshell
language). We believe the same analysis applies to a manufacture that stores
a program that causes a machine to perform an abstract idea. In other words,
we believe that the nominal recitation of a manufacture does not preclude
the claim from being nonstatutory subject matter just as the nominal
recitation of a machine does not preclude a claim from being nonstatutory
subject matter.
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