Appeal 2006-3156
Application 09/904,311
of nature, or natural phenomenon. Again the claims involve neither a law of
nature nor natural phenomenon, so the issue is whether they are directed to a
practical application of an abstract idea. The guidelines indicate that either a
transformation of physical subject matter to a different state or thing or the
production of a useful, concrete, and tangible result equates to a practical
application of an abstract idea. The subject matter transformed may be
tangible (matter) or intangible (some form of energy, such as the conversion of
electrical signals or the conversion of heat into other forms of energy
(thermodynamics)), but it must be physical. Further, we note that the useful,
concrete, and tangible result test was set forth in State Street Bank & Trust Co.
v. Signature Finance Group, Inc., 149 F.3d 1368, 1373; 47 USPQ2d 1596,
1601 (Fed. Cir. 1998), in the context of a machine implemented process, and
would, therefore, apply to the present claims. If the examiner determines that
the claims are not directed to a practical application of an abstract idea (i.e.,
that they do not transform physical subject matter to a different state or thing
nor produce a useful, concrete, tangible result), then the claims should be
rejected under 35 U.S.C. § 101 as being non-statutory.
Turning again to claim 22, we find no transformation of physical subject
matter to a different state or thing, nor do we find a production of a useful,
concrete, and tangible result. Claim 22 merely manipulates data to obtain
another form of data, "private information," and also calculates "risk attitudes,"
which is substantially a mental state. Neither step transforms physical subject
matter, to a different state or thing. Further, neither result seems to be a
concrete and tangible result. Similarly, the instructions of claim 30 suffer the
same problems. Therefore, we would conclude that claims 22 and 30 are non-
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