Appeal Number: 2007-0133
Application Number: 10/223,466
specifically linked this test to inventions that perform “a series of mathematical
calculations” to transform data. Indeed, the Federal Circuit recently noted that the
test was specifically devised to handle eligibility issues for claims encompassing
mathematical algorithms, thereby suggesting that it is not a general test for
eligibility. See NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1324 (Fed.
Cir. 2005) (“The requirement that a process transform data and produce a ‘tangible
result’ was a standard devised to prevent patenting of mathematical abstractions”
(citing AT&T, 172 F.3d at 1359) (emphasis added)). Accordingly, the best reading
of the precedent may limit that test to machines and machine-implemented
methods using mathematical algorithms to transform data, rather than embracing it
as a general test for eligibility.
Analysis of why the useful, concrete, and tangible result test does not apply
and even if it did, the claims nevertheless do not meet that test
Accordingly, our understanding of the precedents at present is: Any
computer program claimed as a machine implementing the program (Alappat, State
Street) or as a method of a machine implementing the program (AT&T), is
patentable if it transforms data and achieves a useful, concrete and tangible result
(State Street, AT&T). Exceptions occur when the invention in actuality pre-empts
an abstract idea, as in a mathematical algorithm (Benson, 409 U.S. at 71-72).
Because Appellant’s claims do not entail a machine implementing a mathematical
formula to transform data, the “useful, concrete, and tangible result” test is
irrelevant to considering the eligibility of Appellant’s claims.
Furthermore, even if the concrete, and tangible result test were applied, the
claims do not meet the test as they are directed to printed matter. As discussed
supra independent claims 1 and 35 are directed to methods of drawing a chart. A
chart is no more than printed matter. “[P]rinted matter by itself is not patentable
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