Appeal 2007-0224
Application 09/754,785
The Supreme Court, however, presumably concerned about barring
patents for future, unforeseeable technologies, declined to rule on whether
its precedent foreclosed any other possible avenues for a method claim to
qualify as a section 101 process: “It is argued that a process patent must
either be tied to a particular machine or apparatus or must operate to change
articles or materials to a ‘different state or thing.’ We do not hold that no
process patent could ever qualify if it did not meet the requirements of our
prior precedents.” Benson, 409 U.S. at 71, 175 USPQ 676. Rather than rule
on this question in Benson and Flook, the Supreme Court decided those
cases based on the abstract idea exception to patentability. Benson, 409 U.S.
at 71-72, 175 USPQ at 676-77; Flook, 437 U.S. at 594-95, 198 USPQ at
199-200.
Since Diehr, the Federal Circuit has reviewed several computer
technology cases, and in acknowledgment of the innovations occurring in
this technological field, identified a third category of method claims that
qualify as a “process.” Extrapolating from the Supreme Court’s
“transformation and reduction of an article” test, the Federal Circuit has held
that transformation of intangible subject matter (i.e., data or signals) may
also qualify as a § 101 process. See, e.g., State St. Bank & Trust Co. v.
Signature Fin. Group, Inc., 149 F.3d 1368, 1373, 47 USPQ2d 1596, 1601
(Fed. Cir. 1998). Responding to the argument that process claims must
recite a “physical transformation,” the Federal Circuit in AT&T ruled that
“physical transformation” “is not an invariable requirement, but merely one
example of how a mathematical algorithm may bring about a useful
application.” AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352,
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