Appeal 2007-0224
Application 09/754,785
neither of the alleged ‘inventions’ in those cases falls within any § 101
category.”).3
In Schrader, the court affirmed the 101 rejection of a method of
competitively bidding on a plurality of related items, relying in part on the
Freeman-Walter-Abele (“FWA”) test. However, consistent with
Arrhythmia, Alappat, State Street, and AT&T, the court also inquired into
whether Schrader’s method claim performed any kind of transformation.
Schrader, 22 F.3d at 294, 30 USPQ2d at 1458 (“we do not find in the claim
any kind of data transformation.”). The court then distinguished Schrader’s
claim from the statutorily eligible claims in Arrhythmia, In re Abele, 684
F.2d 902, 214 USPQ 682 (CCPA 1982), and In re Taner, 681 F.2d 787, 214
USPQ 678 (CCPA 1982), pointing out that in these cases, “[t]hese claims all
involved the transformation or conversion of subject matter representative of
or constituting physical activity or objects. Id. (emphasis in original).
Schrader expressly concludes that “a process claim [in] compliance with
Section 101 requires some kind of transformation or reduction of subject
matter.”4 Id. at 295, 30 USPQ2d at 1459. In sum, the Federal Circuit has
3 But see State Street, 149 F.3d at 1376 n.14, 47 USPQ2d at 1603 n.14
(observing that “[Maucorp and Meyer] were subject to the Benson era
Freeman-Walter-Abele test – in other words, analysis as it existed before
Diehr and Alappat,” without addressing the fact that it was the Alappat
decision itself that made the observation that these inventions were “clearly”
nonstatutory).
4 Although the FWA test is no longer considered particularly probative
in the context of computer-implemented process inventions in view of Diehr
(see, e.g., State Street, 149 F.3d at 1374, 47 USPQ2d at 1601 ), the erosion
of FWA provides no support for the position that a non-machine
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