Appeal 2007-0224
Application 09/754,785
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, 175 USPQ at 676-677). Because
Appellant’s claims do not require 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.
While State Street put the “ill-conceived” business method exception
to patentability “to rest,” 149 F.3d at 1375, 47 USPQ2d at 1602 it did not
suggest that any and all types of “useful” methods for doing business are
statutory subject matter. In accordance with the Supreme Court’s and
Federal Circuit’s precedent, business method claims, like any method claim,
must either be machine-implemented or transform subject matter into a
different state or thing. Thus, while a process for transforming data to assist
in differential billing for telephone users is eligible (AT&T), a method for
promoting sales using a “buy one, get one free” scheme does not qualify as a
“process,” regardless of any useful or tangible result it produces.
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