Appeal 2007-0345
Application 09/812,417
prior precedents.” Benson, 409 U.S. at 71, 175 USPQ at 676-677. 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 676-677; 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,
1358, 50 USPQ2d 1447, 1452 (Fed. Cir. 1999). Quoting the Supreme
Court’s language, “e.g., transforming or reducing an article to a different
state or thing” from Diehr, the AT&T court noted the usage of “e.g.”
“denotes an example, not an exclusive requirement.” Id. at 1359, 50
USPQ2d at 1452. AT&T went on to cite the transformation of intangible
data signals in the method claim of Arrhythmia Research Technology Inc. v.
Corazonix Corp., 958 F.2d 1053, 1059, 22 USPQ2d 1033, 1038 (Fed. Cir.
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