Appeal 2007-0345
Application 09/812,417
to similarly be eligible, so long as data or signals represent some real world
activity.
The Federal Circuit has never held or indicated that a process
involving no transformation can qualify as a “process” under § 101. In fact,
confronted with such claims, it has rejected them consistently. See In re
Schrader, 22 F.3d 290, 294-295, 30 USPQ2d 1455, 1458 (Fed. Cir. 1994);
In re Grams, 888 F.2d 835, 837, 12 USPQ2d 1824, 1826 (Fed. Cir. 1989)
(rejecting claims to method of evaluating a system that incorporated a
mathematical algorithm, where the only physical step was a data gathering
step that was not tied to the algorithm); In re Maucorps, 609 F.2d 481, 484,
203 USPQ 812, 815 (CCPA 1979); In re Meyer, 688 F.2d 789, 796, 215
USPQ 193, 198 (CCPA 1982); see also In re Alappat, 33 F.3d at 1543, 31
USPQ2d at 1556 (“Maucorps dealt with a business methodology for
deciding how salesmen should best handle respective customers and Meyer
involved a ‘system’ for aiding a neurologist in diagnosing patients. Clearly,
neither of the alleged ‘inventions’ in those cases falls within any § 101
category.”).9
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
9 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).
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