Appeal 2007-0345
Application 09/812,417
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, 905, 214 USPQ 682,685 (CCPA 1982), and In re Taner, 681 F.2d
787, 789-790, 214 USPQ 678, 680-681 (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.”10 Id. at 295, 30 USPQ2d at
10 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
implemented process, not involving any transformation, might be patentable.
The answer to that question is still provided by Schrader, and that answer, so
far, is negative. While AT&T indicated that Schrader is “unhelpful” because
it did not reach the question whether a “useful, concrete, and tangible result”
occurred, the reason that case did not need to reach that question was
because it found that Schrader’s method claims were unpatentable for lack
of any transformation. In addition, Schrader’s claims did not require
machine-implementation, unlike AT&T’s claims. See AT&T, 172 F.3d at
1358, 50 USPQ2d at 1452 (“AT&T’s claimed process” uses “switching and
recording mechanisms to create a signal useful for billing purposes.”).
Moreover, it is axiomatic that dicta in one Federal Circuit panel decision
cannot overrule the holding of an earlier panel decision. George E. Warren
Corp. v. United States, 341 F.3d 1348, 1351 (Fed. Cir. 2003) (“We cannot
simply overrule [a prior panel] decision, even if we were persuaded . . . that
it is appropriate; to overrule a precedent, the court must rule en banc” (citing
Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 765, 9 USPQ2d 1417, 1423
(Fed.Cir.1988)).
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