Appeal 2007-0345
Application 09/812,417
program action. See Benson, 409 U.S. at 68-72, 175 USPQ at 675-677; see
also Alappat, 33 F.3d at 1544, 31 USPQ2d at 1558 (quoting Benson).
We recognize that process claims do not necessarily have to recite the
means or structure for performing the claimed steps. See, e.g., AT&T, 172
F.3d at 1359, 50 USPQ2d at 1452. But process claims that do not require
any machine implementation are intrinsically more abstract than product
claims or method claims reciting structure. Consequently, such process
claims will often need to recite some sort of transformation act to clearly
show that the method claim is for some specific application of the idea and
represents something more than just a concept. See, e.g., id. at 1358, 50
USPQ2d at 1451 (noting that “AT&T’s claimed process” uses “switching
and recording mechanisms to create a signal useful for billing purposes.”).
Here, claims 1-4 and 6-8 lack the “particularly claimed combination
of elements” recited in Alappat’s claim, the transformation of data by a
machine recited in State Street’s claim, the transformation of electrical
signals in Arrhythmia’s method claim, or the transformation of data useful
for billing purposes in AT&T’s method claim, and therefore lack those
characteristics that separate a practical application of an idea from just the
idea itself.
State Street’s “Useful, Concrete, and Tangible Result” Test Does Not Apply
to This Type of Claim Since the Test Is Limited to Machines and
Machine-Implemented Methods That Transform Data
As discussed above, the development of the Federal Circuit’s data
transformation test was in response to a series of cases concerning the
eligibility of machines and machine-implemented methods employing a
mathematical algorithm. In assessing the eligibility of these specific types
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