Appeal 2007-0345
Application 09/812,417
of claims, the court adopted a rule requiring such claims to produce a
“useful, concrete, and tangible result.” State Street, 149 F.3d at 1373, 47
USPQ2d at 1600-1601.
Significantly, however, the cases applying the useful, concrete, and
tangible result test have all been confined to machine implementation of
mathematical algorithms. Thus, the Federal Circuit has never stated that this
is the general test for patent eligibility. In other words, any claim that might
arguably yield a “useful, concrete, and tangible result” is not necessarily
statutory subject matter.
Specifically, the “useful, concrete, and tangible result” test first
appeared in Alappat, which states: “This [claimed invention] is not a
disembodied mathematical concept which may be characterized as an
‘abstract idea,’ but rather a specific machine to produce a useful, concrete,
and tangible result.” Id., 33 F.3d at 1544, 31 USPQ2d at 1557 (emphasis
added). The court in Alappat thus devised a standard to partition patentable
inventions using mathematical algorithms from claims for disembodied
mathematical concepts.
State Street also involved claims to a machine employing a
mathematical algorithm, but in this instance for managing a mutual fund
investment portfolio. Finding the claim to be valid under § 101, State Street
held that “transformation of data … by a machine through a series of
mathematical calculations into a final share price, constitutes a practical
application of a mathematical algorithm, formula, or calculation, because it
produces ‘a useful, concrete and tangible result.’” Id. at 1373, 47 USPQ2d
at 1601 (emphasis added). Likewise, AT&T also ties this test to applications
of mathematical algorithms: “Because the claimed process applies the
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