Appeal 2007-0345
Application 09/812,417
Boolean principle to produce a useful, concrete, and tangible result without
pre-empting other uses of the mathematical principle, on its face the claimed
process comfortably falls within the scope of § 101.” AT&T, 172 F.3d at
1358, 50 USPQ2d at 1452; see also id. at 1361, 50 USPQ2d at 1453
(concluding that “the focus is understood to be not on whether there is a
mathematical algorithm at work, but on whether the algorithm-containing
invention, as a whole, produces a tangible, useful result.”).
The Federal Circuit, however, has never suggested that its “useful,
concrete, and tangible result” test was applicable outside the context of data
transformation using a mathematical algorithm. Rather, the Federal Circuit
has consistently and specifically linked this test to inventions that perform “a
series of mathematical calculations” to transform data. Indeed, the Federal
Circuit recently noted that the test was specifically devised to handle
eligibility issues for claims encompassing mathematical algorithms, thereby
suggesting that it is not a general test for eligibility. See NTP, Inc. v.
Research In Motion, Ltd., 418 F.3d 1282, 1324, 75 USPQ2d 1763, 1795
(Fed. Cir. 2005) (“The requirement that a process transform data and
produce a ‘tangible result’ was a standard devised to prevent patenting of
mathematical abstractions” (citing AT&T, 172 F.3d at 1359, 50 USPQ2d at
1452) (emphasis added)). Furthermore, the “useful, concrete, and tangible
result” test fails to resolve the tension between State Street and Schrader.
Indeed, even some members of the U.S. Supreme Court have
suggested that, if applied as a general criterion, the “useful, concrete, and
tangible result” test would conflict with prior Supreme Court decisions.
Lab. Corp. of Am. Holdings v. Metabolite Labs., Inc., 126 S. Ct. 2921, 2928,
79 USPQ2d 1065, 1070 (2006) (Breyer, J., dissent from dismissal as
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