Appeal 2007-0345
Application 09/812,417
improvidently granted) (observing that the Federal Circuit’s statement that
“a process is patentable if it produces a ‘useful, concrete, and tangible result’
. . . , if taken literally, . . . would cover instances where this Court has held
the contrary”). Accordingly, the best reading of the precedent may limit that
test to machines and machine-implemented methods using mathematical
algorithms to transform data, rather than embracing it as a general test for
eligibility.
Accordingly, our understanding of the current precedents is: Any
computer program claimed as a machine implementing the program
(Alappat, State Street) or as a method of a machine implementing the
program (AT&T), is patentable if it transforms data and achieves a useful,
concrete and tangible result (State Street, AT&T). Exceptions occur when
the invention in actuality pre-empts an abstract idea, as in a mathematical
algorithm (Benson, 409 U.S. at 71-72, 175 USPQ at 676-677). Because
claims 1-4 and 6-8 do not require a machine implementing a mathematical
formula to transform data, the “useful, concrete, and tangible result” test is
irrelevant to considering the eligibility of these claims.
In essence, claims 1-4 and 6-8 cover (“preempt”) every substantial
practical application of the recited abstract idea. We conclude that the claim
is so broad that it is directed to the “abstract idea” itself, rather than a
practical implementation of the concept.
For at least these reasons, claims 1-4 and 6-8 fail to recite statutory
subject matter under 35 U.S.C. § 101.22
22 Our conclusion, however, does not apply to claim 5 which calls for
displaying the future program actions menu in a popup window on a monitor
display screen (emphasis added). This limitation requires performing at
26
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