Appeal 2007-1089
Application 10/348,277
(iii)
“Abstract Idea” Exception and Process Claims Without Means or Structure
It is true that process claims are not necessarily required 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, and are thus intrinsically more abstract than
product claims or method claims reciting structure, will often need to recite
some sort of transformation act (i.e., transformation or conversion of subject
matter representative of or constituting physical activity or objects) in order
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 1452 (noting that “AT&T’s claimed process” uses
“switching and recording mechanisms to create a signal useful for billing
purposes.”). Here, Appellants’ claim lacks 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 lacks
those characteristics that separate a practical application of an idea from just
the idea itself.
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