Appeal 2007-1089
Application 10/348,277
(d)
The Federal Circuit’s “Useful, Concrete, and Tangible Result” Test
Has Never Been Applied to This Type of Claim;
Nor Would Appellants’ Claims Satisfy That Test If Applied
(i)
Appellants’ Claims Do Not Require a Machine; And
State Street’s “Useful, Concrete, and Tangible Result” 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
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. Based on inferences drawn from the apparent sweep
of the useful, concrete, and tangible result test in combination with State
Street’s repudiation of any business method exception to patentability,
applicants have been filing claims for “processes” that are not traditional
industrial processes, which contain no physical limitations and do not
require any transformation or conversion of subject matter representative of
or constituting physical activity or objects nor transformation of data or
signals by a machine. But this new brand of claims is beyond the purview of
the Federal Circuit’s holdings. 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
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