Appeal 2007-1089
Application 10/348,277
algorithm-containing invention, as a whole, produces a tangible, useful
result.”).
However, the Federal Circuit 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.
In LabCorp the dissent 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 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-
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