Appeal 2007-1416
Application 09/881,791
• use the marked sentences to determine whether a test suite is
adequate.
Each of these steps, without some machine-based implementation or
physical transformation can be considered mere mental steps unsupported by
elements of a machine, manufacture or composition of matter.
Thus, method claim 1 differs from traditional process claims in
several respects. For example, the claim does not recite any particular
machine or apparatus to perform the recited steps. In addition, the method
claim does not recite any electrical, chemical, or mechanical acts or results,
which are typical in traditional process claims. Finally, the claim does not
call for any physical transformation of an article to a different state or thing,
nor does it require any transformation of data or signals.
We read the claims broadly, as they must be read during the
examination process. (See Zletz cited above.) The “receiving” step is read
on the mere acceptance of the Specification of the program for analysis. The
“obtaining” step is drawing one’s attention to one of the plurality of
sentences. The “determining” step is an analysis based on a reading of the
sentence. The “marking” step is a mere selection of those sentences that
have been analyzed to be testable assertions. Such marking could merely be
done mentally, as no other physical act or machine to implement the
marking is recited in the claims. Finally, the using of the marked sentences
for a determination can be considered a mental step involving evaluating the
adequacy of the sentences for further testing. We judge these mental steps
to be, in effect, an algorithm for making a decision concerning the
specification of the program, not patentable under 35 U.S.C. § 101. In view
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