Appeal 2007-1443
Application 09/813,636
1 recognized only two instances in which a method may qualify as a section 101
2 process: when the process “either [1] was tied to a particular apparatus or
3 [2] operated to change materials to a ‘different state or thing.’” Id. at 588 n.9
4 (quoting Cochrane v. Deener, 94 U.S. 780, 787-788 (1877) (“A process is...an act,
5 or a series of acts, performed upon the subject matter to be transformed and
6 reduced to a different state or thing”)). “[W]hen a claim containing [an abstract
7 idea] implements or applies that [idea] in a structure or process which, when
8 considered as a whole, is performing a function which the patent laws were
9 designed to protect (e.g., transforming or reducing an article to a different state or
10 thing), then the claim satisfies the requirements of § 101.” Diamond v. Diehr, 450
11 U.S. 175, 192 (1981); see also Gottschalk v. Benson, 409 U.S. 63, 70 (1972)
12 (“Transformation and reduction of an article ‘to a different state or thing’ is the
13 clue to the patentability of a process claim that does not include particular
14 machines.”).
15 Our reviewing court also held that abstract subject matter is not patentable
16 unless it produces a useful, concrete and tangible result. State Street Bank & Trust
17 Co. v. Signature Financial Group Inc., 149 F.3d 1368, 47 USPQ2d 1596 (Fed. Cir.
18 1998).
19 ANALYSIS
20 Claims 1-12 and 19-22 rejected under 35 U.S.C. § 101 as directed to non-statutory
21 subject matter.
22 All of the claims are directed toward methods of modeling business activities
23 by which implications are presented in a report. Such modeling is intangible and
24 abstract, being manipulation of the ideas of what might occur, and is not
25 instantiated in some physical way so as to be limited to a practical application of
8
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