Appeal 2007-1695
Application 10/418,835
step of “processing the organization information and the overlay information
…” (claim 1). We acknowledge that a claim is not directed to statutory
subject matter just because it includes a machine. See Gottschalk v. Benson,
409 U.S. 63, 71-72, 175 USPQ 673, 675 (1972).2 However, here we agree
with Appellants that claim 1 is not directed to a mental construct and/or an
abstract idea (i.e., a mathematical formula). Specifically, we agree that the
step of displaying the organizational subtree recited in claim 1 is a useful,
concrete, and tangible result. Therefore, we find the subject matter of instant
claim 1 distinguishable from Benson’s computer-implemented formula for
converting BCD numerals to pure binary numerals. We further find that the
recited extraction and processing steps of claim 1 transform data. Our
reviewing court has held that transformation of intangible subject matter
(i.e., data or signals) by a computer may qualify as a § 101 process. See
State St. Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368,
1373, 47 USPQ2d 1596, 1601 (Fed. Cir. 1998). Lastly, we agree with
Appellants that claim 1 is not directed to a computer program, per se,
because a computer is explicitly claimed. Therefore, we will reverse the
Examiner’s rejection of claim 1 and associated dependent claims 2-4 as
being directed to non statutory subject matter under 35 U.S.C. § 101.
2 See Benson, 409 U.S. at 71-72, 175 USPQ at 675: “It is conceded that one
may not patent an idea. But in practical effect that would be the result if the
formula for converting BCD numerals to pure binary numerals were
patented in this case. The mathematical formula involved here has no
substantial practical application except in connection with a digital
computer, which means that if the judgment below is affirmed, the patent
would wholly pre-empt the mathematical formula and in practical effect
would be a patent on the algorithm itself.”
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