Appeal 2007-1762
Application 10/218,245
Here, we find the logical “if-then” construct of claim 2 is merely an
abstract idea since the claim contains no structural environment to perform
the “if-then” construct. Claim 8, which depends from claim 2, fails to
remedy this deficiency. Furthermore, in the event that none of the recited
“if . . . then” statements are satisfied, it is unclear what the scope of the
claim 2 is. Therefore, we conclude that claim 2 is directed to non-statutory
subject matter. Because dependent claim 8 fails to remedy the deficiencies
of independent claim 2, we also conclude that claim 8 is directed to non-
statutory subject matter.
Independent claim 44
We note that Appellants have not presented arguments invoking 35
U.S.C. § 112, sixth paragraph. Therefore, we find no hardware or machine
elements expressly recited in claim 44. We note that our reviewing court
has found transformation of data by a machine constitutes statutory subject
matter if the claimed invention as a whole accomplishes a practical
application. That is, it must produce a “useful, concrete and tangible result.”
State Street, 149 F.3d 1368, 1373-74, 47 USPQ2d 1596, 1600-02 (Fed. Cir.
1998). However, State Street did not hold that a “useful, concrete and
tangible result” alone, without a machine, is sufficient for statutory subject
matter. Id. at 1373, 47 USPQ2d at 1601. Therefore, we conclude that
independent claim 44 is directed to non-statutory subject matter.
35 U.S.C. §112, second paragraph
Claims 19-23, 25-33, 35-38, 40-45, and 47 are rejected under 35
U.S.C. § 112, second paragraph, as being indefinite for failing to particularly
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