Appeal 2007-2011
Application 09/823,272
machine which merely performs an algorithm has been held nonstatutory as
an attempt to patent the algorithm itself, see id. and In re de Castelet, 562
F.2d 1236, 1243, 195 USPQ 439, 445 (CCPA 1977). We believe that a
similar case exists for "manufactures" which store programs that cause a
machine to perform an algorithm stored on a tangible medium.
Claims 7, 8, 10, and 11 are directed to computer-readable recording
medium which store program codes that cause the machines to perform the
indexing methods of claims 1 and 3 through 6. Thus, claims 1 and 3 through
6 are nonstatutory as being further attempts to patent the algorithms
themselves.
Nonetheless, assuming arguendo that the claims are not solely
directed to algorithms, the next question is whether the claimed invention is
directed to a practical application of an abstract idea. "[W]hen a claim
containing [an abstract idea] implements or applies that [idea] in a structure
or process which, when considered as a whole, is performing a function
which the patent laws were designed to protect (e.g., transforming or
reducing an article to a different state or thing), then the claim satisfies the
requirements of § 101." Diehr, 450 U.S. at 192, 209 USPQ at 10. Also,
according to the test set forth in State Street Bank & Trust Co. v. Signature
Finance Group, Inc., 149 F.3d 1368, 1374, 47 USPQ2d 1596, 1601-02 (Fed.
Cir. 1998), the production of a useful, concrete, and tangible result equates
to a practical application of an abstract idea.
In claims 1, 3 through 6, 12, and 13, we find no physical subject
matter being transformed, just an abstraction. Further, although claims 7, 8,
10, and 11 recite that the items are computer-readable recording mediums,
the program method steps performed by the program codes do not represent
6
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