based on diagnostic tests of each component. 688 F.2d at 792-93. The locations of
any malfunctions could thus be deduced from reviewing these "factors." The diagnostic
tests were not identified, and the "factors" were not tied to any particular measurement;
indeed they could be arbitrary. Id. at 790. We held that the claim was effectively drawn
only to "a mathematical algorithm representing a mental process," and we affirmed the
PTO's rejection on ยง 101 grounds. Id. at 796. No machine was recited in the claim, and
the only potential "transformation" was of the disembodied "factors" from one number to
another. Thus, the claim effectively sought to pre-empt the fundamental mental process
of diagnosing the location of a malfunction in a system by noticing that the condition of a
particular component had changed. And as discussed earlier, a similar claim was
rejected in Grams.
See 888 F.2d at 839-40 (rejecting claim to process of diagnosing
"abnormal condition" in person by identifying and noticing discrepancies in results of
unspecified clinical tests of different parts of body).
Similarly to the situations in Meyer and Grams, Applicants here seek to claim a
non-transformative process that encompasses a purely mental process of performing
requisite mathematical calculations without the aid of a computer or any other device,
mentally identifying those transactions that the calculations have revealed would hedge
each other's risks, and performing the post-solution step of consummating those
transactions. Therefore, claim 1 would effectively pre-empt any application of the
27
We note that several Justices of the Supreme Court, in a dissent to a
dismissal of a writ of certiorari, expressed their view that a similar claim in Laboratory
Corp. of America Holdings v. Metabolite Laboratories, Inc. was drawn to unpatentable
subject matter. 126 S. Ct. 2921, 2927-28 (2006) (Breyer, J., dissenting; joined by
Stevens, J., and Souter, J.). There, the claimed process only comprised the steps of:
(1) "assaying a body fluid for an elevated level of total homocysteine," and
(2) "correlating an elevated level of total homocysteine in said body fluid with a
deficiency of cobalamin or folate." Id. at 2924.
2007-1130 31