This principle was applied to a computer-implemented data processing system
for managing pooled mutual fund assets in State Street Bank & Trust Co. v. Signature
Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), and to a method for recording
and processing telephone data in AT&T v. Excel. The court explained that processes
that include mathematical calculations in a practical application can produce a useful,
concrete, and tangible result, which in State Street Bank was “expressed in numbers,
such as price, profit, percentage, cost, or loss.” 149 F.3d at 1375. In AT&T v. Excel the
court applied State Street Bank and Diehr, and stated that “physical transformation . . .
is not an invariable requirement, but merely one example of how a mathematical
algorithm may bring about a useful application” and thus achieve a useful, concrete, and
tangible result. 172 F.3d at 1358. This analysis, too, can no longer be relied on. Maj.
op. at 20 n.19.
The now-discarded criterion of a “useful, concrete, and tangible result” has
proved to be of ready and comprehensible applicability in a large variety of processes of
the information and digital ages. The court in State Street Bank reinforced the thesis
that there is no reason, in statute or policy, to exclude computer-implemented and
information-based inventions from access to patentability. The holdings and reasoning
of Alappat and State Street Bank guided the inventions of the electronic age into the
patent system, while remaining faithful to the Diehr distinction between abstract ideas
such as mathematical formulae and their application in a particular process for a
specified purpose. And patentability has always required compliance with all of the
requirements of the statute, including novelty, non-obviousness, utility, and the
provisions of Section 112.
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