Claim 1 for example read as follows:
1. A computer-implemented business model data management method comprising:
identifying a business object within a business object structure document for a business application;
locating data management rules for said identified business object in a business object descriptor document; and,
executing said located data management rules to represent said identified business object in a database for said business application.Claim 12 was for a computer program product:
12. A computer program product for business object data management comprising a computer useable medium having computer usable program code tangibly embodied therein, the computer useable program code comprising:
computer usable program code configured to identify a business object within a business object structure document for a business application;
computer usable program code configured to locate data management rules for said identified business object in a business object descriptor document; and,
computer usable program code configured to execute said located data management rules to represent said identified business object in a database for said business application.Examiner rejections
During examination the Examiner had objected that method claims 1-4 were not tied to another statutory class, for example an apparatus such as a special purpose computer. The examiner objected that the method did not transform an article or thing to a different state or thing.
Claims 12-15, according to the Examiner, were not limited to tangible embodiments. The Examiner found a paragraph in the specification that suggested a computer useable medium could be either tangible (paper, removable storage, or hard disk drive) or intangible (carrier-wave signal).
The Appellants argued that the third step of method claim 1 constitutes a transformation of an article to a different state of thing. The transformation of data passes muster if it is central to the purpose of the claimed process.
In this case, said the Appellants, the business object in a database for a business application is data that represents physical and tangible objects that have been transformed.
The Board agreed, noting that:
'Although simply adding a "computer-implemented" limitation to a claim covering an abstract concept is insufficient to render a claim patent eligible, claim 1 includes more.'Claim 1, they said, uses a computer to implement specific algorithms (eg data management rules) that are required to be located and executed in order to represent an identified business object in a database.
The claim, when read as a whole:
'is more than just an abstract idea, it is a method requiring the use of a special purpose computer that can perform the location and execution of data management rules. The business model data management method of claims 1-4 is implemented by a computer (claim 1, preamble), manages business model data (claim 1, preamble), and locates and executes rules to represent identified business objects in a database for a business application (claim 1, last two clauses). Claim 1 is therefore tied to a particular class and further operates to transform an article (e.g., data in the database and objects within an object structure)'.The Board agreed with the Appellants that the third step (last clause) of claim 1 constitutes a transformation of an article to a different state or thing. The recited business object in a database for a business application is data that represents physical and tangible objects that have been transformed.
The Appellants also had a crack at the computer useable medium claims as well. It was unlikely to persuade the Board, but good on them for giving it a go.
They said the preamble of claim 12 calls for a "tangible" embodiment of the computer useable medium containing the computer usable program code. They said the Examiner was wrong in determining that claim 12 can be broadly interpreted as encompassing intangible media like carrier-wave signals.
The Board agreed with the Examiner. They said that, when read in light of the specification, claim 12 includes both statutory subject matter and non-statutory subject matter. The Appellants did not provide examples or otherwise define the differences between tangible and intangible embodiments of computer useable media. They did not provide examples or otherwise specifically define the differences between transitory and non-transitory computer useable media. According to USPTO guidelines, these sort of claims need to be amended to recite solely statutory subject matter.
The Board reversed the Examiner's rejection of claims 1-4 as being directed to non-statutory subject matter. And promptly affirmed the Examiner's rejection of the same claims for lack of novelty over prior art. The Examiner's rejection of claims 12-15 as being directed to non-statutory subject matter was also affirmed.
Photo courtesy of author Dave Dugdale under Creative Commons licence.