Ex Parte Chkodrov et al, No. 2009-012722 (BPAI Jan 25, 2012) involved monitoring a workflow of a business or other organisation. The invention related more particularly to viewing information about multiple instances of an activity and for maintaining that information.
Microsoft brought US Patent Application 10/670,276 before the Board of Patent Appeals and Interferences. The Examiner had rejected each of claims 1-46 as being directed to non-statutory subject matter.
Claim 1 as a representative claim read as follows:
Claim 23 read:
A further representative claim is claim 45, reading as follows:
The "can you do it in your mind" test
The Board looked first at claim 1. Citing CyberSource Corp. v. Retail Decisions, Inc. (Case No. 2009-1358) (see my blog post) for support, they chose to look to the underlying invention for patent-eligibility purposes.
This lead to a view that the process of claim 1 could be performed by a human writing on a piece of paper. The step of creating a record in a first database table, for example, could be performed on a piece of paper. Apparently.
According to Cybersource, a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under 101.
A database table can be represented using a pen and paper, according to the Board. The scope of claim 1's method steps covered functions that can be performed in the human mind, or by a human using a pen and paper. Therefore unpatentable mental processes fall within the subject matter of claim 1.
Nominal recitation
Turning to claim 23, the Board observed that this claim includes a nominal recitation of "a computer readable medium."
Looking again at the underlying invention, the Board concluded that the scope of claim 23 covers functions that can be performed in the human mind, or by a human using a pen and paper.
Conventional hardware
Even the apparatus claims were not safe from the Board's interpretation. Claim 45 was said to include nominal recitations of conventional hardware in the body of the claim. Examples of such hardware included at least one data storage device, at least one user input device, and a processor. Once again the Board looked to the underlying invention for patent-eligibility purposes.
The Board again concluded that the scope of the recited functions (steps) covers functions that can be performed in the human mind, or by a human using a pen and paper. The Board referred to Dealertrack v Huber Case No. 2009-1566 (see my blog post). Simply adding a 'computer aided' limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible.
Further steps
The Board affirmed the Examiner's rejection of claims 1-46 under 35 USC 101. It's a pity that the Board did not mention Ultramercial, LLC v. Hulu, LLC, No. 2010-1544 (Fed. Cir. Sept. 15, 2011) (see my blog post).
These claims may well have passed the Utramercial reasoning. This Board was clearly not in the Rader camp.
Photo courtesy of author ralphbijker under Creative Commons licence.
Microsoft brought US Patent Application 10/670,276 before the Board of Patent Appeals and Interferences. The Examiner had rejected each of claims 1-46 as being directed to non-statutory subject matter.
Claim 1 as a representative claim read as follows:
1. A method for maintaining information regarding multiple instances of an activity, each instance having an active condition in which information about the instance is to be modified or an inactive condition in which information about the instance is not to be modified, the method comprising:
creating a record in a first database table for each of the multiple instances in the active condition, each record containing a field for each of a plurality of data types, one or more of the fields in each active instance record having a value indicative of the active condition;
assigning, for records of the multiple instances in the inactive condition, values to the one or more fields indicative of the inactive condition;
deleting from the first table records of instances having values in the one or more fields indicative of the inactive condition thereby reducing a size of the first database table to prevent degradation of response times when database users access the records for the instances in the active condition; and
creating, for records deleted from the first table, a corresponding record in a second database table.
Claim 23 read:
23. A computer-readable medium having stored thereon data representing sequences of instructions which, when executed by a processor, cause the processor to perform steps comprising:
creating a record in a first database table for each of multiple instances of an activity, wherein:
each instance has an active condition in which information about the instance is to be modified or an inactive condition in which information about the instance is not to be modified,
the first table records are created for instances in the active condition, and
each record of the first table contains a field for each of a plurality of data types, one or more of the fields in each active instance record having a value indicative of the active condition;
assigning, for records of the multiple instances in the inactive condition, values to the one or more fields indicative of the inactive condition;
deleting from the first table records of instances having values in the one or more fields indicative of the inactive condition thereby reducing a size of the first database table to prevent degradation of response times when database users access the records for the instances in the active condition; and
creating, for records deleted from the first table, a corresponding record in a second database table.
A further representative claim is claim 45, reading as follows:
45. A data processing apparatus for maintaining information regarding multiple instances of an activity, each instance having an active condition in which information about the instance is to be modified or an inactive condition in which information about the instance is not to be modified, comprising:
at least one data storage device;
at least one user input device; and
a processor operatively connected to said storage device and said user input device, wherein the at least one data storage device has stored thereon a set of instructions which, when executed, configure said processor to:
create a record in a first database table for each of the multiple instances in the active condition, each record containing a field for each of a plurality of data types, one or more of the fields in each active instance record having a value indicative of the active condition,
assign, for records of the multiple instances in the inactive condition, values to the one or more fields indicative of the inactive condition,
delete from the first table records of instances having values in the one or more fields indicative of the inactive condition thereby reducing a size of the first database table to prevent degradation of response times when database users access the records for the instances in the active condition, and
create, for records deleted from the first table, a corresponding record in a second database table.
The "can you do it in your mind" test
The Board looked first at claim 1. Citing CyberSource Corp. v. Retail Decisions, Inc. (Case No. 2009-1358) (see my blog post) for support, they chose to look to the underlying invention for patent-eligibility purposes.
This lead to a view that the process of claim 1 could be performed by a human writing on a piece of paper. The step of creating a record in a first database table, for example, could be performed on a piece of paper. Apparently.
According to Cybersource, a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under 101.
A database table can be represented using a pen and paper, according to the Board. The scope of claim 1's method steps covered functions that can be performed in the human mind, or by a human using a pen and paper. Therefore unpatentable mental processes fall within the subject matter of claim 1.
Nominal recitation
Turning to claim 23, the Board observed that this claim includes a nominal recitation of "a computer readable medium."
Looking again at the underlying invention, the Board concluded that the scope of claim 23 covers functions that can be performed in the human mind, or by a human using a pen and paper.
Conventional hardware
Even the apparatus claims were not safe from the Board's interpretation. Claim 45 was said to include nominal recitations of conventional hardware in the body of the claim. Examples of such hardware included at least one data storage device, at least one user input device, and a processor. Once again the Board looked to the underlying invention for patent-eligibility purposes.
The Board again concluded that the scope of the recited functions (steps) covers functions that can be performed in the human mind, or by a human using a pen and paper. The Board referred to Dealertrack v Huber Case No. 2009-1566 (see my blog post). Simply adding a 'computer aided' limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible.
Further steps
The Board affirmed the Examiner's rejection of claims 1-46 under 35 USC 101. It's a pity that the Board did not mention Ultramercial, LLC v. Hulu, LLC, No. 2010-1544 (Fed. Cir. Sept. 15, 2011) (see my blog post).
These claims may well have passed the Utramercial reasoning. This Board was clearly not in the Rader camp.
Photo courtesy of author ralphbijker under Creative Commons licence.
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