BPAI round-up

This round-up of recent decisions of the US Board of Patent Appeals and Interferences (BPAI) focuses on cases involving issues of patentable subject matter. We haven't seen too many surprises. There have been rejections to claims directed to a database, a structured data object, an abstract idea, a mathematical algorithm and a computer-readable medium.

Non-functional material

Ex Parte Fitzpatrick, No. 2010-001946 (BPAI Apr 15, 2012) involved a database, method and system whereby accurate prices paid for products in stores are captured at a frequent shopper card level and archived for consumer access and market analysis.

The claims at issue from a subject matter point of view were claims 52 and 55. Both claims were dependent on claim 40 that appellant Catalina Marketing Corporation had already cancelled.

Claim 40 was directed to:

A price-paid database aggregated from a plurality of retail stores, comprising:

a first field for storing an item identification corresponding to an item purchased from the plurality of retail stores; and

a second field for storing the price paid for said item purchased.

The examiner had said that claims 52 and 55 were “directed to a computer program per se or data structure of a computer or software.”

The Board affirmed the rejection, observing that:

[c]laims 52 and 55 recite a database with data fields and their contents, and are thus construed as claiming an assortment of data, which is not an eligible category of patentable subject matter. The contents of the data fields are non-functional descriptive material and are afforded no patentable weight.

Another non-functional data case was Ex Parte Falk et al, No. 2009-012172 (BPAI Apr 10, 2012). This case involved techniques for data integration operative in a data processing system having a windows-based graphical user interface (GUI).

Claim 12 at issue read as follows:

12. A structured data object for use in a data integration display method, the structured data object comprising:

a structured content model representation;

a first set of one or more sockets representing one or more inputs to the structured content model representation; and

a second set of one or more sockets representing one or more outputs from the structured content model representation;

wherein the sockets facilitate creation of a given visual mapping when the data object is displayed in juxtaposition with one or more other data objects; wherein at least one of the sockets communicates data;

and wherein the structured content model representation is visually representative, at least in part, of a data structure encoded within a computer readable medium.

The Examiner had said that claim 12 was "drawn to non-statutory subject matter because the structured data object is not embodied in a computer-readable media". The structured content model representation only represents a data structure, and therefore the claimed structured data object is not [inherently] required to be embodied in a computer-readable medium.

The Appellants argued that claim 12 in question recited a structured content model representation that visually represents a data structure encoded within a computer readable medium. Therefore the data structure is structurally and functionally related to the medium, and is statutory. The Appellants argued that the Examiner was wrong to conclude that the structured data object as recited is not [inherently] required to be encoded within a computer readable medium.

The Board agreed with the Examiner, observing that claim 12 (and 13) were not drawn to statutory subject matter as claim 12 is limited to a structured data object that includes a structured content model representation, which in turn is only partially visually representative of a data structure that is encoded within a computer readable medium. The claimed structured data object, said the Board, does not fall within one of the four statutory classes of patentable subject matter.

The data structure is not limited to being associated with the structured data object or the structured content model representation. Therefore the claimed structured data object also imparts no functionality and is not embodied in a tangible computer readable medium.

Abstract ideas and algorithms

Ex Parte Merkley et al, No. 2010-009843 (BPAI Apr 15, 2012) involved a technique for marketing an agricultural input via electronic communications. At issue in this case were method claims 1-7 and system claims 14-20.

The Examiner had said that claim 1 for example recites steps including obtaining information, establishing (finding programs), marketing (promoting), and providing a financial tool (a mathematical algorithm). Claim 1, according to the Examiner, performs no physical transformation and does not recite how a specific machine is used. The claim therefore recites no more than an abstract idea.

The Appellants, Deere & Company, argued that the claim performs transformation as data processing.

The Board agreed with the Examiner, referring to Bilski v. Kappos, 130 S.Ct. 3218, 3231 (2010) and observing that abstract ideas are not patent eligible. Claim 1, said the Board:

does no more than lay out the concept of promoting the sale of some abstract ideas. The claims neither refer to a specific machine by reciting structural limitations to any apparatus, nor recite any specific operations that would cause a machine to be the mechanism to obtain, find, promote and provide an algorithm. Absent any specific structural limitations on how one acts to perform these steps, these claims recite no more than the abstract concept of marketing a service. As in Bilski, a patent including these claims would allow the Appellants to pre-empt the use of this approach in all fields, and would effectively grant a monopoly over an abstract idea.

Furthermore, the claimed step of “marketing, for the retailer via the data processing system” could mean just sending out an e-mail and is insignificant extra-solution activity as is the step for “providing a financial analysis tool” which could be a mathematical algorithm.

Setting its sights on system claim 14, the Board observed that simply using some data processing device in some undefined manner alone cannot confer patentability CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011). Claim 14, said the Board, recites no specific structure beyond a general purpose data processing device as the claimed modules may be software, but only recites performing the steps of claim 1 with a data processing device. The use of the data collector in the claimed system of marketing is insignificant extra-solution activity.

In another case, we were reminded that mere algorithms are not eligible for patent protection. In Ex Parte Chen et al, No. 2009-013261 (BPAI Apr 11, 2012) the Board considered an invention directed to a machine-accessible medium and method for performing, in a processor, motion compensation and bi-linear interpretation on packed data.

Claim 1 for example was directed to a method for performing bi-linear interpolation or a motion compensation of a digital image or video. The examiner said this was simply a method for performing a computation via a mathematical algorithm. The only result was interpolated data. The claim, according to the examiner, was not limited to a practical application of the mathematical algorithm because the result was not a tangible result. The result (interpolated data) was not a real-world result.

The Board also noted that the claims recite an algorithm to produce interpolated data or motion compensation. The claims, according to the Board, recite no specific environment in which the interpolation or motion compensation is performed nor are the claims directed to a particular machine to perform the interpolation or motion compensation. Therefore the claims wholly preempt all uses of the algorithm.

Transitory signals

I'm surprised that we are still seeing arguments at the BPAI level over whether the term “machine-readable medium” includes transitory propagating signals.

In Ex Parte Van der Voort et al, No. 2010-011853 (BPAI Apr 2, 2012) the Board affirmed the Examiner's rejection of claims 15- 22. Independent claim 15, said the Board, recites “machine-readable medium.” The patent specification discloses that machine usable mediums include transitory propagating signals which are non-statutory subject matter.

It would have been pretty hard to come to a different conclusion. The patent specification includes the paragraph shown below with my emphasis added:

Examples of machine usable mediums include: nonvolatile, hard-coded type mediums such as read only memories (ROMs) or erasable, electrically programmable read only memories (EEPROMs), user-recordable type mediums such as floppy disks, hard disk drives and compact disk read only memories (CD-ROMs) or digital versatile disks (DVDs), and transmission type mediums such as digital and analog communication links.

Photo courtesy of author sirwiseowl under Creative Commons licence.