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This round-up of recent decisions of the US Board of Patent Appeals and Interferences (BPAI) focuses on recent cases involving issues of patentable subject matter.
Tied to a computer
In Ex Parte Clarke No 2010-005973 (BPAI May 16, 2012) the Appellant's invention was directed to an enterprise project management system and method having multiple structural modules for assigning and tracking work progress. Method claim 1 included steps such as retrieving project tasks from a database, displaying the project tasks using a user interface, providing a resource breakdown structure, providing a calendar breakdown structure, optimizing allocation of the resources and so on.
The Board reversed the Examiner's rejection that the method claims recite unpatentable subject matter. They said that:
In Ex Parte Hassink et al No. 2009-010923 (BPAI May 30, 2012) we saw the Board recognise a drafting error in the specification, construct a favourable interpretation and reject the claim anyway.
The claim in question was directed to:
It wasn't all good for the Appellant though. The Board observed that the term "computer readable medium" was defined in the specification to include transitory propagating signals and even include paper on which a software program is printed. The claim was rejected as being directed to non-statutory subject matter.
Ex Parte Sahita et al No.2009-015265 (BPAI June 12, 2012) involved exposing a resource data record associated with diagnostic code to manage a manageable resource enabling the resource data record to be discovered. The claim under consideration was directed to "A medium storing program code comprising code to provide a device driver ...; and diagnostic code to access the managed resource data ..."
The Board agreed with the Examiner that the claimed invention was directed to software per se, merely a set of instructions capable of being executed by a computer. The computer program itself is not a statutory process in that it does not include the computer-readable medium needed to realise the functionality of the computer program.
The Board went on to comment that the "medium" probably included transitory signals which is something the Examiner may wish to look at in the event of further prosecution.
Abstract idea
In Ex Parte Chou No. 2010-003045 (BPAI May 13, 2012) we saw the Board raise a subject matter objection to claims relating to a method for entering blueprint data into a handheld device. The Board concluded that the Appellant's claims encompass non-statutory subject matter because a method that can be performed by human thought alone [or with pen and paper] is merely an abstract idea and is not patent-eligible (CyberSource v Retail Decisions Inc).
The Board looked to the underlying invention for patent-eligibility purposes. In the event of further prosecution of claims having the same or similar scope, the Examiner was urged to consider a rejection under 35 U.S.C. 101.
Ex Parte Rubenstein No. 2010-011524 (BPAI May 21, 2012) saw the Board consider a method claim involving a health insurance system that uses co-payments that vary inversely with marginal clinical utility. Method claim 1 included the steps of processing a set of clinical factors and applying variable co-payments to medical care alternatives through use of at least one computing device.
The Board found that the claim 'encompass[ed] the abstract idea of applying variable co-payment to medical care alternatives in an inverse relationship with corresponding marginal clinical utilities for a specific clinical condition identified by processing a set of clinical factors.' There was no recitation of a particular transformation and there was at best only nominal use of a machine that imposed no meaningful limits on the scope of the claim.
Reference to "exercise equipment" did not help the Appellant in Ex Parte Nerenberg No. 2010-010021 (BPAI May 29, 2012). The use of this exercise equipment did not impose meaningful limits on claim scope. Furthermore, the Board observed that the claim did not recite actually doing anything with the exercise equipment.
In Ex Parte Ahmed No. 2009-012011 (BPAI June 6, 2012) the Board considered a method for estimating a number of information symbols in a received data transmission. The Board noted that abstract principles are not eligible for patent protection, however an application of an abstract idea may well be deserving of patent protection.
It was true that the claim recited ideas such as "estimating a number of information symbols". However, when paired in conjunction with receiving the information symbols in a "data transmission", the application of such a pairing deserves patent protection (Ultramercial).
Transitory propagating signal
We are still seeing 'computer readable medium' claims brought before the Board. In Ex Parte Phillips et al No. 2009-014475 (BPAI May 30, 2012) the Board raised a new objection against a claim to "[a] computer readable medium having computer executable instructions".
Ex Parte Krishnaswamy et al No. 2010-004070 (BPAI June 11, 2012) involved a claim directed to:
In Ex Parte Li No. 2010-001245 (BPAI June 10, 2012) the Board rejected a claim that included "[a] computer readable-medium having computer-readable instructions therein that, upon execution by a processor, cause the processor to assign routes for a plurality of users allocated to different classes".
The Appellants in Ex Parte Hatlestad et al No. 2011-001078 (BPAI June 3, 2012) attempted to overcome an objection to a computer readable medium by proposing an amendment to "non-transitory machine-readable medium". The Board declined this amendment, saying it was for the Examiner to consider what amendment(s) would be appropriate and effective to limit the claims to statutory subject matter.
Machine-or-transformation
In Ex Parte Zbiciak et al No. 2009-014324 (BPAI May 30, 2012) the Board considered a claim to "[a] method of converting image data in pixel form into embedded zero-tree wavelet encoded data .."
The Appellants argued that the claim satisfies the transformation prong of the machine-or-transformation test because it converts one thing into another thing and that it involves physical things such as a "bit plane data word".
The Board disagreed, observing that a "data word" is not physical. The mere manipulation or reorganisation of data does not satisfy the transformation prong. Therefore the argued converting of data fails to meet the transformation test. Although the machine-or-transformation test is not the only test, the Board felt that failure to satisfy this test established a prima facie case of patent ineligibility.
Photo courtesy of author Héctor de Pereda under Creative Commons licence.
Tied to a computer
In Ex Parte Clarke No 2010-005973 (BPAI May 16, 2012) the Appellant's invention was directed to an enterprise project management system and method having multiple structural modules for assigning and tracking work progress. Method claim 1 included steps such as retrieving project tasks from a database, displaying the project tasks using a user interface, providing a resource breakdown structure, providing a calendar breakdown structure, optimizing allocation of the resources and so on.
The Board reversed the Examiner's rejection that the method claims recite unpatentable subject matter. They said that:
'the use of a computer and its database is inextricably required throughout the retrieving, displaying, and identifying steps of the method'.Software per se
In Ex Parte Hassink et al No. 2009-010923 (BPAI May 30, 2012) we saw the Board recognise a drafting error in the specification, construct a favourable interpretation and reject the claim anyway.
The claim in question was directed to:
A computer program product for detecting a fault in a multiprotocol label switching (MPLS) network, comprising: a computer readable storage medium having computer readable program code embodied therein, the computer readable program code comprising ...The Examiner interpreted "computer program product" as reading on software, rejecting the claim as relating to software per se. The Board instead interpreted the claim as corresponding to a computer readable medium comprising computer readable medium code, despite a drafting error in the Appellant's specification that supported the Examiner's interpretation.
It wasn't all good for the Appellant though. The Board observed that the term "computer readable medium" was defined in the specification to include transitory propagating signals and even include paper on which a software program is printed. The claim was rejected as being directed to non-statutory subject matter.
Ex Parte Sahita et al No.2009-015265 (BPAI June 12, 2012) involved exposing a resource data record associated with diagnostic code to manage a manageable resource enabling the resource data record to be discovered. The claim under consideration was directed to "A medium storing program code comprising code to provide a device driver ...; and diagnostic code to access the managed resource data ..."
The Board agreed with the Examiner that the claimed invention was directed to software per se, merely a set of instructions capable of being executed by a computer. The computer program itself is not a statutory process in that it does not include the computer-readable medium needed to realise the functionality of the computer program.
The Board went on to comment that the "medium" probably included transitory signals which is something the Examiner may wish to look at in the event of further prosecution.
Abstract idea
In Ex Parte Chou No. 2010-003045 (BPAI May 13, 2012) we saw the Board raise a subject matter objection to claims relating to a method for entering blueprint data into a handheld device. The Board concluded that the Appellant's claims encompass non-statutory subject matter because a method that can be performed by human thought alone [or with pen and paper] is merely an abstract idea and is not patent-eligible (CyberSource v Retail Decisions Inc).
The Board looked to the underlying invention for patent-eligibility purposes. In the event of further prosecution of claims having the same or similar scope, the Examiner was urged to consider a rejection under 35 U.S.C. 101.
Ex Parte Rubenstein No. 2010-011524 (BPAI May 21, 2012) saw the Board consider a method claim involving a health insurance system that uses co-payments that vary inversely with marginal clinical utility. Method claim 1 included the steps of processing a set of clinical factors and applying variable co-payments to medical care alternatives through use of at least one computing device.
The Board found that the claim 'encompass[ed] the abstract idea of applying variable co-payment to medical care alternatives in an inverse relationship with corresponding marginal clinical utilities for a specific clinical condition identified by processing a set of clinical factors.' There was no recitation of a particular transformation and there was at best only nominal use of a machine that imposed no meaningful limits on the scope of the claim.
Reference to "exercise equipment" did not help the Appellant in Ex Parte Nerenberg No. 2010-010021 (BPAI May 29, 2012). The use of this exercise equipment did not impose meaningful limits on claim scope. Furthermore, the Board observed that the claim did not recite actually doing anything with the exercise equipment.
In Ex Parte Ahmed No. 2009-012011 (BPAI June 6, 2012) the Board considered a method for estimating a number of information symbols in a received data transmission. The Board noted that abstract principles are not eligible for patent protection, however an application of an abstract idea may well be deserving of patent protection.
It was true that the claim recited ideas such as "estimating a number of information symbols". However, when paired in conjunction with receiving the information symbols in a "data transmission", the application of such a pairing deserves patent protection (Ultramercial).
Transitory propagating signal
We are still seeing 'computer readable medium' claims brought before the Board. In Ex Parte Phillips et al No. 2009-014475 (BPAI May 30, 2012) the Board raised a new objection against a claim to "[a] computer readable medium having computer executable instructions".
Ex Parte Krishnaswamy et al No. 2010-004070 (BPAI June 11, 2012) involved a claim directed to:
A system for data object transformation, the system comprising:The Board considered the Examiner was correct to construe the term "computer readable medium" as broad enough to read on wireless signals.
a communications line;
a computer readable medium executable on a computing system, ...
In Ex Parte Li No. 2010-001245 (BPAI June 10, 2012) the Board rejected a claim that included "[a] computer readable-medium having computer-readable instructions therein that, upon execution by a processor, cause the processor to assign routes for a plurality of users allocated to different classes".
The Appellants in Ex Parte Hatlestad et al No. 2011-001078 (BPAI June 3, 2012) attempted to overcome an objection to a computer readable medium by proposing an amendment to "non-transitory machine-readable medium". The Board declined this amendment, saying it was for the Examiner to consider what amendment(s) would be appropriate and effective to limit the claims to statutory subject matter.
Machine-or-transformation
In Ex Parte Zbiciak et al No. 2009-014324 (BPAI May 30, 2012) the Board considered a claim to "[a] method of converting image data in pixel form into embedded zero-tree wavelet encoded data .."
The Appellants argued that the claim satisfies the transformation prong of the machine-or-transformation test because it converts one thing into another thing and that it involves physical things such as a "bit plane data word".
The Board disagreed, observing that a "data word" is not physical. The mere manipulation or reorganisation of data does not satisfy the transformation prong. Therefore the argued converting of data fails to meet the transformation test. Although the machine-or-transformation test is not the only test, the Board felt that failure to satisfy this test established a prima facie case of patent ineligibility.
Photo courtesy of author Héctor de Pereda under Creative Commons licence.
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