The IP year in review

Christmas is a big deal in New Zealand. For most of us the 25th of December marks the start of a two, three or even four week summer vacation. It is a chance to recharge our batteries, ready to return refreshed in the New Year.

I'll be taking a break for a few weeks and returning mid-January. I'll leave you all with a list of my ten most popular posts for the year.

The New Zealand Patents Bill has been a hot topic thanks to a campaign by the open source community to introduce a European-style exclusion for computer software. The patentability of software has also been the subject of a few decisions of the US Courts and the BPAI. Copyright enforcement news in both New Zealand and Australia has also been popular.

Alice and the Abstract Idea: When is a computer-implemented invention a mere "abstract idea”? Does the presence of a computer in a claim make an unpatentable "abstract idea" a patentable invention? Should it matter that a computer-implemented invention is claimed as a method, system, or storage medium? Is there any real difference between these types of claims? These are the questions that the United States Court of Appeals for the Federal Circuit is going to be considering over the next 12 months.

The show goes on: These are interesting times for copyright infringement actions. We have seen a conclusion to the long running dispute between Roadshow Films/AFACT and iiNet in Australia. We have also seen a couple of test cases emerge for New Zealand's three strikes law.

A forum on software patents: Fellow blogger Patentology comments on a recent IP Forum held by the IP Australia on the subject of 'software patents'.

KOHA - Better late than never: Another chapter closes on the KOHA trade mark saga. The New Zealand trade mark application is the subject of a kind of tug-of-war between two competing factions within the open source community that have fallen out with each other.

D. finds non-functional descriptive matter: The Board of Patent Appeals and Interferences considers a data structure for generating network data traffic utilizable in communication systems. The BPAI rejected the data structure claim as relating to non-functional descriptive material.

The embedded software conundrum: The New Zealand Patents Bill had a second reading in Parliament this year. On the table is a Supplementary Order Paper (SOP) setting out proposed amendments to the Bill. The SOP clarifies the extent to which computer programs will be patentable. It better reflects the intentions of the Parliamentary Commerce Select Committee who originally recommended changes to the Bill.

A public slap from Twitter: Laws can certainly be broken in 140 characters or less and Twitter is starting to take a more transparent approach to copyright infringement. It is a bad look for your company to be accused of copyright infringement. And even worse to be slapped so publicly.

Hu finds that storage is the key: The BPAI considered the patentability of a claim in the field of performing log-based recovery by allowing a plurality of worker processes to process in parallel a plurality of work items in a log. Each work item represented an ordered operation on a corresponding data object. The BPAI found that the term "computer-readable medium" is broad enough to cover intangible media. However, a computer-readable storage medium is confined to tangible media for storing data.

Edelson finds an abstract intangible asset: The BPAI looked at a claim for a way for creating financial instrument derivatives of rollups of recurrent yield monetary based assets. Whatever that means! The Board found that simply using some computer-implemented method in some undefined manner alone cannot confer patentability.

Patent party in the House: It's always good to try something new. I gathered some of my work colleagues together and we watched the Second Reading of the New Zealand Patents Bill on the tellie. I didn't quite know what to expect but I wasn't surprised at what I saw. It was certainly an interesting experience.

Photo courtesy of author Daniel Peckham under Creative Commons licence.

BPAI round-up

Milford Sound, New Zealand

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:

'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:
a communications line;
a computer readable medium executable on a computing system, ...

The Board considered the Examiner was correct to construe the term "computer readable medium" as broad enough to read on wireless signals.

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.

BPAI round-up

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.

Compilation or arrangement of data

In Ex Parte Baumgartner et al, No. 2009-015143 (BPAI May 3, 2012) we saw IBM Corporation appear before the Board of Patent Appeals and Interferences with a machine readable medium that stores a design structure used in a design process.

The Examiner had asserted that the claimed machine readable medium only stored data representing a current mirror circuit. The Examiner felt the data was non-functional descriptive material and therefore directed to non-statutory subject matter.

The Appellants said that the "play back" of a design structure results in the creation of a specific circuit having specific functionality. When the claimed "design structure" is played back on a fabrication facility computer, said the Appellants, it will permit the functionality of the data structure to be realised. This, according to the Appellants, indicated that the claims recite functional descriptive material.

The Board found that the claim term "a design structure" could be construed as merely a text file, an image, or simply data. The design structure was nothing more than a compilation or arrangement of data. This was in addition to the observation that "a machine readable medium" encompassed a transitory, propagating signal.

Tied to a computer

Ex Parte Bhatti et al No. 2010-008008 (BPAI April 26, 2012) involved what the Appellants described as a "system for providing product consultation using a transmitted image."

The Examiner had objected to claim 30 because it failed to tie the method to a particular machine or apparatus and further failed to transform an article to a different state or thing.

The Appellants argued that the claim was tied to an apparatus because the claim recited a "computer-implemented method" and therefore the claim was tied to a computer.

The Board agreed with the Appellants. They observed that the claim:

"recites receiving a captured image and detecting colour regions based on a comparison of the captured image values to a set of predetermined reference colour values. These steps require a particular machine or device because the captured image presents the underlying values that [are] used in the comparison set and a particular machine or device is required to decode the image to ascertain these values."

Mental processes

Ex Parte Lynch et al No. 2010-001323 (BPAI April 15, 2012) involved a method for compressing data. The Examiner had said that the claims "recite the mere manipulation of data or an abstract idea, or merely solve a mathematical problem".

The Board in my view took an unreasonably tough line on this one. They looked to the underlying invention for patent-eligibility purposes (CyberSource v Retail Decisions Inc) and concluded that the subject matter of the claims encompasses unpatentable mental processes. The claimed steps of:

"receiving, determining, performing, storing, communicating, analyzing, choosing, and deriving can be performed in the human mind or by a human using a pen and paper."

The Appellants argued that the limitations of claim 1 "constitute a useful feature that provides a tangible real-world result". On this point the Board observed that:

"[w]hile looking for a useful, concrete and tangible result may in many instances provide useful indications of whether a claim is drawn to a fundamental principle or a practical application of such a principle, that inquiry is insufficient to determine whether a claim is patent-eligible under [35 USC] 101".

Data structure per se

Ex Parte Nyman at al No. 2009-013379 (BPAI April 29, 2012) involved an invention relating to routing Simple Object Access Protocol (SOAP) or eXtensible Markup Language (XML) messages to an application no matter the underlying transport mechanism used.

The Examiner had found that claim 14 was directed to functional descriptive material per se or software. Regarding claim 21, the Examiner observed that the computer readable storage structure term in the claim does not require the code to be stored on a physical medium but rather can encompass data compliant with a  file system.

The Appellants argued that "implementing a protocol stack" in claim 14 distinguishes the claim from software/functional descriptive material per se and that the claim is able to perform a task. Regarding claim 21, they said that it recites a physical medium and not an abstraction.

The Board dealt with claim 14 quickly. They observed that the protocol stack was described in the patent specification as a "set of protocols/protocol layers that can deliver messages to a terminal from a Web-connected server or other terminal". Based on this observation, said the Board, the protocol stack is nothing more than a logical relationship or architecture among layers which supports data manipulation functions (eg. a data structure). A claim directed to a data structure per se is non-statutory.

Claim 21 was dealt with the same way. The Board observed that the broadest reasonable construction of the "computer readable storage structure" is not limited to memory and includes an organisation or arrangement of data readable by a computer. The claim failed on two counts. It included within its scope a non-statutory data signal. It also included within its scope a data structure per se.

Abstract idea

Ex Parte Salesin et al No. 2011-002867 (BPAI May 15, 2012) involved an on-screen advertising system that employs paginated on-screen pages that adapt based on display and window size based on a given relative paginated page size.

The Examiner had found that neither of the method claims 16 nor 24 recites at least one significant step performed by, or tied to, a particular machine. The Appellants on the other hand argued that claim 16 clearly calls out a computer and a computing device's display/user display and claim 24 clearly calls out a storage medium and a display of a computing device.

The Board concluded that both claims were directed to an abstract idea.

The preamble of claim 16 recited "[a] computer implemented method". The Board found this was simply nominal use of a general purpose computer and imposed no meaningful limits on the scope of the claim apart from describing a field in which to conduct the process. (Dealertrack, Inc v Huber).

The first three steps of claim 16 recited "obtaining", "authoring" and "creating". None of these steps recite structural limitations to any apparatus. None of these steps recite any specific operations that would cause a machine to carry out the steps. These first three steps could be performed in the human mind, or by a human using a pen and paper. (Cybersource Corp. v Retail Decisions, Inc.)

The step "displaying ... on the user's display screen" didn't get the claim over the line either. The Board found this step to be no more than insignificant extra-solution activity which fails to impart eligible subject matter into the claim.

Claim 24 included an additional step of "storing document content and advertisements to a storage medium". The Board observed that "storage medium" fails to constitute a particular machine. The "storing" step could be reasonably performed by a human mind using pen and paper.

Transitory propagating signal

In Ex Parte Trantow No. 2009-014434 (BPAI May 1, 2012) we saw an invention relating to providing services to devices, and more particularly to aggregating installed devices to define a virtual device, which may then be provisioned according to the capabilities of the virtual device.

Claim 26 was directed to "[a]n article comprising a machine-accessible medi[um] having associated data for a service source to provision resources ...".

The Board observed that the claim does not recite that the "machine-accessible medi[um] is a storage medium. The Board construed "article" to encompass a transmission environment. Therefore the claims encompass a transitory propagating signal.

Photo courtesy of author leathergiftitems under Creative Commons licence.

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.

Alverson and the abstract idea

Ex Parte Alverson et al, No. 2010-008459 (BPAI Feb 15, 2012) involved a system and method providing business information to a contractor certification system for providing a performance assessment, technical evaluation and certification to assist a surety underwriting a building project.

Owner/inventor David J Alverson brought US Patent Application 10/634,504 before the Board of Patent Appeals and Interferences. The Examiner had rejected claims 1, 2 and 4-13 as being directed to non-statutory subject matter.

Claim 1 for example read as follows:

1. A contractor certification system for obtaining lines of credit for a building contractor comprising:

a. survey means comprising a questionnaire stored in a computer database, which is provided to selected candidates within different organizational levels of a building contractor's business for electronically gathering answers concerning information detailing business and financial practices, said answers being used for assessing business and financial practices of said contractor's practices by an independent third party, said financial practices being used to predicate risk ranking when securing lines of credit for said contractor's business, said business practice information comprising management structure, reporting structure, internal communications procedures, safety and labor management practices, said financial practice information comprising current projects, funding, gross margins and close out procedures;
b. said different organizational levels comprising at least one worker, foremen, project manager, engineer, and principal;
c. mapping means for studying said answers provided to said questionnaire on said computer database to select job site visits and candidates for interviews, said mapping means comprising examining and correlating said answers to determine matches, discrepancies and inadequate details;
d. on-location assessment means for determining business and financial practices at the contractor's operations, said assessment means comprising asking questions to each of said candidates selected through said mapping means and observing examples of the contractor's business practices and financial procedures, said assessment means further comprising visiting several active job sites at which said contractor is involved;
e. comparison means for assessing business and financial practices by way of software evaluation of results obtained from steps a-d, and electronically ranking the contractor in comparison with industry standards; and
f. reporting means for providing a grade indicative of said contractor's rank, said reporting means further comprising computer generation of a comparative report that provides a listing of key risk factors and highlights said business and financial practices and risk factors of said contractor in comparison of said risk factors, said risk factors comprising said operational structure, marketing of new projects, current projects, details of project execution, safety procedures,statutory compliance, project administration, mediation / arbitration procedures and past litigation.

Human thought and processing

The Examiner had objected that Claim 1 claims coverage of a human as an element of the system/apparatus per se. Since the broadest reasonable interpretation of the claimed invention as a whole encompasses a human being, the examiner objected that the claimed invention is directed to non-statutory subject matter.

The Appellants on the other hand argued that “Applicant's claims inextricably rely on numerous machines to process the survey results, determine the risk levels, and thereby calibrate the proper surety risk assessment.”

Claim 1, said the Appellants, passes the machine-or-transformation test.

Citing Bilski v. Kappos, 130 S.Ct. 3218, 3227-3228 (2010), the Board observed that abstract ideas are not patent eligible. Claim 1, said the Board, effectively covers an abstract idea because it incorporates human thought and processing to effect claim functions. The recited computer based solution activity is of insufficient cause to avoid preempting an abstraction under 35 U.S.C. § 101.

Significant part

The Board observed that simply adding a “computer aided” limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible. See Dealertrack v Huber Case No. 2009-1566 (my blog post).

There was nothing in the Specification that would support using a computer to provide anything more than a solution achieved more quickly, i.e., through the utilisation of a computer for performing calculations. In fact, said the Board, the Risk Technology item is described without mention of any computer implementation making the language generic to both human and a computer based solution.

Transformation

The Appellants also argued unsuccessfully that the system of claim 1 transforms something because the result is “credible”.

The result of claim 1, said the Board, is that an entity receives a line of credit which does not physically transform that entity into something different. Having more access to credit is nothing more than an exercisable legal right, to be used or not used according to the entity’s financial needs and designs.

Further steps

The Board affirmed the rejection of the Examiner under 35 U.S.C. § 101.

Photo courtesy of authors and neighbours Al and Rose at The Crate Outdoors.

Chkodrov and the abstract database

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:

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.

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D. finds non-functional descriptive matter

Ex Parte D. et al, No. 2009-013829 (BPAI Feb 15, 2012) involved a method of generating network data traffic utilizable in communication systems. LSI Corporation brought US Patent Application 10/620,044 before the Board of Patent Appeals and Interferences. The Examiner had rejected claims 20 and 21 as being directed to non-statutory subject matter. The Examiner had also rejected other claims based on prior art.

Claim 20 read as follows:

20. An article of manufacture comprising a computer-readable storage medium encoded with one or more data structures comprising information characterizing one or more traffic flows associated with at least one traffic generator, represented as a string which includes a global header followed by one or more frames each having an associated frame header, wherein the global header comprises a clock speed field indicating a clock speed of an associated output interface.

Physical or logical relationship

The Appellants argued the Examiner had got it wrong.

The claimed data structure, said the Appellants, defines a 'physical or logical relationship among data elements'. The claims are therefore drawn to statutory subject matter.


Non-functional descriptive material

The Board disagreed. They found some sympathy with the Examiner that the claims merely recite non-functional descriptive material.


Further steps

The Board sustained the Examiner’s rejection of claims 20 and 21 under 35
U.S.C. § 101.

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Rigoutsos finds that adding data not enough

Ex Parte Rigoutsos, No. 2009-010520 (BPAI Feb 7, 2012) involved techniques for annotating sequences, particularly query sequences. Patterns associated with a database, comprising annotated sequences, are accessed. Attributes are assigned to the patterns based on the annotated sequences. The patterns with assigned attributes are used to analyse the query sequence.

International Business Machines Corporation brought US Patent Application 10/305,582 before the Board of Technical Appeals and Interferences. The Examiner had objected that claims 1-17 were directed to a method for annotating a query sequence which does not qualify as a patent eligible process.

Claim 1 as a representative claim, read as follows:

1. A method for annotating a query sequence, the method comprising the steps of:

accessing patterns associated with a database comprising annotated sequences;

assigning attributes to the patterns based on the annotated sequences; and

using the patterns with assigned attributes to analyze the query sequence.

 Claim 26 was directed to an article of manufacture as follows:

26. An article of manufacture for annotating a query sequence, comprising a machine readable medium containing one or more programs which when executed implement the steps of:

accessing patterns associated with a database comprising annotated sequences;

assigning attributes to the patterns based on the annotated sequences; and

using the patterns with assigned attributes to analyze the query sequence.

A manual method

The Board agreed with the examiner that claim 1 is not directed to a patent eligible process under 35 U.S.C. §101.

They found that the following steps were broad enough to encompass a manual method by a user:

1. accessing patterns associated with a database comprising annotated sequences;


2. assigning attributes to the patterns based on the annotated sequences;
   and


3. using the patterns with assigned attributes to analyze the query sequence.

No Transformation

The Appellant argued that the claimed method and apparatus transform the patterns with annotated sequences to derive patterns with assigned attributes. This transformation to patterns with assigned attributes, said the Appellant, provides a useful, concrete and tangible result.

The Board noted that the "useful, concrete, and tangible" test is no longer in fashion. The Board ignored the Appellant's argument to the extent that it relied on the “useful, concrete and tangible” test.

In any case, there was no transformation set out in claim 1. At most, independent claim 1 recited adding additional data to other data without expressly setting forth any of the specifics of the process.

For this reason, said the Board, there was no statutory transformation.

The underlying invention

The Board then lined up article claim 26.

The Board noted that independent claim 26 recites the same limitations and merely sets forth a preamble directed to an article of manufacture. The Board left it up to the Examiner to evaluate this claim with respect to the process which underlies the broad/generic system and article preamble.

Citing Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) (see my blog post), the Board noted that the Examiner may analyse the underlying invention of an appropriate claim as a process.

Further steps

The Board affirmed the Examiner's rejection of claims 1-17 as based upon non-statutory subject matter. They also gave the Examiner a nudge toward a non-statutory rejection of the article claims.

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Foth the postie gets it right

Ex Parte Foth et al, No. 2010-008318 (BPAI Feb 9, 2012) involved a way of applying mailer applied restriction regarding changing of delivery parameters for a mail piece. Pitney Bowes Inc. brought US Patent Application 11/321,175 before the Board of Patent Appeals and Interferences because the Examiner had rejected claims 1-9 and 12 as directed to non-statutory subject matter and had raised obviousness objections to other claims.

Claim 1 read as follows:

1. A method of changing delivery parameters of a mail piece, the method comprising:
receiving the mail piece from a mailer;

receiving from the mailer an electronic file relating to electronic delivery change instructions from an intended recipient of the mail piece;

applying a marking on the mail piece associated with an address of the intended recipient;

mailing the mail piece;

sending the intended recipient information regarding the mailed mail piece;

receiving from the intended recipient an electronic delivery change instruction to change at least one of the delivery parameters of the mail piece after the mail piece has been mailed;

comparing the electronic delivery change instruction with the electronic file to determine prohibited delivery change instructions; and

limiting the intended recipient from changing the at least one of the delivery parameters where the electronic delivery change instruction comprises a prohibited delivery change instruction.

Transformation

Does a method that places indicia on a mail piece and mails that piece transform that piece?

The Appellants argued that applying a marking on a mail piece transforms that piece.

The Examiner had argued that the underlying mail piece is unchanged, therefore there is no transformation.

The Board agreed with the Appellants, discarding the Examiner's rejection as irrelevant. The combination of the mail piece and the marking forms an article that differs from what began. The distinction is fundamental rather than ornamental, as it is needed to complete the mail piece.

Further steps

The Board reversed the Examiner's findings regarding claims 1-9 and 12. These claims were held to be directed to statutory subject matter. The Board then promptly affirmed the Examiner's rejection of all but claims 10 and 11 as being obvious over prior art.

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Claribel Chan finds a one-eyed lens

Ex Parte Chan et al, No. 2009-010908 (BPAI Jan 30, 2012) involved computer systems, software and methodologies for business solution management. US Patent Application 10/624,860, owned by SAP AG, was the subject of fairly extensive analysis by the Board of Patent Appeals and Interferences. The Board in my view developed quite an innovative lens through which to view the claims.

During examination, the Examiner objected to claims 1-3 and 5-31 for non-statutory subject matter. Three representative claims are claims 1, 25 and 29.

Claim 1 read as follows:

1. A business solution management system comprising: 

software comprising instructions stored in a computer readable medium, the software:

allowing a user to design a business solution with user parameters, instantiated user-selectable, pre-defined business objects, and instantiated user-selectable, pre-defined technology objects;

allowing a user to maintain and modify the business solution designed by the user subsequent to implementation of the business solution, the implementation based, at least in part, on a current state of the business objects and the technology objects; and

persisting the modified business solution for subsequent presentation through a graphical user interface;

a first data repository comprising the instantiated user-selectable, pre-defined business objects; and

a second data repository comprising the instantiated user-selectable, pre-defined technology objects.

Claim 25 read:

25. A computer-implemented method comprising:

providing at least a first software application and a second software application, the first software application allowing a user to design a business solution with user parameters, instantiated user-selectable, pre-defined business process objects, and instantiated user-selectable, pre-defined technology objects, and the second software application allowing the user to maintain and modify the business solution subsequent to implementation of the business solution, the implementation based, at least in part, on a current state of the business process objects and the technology objects, at least one of the first or second software applications persisting the modified business solution for subsequent presentation through a graphical user interface;

providing the instantiated user-selectable, pre-defined business process objects to a first data repository; and

providing the instantiated user-selectable, pre-defined technology objects to a second data repository.

Claim 29 read as follows:

29. An article comprising a machine-readable medium storing instructions operable to cause one or more machines to perform operations comprising:

prompting a user to select at least one instantiated business process object and one instantiated technology object;

receiving user parameters;

designing a business solution using the selected business process object, technology object, and user parameters;

maintaining and modifying the business solution subsequent to implementation of the business solution, the implementation based, at least in part, on a current state of the business object and the technology object; and

persisting the modified business solution for subsequent presentation through a graphical user interface.

Transitory signals

The Board first looked at claim 25. They noted that the claim:

'merely sets forth the steps of "providing..." which are broad enough to read on the disclosed "machine-readable signal" which is any signal used to provide machine instructions and/or data to a programmable processor.'

Claim 25 was therefore held to be directed to non-statutory transitory signals. The Board upheld the Examiner's decision to reject the claim as covering non-statutory subject matter.

Claim 25, according to the Board, also failed both steps of the machine or transformation test.

The mere preamble language of 'computer-implemented method' was not sufficient to tie the claim to a particular or specific machine/computer.

On the transformation angle, the Appellants asserted that the data being transformed represented underlying physical objects. However the Appellants did not identify any specific definition for what the Board described as 'these sweeping generalities.' Arguing that there were 'transformative aspects' in the claim didn't work either.

An abstract idea

The Board had quite a lot to say about system claim 1 and article claim 29. They said both claims represented an unpatentable mental process. They also determined that the claims failed both steps of the machine or transformation test.

As a starting point, the Board stated it would address the process which underlies the broad/generic system preamble. Citing CyberSource Corp. v. Retail Decisions, Inc. (Case No. 2009-1358) (see my blog post), they felt able to 'look to the underlying invention for patent-eligibility purposes'.

The Board determined the underlying invention of both claim 1 and claim 29 as a process.

The underlying method, said the Board, could be performed by a human writing on a piece of paper. A method that can be performed by human thought alone is merely an abstract idea and not patent eligible.

The scope of the method steps of claim 1 cover functions that can be performed in the human mind, or by a human using a pen and paper. Accordingly, these unpatentable mental processes fall within the subject matter of claim 1.

As if that wasn't enough, the Board went on to conclude that the claimed underlying process failed both steps of the machine or transformation test. First, the abstract process steps of the software in combination with the two repository elements did not recite a specific machine. Secondly, the process did not set forth a transformation of an article and the data was not limited to a specific type of data so as to impart patent eligible subject matter.

Further steps

The Board affirmed the Examiner's rejections of claims 1-3 and 5-31 as directed to non-statutory subject matter.

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Hu finds that storage is the key

Ex Parte Hu et al, No. 2010-000151 (BPAI Feb 8, 2012) involved a method and system for performing log-based recovery by allowing a plurality of worker processes to process in parallel a plurality of work items in a log. Each work item represented an ordered operation on a corresponding data object.

Oracle International Corp. brought US Patent Application 10/982,135 before the Board of Patent Appeals and Interferences as the examiner had rejected claims 26-45 as being directed to non-statutory subject matter.

Claim 26, as a representative claim, was directed to a computer-readable storage medium tied to the method of claim 1. Claim 26 read as follows:

26. A computer-readable storage medium storing one or more sequences of instructions which, when executed by one or more processors, causes the one or more processors to perform the method recited in Claim 1.

 Claim 1 in turn read as follows:

1. A method for processing sequences of work items from a log, wherein each work item in said log corresponds to a particular data object, the method comprising the computer-implemented steps of:

each of a plurality of Worker processes performing the steps of :

reading, from said log, a subset of the work items;

producing one or more sequentially ordered sets of work items;

wherein each of said one or more sequentially ordered sets corresponds to one or more data objects;

wherein each of said one or more sequentially ordered sets includes work items for the one or more data objects to which the sequentially ordered set corresponds; and

wherein, within each of said one or more sequentially ordered sets, work items are ordered in the same relative order as the work items were ordered in the log.

It's a storage medium

Oracle argued that the computer-readable storage medium recited in claims 26-45 is directed to a storage medium that can be read by a computer. Therefore, the claimed storage medium excludes intangible signals and transmission media that merely carry information as opposed to storing them.

No it isn't

The Examiner's view was that the specification failed to define a computer-readable storage medium to exclude carrier waves. Therefore the claims encompass transitory signals and are directed to non-statutory subject matter.

Yes it is

The Board disagreed with the examiner. They found that the computer-readable storage medium was directed to a tangible storage medium, which can be read by a computer.

A computer-readable medium is broad enough to cover intangible media. However, a computer readable storage medium is confined to tangible media for storing data.

Because the cited claims are limited to a tangible medium within one of the four statutory classes, they are directed to statutory subject matter.

Further steps

The Board reversed the Examiner's rejection and allowed all claims.

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Edelson finds an abstract intangible asset

Ex Parte Edelson, No. 2011-004285 (BPAI Feb 6, 2012) involved a way for creating financial instrument derivatives of rollups of recurrent yield monetary based assets. Whatever that means. The inventor Harry Edelson briefed counsel to appear before the Board of Patent Appeals and Interferences for his US Application Number 11/101,436.

Claims 11-13 and 15-20 had been rejected by the Examiner as directed to non-statutory subject matter.

Claim 11, for example, read as follows:

11. A computer-implemented method for creating recurrent yield monetary asset based financial instrument derivatives by a rollup entity in communication with at least one recurrent yield monetary asset resource, said recurrent yield monetary asset having an asset value, said method comprising:

communicating between said rollup entity and said at least one recurrent yield monetary asset resource regarding acquiring an at least one recurrent yield monetary asset selected from the group consisting of royalties, salaries, royalty-type streams of revenues, publishing royalties, copyright royalties, trademark royalties, patent royalties, oil-revenue royalties, movie and video publishing royalties, said recurrent yield monetary assets;
transferring from said at least one recurrent yield monetary asset resource to said rollup entity said recurrent yield monetary asset;

depositing said one recurrent yield monetary asset into a rollup entity earnings account;

calculating at least one of the group consisting of a cash value and a number of shares of said financial instrument derivatives based on said asset value; and

issuing from said rollup entity to said at least one recurrent yield monetary asset resource said calculated number of shares of said financial derivative instrument.

Abstract idea

The Examiner had objected that claim 11 performs no physical transformation and does not recite how a specific machine is used. Therefore the claim recites no more than an abstract idea.

The Appellant argued that the claim wasn't just to an abstract idea. The claim, said the Appellant, transforms a royalty stream into a derivative.

Abstract concept

The Board agreed with the Examiner. They said that claim 11 does no more than lay out the concept of issuing a derivative instrument.

The claims, said the Board, don't refer to a specific machine by reciting structural limitations to any apparatus.  The claims don't recite any specific operations that would cause a machine to be the mechanism to communicate or calculate information, or to deposit or issue an intangible asset.

The Board went further and observed that to communicate, calculate or issue intangible information requires no machine, only the conscious thought of the one controlling the operation. To deposit such intangible information requires only an agreement that such a deposit is made.

The Board concluded that, absent any specific structural limitations on how one acts to perform these steps, these claims recite no more than the abstract concept of issuing an abstract intangible asset. A patent would effectively grant a monopoly over an abstract idea.

Computer-implemented is computer aided

The Board went on to consider the term "computer-implemented method" in claim 11.  Citing Cybersource Corp. v Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. Aug 16, 2011) (see my blog post), they said that simply using some computer-implemented method in some undefined manner alone cannot confer patentability.

Citing Dealertrack v Huber Case No. 2009-1566, the Board noted that the phrase "computer-implemented" modifier is comparable in scope to "computer-aided" and so its inclusion in the preamble does not change the outcome.

Further steps

The Board affirmed the Examiner's rejection of claims 11-13 and 15-20 as directed to non-statutory subject matter.

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Chen and the patentable business model

In Ex Parte Chen et al, No. 2009-012206 (BPAI Jan 25, 2012), we saw International Business Machines Corporation take US Patent Application 11/230,446 to the Board of Patent Appeals and Interferences. The invention related to business model data management.

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).

Transformation

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.

Tangible media


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.

Further steps

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.

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Ritner has a trick up his sleeve

In Ex Parte Ritner JR. et al, No. 2009-013343 (BPAI Jan 18, 2012), we saw counsel for the inventors Ritner JR. and Ehrlich appear before the Board of Patent Appeals and Interferences. The Appellants were arguing that their US Patent Application 10/323,455 should be patentable.

The invention was directed to a casino style card game having wagering features. The game used one or more decks of standard playing cards.

Claim 1 for example read as follows:

1. A method of playing a wagering game utilizing one or more decks of standard playing cards comprising: 

accepting a primary wager from each participating player; 

dealing each player and a dealer five cards; 

requiring each player and the dealer to arrange the five cards into a three-card hand and a two-card hand wherein each player's two-card hand must achieve a minimum pre-established rank for each player to be eligible for a payout on the primary wager and wherein the dealer's hand is not required to achieve a minimum preestablished rank; 

comparing the rank of the dealer's three-card hand to the rank of each player's three-card hand and comparing the rank of the dealer's two-card hand to the rank of each player's two-card hand; and 

settling each player's primary wager dependent upon the comparison of the rank of the dealer's three-card hand to the rank of each player's three-card hand and the comparison of the rank of the dealer's two-card hand to the rank of each player's two card hand.

The Examiner had objected to claim 1 and others as being directed to non-statutory subject matter.  The Examiner applied only the machine-or-transformation test.

Not abstract

The Board agreed with the Appellants. They noted that the Examiner cited the machine-or-transformation test but had not articulated a full analysis under 35 U.S.C. 101.

Claim 1 contained a limitation for dealing each player and a dealer five cards and settling each player's primary wager. These were not abstract ideas or insignificant extra-solution activity in the scope of the claim.

The Board reversed the Examiner's rejection of the claims as being directed to non-statutory subject matter.

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Anderson: Firewall reporting encompasses signals

Ex Parte Anderson et al, No. 2009-013430 (BPAI Jan 24, 2012) involved US Patent Application 10/922,500 assigned to IBM Corporation.  The invention related to a graphical representation of a firewall and a network coupled to a firewall.

Claim 11 for example read as follows:

11. A computer program product for reporting a data flow in a firewall, said computer program product comprising: 

a computer readable medium; 

first program instructions to display a graphical representation of said flrewall and a network coupled to said firewall; 

second program instructions to display a number of an inbound port of said network; and 

third program instructions to display an arrow adjacent to said port number pointing toward said network indicating that a communication is permitted to said port; and 

wherein said first, second and third program instructions are recorded on said medium.

Tangible embodiment

The Examiner had objected that the language of claim 11 did not limit the "computer readable medium" to a tangible embodiment.

The Board agreed. They observed that the term "computer readable medium" recited in claim 11 encompasses transitory propagating signals.

The Examiner's rejection of claims 11-15, 20 and 25-28 as being directed to non-statutory subject matter was affirmed.

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BPAI finds statutory subject matter in Chen

In Ex Parte Chen et al, No. 2009-013814 (BPAI Jan 22, 2012), IBM Corporation brought US Patent Application 11/458,435 before the Board of Patent Appeals and Interferences. The invention involved a method, apparatus and computer program product for controlling and viewing appointments in a calendar and schedule system.

Claim 9 for example read as follows:

9. A calendaring and scheduling … data processing system comprising: 

[calendaring and scheduling] core logic coupled to a data store of events; 

a [calendaring and scheduling] user interface; and, 

access control logic comprising program code enabled to determine whether to include portions of events in the data store of events in a shared calendar view of the [calendaring and scheduling] user interface on a field-by-field basis according to field level access attributes for the events, wherein 

a description of the event is suppressed from display in the shared calendar view; and,
the shared calendar view includes a time range and type for the event.

Just a computer program
During examination the Examiner found that claim 9 did not specify that the claimed invention includes hardware. Therefore, the language of the claim merely describes a computer program per se.

Use of a device
The Appellants argued that claim 9 was not directed to software per se. They said that the claimed calendaring and scheduling core logic coupled to a data store implies both functionality and structure (hardware). The claimed user interface is necessarily a device that interfaces with a user for calendaring and scheduling.

The Board agreed, finding error in the Examiner's rejection. Claim 9 recites, inter alia, a data processing system, calendaring and scheduling core logic coupled to a data store of events, a calendaring and scheduling user interface, and access control logic.

The core logic coupled to a data store of events implies structure for example hardware.

The user interface amounts to a device or machine because it implicates the use of a computer monitor that allows a prospective user to interface with the core logic and the data store.

The claimed features include hardware (database and machine), therefore the claim doesn't merely describe software per se.

Further steps
The Board reversed the Examiner's decision to reject claim 9 and dependent claims as being directed to non-statutory subject matter. However the Examiner's rejection against all but two claims based on prior art was affirmed. So claim 9 ended up invalid anyway.

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