BPAI Again Uses "Software" Embodiment to Uphold 101 Rejection

Ex parte Robert Mark Magid
Decided: February 19, 2009

I find this decision interesting because it continues the BPAI's trend finding claims that may have a software embodiment unpatentable.

Claim 21 of Magid's application recited:

A computer program device for intercepting user exit interfaces in IMS programs, comprising:

logic means for communicating between an interception routine and an interface routine to resolve name ambiguity and enable simultaneous use of a single exit by plural users.

The Examiner issued a 101 for this means-plus-function claim because the claimed "logic means" were limited to logic, i.e., program code or software per se, which is not the same as physical means, such as hardware.

Magid's specification stated that:

[i]t is to be understood that in the system 10 described above, the logic of the present invention can be contained on a data storage device with a computer readable medium, such as a computer diskette. Or, the instructions may be stored on a magnetic tape, hard disk drive, electronic read-only memory (ROM), optical storage device, or other appropriate data storage device or transmitting device thereby making a computer program product, i.e., an article of manufacture according to the invention. In an illustrative embodiment of the invention, the computer-executable instructions may be written using mainframe assembler language. Moreover, the IMS user program 24 may be written using assembler, PL/I, FORTRAN, COBOL, Pascal, REXX, or Java.

The flow charts herein illustrate the structure of the logic of the present invention as embodied in computer program software. Those skilled in the art will appreciate that the flow charts illustrate the structures of computer program code elements including logic circuits on an integrated circuit, that function according to this invention. Manifestly, the invention is practiced in its essential embodiment by a machine component that renders the program elements in a form that instructs a digital processing apparatus (that is, a computer) to perform a sequence of function steps corresponding to those shown.

The BPAI sided with the Examiner, appears rightly so, and concluded that "consistent with the Specification, we find that the 112, sixth paragraph scope of the claimed 'logic means' broadly encompasses at least a first embodiment that consists of software per se." The Board did note that the claim also covers logic circuits on an integrated circuit, which is within the scope of 101. Thus, the claims cover both hardware and software.

Citing Nuijten, the Board said "[o]ur reviewing court has clearly stated that “[t]he four categories [of § 101] together describe the exclusive reach of patentable subject matter. If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.” As a result, the Examiner's 101 rejection was confirmed.