Decided: February 23, 2009
This decision is interesting because the Board broadly applied Bilski to reject not only method claims, but also Beauregard and system claims. Also, the decision appears to conflict with aspects Ex parte Mazzara (see previous posting) regarding the BPAI's view of a "computer readable medium."
The claims of this appeal were directed to diagnosing memory leaks. The representative claims at issue on appeal included a method claim, a Beauregard claim, and a system claim. The Examiner rejected each of the claims under 101. The claims recite:
1. A method for identifying co-evolving regions in the memory of a target application, comprising:The Board began their 101 analysis with the method claim and applied the "machine-or-transformation test.” In an attempt to pass the "machine" part of the test, the applicants argued that claim 1 was “clearly computer-implemented,” based on the allegation that the preamble “recites a memory wherein the co-evolving regions are identified.” The Board didn't buy it. They responded with:
receiving information identifying a set of data structures that are evolving; and
classifying the constituents of the data structures based on their likelihood to evolve in a single coherent manner.
10. A computer readable medium for identifying co-evolving regions in the memory of a target application, comprising instructions for:
receiving information identifying a set of data structures that are evolving; and
classifying the constituents of the data structures based on their likelihood to evolve in a single coherent manner.
11. An information processing system comprising:
a processor comprising logic for performing instructions of:a memory for storing the instructions.
- identifying a set of data structures that are evolving; and
- classifying the constituents of the data structures based on their likelihood to evolve in a single coherent manner; and
[w]e find nothing in the steps of claim 1 that are specific to a computer. Nor do we find that the recitation of a “memory” in the preamble serves as antecedent for anything in the body of the claim, other than, inferentially, may evidence intent that the “memory” might contain the set of data structures that relate to “information” that is gathered and received in some unspecified manner.
The Board quickly addressed the "transformation" prong by finding that claim 1 did not require any kind of electronic transformation of data into a different state or thing.
The BPAI next addressed the Beauregard claim. As expected, the applicants argued that claim 10 was directed to the “manufacture” class of statutory subject matter as set forth in § 101. In response, the Board said that:
[a]lthough a “computer readable medium” may nominally fall within the statutory class of “manufacture,” claim 10 would effectively pre-empt the abstract idea represented by instant claim 1.The Board's footnote discussing "manufacture" is interesting. The footnote states:
[a] computer readable “medium” that comprises “instructions” as recited in claim 10 does not necessarily fall within any statutory class. A computer, properly equipped, can receive instructions via electronic data transmission over a wired network or over the air. However, a carrier wave or signal does not fall within any of the four categories of statutory subject matter, and is thus not statutory subject matter. See In re Nuijten, 500 F.3d at 1357.The panel in Ex parte Mazzara, decided on February 5, 2009, is in opposition with the above reasoning. The Mazzara panel found that the term "computer usable medium", when not defined in the specification, was limited to only tangible manufactures. The Mazzara panel relied on the the fact that there was no express statement in the Specification, nor any other indication in the record, that the term "computer usable medium" was intended to include non-statutory subject matter such as signals or paper. (Note that Technology Center 2600 decided Mazzara and Technology Center 2100 decided Mitchell)
In addressing system claim 11, the Board acknowledge that on its face the claim appeared directed at patentable subject matter (e.g., a “machine”). Despite this, the Board found that the claim was not 101 eligible. They reasoned that:
[t]he use of a “processor” and “memory” for storing and performing the broadly recited “instructions” of claim 11 would be, in practical effect, a patent on the abstract idea of “identifying” and “classifying constituents” of data structures as recited. Limiting the claim to part of a system comprising a “processor” and “memory” does not add any practical limitation to the scope of the claim. Similar to a field-of-use limitation in a process claim, the use of a general “processor” and “memory” is insufficient to render an otherwise ineligible claim patent eligible. See Bilski, 545 F.3d at 957
This decision, while irritating, is resolvable with Mazzara.
ReplyDeleteIn Mazzara, the claim was directed toward "[a] computer usable medium including a program . . . comprising: computer program code."
Here, the claim is directed toward "[a] computer readable medium . . . comprising instructions."
In one view, the claim in Mitchell would read on a simple text file storing human-readable instructions. This would be non-functional descriptive material (i.e. printed matter), even if we ignore the Nuijten red herring (i.e., even a tangible CD-ROM encoded with human-readable instructions would not be statutory). Lowry didn't state that all matter recorded on computer memory was statutory -- only functional matter.
In Mazzara, the applicant at least recited a "program" and "computer program code."