Decided: February 5, 2009
I find this decision interesting because it appears to continue to blur the BPAI's view of the patentability of Beauregard claims.
Less than a month after the BPAI held a Beauregard claim unpatentable (see Ex Parte Cornea-Hasegan), they overturned an Examiner's 101 rejection of computer readable medium claim. Might the BPAI returning to their Ex Parte Bo Li line of thinking?
Claim 17 of Mazzara's application recited:
A computer usable medium including a program for storing an alert message request for a mobile vehicle communication system into a queue comprising:In rejecting this claim, the Examiner applied reasoning similar to that in Cornea-Hasegan. The Examiner stated that "“claims to a computer usable medium including a program and then listing program codes are not physical ‘things’ and do not define any structural and functional interrelationships between the computer program and other claimed elements of a computer, which permit the computer program’s functionality to be realized."
computer program code that determines service type availability for the mobile vehicle communication system;
computer program code that receives an alert message request from a wireless communication system;
computer program code that sets a preferred roaming list flag
for the mobile vehicle communication system;
computer program code that stores the alert message request into a mobile vehicle communication message queue;
computer program code that initiates a parameter call to the wireless communication system to service the alert message request in the message queue; and
computer program code that services the alert message request to a mobile communication system until completion.
In reversing, the BPAI reminded the Examiner that "the fact that the claims covers methods which are essentially mathematical in nature ... is not dispositive [of whether the claims is directed to statutory subject matter]. Claims should be evaluated by their limitations, not by what they incidentally cover.” In re Warmerdam, 33 F.3d 1354, 1359 (Fed. Cir. 1994). The BPAI went on to determine that the term "computer usable medium" was limited to only tangible manufactures relaying on a "skilled artisan's" understanding of that term (note that no express definition was provided in the specification). However, the BPAI needed to go further and determine that the preamble of claims 17 was limiting before confirming patentablity of the Beauregard claim.
In view of this decision, it appears that a standard "Beauregard" preamble (i.e., one that recites a "computer readable medium") is not enough to ward off 101 scrutiny. This appears contrary to PTO's long running practice of holding Beauregard claims as patentable under 101.