Claims That Are Tied to "Any and Every Possible Digital Computer" Run Afoul of 101

Ex parte John Synder
Decided: May 12, 2009

This panel appears to apply Bilski's machine-or-transform test to systems claims. Also, the reasoning on why the systems claims are not tied to a particular machine is quite interesting to me.

Synder's claims were directed to systems and method that provide a text to XML converter. Claims 1 and 19 arguably are "system" claims. Claim 14 is a process claim. They are pretty short, so they are reproduced here:

Claim 1. A text to XML transformer, comprising:

a transformer program having a plurality of compound statement [sic, statements]; and

a processor for executing the transformer program and converting an input text document into an XML document wherein the XML document does not contain every element that was in the input text.

Claim 14. A process for converting text to XML, comprising the steps of:

a) defining a transformer program having a plurality of compound statements, wherein one of the plurality
of compound statements contains a command that matches a regular expression and takes an action;

b) receiving a text stream;

c) executing the transformer program to convert the text stream into an XML stream.

Claim 19. A text to XML transformer, comprising:

a wizard for creating a transformer document;

the transformer document having a plurality of compound statements formed by a text to XML computer language; and

a processor for executing the transformer document and converting an input text document into an XML document.

The Examiner rejected each of these claims under 101. The Examiner reasoned that “[t]he claimed invention is directed to a transformer program (independent claims 1 and 14) or a transformer document (independent claim 19) that is executed by a processor.

The applicant argued, what I think many of us have thought, that “[s]oftware is just a way of temporarily wiring an electric circuit (computer) to perform a specific task. Electrical circuits are machines."

The Board's analysis with respect to claim 14 was their standard "no machine" and "no transform" of an article reasoning.

The more interesting Board analysis comes with respect to claims 1 and 19. The Board framed the issues as "whether the 'processor', alone or in combination with the program, is such that the claim as a whole defines a patent-eligible 'machine' under § 101."

This panel focused on the processor description in the specification. I think the decision is worth quoting here:

There does not appear to be anything special about the processor:
The XML transformer 10 has a processor 12 that executes a transformer program 14 that has a plurality of executable statements or script 15.
Spec. 5:4-6. The Specification does not disclose a new hardware design. The processor is not in means-plus-function format, but even if it was, the only structure shown is a block diagram of a processor that would include any and every possible processor for performing the functions.

In the end, the Board reasoned that because claims 1 and 19 cover any and every possible digital computer for executing the transformer program these claims fall outside the scope of 101.