Software Per Se is Not a Statutory Class Of Invention

Ex parte Cristian Petculescu and Amir Netz
Decided: June 4, 2009

My apologies for the lack of postings. Although I still reviewed the decisions, I found a lot of the same rejections and arguments. That being said, I find this decision worth reporting on because the Applicants argued that software code in itself constitutes patentable subject matter under in Eolas Techs., Inc.v. Microsoft Corp. It should be no surprise that the Board disagrees.

The claims at issue were directed to automatically generating and building (automating the generating and building of) dimensional models utilizing simplified analysis heuristics. The application included both system and method claims.

Claim 1 recited:

A data analysis system, comprising:

an automated structure labeling system utilizing simplified analysis heuristics for automatically defining a dimensional model based on data interrelations from a relational data schema; and

an automated model building system for automatically constructing the dimensional model defined by the automated structure labeling system.

The Examiner rejected claim 1 and others under 101. The applicants argued using the old State Street standard. In addition they argued that the claims are directed to software code that in itself constitutes patentable subject matter as described in Eolas Techs., Inc. v. Microsoft Corp.

The Board dispensed the State Street arguments and then ran through the Bilski test to confirm the rejection of a number of the claims. When addressing the Eolas argument, the Board stated:

Appellants argue that all their claims are patentable as software code per se based on the Eolas
Techs., Inc. v. Microsoft Corp. case. Appellants, quoting a single sentence in Eolas, assert that Eolas stands for a new rule that software in itself is patent eligible. We do not agree – Appellants misconstrue Eolas.

Eolas states that “[w]ithout question, software code alone qualifies as an invention eligible for patenting under these categories, at least as processes.” Eolas Techs., Inc. v. Microsoft Corp., 399 F.3d 1325, 1339 (Fed. Cir. 2005) (citing In re Alappat, 33 F.3d 1526 (Fed.Cir.1994); AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999) (abrogated by Bilski, 545 F.3d 943)). In particular, we note that the quoted language in Eolas is dicta within a discussion of “whether software code made in the United States and exported abroad is a ‘component[ ] of a patented invention’ under section 271(f).” Eolas, 399 F.3d at 1338-39.

Software in itself, with no structural tie to an article of manufacture, machine, process or composition of matter, is not patentable subject matter. See In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) (A claim directed to computer instructions embodied in a signal is not statutory under 35 U.S.C. § 101). Cf. In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994) (a claim to a data structure stored on a computer readable medium that increases computer efficiency held statutory). Patentable subject matter must fall within one of the categories set out in § 101. See FN 4 (supra). “Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101….” Nuijten, 500 F.3d at 1359. Software (a data processing program) alone does not belong to one of those categories.

I, for one, am looking forward to hearing what the Supreme Court says regarding Bilski.