A Data Packet is Not Patentable

Ex parte Michael J. Pizzo et al.
Decided: March 23, 2009

Not surprising, the BPAI held a claim directed a data packet transmitted between two computer components was not patentable subject matter. The Board relied on Nuitjen.

Claim 57 of Pizzo's application recited:

A data packet transmitted between two or more computer components that facilitate database query registration, database change detection and database change notification comprising:

database query registration information, associated with a registered database query, stored in a queue, and employed to construct and transmit a change message utilized to route a database change notification.

The Examiner reject the claim under 101. The Board relied on Nuitjen and affirmed stating simply that:

Claim 57 is directed to a “data packet transmitted between two or more computer components.” We construe the “transmitted” data packet to encompass a signal which is not subject matter patentable under 35 U.S.C. § 101.

It should come as no surprise by now that unless your claim is directed to one of the four statutory categories the BPAI will take exception.

Dictionary Definintion of "Continously" Applied to Reverse Rejection

Ex Parte Timothy James Collin et al.
Decided: March 13, 2009

I find this decision interesting because the BPAI applied a dictionary definition for the term "continuously" because the applicant did not define that term in the specification. Also, I was happily surprised that there were no new grounds of rejection based on either Bilski or Nuitjen.

The subject matter of the Collins application was directed to a method and device for transmitting data on a channel within a given power range. The method and device begin transmitting data when a first condition has been met, such as a power level, a synchronization pulse, or a pseudo-random pause. The transmission stops when the power falls below the first power threshold or exceeds a second power threshold level.

Claim 1 of the application recited:

A method comprising the steps of:

receiving a carrier signal;

continuously monitoring the carrier signal for a first predetermined condition;

selecting a channel and continuously transmitting data on the selected channel if the first predetermined condition is satisfied and while transmitting the data continuously monitoring the carrier signal for a second predetermined condition; and

ceasing the transmitting of the data on the selected channel if the second predetermined condition is satisfied during the transmitting of the data on the selected channel, wherein the first predetermined condition is satisfied based on one of, when a received power level exceeds a first threshold and a synchronization signal, and the second predetermined condition is satisfied based on the received power level.

The claims were rejected under 103. The term at issue was "continuously." The specification was silent as to the terms meaning. As a result, the Board referred to Merriam-Webster's Online Dictionary and defined "continuous" as "marked by uninterrupted extension in space, time or sequence." Using this definition, the Board determined that cited references did not teach "continuously transmitting data on the selected channel . . . and while transmitting the data continuously monitoring the carrier signal for a second predetermined condition."

The Examiner had argued that the applicants narrowly construed the term “continuously." The Examiner found that a reference that repeated a loop pattern, when no acknowledgement was received, read on the above limitation. The Board disagreed and stated the reference included a delay period when no data is being transmitting within each loop, and thus the above limitation was not present. The Board also found another delay in the teachings of the reference.

Much to my surprise, there was no Bilski or Nuitjen analysis applied to the method claim.

Claim 6 was a system claim having elements such as:

a receiver for receiving a carrier signal;

a monitor ... for continuously monitoring the carrier signal;

a storage medium having data stored therein; and

a transmitter ...

The Board overturned the rejection of this claim using the same analysis above with respect to the term "continuously."

Again, there was no Nuitjen analysis. Also, there was no discussion of "storage medium." The specification did not define storage medium and we have seen the board apply both statutory and non-statutory definitions to this term on different occasions.

Congrats to the Applicants are in order.

BPAI Confirms 101 Rejection of Method, Beauregard, and System Claim

Ex parte Nick M. Mitchell and Gary S. Sevitsky
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:

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:

• 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
  

a memory for storing the instructions.

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:

[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

Means-Plus-Function Claim Goes Down for Reference to Software and Signals

Ex parte John D. Morris and Daniel J. Clark
Decided: February 13, 2009

I find this decision interesting because it uses statements often found in software and hardware applications to reject means-plus-function claims under 101.

Morris and Clark claimed a system, method, and computer program product for processing or rasterizing graphic objects. Claim 33 recited a system having a means for rasterizing the graphic objects, including, for each of the graphic objects, using the tracking list to identify unmarked segments in the scan line, the unmarked segments corresponding to markable pixels in the pixel array.

In correctly construing the "means for" elements in light of the specification, the BPAI noted that the specification recited that "[t]he invention and all of the functional operations described in this specification can be implemented in digital electronic circuitry, or in computer software, firmware, or hardware." Various forms of this type of language can be found in a large number of applications past and present.

The BPAI pointed out the above passage unequivocally describes the various implementations in the alternative. The Board reasoned that the invention can exist solely in software. As a result, the Board found that means-plus-function limitations is not limited to only statutory subject matter under 101.

The Board also piled on by applying what I refer to as the "Death by Carrier Wave" 101 rejection. The Specification also mentioned that the invention could be implemented as a computer-readable product (i.e., a Beauregard type embodiment). The specification included the following language:

The invention can be implemented as one or more computer program products, i.e., one or more computer programs tangibly embodied in an information carrier, e.g., in machine-readable storage device or in a propagated signal for execution by, or to control the operation of, data processing apparatus, e.g., a programmable processor, a computer, or multiple computers.

The BPAI again took this opportunity to apply Nuitjen and issue a new 101 rejection to the means-plus-function and Beauregard claims.

The BPAI reminded the Applicants that according to USPTO guidelines set forth in MPEP § 2106(IV)(C)(2)(2)(a), claims must be amended to recite solely statutory subject matter.