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.

National Law Journal Article Posted

If you haven't seen it already, I recently had an article published by the National Law Journal. The article is titled "Technology claims face high level of scrutiny". If you have a subscription to law.com, please check it out.

Board Reverses Rejection of Beauregard Claim Based on Specification

Ex parte Stanley Bruce Holmstead and Jody L. Terrill
Decided: May 20, 2009

This decision, again, highlights how the specification can be used to ensure that a Beauregard claims survives a 101 challenge.

The claims at issue were directed to a printer system for managing printable assets. The system could examine the content of the print job elements to determine (1) if the print job element(s) already exist in local memory, and (2) a location in the local memory to store the print job elements if any elements do not already exist in local memory.

Claim 10 is the Beauregard claim. It recites:

A computer-readable medium having stored thereon instructions that, when executed, direct a printer to:

receive a print job ticket that references one or more print job elements, each of the print job elements containing contents that enable generation of a printable document;

examine the contents of the one or more print job elements to determine if one or more of the print job elements is already present in a local memory of the printer; and

ascertain a location in the local memory of the printer to store any of the one or more print job elements that do not already exist in the local memory.

The Examiner rejected claim 10 using 101. The Examiner reasoned that “[t]he computer program product claimed is merely a set of instructions per se. Since the computer program is merely a set of instructions not embodied on a computer readable medium to realize the computer program functionality, the claimed subject matter is non-statutory.”

In response, the Applicants argued that claim 10 recited a computer-readable medium that was an article of manufacture—one of the statutory categories of subject matter under § 101. They also argues such a tangible computer-readable medium was deemed statutory by the Federal Circuit as well as MPEP § 2106.01.

The Panel reviewed the specification. They found the that it described examples of a computer-readable medium a ROM and/or firmware. The specification, with respect to firmware, stated that:

Printer 100 may include a firmware component 110 that is implemented as a permanent memory module stored on ROM 106. Firmware 110 is programmed and tested like software, and is distributed with printer 100. Firmware 100 can be implemented to coordinate operations of the hardware within printer 100 and contains programming constructs used to perform such operations.

The Panel began with providing definitions for a machine and a manufacture. As we have seen before, the definition of a machine comes from Nuitjen and is "is a concrete thing, consisting of parts, or of certain devices and combination of devices." The definition of a manufacture also comes from Nuitjen and is "(in its verb form) is defined as the production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties, or combinations, whether by hand-labor or by machinery."

Using these definitions, the Panel determined that in view of the specification the recited computer-readable medium fully comports with the definition of a “machine." Thus, the reversed the 101 rejection. Further, the Panel also determined that the computer-readable medium of claim 10 could be a “manufacture” under § 101 and therefore constitutes statutory subject matter for this additional reason.

Board Reverses 101 Rejection Using Machine Prong

Ex parte Andreas Myka and Christina Lindholm
Decided: May 13, 2009

In this decision, the Appellants were able to overcome a 101 rejection by "communicating" information between a master device and a slave device.

The claims at issue relate to bonding 'slave' devices, such as media capture devices, and instructing the devices to communicate captured media files with a specified set of metadata included.

Claim 14 recites:

A method for wireless bonding of devices and communicating media file transfer parameters, the method comprising:

monitoring, at a master device, an area of interest for the presence of potential bondable devices;

receiving, at the master device, a presence signal from a potential bondable device;

determining bond capability of the potential bondable device;

approving the potential bondable device as a bonded device; and

communicating, from the master device to the bonded device, media file transfer parameters, including definition of the media file metadata that is to be included with a captured media file.

Claim 24 recites:

A method for communicating media files and associated media file metadata from a bonded device to a master device, the method comprising:

bonding one or more slave devices to a master device according to predetermined media file transfer parameters communicated to the slave device from the master device; and

communicating a plurality of media files from the one or more bonded devices to the master device, the plurality of media files having metadata information as defined by the predetermined media file transfer parameters.

The Examiner originally rejected the claims under 101 using the "useful, concrete, and tangible result" test. The Board applied Bilski. Its entire analysis was:

The steps of claims 14 and 24 are performed by a master device or a bondable/bonded slave device. As argued by the Appellants, for example, the independent claims include 'communicating information between the master device and the bonded device.' Therefore, the methods recited in independent claims 14 and 24 are each tied to a particular machine or apparatus.

Result: 101 rejection reversed.

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.

Thank You

I wanted to thank the followers of this blog who attended my webcast today on "Beating Bilski."

I hope you found it useful, informative, or at least worth the hour of your time.

Best,

Leigh

DSL System Claim that Recites an Algorithm Beats 101

Ex parte Patrick Duvaut and Massimo Sorbara
Decided: April 28, 2009

My apologies for the delay in posting on this decision. My thanks go out to Aaron R. Fiegelson of the 12:01 Tuesday Blog for getting this decision out the day it was available.


At the outset, it is important to note that the claims at issue in this decision are system claims.

Claim 1 is representative:
Based on this, it's clear the board was dealing with a "system" that implements some mathematical function. More specifically, the claimed DSL system is "configured to" provide to provide the claimed power spectral density mask.

The Examiner rejected the claims under 101. The Examiner reasoned that claims 1-28 recite nothing more than a non-statutory mathematical algorithm or equation of a DSL communications system that has no practical application.

In first finding the claim was actual a system claim, the Board found the preamble limiting. Next, they relied on the specification to determine that a DSL system includes: (1) a remote ADSL Terminating Unit (ATU-R) in bi-directional DMT communication with the a central office ADSL Terminating Unit (ATU-C) or (2) a central office High Speed ADSL Terminating Unit (HSTU-C) in bi-directional DMT communication with a remote High Speed DSL Terminating Unit (HSTU-R).

Using this, the Board found that the claim was a system claim and thus within one of the four statutory categories.

Next, the Board reminded us that the mathematical algorithm exception to § 101 applies to true apparatus claims by citing Alappat. In reversing the Examiner's 101 rejection, the panel reasoned that:

The recited communications system is a particular machine that transmits data on a digital subscriber line. The claimed machine is, therefore, tailored to DSL applications. Moreover, the recited DSL communications system is programmed or configured to provide a PSD mask for spectral shaping a DBM mode downstream transmission defined by a specific equation. Thus, the recited DSL communication system is not a general purpose computer but a particular or special purpose machine.

In the end, it appears that the panel was convinced that claim 1 did not pre-exempt “the use of any apparatus employing the combination of mathematical calculations recited.” Said another way, it appears that the Board was impressed with the fact that claimed PSD could be used in other communications systems and applications. It appears that Board took the view that claims at issue only cover DSL systems.