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Ex parte Taiga Nakamura, Ryuki Tachibana, Suichi Shimizu, and Seiji KobayashiDecided: February 18, 2009This decision interests me because it sheds a little light on how the BPAI views the "transform" prong of the Bilski analysis.The Nakamura et al. application included claims directed to a system, method, and computer readable medium for providing an electronic watermarking technique that is used to detect whether digital content has been copied or altered. The Examiner had not issued a 101 rejection during prosecution. The BPAI added a 101 rejection at the end of their decision.
Claim 16 and Claim 18 were the focus of the Appeal and stated, respectively:16. An additional information embedding method, for adding additional information to digital content to determine whether said digital content has been processed, comprising the steps of:
generating multiple sets of additional information that are correlated with each other and that correspond to the data form of predetermined digital content; and
synthesizing said additional information and content data for said digital content; and
wherein the additional information are correlated with each other by a mapping relationship defined by a predetermined function, said predetermined function dependent on a data string, the data string forming a predetermined message.
18. An additional content detection method, for detecting additional information added to a digital content in order to determine whether said digital content has been processed, comprising the steps of:
detecting, from content data for digital content, multiple sets of additional information that are correlated with each other, but that in robustness differ from each other;
evaluating relationships dependent on a data string, the data string forming a predetermined message, existing between said multiple sets of additional information; and
determining, based on said detected additional information and the evaluation of said relationships, whether said content data has been processed, and determining the type of processing performed when said content data has been processed.
In explaining their Bilski analysis, the BPAI said that the method steps of claims 16 and 18 can reasonably be interpreted to encompass a human being performing these steps. Thus, the claims fail the "particular machine requirement."
The BPAI's discussion of the "transformation requirement" is more interesting. They said that:
[h]ere we do not have a transformation of subject matter but merely an abstract expression that is created from synthesizing two types of digital content. However, such synthesizing does not require any tangible output into the real world. These steps describe nothing more than the manipulation of basic mathematical constructs, the paradigmatic "abstract idea." See In re Warmerdam, 33 F.3d 1354, 1360 (Fed. Cir. 1994). As a whole, the claim involves no more than the manipulation of abstract ideas. See id.
The BPAI went on to say in other words that the claims were directed to merely looking at transforming one digital representation into another digital representation. As such, they are not within the scope of 101.
Ex parte Robert Mark MagidDecided: February 19, 2009I find this decision interesting because it continues the BPAI's trend finding claims that may have a software embodiment unpatentable.Claim 21 of Magid's application recited:
A computer program device for intercepting user exit interfaces in IMS programs, comprising:
logic means for communicating between an interception routine and an interface routine to resolve name ambiguity and enable simultaneous use of a single exit by plural users.
The Examiner issued a 101 for this means-plus-function claim because the claimed "logic means" were limited to logic, i.e., program code or software per se, which is not the same as physical means, such as hardware.
Magid's specification stated that:
[i]t is to be understood that in the system 10 described above, the logic of the present invention can be contained on a data storage device with a computer readable medium, such as a computer diskette. Or, the instructions may be stored on a magnetic tape, hard disk drive, electronic read-only memory (ROM), optical storage device, or other appropriate data storage device or transmitting device thereby making a computer program product, i.e., an article of manufacture according to the invention. In an illustrative embodiment of the invention, the computer-executable instructions may be written using mainframe assembler language. Moreover, the IMS user program 24 may be written using assembler, PL/I, FORTRAN, COBOL, Pascal, REXX, or Java.
The flow charts herein illustrate the structure of the logic of the present invention as embodied in computer program software. Those skilled in the art will appreciate that the flow charts illustrate the structures of computer program code elements including logic circuits on an integrated circuit, that function according to this invention. Manifestly, the invention is practiced in its essential embodiment by a machine component that renders the program elements in a form that instructs a digital processing apparatus (that is, a computer) to perform a sequence of function steps corresponding to those shown.
The BPAI sided with the Examiner, appears rightly so, and concluded that "consistent with the Specification, we find that the 112, sixth paragraph scope of the claimed 'logic means' broadly encompasses at least a first embodiment that consists of software per se." The Board did note that the claim also covers logic circuits on an integrated circuit, which is within the scope of 101. Thus, the claims cover both hardware and software.
Citing Nuijten, the Board said "[o]ur reviewing court has clearly stated that “[t]he four categories [of § 101] together describe the exclusive reach of patentable subject matter. If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.” As a result, the Examiner's 101 rejection was confirmed.
Ex parte William E. Mazzara
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:
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 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."
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.
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I started this blog as an outlet to comment on both precedential and non-precedential opinions of the Board of Patent Appeals and Interferences. http://www.uspto.gov/web/offices/dcom/bpai/index.html
Check back in the coming days for what I hope is a flurry of posts on some recent decisions I find interesting.
