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Ex parte
Stanley Bruce Holmstead
and Jody L. TerrillDecided: 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.
Ex Parte Scott Alan Isaacson, Stephen R. Carter and Frank Allan NuttDecided: February 26, 2009This decision, also from Technology Center 2100, continues on the Ex parte Mitchell path. The Board determined that "medium" when modified by "computer-readable" is not limited to only tangible embodiments.The claims of the Isaacson et al. application were directed to for assembling or otherwise aggregating electronic identities. Representative claim 1 recited:
[a] method implemented in a computer-readable medium to aggregate an identity, comprising:
accessing one or more identity authorities and one or more identity stores with a schema to acquire identifiers and attributes associated with the aggregated identity, wherein the identifiers are information used to identify the identity; and
assembling the acquired identifiers and attributes to aggregate the identity.
Also, the preamble of independent claim 9 recited a “data store implemented in a computer-readable medium, residing in a computer-accessible medium.” Likewise, the preamble of independent claim 16 recited a “schema data structure used to aggregate an identity and implemented in a computer accessible medium.” Finally, the preamble of independent claim 22 recited a “system implemented in a computer-readable medium.”
Arguably, the specification did not include an express definition of "computer-readable medium." However, the specification included the following:
[o]f course, the invention can be implemented in a variety of applications, systems, schema conventions, programming languages, and data formats. Additionally, the invention is not limited to any particular network. Thus, any hardwired (direct or indirect), or wireless network can be used.
FIG. 1 is a flowchart representing one method 100 to aggregate an identity, according to one embodiment of the invention. The method is implemented in an electronic environment on a network. The network can be, without limitation, a Local Area Network (LAN), a Wide Area Network (WAN), or a combination of LANs and WANs interfaced together. Furthermore, as mentioned above, the network can be hardwired or wireless.
The examiner rejected all the claims under 101.
During prosecution, Isaacson et al. added the "implemented in a computer-readable medium" type limitations to the preamble. Also, they argued that those amendments recite structure and indicate that the claims are limited to computer implemented embodiments.
The Board discussed the limitations in the preambles. They said that:
to the extent that the preamble has any bearing upon the broad recitations in the body of representative independent claim 1 on appeal, the subject matter also appears to be proscribed by the reasoning in In re Nuijten, 500 F.3d 1346, 1359 (Fed. Cir. 2007). The broadly claimed “medium” in the preambles of all independent claims on appeal is not necessarily required to be embodied in a tangible computer-readable medium. Indeed, the subject matter is so broadly disclosed that there is no discussion of what the claimed “medium” is supposed to be or otherwise be comprised of in the Specification as filed. As such, the medium appears to be a broadly definable wireless network that encompasses signals per se proscribed by Nuijten ...
Additionally, based upon the analysis in the previous and this paragraph at least, the data store broadly recited in the preamble of independent claim 9 is not positively stated to be embodied in a tangible device conventional in the arts since it is merely recited to be “implemented in a computer-readable medium, residing in a computer-accessible medium.” A similar observation is appropriate for the schema data structure of independent claim 16. We are not aware of any authority which permits the direct claiming alone of a data structure per se. With respect to the system of claim 22, it is not necessarily recited to be a tangible computer system since all the recited elements are inclusive of non-tangible embodiments or abstract concepts as already discussed with respect to independent claims 1, 9, and 16.
Ex parte Nick M. Mitchell and Gary S. SevitskyDecided: February 23, 2009This 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
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.
