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.

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.

A Computer System Claim Not Within 101

Ex parte Jonathan E. Greene
Decided: April 24, 2009

Although this isn't the first time that a panel has held an apparatus was not within the scope of 101, this decision caught my attention because it deals with the "mathematical algorithm" exception.

Greene's application was generally directed to methods and an apparatus that improve on existing Fast Fourier Transform (FFT) calculations. The claim 60 provides further details of the improvement. Dependent claim 61 also adds to the discussion. Both claims are reproduced below. Sorry, claim 60 is a bit long.

Claim 60. A computer system for performing a fast Fourier transform on N ordered inputs in n stages comprising:
one or more vector processors configured as a non-final stage calculating means for repetitively performing in-place butterfly calculations for n-1 stages;

the one or more vector processors further configured as a final stage calculating means for performing a final stage of butterfly calculations including:

a first loop means for performing a portion of the final stage butterfly calculations, the first loop means performing a set of butterfly calculations, and storing butterfly calculation outputs in shuffled order in place of the selected inputs to result in a correct ordering of transform outputs; and

a second loop means for performing a remaining portion of the final stage butterfly calculations, the second loop means performing two sets of butterfly calculations, and storing butterfly calculation outputs from a first one of the two sets of butterfly calculations in shuffled order in place of the inputs selected for a second one of the two sets of butterfly calculations and storing butterfly calculation outputs from the second one of the two sets of butterfly calculations in shuffled order in place of the inputs selected for the first one of the two sets of butterfly calculations to result in a correct ordering of transform outputs,

wherein the final stage calculating means performs all butterfly calculations as radix-4 butterflies having four inputs and four outputs, wherein N is a power of two, and wherein the non-final stage calculating means performs a first stage of radix-8 butterfly calculations followed by n-2 stages of radix-4 butterfly calculations,

wherein the computer system produces the correct ordering of transform outputs with no need to perform an additional bit-reversal ordering pass.

Claim 61. The computer system of claim 60, wherein the non-final and final stage calculating means include a four-fold single instruction multiple data (SIMD) processor for performing four radix-4 butterfly calculations at a time.

The Examiner rejected these claims under 101 using pre-Bilski analysis. Throughout the prosecution, the applicant argued that the claim was patent eligible because it was directed to a machine. For example, he argued that claim 60 “defines a computer system that includes specific hardware structures, namely, vector processors. Moreover, it defines those structures in connection with means, (implemented in software) namely, the first loop means, second loop means, non-final stage calculating means, and final stage calculating means that are implemented, in the specification, in software."

It its analysis, the panel recognized that these claims were distinguishable from the method or process claims considered by the court in Bilski. The panel found that the preamble of independent claim 60 positively recites a computer system which is supported in the language found in the body of the claim. As such, the panel determined the claimed “computer system” was an apparatus which executes a software program.

With that in mind, the panel phrased the question before them as: "whether the 'mathematical algorithm' exception applies to an apparatus claim where the practical result of granting such a claim would preempt substantially all uses of a fundamental principle."

As you can guess, the Board found the claim did not fall withing the scope of 101.

The Board that these claims merely implement an optimized Fast Fourier Transform on a conventional computer system that includes one or more conventional vector processors. As claimed, we find the transform output results of the FFT calculation are not used for any practical purpose or inventive application whatsoever.

Further, the Board reasoned that without the recited conventional hardware elements, Appellant’s claim would be non-statutory under 35 U.S.C. § 101 as being directed to an abstract idea and/or a fundamental principal (i.e., a mathematical algorithm). Therefore, the question that remains is whether drafting an invention in a different statutory category (i.e., as a conventional apparatus or machine) is all that is necessary to overcome a § 101 rejection of a pure mathematical algorithm, particularly in view of the Federal Circuit’s recent discussion of Benson, stating that a computer-implemented method is not patent-eligible if the mathematical algorithm has no other use than operating on a digital computer and would preempt the fundamental principle since all uses of the algorithm are still covered by the claim.

In the end, the Board stated that merely adding a nominal recitation of conventional computer hardware in a claim otherwise directed to a pure mathematical algorithm is merely an exercise in claim drafting that cannot, by itself, render the claim statutory. The panel also said that it was their reasoned view that to hold otherwise would exalt form over substance and the practical effect would be a patent on the mathematical algorithm itself. The Board also said that the purpose of 35 U.S.C. § 101 would be defeated if a patent applicant is able to evade a § 101 rejection of a pure mathematical algorithm by a nominal claim to structure.

A Busy Friday

Last Friday, April 17, 2009, Dale M. Shaw Chief Appeals Administrator, remanded six cases that had received Docketing Notices back to their respective Examiner.

Each of the decisions includes language similar to the following:

Claims X, Y, and Z of the instant application are set forth as method claims that may not fall with one of the four statutory categories of invention recited in 35 U.S.C. § 101. On May 15, 2008, the Deputy Commissioner for Patent Examining Policy, John J. Love, issued a memorandum entitled “Clarification of “Processes” under 35 U.S.C. § 101.” This memorandum is further used in conjunction with the Interim Guidelines and the Manual of Patent Examining Procedure § 2106.IV.B, when determining whether a claimed invention falls within a statutory category of invention. See In re Bilski, 545 F.3d 943 (Fed. Cir. 2008)(en banc). Thus, there is a question as to whether claims X, Y, and Z meet the requirements of being a patent eligible process under 35 U.S.C. § 101.

It is interesting to note that the decision do not make reference to the post-Bilski memo of January 7, 2009. The watchdog posted a link to this January memo here: Bilski Guidelines Post

Could this signal a new trend from the BPAI?

If you would like .pdfs of the decisions, feel free to email me and I will send them along.

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.

Applicant defines herself out of the realm of 101

Ex Parte Daniela Giacchetti
Decided: March 11, 2009

This decision continues the BPAI string of 101 rejections where the claims can cover both statutory and nonstatutory subject matter.

The claim at issue in this decision recited:

1. A method of enabling display of a simulated facial image, the method comprising:
[1] facilitating display,

• on a display device,
• of a plurality of templates,
• wherein at least some of the templates are representative of a portion of a face having a simulation of use of a beauty product;

[2] enabling selection of at least one of the displayed templates; and

[3] facilitating display,

• on the display device,
• of a simulated facial image
• including at least one displayed facial portion having a simulation of use of a beauty product,
• wherein the displayed facial portion having a simulation of the simulated facial image corresponds to a facial portion of the at least one selected template, and
• wherein the simulation of the displayed facial portion corresponds to a simulation of the at least one selected template.
  

The applicant provided the following discussion in her specification regarding certain words in the claims.

Enabling the image to be displayed may be accomplished in one or more of a variety of direct and indirect ways, including directly displaying the image on a display device, providing access to software that facilitates display, providing network access which enables display of the image on a user-controlled device, providing a dedicated use device, or cooperating with an entity who either directly displays the image or who helps the user to display the image.

As with the definition of "enabling display" above, the term "applying" and "selecting" are also to be interpreted as including direct and indirect actions, such as, for example, providing access to software, providing access to a network site, cooperating with a third party who aids a user, or by participating in any way in activities that aid a user in applying and selecting.

The Examiner rejected this claim and those that depended from it as failing under 101. The Examiner reason, based on the above definitions, that the method steps of facilitating display and enabling selection did not require the actual display or selection step to be performed. Thus they could be understood as merely having an idea about how to arrange the selection of the information.

During the appeal, the applicant argued that the reference to direct activities made the claim statutory.

Not surprising, the Board agreed with the Examiner and confirmed the 101 rejection. They explained that during examination claims are given their broadest reasonable construction that is consistent with the specification. Relying on the above passages, the Board agreed that the applicant acted as her own lexicographer. They determined that the limitations of enabling and facilitating in the three steps of claim 1 to include indirect activity such as providing access to software, providing access to a network site, cooperating with a third party who aids a user, or by participating in any way in activities that aid a user in what is enabled or facilitated. The BPAI concluded that broadest reasonable construction would not necessarily include that performance within the scope of the three steps in claim 1.

Using these definitions, the BPAI applied Bilski's machine or transform test. Their analysis stated that:

[t]hese process claims recite a series of process steps that are not necessarily tied in any manner to a machine, because the scope of the steps also reach activities that do no more than provide some access or aid. In other words, these claims do not limit the process steps to any specific machine or apparatus. Thus, the claims fail the first branch of the machine-or-transformation test because they are not tied to a particular machine or apparatus. The steps of these process claims also fail the second branch of the machine-or-transformation test because nothing must be transformed, not even data, when the steps are construed as encompassing no more than providing access or aiding. Thus, the process of claim 1 fails the machine-or-transformation test and is not patent-eligible under 35 U.S.C. § 101.

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

Transforming Digital Content Does Not Pass Bilski's Transformation Test

Ex parte Taiga Nakamura, Ryuki Tachibana, Suichi Shimizu, and Seiji Kobayashi
Decided: February 18, 2009

This 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.

Post Bilski Guidlines

For those of you who might have missed the PTO's take on Bilski you can find "Guidance for Examining Process Claims in view of In re Bilski" at the following link:

http://www.uspto.gov/web/offices/pac/dapp/opla/documents/bilski_guidance_memo.pdf