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Ex parte Andreas Myka and Christina LindholmDecided: May 13, 2009In 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.
Ex parte John Synder
Decided: May 12, 2009This 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.
Ex parte Patrick Duvaut and Massimo SorbaraDecided: 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.
Ex parte Jonathan E. GreeneDecided: April 24, 2009Although 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.
Ex Parte Sudesh Kamath, Tyson Hom, and Allen LeeDecided: March 18, 2009This is the first decision from Technology Center 3600 to appear on the Watchdog. Technology Center 3600 deals with "Business Method" patents. I find it notable that there is no discussion of 101 and the Board did not issue a new 101 rejection. There is also some interesting discussion around "teaching away" that might be the subject of a later post. The technology at issue is methods and systems for streamlining and simplifying the online ordering process while affording the customer and/or other authorized persons the convenience of modifying or canceling the order after the initial commitment to order the product has been made.
Claim 1 of the application at issue recites:
A computer-implemented method of processing an online purchase request from a customer to a vendor over a computer network, comprising the steps of:
receiving, over the computer network, a first online purchase request for a first item;
responsive to receiving the first online purchase request, providing a bifurcated order processing route that requests the customer to choose a first order processing route causing the first online purchase request to be processed according to an express processing procedure that requires no further input by the customer to execute the first online purchase request, the second order processing route causing the first online purchasing request to be placed in a shopping cart that allows one or more additional purchase requests for additional items to be placed therein, the second order processing route affording the customer an opportunity to cause execution of the first and any additional purchase requests placed in the shopping card to be processed according to the express ordering processing that requires no further input by the customer to execute, and
receiving from the customer a selection of the first order processing route or the second order processing route and processing the first online purchase request according to the customer’s selection.
The Examiner rejected this claim under 103. That was the issue on appeal. Surprisingly, there is no discussion of the "machine or transform" test.
I took a look at the application. Paragraph [0036] includes the following sentence: "[w]ithin the context of the present invention, a "shopping cart" is a metaphor for a software construct enabling a customer to aggregate his or her online purchases for immediate or a later purchase."
Based on some of the Board's previous decisions, doesn't such a definition raise some eyebrows?
Also interesting, when compared against some of the other Board decisions previously discussed, is Paragraph [0045], which states:
The present invention is related to the use of computing device 700 to process a customer purchase request. According to one embodiment, the processing may be carried out by one or more computing devices 700 in response to processor(s) 702 executing sequences of instructions contained in memory 704. Such instructions may be read into memory 704 from another computer-readable medium, such as data storage device 707 and/or from a remotely located server. Execution of the sequences of instructions contained in memory 704 causes processor(s) 702 to implement the functionality described above. In alternative embodiments, hard-wired circuitry may be used in place of or in combination with software instructions to implement the present invention. Thus, the present invention is not limited to any specific combination of hardware circuitry and software.
One could argue, that claim 1 could be directed to a "software" per se embodiment, which some panels have rejected under 101.
Also, what about previous Board decisions that used the guidelines set forth in MPEP § 2106(IV)(C)(2)(2)(a), that state claims must be amended to recite solely statutory subject matter?
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.
