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.

Where's the 101 rejection?

Ex Parte Sudesh Kamath, Tyson Hom, and Allen Lee
Decided: March 18, 2009

This 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?

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 Again Uses "Software" Embodiment to Uphold 101 Rejection

Ex parte Robert Mark Magid
Decided: February 19, 2009

I 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.

Means-Plus-Function Claim Goes Down for Reference to Software and Signals

Ex parte John D. Morris and Daniel J. Clark
Decided: February 13, 2009

I find this decision interesting because it uses statements often found in software and hardware applications to reject means-plus-function claims under 101.

Morris and Clark claimed a system, method, and computer program product for processing or rasterizing graphic objects. Claim 33 recited a system having a means for rasterizing the graphic objects, including, for each of the graphic objects, using the tracking list to identify unmarked segments in the scan line, the unmarked segments corresponding to markable pixels in the pixel array.

In correctly construing the "means for" elements in light of the specification, the BPAI noted that the specification recited that "[t]he invention and all of the functional operations described in this specification can be implemented in digital electronic circuitry, or in computer software, firmware, or hardware." Various forms of this type of language can be found in a large number of applications past and present.

The BPAI pointed out the above passage unequivocally describes the various implementations in the alternative. The Board reasoned that the invention can exist solely in software. As a result, the Board found that means-plus-function limitations is not limited to only statutory subject matter under 101.

The Board also piled on by applying what I refer to as the "Death by Carrier Wave" 101 rejection. The Specification also mentioned that the invention could be implemented as a computer-readable product (i.e., a Beauregard type embodiment). The specification included the following language:

The invention can be implemented as one or more computer program products, i.e., one or more computer programs tangibly embodied in an information carrier, e.g., in machine-readable storage device or in a propagated signal for execution by, or to control the operation of, data processing apparatus, e.g., a programmable processor, a computer, or multiple computers.

The BPAI again took this opportunity to apply Nuitjen and issue a new 101 rejection to the means-plus-function and Beauregard claims.

The BPAI reminded the Applicants that according to USPTO guidelines set forth in MPEP § 2106(IV)(C)(2)(2)(a), claims must be amended to recite solely statutory subject matter.