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Reproduced with permission from BNA's Patent,Trademark 11/20/09, 11/20/2009. Copyright ஽ 2009 by The Bu-reau of National Affairs, Inc. (800-372-1033) http://www.bna.com As the patent community anticipates a decision by the U.S. Supreme Court on subject matter patentability, recent rulings by the Federal Circuit and the Board of Patent Appeals and Interferences suggest strategies for preparing method patent applications that will sur- vive the Federal Circuit's ''machine-or-transformation'' test.
The Changing Landscape of Method Claims in the Wake of In re Bilski:What We Can Learn from Recent Decisions of Federal Courts and the Board ofPatent Appeals rulings on software-based and other business methodpatent applications.
On review before the high court is the en banc ruling ''Pure'' business methods are out. Algorithms by the U.S. Court of Appeals for the Federal Circuit1 are out. Machines and data transformations that, in order to be eligible for patent protection, an in- ventive method must either be tied to a machine or re- While the patent community waits for the Supreme cite a transformation of an article.2 This ''machine-or- Court's decision in Bilski v. Kappos, No. 08-964 (U.S.
transformation'' test replaced the Freeman-Walter- argued Nov. 9, 2009) (79 PTCJ 33, 11/13/09), patent ap- Abele3 test and the ''useful, concrete and tangible plicants seeking to write patentable claims are stuckwith trying to conform to the lower courts' most recent 1 In re Bilski, 545 F.3d 943, 88 USPQ2d 1385 (Fed. Cir.
2008) (en banc) (77 PTCJ 4, 11/7/08).
2 ''The machine-or-transformation test is a two-branched Adriana Suringa Luedke and Bridget M. Hay- inquiry; an applicant may show that a process claim satisfies den are lawyers at Dorsey & Whitney, Min- § 101 either by showing that his claim is tied to a particular neapolis. Luedke can be reached at machine, or by showing that his claim transforms an article.'' leudke.adriana@dorsey.com. Hayden can be reached at hayden.bridget@dorsey.com. 3 In re Freeman, 573 F.2d 1237, 197 USPQ 464 (C.C.P.A.
1978); In re Walter, 618 F.2d 758, 205 USPQ 397 (C.C.P.A.
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result'' inquiry advocated in State Street,4 each of gregating, and selling real estate property and claims which had been applied by the Federal Circuit and its reciting a method of performing tax-deferred real estate predecessor court in various cases, and both of which property exchanges were not statutory under Section 101. Since no machine was recited, the only issue be- In this article, we examine the 2008 decision of the fore the court was whether the claims met the ''trans- Federal Circuit, federal district court decisions, and de- formation'' prong of the Bilski test.13 The court held cisions of Patent and Trademark Office's Board of that the claims ''involve[d] only the transformation or Patent Appeals and Interferences. Based upon the out- manipulation of legal obligations and relationships'' comes in these cases, we offer guidance as to what is that did not qualify under Bilski.14 patent-eligible under 35 U.S.C. § 101, strategies for pre- Concerning the recitation of the ''creation of deed- senting methods in patent applications and claiming shares'' in some of the claims, the court found that the these methods, and possible ''fixes'' for applications deedshares themselves were not physical objects, but drafted pre-Bilski that must now withstand scrutiny un- only represented intangible legal ownership interests in der the new machine-or-transformation test.
property.15 Therefore, the creation of deedshares wasnot sufficient to establish patent eligibility under Bil- A number of recent federal court and board decisions have applied the patent eligibility test set forth in Bilski, implemented step to an otherwise obvious method was not sufficient to avoid invalidity of the claim. In KingPharmeuticals Inc. v. Eon Labs Inc.,17 the district court held invalid claims to a method of increasing the oral Several cases have addressed (and rejected) claims bioavailability of metaxalone because the claims were obvious over the prior art asserted by the accused in- In In re Ferguson,6 the Federal Circuit reviewed the board's rejection of claims directed to a method of mar- Two dependent claims added a step of informing the keting a product and a ''paradigm'' for marketing soft- patient of certain results, which the patentee argued ware as nonstatutory subject matter under Section was not obvious. The court rejected this argument, con- 101.7 The appellate court affirmed the board's rejection, cluding that ''[b]ecause the food effect is an inherent concluding that the method claims were neither tied to property of the prior art and, therefore, unpatentable, a particular machine or apparatus nor did they trans- then informing a patient of that inherent property is form a particular article into a different state or thing.8 The court defined a machine broadly as ''a concrete The court also commented that the added step of in- thing, consisting of parts, or of certain devices or com- forming the patient did not meet the patent eligibility binations of devices,'' which did not include the ''shared standard set forth in Bilski because the step did not re- marketing force'' to which the method claims were quire use of a machine or transform the metaxalone into a different state or thing.19 Notably, this conclusion The claims directed to a ''paradigm'' were non- runs counter to the Supreme Court's instruction that statutory because the claims did not fall within any of claims are to be examined ''as a whole'' and not dis- the four statutory categories (machines, manufactures, sected into old and new elements and that are evaluated compositions of matter and processes). Concerning the two closest possible categories, the court concluded Recent board decisions have been consistent with the that the claimed paradigm was not a process, because holdings of the federal courts. For example, in Ex parte no act or series of acts was required, and was not a Roberts,21 the board found ineligible under Section 101 manufacture, because it was not a tangible article re- a ''method of creating a real estate investment instru- sulting from a process of manufacture.10 Concerning ment adapted for performing tax-deferred exchanges'' the recitation of a ''marketing company'' in the para- because the claim did not satisfy either the machine or digm claims, the court concluded that the patent appli- cants did ''no more than provide an abstract idea-a Similarly, in Ex parte Haworth,23 a method for ''at- business model for an intangible marketing com- tempting to collect payments from customers having delinquent accounts concurrently with a partner that In Fort Properties Inc. v. American Master Lease owns the delinquent accounts'' was found to be patent LLC,12 the California district court held that claims re- ineligible because the claim wording was ''broad in that citing a series of transactions involving acquiring, ag- 1980); In re Abele, 684 F.2d 902, 214 USPQ 682 (C.C.P.A.
4 State Street Bank & Trust Co. v. Signature Financial 16 See Ex parte Roberts., 2009-004444 at 4-5 (B.P.A.I. June Group, 149 F.3d 1368, 1370, 47 USPQ2d 1596 (Fed. Cir. 1998) 19, 2009) (holding a ''method of creating a real estate invest- ment instrument adapted for performing tax-deferred ex- changes'' patent ineligible as not passing the machine-or- 7 The court accepted the board's definition of ''paradigm'' 17 593 F. Supp.2d 501 (E.D.N.Y. 2009).
to mean ''a pattern, example or model.'' Id. at 1362.
20 See Diamond v. Diehr, 450 U.S. 175, 188 (1981).
21 No. 2009-004444 (B.P.A.I. June 19, 2009).
12 2009 WL 249205, *5 (C.D. Cal. Jan. 22, 2009).
23 No. 2009-000350 (B.P.A.I. July 30, 2009).
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it refers generally to extending an offer, receiving an machine. Accordingly, the process claims. are not acceptance, and paying a commission'' and did not in- voke, recite or limit the method of implementation us-ing any particular machine or apparatus.24 The court also evaluated similar claims that recited the use of a ''comparator'' to perform the recited pixel- B. Software Claims Not Expressly Tied to a 'Particular by-pixel comparison and held that this recitation also did not mandate a machine.29 While the court acknowl-edged that software was offered as one ''option,'' the Other cases have addressed software methods where court concluded that the claimed function of the com- the claim language was either not expressly tied to com- parator could also be performed in one's mind or on pa- puter hardware components or the ties to computer per such that a machine was not required. The court components were somewhat ambiguous. In several further noted that, even though the ''comparator'' was cases, courts have rejected the recitation of generic defined as a ''device,'' ''the use of the term 'device' is computer components as sufficient to satisfy the ''ma- not synonymous with machine.''30 As a result, none of chine'' prong of the Bilski test. A number of these deci- the claims at issue met the ''machine'' prong of the Bil- sions also addressed the ''transformation'' prong of the Concerning the ''transformation'' prong, the court re- In Research Corporation Technology Inc. v. Mi- lied in particular upon the Abele decision in expanding crosoft Corp.,25 the district court considered the patent the requirements of this test by requiring that the eligibility of method claims in six patents directed to claimed transformation process be both ''(1) limited to methods of halftoning of gray scale images by using a transformation of specific data, and 2) limited to a vi- pixel-by-pixel comparison of the image against a blue sual depiction representing specific objects or sub- noise mask. Relying on the Federal Circuit's Bilski stances.''31 It then concluded that a number of the analysis as well as a decision of its predecessor court, patent claims did not meet the second prong of this ex- In re Abele,26 the judge concluded that a number of the panded test because the claims did not ''require any vi- sual depiction or subsequent display'' even though the transformation test set forth in Bilski.27 claimed method did transform specific image data.32 Concerning the ''machine'' prong, the district court The district court also found other claims patent- found that the pixel-by-pixel comparison recited in the eligible under Section 101 because these claims recited claims did not require the use of a machine, but could the use of the comparison data ''to produce a halftoned ''dictate[d] a transformation of specific data, and [were] be done on a sheet of paper using a pen. The com- further limited to a visual depiction which represents parison uses formulas and numbers to generate a bi- specific objects.''33 Thus, the patent eligibility of the nary value to determine the placement of a dot at a claims turned on whether the claims recited the use of location. Formulas and numbers not tied to a particu- the transformed data to generate a display.
lar machine cannot be patented, under the machine In DealerTrack Inc. v. Huber,34 the district court prong, even with a field-of-use limitation because granted a summary judgment of invalidity under § 101 they represent fundamental principles, and to do so of patent claims directed to ''a computer aided method'' would preempt the entire field. The patent claims.
of managing a credit application reciting the following do not mandate the use of a machine to achieve their algorithmic and algebraic ends. Simply because adigital apparatus such as a computer, calculator, or [A] receiving credit application data from a remote the like could assist with this comparison does not render it patent eligible material. RCT's argument [B] selectively forwarding the credit application data that a pixel by its nature is electronic and therefore to remote funding source terminal devices; necessitates a machine is a post solution argumentand the Court rejects it. The claim construction specifies that the comparison is of a value to a mask 29 The term ''comparator'' was construed by the court to be (or set of values) to determine whether the dot is a ''device (or collection of operations, as in software) that com- turned on at a specific location. This process does pares an input number (called the operand) to a number pre- not require a particular machine. The Bilski test is stored in the comparator (called the threshold) and produces clear: the process claims must be tied to a particular as output a binary value (such as ''0,'' zero) if the input is alge-braically less than the threshold [the result of comparing anoperand against a fixed threshold and setting an operand less 24 Id. at 9-10. See also, e.g., Ex parte Farnes, 2009-002770 than the threshold to one value and an operand greater than (B.P.A.I. June 2, 2009) (rejecting a method claim for develop- or equal to the threshold to another value], and produces the ing a solution to a customer experience issue including steps opposite binary value (such as ''1,'' one) if the input is algebra- of: ''identifying a target customer,'' ''defining a current cus- ically greater than or equal to the threshold.'' Id. at *17 (em- tomer experience,'' ''summarizing values and benefits'' to pro- vide to the customer, and ''identifying metrics for measuring success''); Ex parte Salinkas, 2009-002768 (B.P.A.I. May 18, 31 Id. at *9. Notably, Bilski concluded that the Abele visual 2009) (finding patent ineligible a method of launching a depiction was ''sufficient'' to establish transformation (545 knowledge network involving ''selecting an executive spon- F.3d at 963), while the Research Corporation court went fur- sor,'' ''forming a core team of experts,'' and ''providing pre- ther by making visual depiction ''required'' to establish trans- 25 2009 WL 2413623 (D. Ariz. July 28, 2009) (78 PTCJ 432, 26 684 F.2d 902, 214 USPQ 682 (C.C.P.A. 1982).
34 2009 WL 2020761 (C.D. Cal. July 7, 2009) (78 PTCJ 341, PATENT, TRADEMARK & COPYRIGHT JOURNAL [C] forwarding funding decision data from at least tation of 'over the Internet' suffices to tie a process one of the remote funding source terminal de- claim to a particular machine'' and concluded that it vices to the remote application entry and display The internet continues to exist despite the addition [D] wherein the selectively forwarding the credit ap- or subtraction of any particular piece of hardware. It may be supposed that the internet itself, rather than [E] sending at least a portion of a credit application any underlying computer or set of computers, is the to more than one of said remote funding sources ''machine'' to which plaintiff refers. Yet the internet is an abstraction. If every computer user in the world [F] sending at least a portion of a credit application unplugged from the internet, the internet would to more than one of said remote funding sources cease to exist, although every molecule of every ma- sequentially until a finding [sic ] source returns a chine remained in place. One can touch a computer or a network cable, but one cannot touch ''the inter- [G] sending. a credit application. after a prede- Additionally, the court found that the recitation of the [H] sending the credit application from a first remote internet in this case merely constituted ''insignificant funding source to a second remote funding extra-solution activity'' and therefore did not qualify as a ''particular machine'' under Bilski.41 ''[T]ossing in In concluding that the claim did not satisfy the Bilski references to internet commerce'' was not sufficient to machine-or-transformation test, the court held that the render ''a mental process for collecting data and weigh- claimed central processor, remote application and dis- ing values'' patent-eligible.42 Additionally, ''limiting'' play device, and remote funding source terminal device the claim to use over the Internet was not a meaningful could be ''any device'' and did not constitute a '''par- limitation, such that the claims ''broadly preempt the ticular machine' within the meaning of Bilski.''35 The fundamental mental process of fraud detection using court relied upon several board decisions to support its associations between credit cards.''43 premise that ''claims reciting the use of general purpose processors or computers do not satisfy the test.''36 claim,44 notwithstanding the Federal Circuit's holding In Cybersource Corp. v. Retail Decisions Inc.,37 the in In re Beauregard,45 the district court concluded that district court held claims for ''a method for verifying the ''there is at present no legal doctrine creating a special validity of a credit card transaction over the Internet'' ''Beauregard claim'' that would exempt the claim from and ''a computer readable medium containing program the analysis of Bilski.'' Moreover, ''[s]imply appending instructions for detecting fraud in a credit card transac- 'A computer readable media including program instruc- tion. over the Internet'' invalid under § 101 based tions' to an otherwise non-statutory process claim is in- upon the court's interpretation of Bilski.
sufficient to make it statutory.''46 Consequently, this Concerning the method claim, the court considered claim also failed the Bilski test.
both the ''transformation'' and ''machine'' prongs of the In at least one instance, the U.S. International Trade Bilski test. In concluding that there was no transforma- Commission has interpreted the ''machine'' prong of tion, the court focused on the intangibility of the ma- Bilski less stringently than did the district courts in the nipulated data. According to the court, transformation cases discussed above. In In the Matter of Certain Video is limited to transformation of a physical article or sub- Game Machines and Related Three-Dimensional Point- stance. Accordingly, the method claim did not qualify ing Devices,47 the accused infringer filed a motion for because the data representing credit cards did not rep- summary judgment alleging that the asserted claims resent tangible articles but instead an intangible series impermissibly sought to patent a mathematical algo- of rights and obligations existing between the account rithm. According to the movant, the recitations of a ''3D pointing device,'' ''handheld device,'' or ''free space Concerning whether the claimed method was tied to pointing device'' were not sufficient to tie the claims to a particular machine, the court assessed whether ''reci- a particular machine, but served ''only to limit the field-of-use of the claimed mathematical algorithm and [did] not otherwise impart patentability on the claimed math- Id. at *3. The court relied upon the holdings in Ex parte Gutta, No. 2008-3000 at 5-6 (B.P.A.I. Jan. 15, 2009) (stating In denying the motion for summary judgment, the ''[t]he recitation in the preamble of '[a] computerized method ITC first noted that, ''[w]hile the ultimate determination performed by a data processor' adds nothing more than a gen- of whether the asserted claims are patentable under eral purpose computer that is associated with the steps of the § 101 is a question of law, the Federal Circuit has ac- process in an unspecified manner.''); Ex parte Nawathe, No.
2007-3360, 2009 WL 327520, *4 (B.P.A.I. Feb. 9, 2009) (finding''the computerized recitation purports to a general purpose processor [], as opposed to a particular computer specifically programmed for executing the steps of the claimed method.''); and Ex parte Cornea-Hasegan, No. 2008-4742 at 9-10 (B.P.A.I.
Jan. 13, 2009) (indicating the appellant does not dispute ''the recitation of a processor does not limit the process steps to any 44 Claims having this format are called ''Beauregard'' specific machine or apparatus.''). The court also cited Cyber- claims and were found to not be barred by the traditional source Corp. v. Retail Decisions Inc., (discussed below), in sup- printed matter rule in In re Beauregard, 53 F.3d 1583, 1584, 35 port of its interpretation of the required ''particular machine.'' 37 620 F. Supp. 2d 1068, 92 USPQ2d 1011 (N.D. Cal. 2009) 47 2009 WL 1070801 (U.S.I.T.C. 2009).
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knowledged that 'there may be cases in which the legal given a dataset of feature vectors associated with the question as to patentable subject matter may turn on subsidiary factual issues' '' (citation omitted). In con- for each binary partition under consideration, rank- struing the claims, the tribunal found that there was a ing features using two-category feature ranking; and genuine dispute as to whether the claimed ''devices''represented a ''particular machine'' under the Bilski while the predetermined number of features has not test and whether the claimed ''two-dimensional rota- yet been selected: picking a binary partition p; tional transform'' was merely a mathematical calcula- selecting a feature based on the ranking for binary tion or instead meant ''changing the mathematical rep- resentation of a two-dimensional quantity from oneframe of reference to a differently-oriented frame of ref- adding the selected feature to an output list if not al- erence'' as asserted by the patentee. Additionally, the ready present in the output list and removing the se- dispute over the meaning of the claimed ''two- lected feature from further consideration for the bi- dimensional rotational transform'' also raised a dis- puted issue as to whether this element recited a trans- Notably, while the independent claim failed the formation that would qualify under the ''transforma- machine-or-transformation test, its dependent claim tion'' prong of Bilski. Given these disputed issues, the was eligible because it recited, ''further comprising us- ITC concluded that it was inappropriate to grant sum- ing the selected features in training a classifier for clas- mary judgment as to the patent eligibility of the claims.
sifying data into categories.'' In view of the specifica- A similar conclusion was reached in Versata Soft- tion, the board indicated that the ''classifier'' was a par- ware Inc. v. Sun Microsystems Inc.,48 in which the dis- ticular machine ''in that it performs a particular data trict court denied the defendant's motion for summary classification function that is beyond mere general pur- judgment of invalidity under Section 101 based upon pose computing.''53 The board also concluded that the the Bilski court's refusal ''to adopt a broad exclusion claim ''transforms a particular article into a different over software or any other such category of subject state or thing, namely by transforming an untrained matter beyond the exclusion of claims drawn to funda- classifier into a trained classifier.''54 In Ex parte Casati,55 the board reversed the examin- Less stringent ''machine'' prong analyses are also er's Section 101 rejection of a method claim reciting: found at the board level. For example, in Ex parteSchrader,50 the board held patent-eligible under Bilski A method of analyzing data and making predictions, reading process execution data from logs for a busi- A method for obtaining feedback from consumers re- ceiving an advertisement from an ad provided by anad provider through an interactive channel, the collecting the process execution data and storing the process execution data in a memory defining a ware-house; creating a feedback panel including at least one feed-back response concerning said advertisement; and analyzing the process execution data; generatingprediction models in response to the analyzing; and providing said feedback panel to said consumers, using the prediction models to predict an occurrence said feedback panel being activated by a consumer to of an exception in the business process.
provide said feedback response concerning said ad-vertisement to said ad provider through said interac- In this case, giving consideration to the specification, which ''unequivocally describes the data warehouse aspart of the overall system apparatus, and subsequent Here, the board found ''interactive channel'' to be descriptions describe the memory/warehouse device in part of an ''overall patent eligible system of appara- terms of machine executable functions,'' the board con- tuses'' when viewed in the context of the specification, cluded that ''one of ordinary skill in the art would un- which included ''the Internet and World Wide Web, In- derstand that the claimed storing of process execution teractive Television, and self service devices, such as In- data in a memory defining a warehouse constitutes formation Kiosks and Automated Teller Machines.''51 patent-eligible subject matter under § 101 because the In another recent decision, Ex parte Forman,52 the memory/warehouse element ties the claims to a particu- board found a ''computer-implemented feature selec- tion method'' including a ''classifier'' eligible under Other recent board decisions have reached the oppo- Section 101 because it satisfied both the machine and transformation prong. Here, the ''classifier'' was recitedin a dependent claim, in which its independent claim re-cited: 53 Id. at 13.
54 Id. See also Ex parte Busche, No. 2008-004750 (B.P.A.I.
A computer-implemented feature selection method May 28, 2009) (holding a process claim and a computer pro- for selecting a predetermined number of features for gram product claim, each reciting training a machine, ''are di- a set of binary partitions over a set of categories rected to machines that have such structure as may be adaptedby training.'') 55 No. 2009-005786 (B.P.A.I. July 31, 2009).
48 2009 WL 1084412, *1 (E.D. Tex. March 31, 2009).
56 Id. at 7. See also Ex parte Dickerson, No. 2009-001172 at 49 Citing Bilski, 545 F.3d at 959 n. 23.
16 (B.P.A.I. July 9, 2009) (holding claims that ''recite a comput- 50 No. 2009-009098 (B.P.A.I. Aug. 31, 2009).
erized method which includes a step of outputting information from a computer. are tied to a particular machine or appa- 52 No. 2008-005348 (B.P.A.I. Aug. 17, 2009).
PATENT, TRADEMARK & COPYRIGHT JOURNAL implemented methods ineligible under the Bilski test transformation test applied to this type of claim.63 because the claims failed to tie the method steps to any Then, applying the Bilski test, the board concluded that concrete parts, devices, or combinations of devices. For the claim did not qualify. According to the board, the example, in Ex parte Holtz,57 the board found ineligible under Section 101 a ''method for comparing file tree de-scriptions'' because the claim ''obtains data (a file struc- does not transform physical subject matter and is not ture), compares data (file structures), generates a tied to a particular machine. Limiting the claims change log, and optimizes the change log without tying to computer readable media does not add any practi- these steps to any concrete parts, devices, or combina- cal limitation to the scope of the claim. Such a field- tions of devices'' and the ''file structures'' did not repre- of-use limitation is insufficient to render an other- Similarly, in Ex parte Gutta,58 the board held ineli- gible under § 101 a ''method for identifying one or moremean items for a plurality of items. having a sym- II. The Current Scope of Patent Eligibility bolic value of a symbolic attribute,'' concluding that the These recent cases establish that some types of meth- claim ''computes a variance and selects a mean item ods are clearly patent-eligible under Section 101, others without tying these steps to any concrete parts, devices, clearly are not eligible, and yet others may be depend- or combinations of devices'' and ''symbolic values are ing on how they are described and claimed.
neither physical objects nor do they represent physicalobjects.'' First, the eligibility of system and apparatus claims is largely unaffected by the Bilski decision, with the ca- In contrast to the district court's decision in Cyber- veat that such claims may be more closely scrutinized source Corp., discussed supra, in a recent board deci- for compliance with Diamond v. Diehr and Gottschalk sion, Ex parte Bodin,59 ''a computer program product'' v. Benson, which prohibit patenting of a claim directed was found to be patent-eligible subject matter as being to ''laws of nature, natural phenomena, [or] abstract embodied in a ''computer readable medium.'' Here, the board considered whether the phrase ''recorded on the Also, methods that are performed at least in part by a recording medium'' as it is recited in the body of the machine qualify for patent eligibility under Section 101.
claims was the same as ''recorded on a computer- Thus, for example, some computer-implemented and readable medium.'' Acknowledging the differences be- software-related inventions remain patentable as long tween a statutory claim to a data structure stored on a as they are properly described and claimed as being computer readable medium compared to a nonstatutory performed by a computer or computer components.
claim to a data structure that referred to ideas reflected The tie to a machine, however, cannot merely be im- in nonstatutory processes, the board stated: ''[w]hen plicit based upon the description and context of the ap- functional descriptive material is recorded on some plication or general language in the preamble of the computer-readable medium, it becomes structurally claim. Instead, the use of a machine to perform one or and functionally interrelated to the medium and will be more of the claimed functions must be expressly de- statutory in most cases since use of technology permits scribed in the body of the claim so as to be a meaning- the function of the descriptive material to be real- ful limitation on the claim. If a method claim can be read in such a way that all functions can be performed Similarly, in Ex parte Azuma,61 a claim to a ''com- by a human, it will likely not pass the machine prong of puter program product. comprising: a computer us- able medium'' was found to be directed to statutory The ''Interim Examination Instructions for Evaluat- subject matter under § 101 because the language ''com- ing Subject Matter Eligibility Under 35 U.S.C. § 101'' re- puter usable medium'' referred to tangible storage me- cently issued by the Patent and Trademark Office con- dia, such as a server, floppy drive, main memory and firm that the recitation of a general purpose computer hard disk as disclosed by appellant's specification, and is sufficient to satisfy Section 101 where the general did not ''implicate the use of a carrier wave.'' purpose computer is ''programmed to perform the pro- In an older decision, Ex parte Cornea-Hasegan,62 cess steps,. in effect, becom[ing] a special purpose however, the Board seemingly came to the opposite conclusion, holding that a claim reciting ''a computer Concerning data transformation, there seems to be readable media including program instructions which agreement of the Federal Circuit and at least one dis- when executed by a processor cause the processor to trict court that a method that is both limited to transfor- perform'' a series of steps was not patent-eligible under mation of specific data and limited to a visual depiction Bilski. The board first determined that ''analysis of a representing specific objects or substances qualifies un- 'manufacture' claim and a 'process' claim is the sameunder 63 Id. at 11.
64 Id. at 12.
57 No. 2008-004440 at 12-13 (B.P.A.I. Aug. 24, 2009).
65 Diamond v. Diehr, 450 U.S. 175, 185, 205 USPQ 488 58 No. 2008-004366 at 10-11 (B.P.A.I. Aug. 10, 2009).
(1980); Gottschalk v. Benson, 409 U.S. 63, 67, 175 USPQ 673 59 No. 2009-002913 (B.P.A.I. Aug. 5, 2009).
60 Id. at 10 (comparing In re Lowry, 32 F.3d 1579, 1583-84, 66 ''Interim Examination Instructions for Evaluating Sub- 32 USPQ2d 1031 (Fed. Cir. 1994) to In re Warmerdam, 33 F.3d ject Matter Eligibility Under 35 U.S.C. § 101,'' U.S. Patent and 1354, 1361-62, 31 USPQ2d 1754 (Fed. Cir. 1994)).
Trademark Office, Aug. 24, 2009, at 6 (78 PTCJ 530, 8/28/09).
61 No. 2009-003902 at 10 (B.P.A.I. Sept. 14, 2009).
The authors' recent experiences with examiners suggest that 62 No. 2008-004742 (B.P.A.I. Jan. 13, 2009).
the examiners are following these instructions.
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der Section 101.67 Thus, claims analogous to those in In Concerning claims directed to computer program re Abele68 in which ''data clearly represented physical products, one district court has held that appending ''A and tangible objects, namely the structure of bones, or- computer readable media including program instruc- gans, and other body tissues [so as to recite] the trans- tions'' to an otherwise non-statutory process claim is in- formation of that raw data into a particular visual depic- sufficient to make it statutory.72 The board has also tion of a physical object on a display'' are patent- held ineligible claims to ''a computer readable me- dia.''73 The board has, however, also upheld the eligibil-ity of ''a computer program product'' as being embod- ied in a computer readable medium.74 Given these in- Bilski has had a significant impact in eliminating consistent decisions, the patent eligibility of claims in patent protection for inventions that are performed en- tirely by humans or can be interpreted as such if read Concerning claims directed to generalized computer broadly. This includes claims that describe processes processing functions, several Board decisions suggest for creating or manipulating legal and financial docu- that, absent a tie to a concrete real-world application, ments and relationships. In this area in particular, many such claims are likely to be deemed an ''algorithm'' un- pending applications filed prior to Bilski are no longer der Benson and therefore held to be non-statutory. 75 patent-eligible, and many issued patents are no longer Any recitation of a specific field of use for the claimed valid. This retroactive impact of the Bilski decision is process or use of the outcome of such processes are troubling, given the investment in these patents and ap- also more likely to be found ''field-of-use'' or ''post- plications, which have now been rendered essentially solution activity'' limitations insufficient to render the worthless despite the suggestion in the Federal Circuit's claim patent-eligible. Thus, the more tied a claimed pro- earlier State Street decision, now overruled, that such cess is to tangible results or particular applications (not claims qualified for patent protection.
just fields of use), the more likely it is to qualify under Inventions that do not fit within the four statutory categories are also not patent-eligible. The Federal Cir-cuit and the board have rejected claims directed to ''a III. Presenting and Claiming Methods in Patent signal,'' ''a paradigm,'' ''a user interface'' and ''a corr-elator'' on the basis that these items did not qualify as a ''machine, manufacture, composition of matter or pro- Several strategies for describing and claiming meth- cess'' under § 101. 70 There is also an increasing focus ods or processes in patent applications may avoid or on the tangibility of the claimed invention in that, to minimize potential Section 101 problems.
qualify as a ''machine'' or ''manufacture'' under Section First, the description provided in a patent application should include well-defined steps or functions associ-ated with method or process. For example, when the claims include ''initiating'' method steps, a description Remaining areas of uncertainty concerning the scope of well-defined physical steps or functions for initiating of Section 101 include (1) what qualifies under Bilski as should be provided, and a concrete item, machine, de- a ''transformation of an article or data,'' (2) whether vice, or component that is responsible for the initiating claims to computer programs (Beauregard claims) function should be identified. For claiming ''identify- qualify, and (3) whether internal computer processing ing'' method steps, provide specific parameters for functionality not tied to a specific application or tan- making the identification, such as according to a speci- fied measurement.76 Where data is involved, the source Concerning data transformation, other than Abele- and type of data should be specified.
style claims discussed above, what qualifies as a data or Also, drawings should be provided that depict the article transformation remains unclear. Claims that concrete item, device, component or combination have been held not to meet the transformation prong in- thereof, and each method or process step or function clude claims directed to the creation or manipulation of should be linked expressly to at least one item, device data representing an intangible series of rights and ob- or component in the drawings that performs the step or ligations (e.g., credit card data) and claims directed to function. Broadening language indicating that other the transformation or manipulation of legal obligations components may also be used to perform the function and relationships. Beyond these specific examples, it is may also be included to avoid an unduly narrow inter- difficult to predict what will or will not qualify as a data or article transformation under Bilski.
The claims should affirmatively claim the device, ma- chine or component performing each step or function.
67 In re Bilski, 545 F.3d at 963; Research Corporation Tech- For computer or software-related inventions, the de- nologies, 2009 WL 2413623 at *9.
scription should specify that the software functionality 68 The claimed process involved graphically displaying vari- ances of data from average values wherein the data was X-rayattenuation data produced in a two dimensional field by a com- 72 Cybersource Corp., 620 F. Supp. 2d at 1080.
puted tomography scanner. See In re Bilski, 545 F.3d at 962- 73 Cornea-Hasegan, No. 2008-004742.
74 Ex parte Bodin, No. 2009-002913 (B.P.A.I. Aug. 5, 2009).
69 In re Bilski, 545 F.3d at 963.
75 E.g., Ex parte Greene, No. 2008-004073 (B.P.A.I. Apr. 24, 70 In re Nuijten 500 F.3d 1346, 1357, 84 USPQ2d 1495 (Fed.
2009); Daughtrey, No. 2008-000202; Ex parte Arning, No.
Cir. 2007) (74 PTCJ 631, 9/28/07) (signal); In re Ferguson, 558 2008-003008 (B.P.A.I. Mar. 30, 2009); Cybersource Corp., 620 F.3d 1359, 1366, 90 USPQ2d 1035 (Fed. Cir. 2009) (77 PTCJ F. Supp.2d at 1080 (concerning claim 2).
489, 3/13/09) (paradigm); Ex parte Daughtrey, No. 2008- 76 See Brief of American Bar Association as Amicus Curiae 000202 (B.P.A.I. Apr. 8, 2009) (user interface); Ex parte Laba- Supporting Respondent, Bilski v. Kappos, No. 08-964, ABA die, No. 2008-004310 (B.P.A.I. May 6, 2009) (correlator).
Amicus Br. at 12-13 (U.S. amicus brief filed Oct. 2, 2009) (78 71 E.g., Nuijten, 500 F.3d at 1356-7.
PATENT, TRADEMARK & COPYRIGHT JOURNAL is performed by a computer or computer components.
patent or published application, the option of importing Specificity as to the type of computer component per- subject matter into the specification is limited to ''non- forming each function may be helpful in establishing essential'' subject matter. In other words, the specifica- eligibility under the Bilski test.
tion can only be amended to disclose a machine for per-forming process steps as long as one skilled in the art IV. Fixing Pre-Bilski Applications to Meet the New would recognize from the original disclosure that the process is implemented by a machine. The key in mak- For patent applications filed prior to the Bilski deci- ing this type of amendment is avoiding (or overcoming) sion, it can be challenging to meet the new require- a rejection under 35 U.S.C. § 112, para. 1, for lack of ments for patent eligibility, particularly when no ma- chine or transformations were expressly described in If incorporation by reference is not an option, a patent applicant may submit evidence, such as a decla- In some cases, there may be sufficient explicit de- ration by the inventor or a duly qualified technical ex- scription of a machine, e.g., a computer, such that the pert, demonstrating that one skilled in the art would un- machine can be added into the body of the claims. For derstand the disclosed method to be one performed by example, patent applications for computer-related in- a machine. Unlike attorney argument, which can be dis- ventions sometimes contain a generic description of regarded, such evidence must be considered by the ex- computers that are used to perform the claimed method, and such a generic description may be suffi- One other option is to reformat the claims. Since Bil- cient to impart patent eligibility to the claims when the ski ostensibly does not apply to system and apparatus general-purpose computer is programmed to become a claims, in some instances it may be possible for an ap- plicant to convert his method claims into system claims For patent applications lacking in an explicit descrip- to avoid application of the Bilski test. This strategy, tion of any machine, however, the application may in- however, is unlikely to succeed where the patent speci- corporate by reference patents or publications that can fication does not describe such a system for implement- be used to bolster the specification and provide support ing the method and therefore does not provide the req- for the requisite claim amendments. When an applica- uisite disclosure of the claimed invention under Section tion incorporates by reference a U.S. patent or pub- lished U.S. patent application, any description from the incorporated references, whether or not the subject The future of the Bilski machine-or-transformation matter is ''essential'' to support the claims, may be im- test now rests with the Supreme Court. Regardless of ported into the specification. This option may enable the outcome of the appeal, however, it is clear that the importation of the requisite description of a machine, scope of statutory subject matter under Section 101 has which can then also be recited in the claims.77 When been narrowed. The Supreme Court now has a chance the document incorporated by reference is not a U.S.
to clarify what has been excluded; it may even reject ormodify the Bilski machine-or-transformation test. How 77 Manual of Patent Examining Procedure, Eighth Ed., Rev.
this will affect the development and protection of cur- 7/2008, at § 608.01(P); see also 37 C.F.R. § 1.57.
rent and future technologies remains to be seen.
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