Mark Nowotarski (@patentbuzz on Twitter) posted a link today to what he described as the first post-Bilski BPAI rejection under 35 U.S.C. sec. 101 (holding the method, software and "computer apparatus" claims patent ineligible) in Ex parte Proudler (Appeal 2009-006599, Application 10/643,306).
After reading the decision and reviewing the claims, what most caught my attention was claim 43, which read as follows:
43. A computer program stored on computer readable media for instructing a programmable computer to implement a method of controlling the processing of data, wherein the data comprises a plurality of usage rules for a plurality of data items, the programmable computer being programmed to apply individualised usage rules to each of the data items based on a measurement of integrity of a computing entity towhich the data items are to be made available, the computer program permitting instantiation of the data items at the computing entity only if the integrity of the computing entity complies with the individualised usage rulesassociated with said data items.
This claim is a bit unusual in that it claimed "a computer program stored on computer readable media" rather than "a computer-readable medium storing a computer program (or software code)," though it is not clear that this semantic difference influenced the ruling.
Interestingly, the Examiner had rejected the claims under section 103 (obviousness) rather than section 101, but the Board acted on its own initiative in crafting the section 101 rejection. In rejecting claim 43, the Board reasoned as follows:
In like manner, independent claim 43 recites in its preamble a direct recitation to a computer program that is said to be stored on a computer readable “media”. Besides falling within our earlier analysis, the manner in which this claim is recited in its preamble encompasses signals per se based upon the correlation of this claim to the signals associated with the Internet at page 4 of the “Summary of the Invention” in the principal Brief on appeal as well as its reference to the teachings of the signaling embodiment associated with networks, including the Internet, at Specification page 11 beginning at line 19. Thus, this claim is directed to include communications media. As such, this claim is inclusive of transitory signaling embodiments, which are proscribed by the early-noted case law. The media of this claim include transitory embodiments, such as to comprise signals per se. Note also the analysis provided by Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
Note that the recitation of the computer readable media in this claim was insufficient to pull this claim from the Bilski-forbidden domain of abstract ideas, as it appeared that inclusion of language in the specification suggesting that the software code can be embodied in a transitory state in communications media poisoned claim 43 by sweeping that environment within the scope of the claim.
Perhaps the Applicant, HP, will appeal the ruling to the federal circuit, though right now in view of this ruling and the USPTO's Subject Matter Eligibility Guidelines (and unless the invention only includes software/signals in a transitory state), prudence may suggest specifying (by definition in the specification) that the storage of the computer program on the computer-readable medium is non-transitory to avoid the hatchet of the enhanced abstract-idea preclusion wrought by Bilski. The USPTO's Subject Matter Eligibility Guidelines suggest that one can amend the claims after filing to specify the "non-transitory" nature of the software/data storage, though one would likely be on the firmest foundation for making that amendment if that language is in the specification when the application is filed.