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Robert J. Sayre
Robert J. Sayre
Cambridge, MA,
United States

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USPTO BPAI holds software claim patent-ineligible under Bilski


by Robert J. Sayre

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.


As a patent agent specializing in business methods, I think we are in for a rough road. It appears that the USPTO is going to try to push eligible subject matter as far towards the EU standards as possible. That means someone is going to have to push back. Fortuneately, the companies most affected (HP, IBM, Accenture, etc) have sufficient resources to take these cases up on appeal to the CAFC.
Posted @ Tuesday, July 13, 2010 2:14 PM by Mark Nowotarski
>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  
I disagree with your statement, if I'm reading it correctly.  
I think you're saying that reciting a medium didn't remove it from the abstract realm *because* the medium swept in a transitory media. IOW, the claim was abstract because it  
swept in transitory media.  
However, I read the BPAI's decision as clearly holding *two* reasons for affirming the 101. First, the BPAI said the media claim was an "abstract idea" under the same reasoning used for the method claim 33 and system claim 50. As a second, independent basis, the media claim was non-statutory under Nuijten (signals are not a statutory class).  
I'll admit this is a picky distinction, but I think it makes a difference. Because under my interpretation, the claim can't be saved by amending the spec to remove the signal embodiment or amending the claim to specify non-transitory.
Posted @ Friday, July 16, 2010 3:04 PM by Karen G. Hazzah
"I'll admit this is a picky distinction" 
How do you avoid it in the first place? Explicitly disclaim transitory embodiments?
Posted @ Friday, August 20, 2010 9:48 AM by Mark Nowotarski
I wasn't sure I fully followed Karen's observation the first time I read it, though now I think I do. The "USPTO Subject Matter Eligibility of Computer Readable Media Guidelines" (dated January 26, 2010, and signed by David Kappos) offers some helpful advice by suggesting that the term "non-transitory" be added to the claims to overcome this issue.
Posted @ Saturday, August 21, 2010 3:14 PM by Bob Sayre
>How do you avoid it in the first  
>place? Explicitly disclaim  
>transitory embodiments?  
"Disclaim" in the spec? Or in the claims? Or with a statement in prosecution?  
I should think all three would work to avoid 101 rejections based solely on In re Nuijten.  
Seems like it should be good enough to simply omit signals or transitory embodiments in your spec. But I have definitely read BPAI decisions where the Board upheld Nuijten rejections even when the spec said absolutely nothing about signals!
Posted @ Saturday, August 21, 2010 7:48 PM by Karen G. Hazzah
>wasn't sure I fully followed  
>Karen's observation the first  
>time I read it 
I was disagreeing with your reading of the case. You said the Board held the claims were abstract because the claims read on a signal. I say the Board found the claims abstract AND also held the claims read on a signal, and thus affirmed the 101 rejection under two different rationales.
Posted @ Saturday, August 21, 2010 7:53 PM by Karen G. Hazzah
That was very informative and well written. I look forward for further posts from you. Recently I came across an article titled “A functionality based approach for assessing patentability of software” which I felt, is quite interesting and informative. I would like to bring your kind attention to the above mentioned article. Below given is an excerpt of the article. 
“The whole idea of software is to avoid making specific hardware for every application. We came up with software to be able to dynamically create a new "machine" out of a standard hardware. A software allows the "new" machine to perform a "new" function based on the instructions as part of the software. 
Now, saying that a software invention to be claimed must have a specific machine limitation is like asking the inventor to come up with corresponding hardware embodiment for the software based invention. It really defeats the purpose of…” read more at http://www.sinapseblog.com/2010/12/functionality-based-approach-for.html 
Posted @ Monday, December 20, 2010 10:49 PM by anonymous
In response to the last post, thanks for your kind words and the link to the article on the sinapse blog. The author there makes a good point that pushing software claims to include machine limitations at least creates a tension with the function of software. Hopefully, thoughtful dialog from others who understand the role of software can ultimately help to better inform the judiciary to eventually develop sensible guidelines.
Posted @ Thursday, December 30, 2010 12:53 PM by Bob Sayre
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