November 13, 2007
The September Comiskey (mental processes) and Nuijten (signals) CAFC §101 decisions rocked the patent world. In unctuous spirit of thrashing patentable subject matter, the USPTO Patent Board of Appeals and Interferences (BPAI) has joined the agency's crusade of wanton illegality, wreaking havoc with in its recent decisions. One wag, through gritted teeth: "Judges Barret and MacDonald seem to be the bad apples; almost always on the panel when the Board issues a real stinker decision. How do you get the idea of incompetent legal analysis across to the official to whom the Board reports - James Toupin[, patent office general counsel]? The blind leading the blind."
An appellant, upon reviewing recent BPAI 101 decisions:
To first approximation, the Board's view is that a claim has to have the word "computer" in it. The Kinzhalin case is especially instructive. There is only one concurrence... [of] all the Board decisions citing Lundgren... that cites Lundgren for a non-trivial proposition. Not one Board majority cites the Lundgren majority for anything more than the demise of the "technological arts" test; many cite the Lundgren dissent as if it were law. Many cite Schrader as if it were still the law, even though in AT&T v Excel, Judge Plager (who had also authored Schrader) says "Schrader is not helpful." The whole bag and baggage of Freeman-Walter-Abele is back in play - "post solution activity," "mere data gathering," and all that other baloney that Alappat and AT&T v Excel said were behind us. The Supreme Court's instruction in Diamond v Diehr, "Benson and Flook stand for no more than" that abstract ideas, laws of nature and natural phenomena are the limits of the judicial exceptions, is totally lost - note how often the Board cites Gottschalk v Benson for propositions other than the propositions left standing by Diamond v Diehr. Many cite Gottschalk v Benson as if it were good law.
The biggest problem is that there is an aggressive agenda to reign in 35 USC 101, but the PTO has been incapable of formulating a clear position on the limits of 101. The rejections range from the laughable to the outrageous. Even the examiners throw up their hands on the issue and simply refer to the Guidelines, without further explanation, when defending these rejections. Early on, examiners would withdraw the rejections after a brief phone call. Now, the standard response has become: "I don't know what to tell you - we've been told to reject claims based on the Guidelines, and that's what I have to do." (I've been told that there have been numerous internal "changes" to the 101 Guidelines, but the PTO isn't sharing this information with practitioners.) The BPAI has become belligerent on patentable subject matter, and the Nuijten/Comiskey combo has only helped to fuel the fire.
Professor Dennis Crouch, Patently-O godfather:
I agree that the PTO is stepping on the law here.
The oral arguments from the pending CAFC case ex parte Bilski are quite interesting. The Gov't lawyer argued that the PTO position to require some 'technology' -- i.e., any technology. Thus, for instance, a manual chiropractic method would not be patentable subject matter; but, a chiropractic method that required the use of a simple tool would qualify under 101.
Greg "Patent Chiropractical" Aharonian:
You are being generous, Dennis. These are nonsense arguments... made by the Gov't lawyer - the repeated use of "technical" and/or "technology" without any definition of the term.
First, this "use a piece of equipment" ignores In re Hruby - manufacture includes by hand or machine. Second, suppose I determine chiropractically that I can fix someone's by pressing on their belly button for 2.38 seconds while tickling their ear for 1.11 seconds, these numbers determined by rigorous science and engineering testing. They when I press and tickle, I am applying science to solve a problem - I am being technical, if you define technical as the application of a science.
[T]he Board is trying to resurrect post-solution activity. Fine, then invalidate every digital hardware circuit patent every issued, because none of them talk about post solution activity (a really stupid bit of Supreme Court science nonsense). Look at these hardware patents, the spec and claims talk about input/output digital I/O lines, and the digital circuitry between the input and output that does the new calculation. Hardware designers assume that other hardware designers are treating such circuits as black boxes, and know enough, are skilled enough, to know what to hook the new circuit up to, pre-solution inputs and post-solution outputs. To use the phrase "post-solution activity" is equivalent to saying "I am mostly unfamiliar with modern software and hardware engineering."
Neither the PTO Policy Office, nor the PTO Board of Appeals (nor some judges on the CAFC, and most Supreme Court judges) really understand modern science and engineering enough to understand how to use the words "technical/technology".
Recent precedential BPAI decisions -
2007.09.06 Koelle - An IBM application shot down on examiner rejection over 103, with new grounds dug up under 112 and 101. This just before Nuijten.
Claim 21 recites a "computer program product in a computer readable medium" comprising "first instructions . . .," "second instructions . . .," "third instructions . . .," and "fourth instructions . . . ." Appellants have admitted that "[t]he subject matter of claim 21 is directed to a computer program that performs the method of claim 1 . This claim is a computer program version of independent claim 1."
Thus, the "computer readable medium" of claim 21 includes electromagnetic radiation, i.e., signals. This in turn includes "carrier waves" or "propagated signals" which are not statutory subject matter. Claims that are broad enough to include nonstatutory subject matter (intangible signals) as well as statutory subject matter (tangible manufactures) are considered to be unpatentable because applicant may always amend to limit the claims to what is statutory. See Ex parte Lundgren, 76 USPQ2d 1385, 1417-24 (BPAI 2005) (Barrett, concurring-in-part and dissenting-in-part).
The "computer readable medium" of claim 21 is considered to be nonstatutory subject matter because a "carrier wave" or a "propagated signal" does not fall within one of the four statutory categories of subject matter under 35 U.S.C. § 101.
2007.10.24 Kinzhalin - After sustaining a 103 rejection, creating a new 101 ground for rejection in appeal: "without some machine-based implementation or physical transformation can be considered mere mental steps unsupported by elements of a machine, manufacture or composition of matter." Use of the term "automated" is deemed inadequate: "“automated” is merely an expression of intended use that, at best, recites a desired result of the claimed method. Crucially, however, the claim fails to positively recite any concrete, physical implementation to achieve this “automated” result as the term is wholly unsupported by physical steps or structure in the claims. Perhaps the intended use of the method will involve a machine, but we decline to infer such intentions suggested in the present specification into the claims."
2007.11.08 Brown - Claiming "a method of controlling access to content," where access to content is allowed or disallowed based upon access rights information, the board affirms 103 rejection and piles on 101, as the method claim "is directed to an unpatentable abstract idea because it is neither tied to a particular machine nor operated to change materials to a different state or thing."
2007.11.08 Serkin - BPAI finds examiner prior art rejection unsustainable, but discovers a new 101 ground: a claimed market order system method "recite[s] only a mental process of matching without integrating a machine, or constituting a process of manufacture, or the altering a composition of matter." Even claims reciting a "system" in the preamble are doomed, as "the body of the claims recite only a mental process of matching." And a "computer program product" claim "could be read, in its broadest reasonable interpretation, as a signal."
Posted by Patent Hawk at November 13, 2007 10:51 PM | Prosecution