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November 15, 2008

Process Flavor de Jure

The techno-Neanderthal CAFC having roiled process claims with its bilious Bilski ruling, the question remains how to best draft software method claims. The economical "computer-implemented method" preamble may not fly now. Another charade exists. Post-Bilski, the BPAI still let Beauregard software claims pass §101 muster.

IBM's Korea-spawned 10/463,287 went down on obviousness, but Ex parte Bo Li wrung an acceptance by the patent board that Beauregard computer program product claims were still copasetic.

It has been the practice for a number of years that a "Beauregard Claim" of this nature be considered statutory at the USPTO as a product claim. (MPEP 2105.01, I)... In view of the totality of these precedents [Bilski, Nuijten, Lowry], we decline to support the rejection under 35 U.S.C. § 101.

Computer program product method claim 42 was exemplary of a 101-acceptable Beauregard claim.

42. A computer program product, comprising a computer usable medium having a computer readable program code embodied therein, said computer readable program code adapted to be executed to implement a method for generating a report, said method comprising:
    providing a system, wherein the system comprises distinct software modules, and wherein the distinct software modules comprise a logic processing module, a configuration file processing module, a data organization module, and a data display organization module;
    parsing a configuration file into definition data that specifies: a data organization of the report, a display organization of the report, and at least one data source comprising report data to be used for generating the report, and wherein said parsing is performed by the configuration file processing module in response to being called by the logic processing module;
    extracting the report data from the at least one data source, wherein said extracting is performed by the data organization module in response to being called by the logic processing module;
    receiving, by the logic processing module, the definition data from the configuration file processing module and the extracted report data from the data organization module; and
    organizing, by the data display organization module in respone to being called by the logic processing module, a data display organization of the report, wherein said organizing comprises utilizing the definition data received by the logic processing module and the extracted report data received by the logic processing module.

The board's §101case law recitation, with the foregoing quote in context.

"Therefore we also conclude that the "useful, concrete and tangible result" inquiry is inadequate and reaffirm that the machine-or-transformation test outlines by the Supreme Court is the proper test to apply." [Footnote: "As a result, those portions of our opinions in State Street and AT&T relying solely on a "useful, concrete and tangible result" analysis should no longer be relied on." In re Bilski, Case 2007-1130, page 20, (Fed. Cir, Oct 30, 2008).

In the analysis of In re Nuijten, 500 F.3d 1346 (Fed. Cir., 2007), the Federal Circuit considers the four statutory classes for a signal, and bases the determination of statutory subject matter on that basis. It has been the practice for a number of years that a "Beauregard Claim" of this nature be considered statutory at the USPTO as a product claim. (MPEP 2105.01, I). Though not finally adjudicated, this practice is not inconsistent with In re Nuijten. (Ibid.). Further, the instant claim presents a number of software components, such as the claimed logic processing module, configuration file processing module, data organization module, and data display organization module, that are embodied upon a computer readable medium. This combination has been found statutory under the teachings of In re Lowry, 32 F.3d 1579 (Fed. Cir., 1994). In view of the totality of these precedents, we decline to support the rejection under 35 U.S.C. § 101.

Given CAFC vagueness in Bilski, guidance from the USPTO is sorely needed as to what it considers acceptable process claim form. Internal guidelines are rumored to exist.

A hat tip of thanks to Professor Crouch at Patently-O.

Posted by Patent Hawk at November 15, 2008 12:16 AM | § 101

Comments

"Internal guidelines are rumored to exist."

I haven't recieved any yet but I'm sure they'll be out soon.

Posted by: 6000 at November 16, 2008 11:42 PM

"said computer readable program code adapted to be executed "

No program code in existence has been "adapted to" be executed. Computer code is what it is, it cannot be "made suitable to" be executed. It either is, and always was suitable, or it was not and always will not be suitable.

Besides that point, this claim fails to distinguish the "computer usable medium" by its structure, and thankfully this Beauregard doesn't even pretend to be distinguishing in terms of the functionality of the structure. My hat is off to these drafters, they save me the trouble of the bulk of my analysis to properly reject the claim.

But gl to you hawk.

Posted by: 6000 at November 17, 2008 12:21 AM

@ 6000:

"No program code in existence has been "adapted to" be executed."

Well that depends on what you mean by "program code". One form of "code" or software, called "interpretable code", is made suitable for execution by being interpreted and then encoded in machine code. Another form, called "uncompiled code", is made suitable for execution by first being compiled and assembled into machine code.

Perhaps you meant "no _machine_ code in existence has been 'adapted to' be executed"?

Even that statement is arguable, as most machine code can only be executed when "made suitable" via being properly formatted, loaded into and/or located in a form of memory directly accessible by a processor, called by the processor, parsed by the processor (if required), etc.

In some cases, machine code must be further "made suitable" by being encoded into microcode, which is then eventually executed.

See, e.g., http://en.wikipedia.org/wiki/Machine_code, and http://en.wikipedia.org/wiki/Program_(machine)

Posted by: bubba at November 19, 2008 6:47 AM

"No program code in existence has been "adapted to" be executed."

Hmm. I can think of many ways that a set of instructions can be "adapted to be executed" on a particular machine, such as:

* Compiling the instructions for execution on the machine. (Microsoft's .Net platform does this routinely - a "compiled" application is just a set of "intermediate language" ("IL") instructions, and when it's executed the machine finishes compiling and binding it.)

* Installing the code on the computer, such as with an installer package or bootstrapper.

* Associating a compiled binary with referenced modules, such as DLLs in an assembly cache (and maybe downloading and registering those DLLs if they're not already present.)

* Creating a virtual machine to prepare the code for execution (such as instantiating a Java VM and loading the code into it.)

...etc.

This isn't just quibbling, 6000. Perhaps these sorts of steps are what the applicant had in mind. I agree that this claim could have been better drafted - and that Beauregard claim style is due for a smidge of tightening-up (e.g., what the hell is a "computer program product?!") But the requirements of claim-drafting to conform with the bizarre thicket of USPTO and CAFC requirements that I'm glad to see a little slack cut for the applicant here where the claim was *mostly* OK.

- David Stein

Posted by: David Stein at November 25, 2008 1:43 PM