Ex parte Cornea-Hasegan (BPAI 2008-4742) non-precedential (i.e., so mundane as to be not worth mentioning in the future)

The examiner-paved runway to terminal rejection:

[U]sing different elements of the processor [ ] to calculate the result d does not mean that the processor is physically transformed to a different state or thing . . .

[D]etermining [ ] whether to use software or floating-point hardware is not tangible because it is not a real-world result.

BPAI case law recitation:

The Bilski court, following Supreme Court precedent,¹ enunciates the machine-or-transformation test as follows: "A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." Id. at 954; see also In re Comiskey, 499 F.3d 1365, 1377 (Fed. Cir. 2007) (discussing the same test from Diehr, 450 U.S. 175).

¹ The Bilski court, citing numerous Supreme Court precedents, stated:

The Supreme Court . . . has enunciated a definitive test to determine whether a process claim is tailored narrowly enough to encompass only a particular application of a fundamental principle rather than to pre-empt the principle itself. A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. See Benson, 409 U.S. at 70 ("Transformation and reduction of an article 'to a different state or thing' is the clue to the patentability of a process claim that does not include particular machines."); Diehr, 450 U.S. at 192 (holding that use of mathematical formula in process "transforming or reducing an article to a different state or thing" constitutes patent-eligible subject matter); see also Flook, 437 U.S. at 589 n.9 ("An argument can be made [that the Supreme] Court has only recognized a process as within the statutory definition when it either was tied to a particular apparatus or operated to change materials to a 'different state or thing'"); Cochrane v. Deener, 94 U.S. 780, 788 (1876) ("A process is ... an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.").

Process claims directed to fundamental principles - including laws of nature, natural phenomena, and abstract ideas - mental processes, or mathematical algorithms are unpatentable. Bilski, at 951-52. A process claim that is tied to a specific machine may be patentable under § 101. Id. at 961; Comiskey, 499 F.3d at 1377.

The BPAI panel found that "...the recitation of a processor does not limit the process steps to any specific machine or apparatus. Appellant does not dispute this point."

While the Bilski court declined to elaborate on the "machine" branch of the test, it did provide some guidance on the issue. The court explains that "the use of a specific machine or transformation of an article must impose meaningful limits on the claim's scope to impart patent-eligibility" and "the involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity." Bilski, at 961-62 (internal citations omitted). As Comiskey recognized, "the mere use of the machine to collect data necessary for application of the mental process may not make the claim patentable subject matter." Comiskey, 499 F.3d at 1380 (citing In re Grams, 888 F.2d 835, 839-40 (Fed. Cir. 1989)).

The recitation of a "processor" performing various functions fails to impose any meaningful limits on the claim's scope. The recitation of a "processor" performing various functions is nothing more than a general purpose computer that has been programmed in an unspecified manner to implement the functional steps recited in the claims.

The recitation of a processor in combination with purely functional recitations of method steps, where the functions are implemented using an unspecified algorithm, is insufficient to transform otherwise unpatentable method steps into a patent eligible process. Holding otherwise would exalt form over substance and would allow pre-emption of the fundamental principle present in the non-machine implemented method by the addition of the mere recitation of a "processor." Such a field-of-use limitation is insufficient to render an otherwise ineligible process claim patent eligible. See Bilski, at 957 (citing Diehr, 450 U.S. at 191-92 (noting that eligibility under § 101 "cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.")).

In a recant, Comiskey II left out the passage about collecting data being unpatentable.

Nominal recitations of structure in a method claim do not convert an otherwise ineligible claim into an eligible one. Bilski, at 957. See also Benson, 409 U.S. at 68-69 (comparing O'Reilly v. Morse, 56 U.S. (15 How.) 62 (1854), to The Telephone Cases, 126 U.S. 1 (1888)...

Turning to the "transformation" branch of the "machine-or transformation" test, claims reciting incidental transformations or extrasolution activity also do not convert an otherwise ineligible claim into an eligible one. To permit such a practice would exalt form over substance and permit artful claim drafting to circumvent the limitations contemplated by section 101. See Diehr, 450 U.S. at 191-92 ("insignificant post-solution activity will not transform an unpatentable principle into a patentable process.").

Number crunching provides no patentable transformation.

Accordingly, the claim is directed to abstract ideas and/or data structures per se. The steps manipulating other data (floating-point operands) and determining whether to calculate d using floating point hardware are insignificant extra-solution activity. Such "insignificant [extra]-solution activity will not transform an unpatentable principle into a patentable process." Id. at 957 (citing Diehr, 450 U.S. at 191-92; Flook, 437 U.S. at 590). To permit such a practice would exalt form over substance and permit Appellant to circumvent the limitations contemplated by § 101.

A program-product method claim, the Beauregard claim form, is dismissed as window dressing. Bilski abrogated State Street, the patent board declared.

When broadly construed in a manner consistent with Appellant's Specification, the claimed "computer readable media" limits the scope of the claimed media to tangible media embodiments such as the disclosed "fixed magnetic disk, [ ] floppy disk drive, [ ] optical disk drive, [ ] magneto-optical disk drive, [ ] magnetic tape, or non-volatile memory including flash memory." (Spec. ¶ [0058].) Even so, analysis of a "manufacture" claim and a "process" claim is the same under § 101. See AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352, 1357 (Fed. Cir. 1999) (abrogated by Bilski, 545 F.3d 943) ("Whether stated implicitly or explicitly, we consider the scope of § 101 to be the same regardless of the form--machine or process--in which a particular claim is drafted."); State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998) (abrogated by Bilski).

Limiting the claim to computer readable media does not add any practical limitation to the scope of the claim. Such a field-of-use limitation is insufficient to render an otherwise ineligible claim patent eligible. See id. (citing Diehr, 450 U.S. at 191-92 (noting that eligibility under § 101 "cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.")). To permit such a practice would exalt form over substance and permit Appellant to circumvent the limitations contemplated by § 101.

Rejection affirmed.