Ex parte Bo Li, Appeal 2008-1213 (BPAI 2008)
Li's patent application claims a computer program product stored on a computer readable memory adapted be executed to implement a report generation method. The computer program product is a typical Beauregard claim. In what appears to be the first decision to cite the new Bilski machine-or-transformation test of patentable subject matter, the BPAI overturned the examiner's Section 101 rejection – finding that the product claim includes statutory subject matter.
Here, the examiner argued that the claimed computer program product could not be patentable because it did not produce "a useful, concrete and tangible result." On appeal, the BPAI held that Bilski expressly rejected that statement from State Street. However, because Li's claim was for a product, the BPAI did not apply the Bilski machine-or-transformation test to determine patentability. Rather, the court merely relied on the notion of that claimed products – even when written as Beauregard claims – are patentable.
"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. 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."
Li won the Section 101 battle, but still lost the war – the BPAI affirmed the examiner's contention that the claim was also unpatentable as obvious.
- Thanks to Amber Rovney of Weil's Austin office for first noting the opinion.
- Assignee is IBM, but originally filed as a Korean Application.
- The approved-of claim is drafted as follows:
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.