BPAI: PTO Should Apply Broadest Reasonable Claim Interpretation to Section 101 Analysis

Ex parte Koo (BPAI 2008)

Acting sua sponte, a BPAI panel recently entered a new ground for rejection against an IBM patent application: That the claimed process is unpatentable subject matter based on the Federal Circuit's recent en banc decision in Bilski. The claim is directed to a method of optimizing relational database queries and appears to be specifically directed to speeding up queries where a table is joined to itself. Although the preamble does focus on a "relational database management system," the body of the claim does not refer to any specific machinery beyond queries, sub-expressions, rows, and sets.

The legal point to consider from this case is that the PTO will apply its "broadest reasonable" claim interpretation during its §101 analysis. Here, the BPAI panel found that the broadest reasonable interpretation of IBM's claim does not necessarily "require computer or machine implementation" and thus that the claim fails the "tied to a particular machine" prong of Bilski machine-transformation test.

"Claim 1 does not recite any steps that necessarily involve machine implementation. While the preamble of claim 1 recites a "system," the "system" of claim 1 is not recited in terms of hardware or tangible structural elements. Rather, the "system" could be a software system, where the elements of claim 1 are implemented solely in software or algorithms. Thus, the nominal recitation of a "system" in the preamble does not transform claim 1 into patentable subject matter under § 101."

The BPAI also found that the claim "does not call for any transformation of an article to a different state or thing, nor does it require any transformation of data or signals." Based on the claimed step of "reforming the query," I would argue that the claim does require a transformation, but that transformation does not satisfy Bilski because the thing transformed (the query) is not "representative of physical objects or substances."

Notes & Comment

• In the appeal, the BPAI overturned the examiner's obviousness rejection based on the absence of a "self join" in the cited prior art.
• The disputed claim:

1. A method for optimizing a query in a relational database management system, the method comprising: evaluating the query to determine whether a sub-expression of the query is being joined to itself and whether a predicate of the query comprises an equality test between a same column of the sub-expression; determining whether a first row set producible from a first set of references of the query to the sub-expression is subsumed by a second row set producible from a second set of references of the query to the subexpression; and reforming the query to eliminate the joining of the sub-expression to itself based on evaluation of the query and determination of whether the first row set is subsumed by the second row set.