In three recent cases, the BPAI has continued its trend of applying the Federal Circuit's en banc Bilski decision to reject software-style method claims as lacking patentable subject matter. The BPAI is not asserting that software is unpatentable -- the Board is simply failing to find ties to a particular machine; transformation of a physical object; or transformation of articles "representative of physical objects." In two of the cases, the BPAI applied its power to issue new grounds of rejection -- raising the Section 101 issue sua sponte.
In ex parte Gutta (BPAI 2009), Gutta (Philips) claimed a "computerized method performed by a data processor." The claims include elements such as "a history;" "a plurality of clusters;" a "target user;" and "preferences of a third party." The final step in the method involved "displaying" a score. In Bilski, the Federal Circuit found that the transformation of data into a visual depiction could render a claimed method patentable. Here, however, the generically worded step was merely "post-solution activity [insufficient] to impart patentability to a claim involving the solving of a mathematical algorithm."
In ex parte Barnes (BPAI 2009), Barnes (Landmark Graphics) claimed a "fault identification method" that obtains seismic data and determines "a planarity value for discontinuities" in each "analysis window" in the seismic data. In this case, the BPAI entered a new ground of rejection under Section 101. The BPAI recognized that the claim called for both gathering and analyzing data, but those steps - without explicit limitations of how they are done - are insufficient to render the claim patentable.
In ex parte Becker (BPAI 2009), Becker and his fourteen co-inventors (Siemens) claimed a "method for maintaining a user profile." As in Barnes, the BPAI entered a new ground of rejection under Section 101 -- finding again that the method claims failed to satisfy the machine or transformation test.
Read the Opinions
- Ex parte Gutta (BPAI 2009)
- Ex parte Barnes (BPAI 2009)
- Ex parte Becker (BPAI 2009)
- Ex parte Cornea-Hasegan (BPAI 2009)
- Ex parte Bo Li (BPAI 2008)
Note: This was originally posted on Jan 26, but was inadvertently un-published. I this version is slightly modified to take-into account an insightful comment regarding the transformation of data into a visual depiction.
