By Dennis Crouch
Two cases where the Board found statutory subject matter:
Ex Parte Hu, App. No. 2010-000151 (BPAI 2012). The examiner rejected claims under Section 101. On appeal, the BPAI held that the claimed "computer-readable storage medium" is "directed to a tangible storage medium, which can be read by a computer" and therefore fall "within one of the four statutory classes of 35 U.S.C. § 101" and qualify as patentable subject matter. The Board distinguished from a broader claim of a "computer readable medium" that would not qualify as tangible.
Ex Parte Svendsen, App. No. 2011-012505 (BPAI 2012). The claim included some machine-like elements such as a wired communication interface. However, the machine elements were all known in the prior art. The Examiner had thus rejected the claims as lacking patentable subject matter – noting that the physical ties were merely "extra-solution activity." On appeal, the Board reversed – holding that the "extra-solution activity" doctrine "is more properly applicable to cases where Appellant is attempting to circumvent the prohibition on patenting abstract ideas by adding insignificant and unrelated activity. . . . Here, however, the storing and transmitting steps are clearly integral to the selection and delivery of media previews."
Three cases where the Board found no statutory subject matter:
Ex Parte Rigoutsos, App. No. 2009-010520 (BPAI 2012). The Board affirmed a Section 101 rejection of the claimed "method for annotating a query sequence." The method included three steps: "accessing patterns associated with a database comprising annotated sequences; assigning attributes to the patterns based on the annotated sequences; and using the patterns with assigned attributes to analyze the query sequence." In its analysis, the Board found that the claimed method failed to satisfy the Machine-or-Transformation test and therefore failed satisfy the patentable subject matter test of Section 101. "Appellant's argument does not identify a statutory transformation, and we will sustain the rejection of representative independent claim 1 and its dependent claims 2-17."
Ex Parte Webb, App. No. 2010-008274 (BPAI 2012) The Board affirmed a Section 101 rejection of the claimed "method for playing a card game." The method includes the seeming physically transformative step of "dealing two cards to a player." However, the specification was clear that the cards could be either physical or virtual. In analyzing the meaning of "cards," the Board determined that cards as claimed "are not an apparatus [or a] machine [but rather are] directed to a general concept that is abstract and sweeping as to cover both known and unknown uses of the concept and be performed through any existing or future-devised machinery." This rejection is akin to the Supreme Court's rejection of Morse's telegraph patent that attempted to claim the use of electro-magnetism to transmit a signal – regardless of the machine used to generate, transmit, or decode the signal. Here, the Board found that the "card limitation" added no patentable subject matter hook because it contains "no limitations as to the mechanism for playing the game. The claimed method does not sufficiently recite a physical instantiation. We conclude that Appellant's claims attempt to patent and preempt an abstract idea of the game in all fields, and thus is ineligible subject matter under 35 U.S.C. § 101."
Ex Parte Edelson, App. No. 2011-004285 (BPAI 2012). Edelson's patent application is directed to a "computer implemented method" for creating asset backed derivatives. Other than the preamble, the claims do not recite any particular link to a particular machine. Thus, the Board easily rejected the claim as reciting "no more than the abstract concept of issuing an abstract intangible asset. As in Bilski, a patent including these claims would allow the Appellant to pre-empt the use of this approach in all fields, and would effectively grant a monopoly over an abstract idea."