By Dennis Crouch
Ex parte Thomsen (PTAB 2012) (App S.N. 11/314,709)
SAP's patent claims are directed to a "method to determine statistics for a field of a database table." In the appeal, the claim in question has three particular steps:
- determining that the field of the table is associated with a field of a check table;
- determining a relationship between a number of distinct values of the field in the table and a number of distinct values of the field in the check table; and
- determining the number of distinct values of the field in the table based on the relationship and on the number of distinct values of the field in the check table.
In its recent decision, the PTAB affirmed the examiner rejection of this claim on statutory subject matter grounds. The panel wrote:
Considering the language of independent claim 1 as a whole, we agree with the Examiner that the process of claim 1 does not meet Bilski's "machine or transformation test" and could be performed within the human mind or by a human writing on a piece of paper. The claim recites a number of steps that are not tied to a particular machine -- the claim does not recite any machine performing the functions of the steps, e.g., a processor. Nor do these steps transform data into a different state -- the claim simply recites: (1) "determining that the field of the table is associated with a field of a check table;" (2) "determining a relationship between a number of distinct values of the field in the table and a number of distinct values of the field in the check table;" and (3) "determining the number of distinct values of the field in the table based on the relationship and on the number of distinct values of the field in the check table. See In re Bilski, 545 F.3d 943, 962-63 (Fed. Cir. 2008) (en banc), aff'd sub nom. Bilski v. Kappos, 130 S.Ct. 3218 (2010).
Here, to the extent any transformation takes place, the transformation is of one type of data into another type of data -- (a) determining an association, (b) determining a relationship, and (c) determining a number. This is not a "transformation or reduction of an article into a different state or thing constituting patent-eligible subject matter." In re Bilski, at 962; see id. at 963-64 (discussing patent-eligible data transformations). More importantly, the claim is entirely devoid of any mention of a "machine." While Appellant urges that "[t]he claimed database tables, fields and values necessarily involve the use of a computer or machine" in actuality the "determining" steps could be accomplished within one's mind or utilizing a pen and paper.
Our reviewing court guides that "a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101." CyberSource, 654 F.3d at 1373. Because we conclude that the scope of claim 1's method steps covers functions that can be performed in the human mind, or by a human using a pen and paper, we conclude that unpatentable abstract mental processes fall within the subject matter of claim 1.
In the past year, the BPAI has similarly cited CyberSource in several dozen cases.
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Ex parte Battles (PTAB 2012) (App. S.N. 10/859,029)
HP's patent application is directed to a "computer-readable medium that stores a program that, when executed by a digital camera causes the camera to perform" various functions associated with a histogram of light information from a photo-sensor on the camera.
The PTAB has affirmed the examiner's Section 101 rejection – finding that the claim unduly includes patentable subject matter because the computer-readable medium might be a signal.
Appellant contends that the "computer readable medium," as recited in claim 21, is drawn to statutory subject matter because the computer readable medium is further recited to store programs, and that transitory, propagating signals cannot store programs. We agree with the Examiner that the "computer readable medium," as recited in claim 21 and as construed in light of the disclosure is drawn to non-statutory subject matter.
In the originally filed disclosure, Appellant discloses, "a 'computer readable medium' can be any means that can store, communicate, propagate, or transport the data ... [and it] can be, for example, but not limited to ... infrared... or propagation medium now known or later developed." Per the originally filed disclosure, the claimed "computer readable medium" can be a transitory, propagating signal and transitory, propagating signals are ineligible. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).
Nuijten continues to be regularly cited by the PTAB – with almost 500 citations in the past five years.
