I commented earlier on the continued transformation of the Board of Patent Appeals & Interferences (BPAI) from a somewhat secret organization to one that is engaging with and accountable to the public.
With the advent of publication of applications, the BPAI has become a more public body and continues to move toward the goal of providing sound decisions that both adjudicate the particular issues in question and provide further guidance to other applicants and examiners. [LINK].
Now, the Board has begun a new initiative publishing “informative opinions.” While not precedential, these opinions are selected because they are thought to provide useful guidance to both Patent Examiners and Practitioners. BPAI Informative Opinions;
Ex Parte Bilski (BPAI 2006).
The Board held in Lundgren that the “technical arts” test is not a separate and distinct test for statutory subject matter. Although commentators have read this as eliminating a “technology” requirement for patents, this is not what was stated or intended.
Bilski’s patent is directed at a method of managing risk at a reduced cost. The claims at issue are not tied to any physical structure; do not recite a physical transformation or any electrical, chemical, or mechanical act; and could be performed entirely by human beings without any outside aid. In its 71 page opinion, the board determined that the method was not statutory subject matter under Section 101, and prepared for a CAFC hearing:
In questionable cases, we feel that the public interest is best served by making a rejection. The Federal Circuit cannot address rejections that it does not see. . . . It would be helpful if the Federal Circuit would address this question directly.
(1) Mental Steps and Transformation: According to the Board, not every series of steps fit within the process requirement of section 101. A section 101 process necessarily transforms some physical subject matter to a different state or thing. A claim which can be entirely performed by a human can “be statutory subject matter if there is a transformation of physical subject matter from one state to another.” The claims here did not, however, provide any transformation of matter. Since the claim does not require a computer, there is not even an “implicit transformation of electrical signals from one state to another.” The claims do recite a transformation “risk position” — but a non-physical transformation does not count.
(2) Abstract Idea: The Board considers the ‘abstract idea test’ to be a ‘backup’ to the transformation test — noting that “[t]here may be times where it is easier to analyze the subject matter as an abstract idea” In this case, Bilski’s claims are both non-transformative and abstract.
Claim 1 describes a plan or scheme for managing consumption risk cost in terms of a method. It is nothing but an disembodied “abstract idea” until it is instantiated in some physical way so as to become a practical application of the idea.
Furthermore, the claim is also abstract because it covers “any and every possible manner of performing the [conceptual] steps. Thus, it can also be said that the claims ‘preempts’ the concept in the claimed methods.”
(3) Result that is Useful and Concrete and Tangible: If a method is abstract, it cannot have a concrete and tangible result because they are opposites. Concrete and tangible require “some sort of physical instantiation” that is not found here. Likewise, although the claimed method may be useful in the business sense, “a method that has not been implemented in some specific way is not considered practically useful in a patentability sense.”
Concurrence by McQuade:
The quest for a bright line test for determining whether a claimed invention embodies statutory subject matter under 35 U.S.C. § 101 is an exercise in futility. . . . Per se rules or tests, while arguably easy to apply, simply do not afford the flexibility needed to keep pace with new developments in technology and the law.
Considered collectively, these are powerfully persuasive factual indicators (not tests) that the method recited in claim 1 is, at its core, a disembodied business concept representing nothing more than a non-statutory abstract idea. That the “initiating” and “identifying steps recited in the claim are drafted as acts required to be performed is of no moment. Given the full context of the claim, these acts are nominal in nature and merely serve to superficially couch the appellants’ abstract
idea in a method or process format.