Patentable Subject Matter Redux: Bilski 2009

In February 2009, the Board of Patent Appeals (BPAI) issued nine decisions that touched on Bilski and patentable subject matter under Section 101 of the Patent Act. In eight of the cases, the BPAI either affirmed an examiner’s Section 101 rejection (five cases) or entered a new ground of rejection under Section 101 (three cases). In the remaining case, the BPAI remanded – asking the examiner to consider wether the claims were patentable under Section 101. All nine cases were related to software or electronics type applications.

In Ex Parte Motoyama, Appeal 2008-2753 (Bd. Pat. App. Int., Feb. 27, 2009), for instance, the BPAI reversed an examiner’s Section 103(a) obviousness rejection, but entered a new ground of rejection as failing the Bilski test of patentable subject matter under Section 101 of the Patent Act. The Motoyama claim (owned by Ricoh) reads as follows:

1. A method for a monitoring device to obtain an identifier of a monitored device, comprising:  obtaining manufacturer information of the monitored device using a hierarchical approach by comparing a response to a query of the monitored device to an anticipated response; accessing the monitored device using a first method to attempt to obtain the identifier using the manufacturer information; if the identifier is not obtained in the accessing step, obtaining a MAC address of the monitored device as the identifier; if the MAC address is not obtained, generating the identifier using a second method; and storing the identifier of the monitored device for use by the monitoring device.  

The panel recognized that the claim language did refer to a “monitoring device.” However, according to the BPAI, the method “is not recited in terms of hardware or tangible structural elements. Rather, the method could be implemented on a software system, where the elements of claim 1 are implemented solely in software or algorithms. Thus, the nominal recitation of “for a monitoring device” in the preamble does not transform claim 1 into patentable subject matter under 35 U.S.C. § 101.” Likewise, none of the steps call for transformation of an article.

Although the BPAI’s focus on Bilski has been primarily in software applications, there are many that see a potential for Bilski to spill-over into other areas of technology. Right on this frontier are applications focusing on methods of diagnosing. Filing a couple of days early, Medistem has submitted its brief supporting certiorari in the Bilski case. (Briefs in support of certiorari are due Monday, March 2, 2009). Medistem explains to the court Bilski also limits they types of patents that it can obtain over newly invented predictive tests

The Federal Circuit’s limiting the scope of patentable subject matter for “process” inventions in Bilski casts a cloud of uncertainty as to whether Medistem and other biotech companies can continue to protect with patents their inventions relating to methods of diagnosing causes of diseases and methods of selecting beneficial treatment protocols. Medistem fears that should biotech companies lose the ability to obtain enforceable patent protection on diagnostic and treatment methods, the ability to attract investment capital will sharply decline, and as a direct result the incentive to search for better ways to diagnose causes of diseases and find more effective treatments will decline. Medistem is not alone in its view. Addressing this issue in his dissent from the en banc court’s opinion, Circuit Judge Rader cogently noted that excluding patent protection for methods of using discovered biological or physiological correlations will “undermine and discourage future research for diagnostic tools.” Bilski, 545 F.3d at 1014.

Medistem’s primary problem with the Bilski test is that it is the “exclusive test” for determining patent-eligibility of claimed processes. In that sense, the company argues, the rule limits the statute beyond prior Court precedent and beyond Congressional intent.

Notes

24 thoughts on “Patentable Subject Matter Redux: Bilski 2009

  1. “As a humple Yoorpean, can anyone explain how this recently granted US claim satisfies Bilski”

    It doesn’t. Nor does it satisfy many of the other statutory requirements for patentability.

    Nothing unusual. Just another Examiner failing to do his/her job in a spectacular fashion.

  2. As a humple Yoorpean, can anyone explain how this recently granted US claim satisfies Bilski?

    1. A method of providing Internet access comprising:

    establishing a communication link with a mobile computing unit;

    using the communication link to authenticate a user of the mobile computing unit by providing a secure link between the mobile computing unit and a global authentication database

    and

    presenting a logon web page to accept a user name and a password from the user to be submitted to the global authentication database,

    the user being unaffiliated with Internet Service Providers (ISPs);

    using the communication link to provide Internet access to the user of the mobile computing unit by negotiating with one or more said ISPs and selecting one of the one or more ISPs to provide the Internet access to the user of the mobile computing unit;

    and using a policy manager to provide various policies that govern user of the system by the user, at least one of the policies relating to service levels.

  3. MM wrote:
    >>Unfortunately, these claims have very little >>or nothing to do with any “technology.”

    I think you meant to say “iron-age technology.”

  4. >>Unfortunately, these claims have very little or >>nothing to do with any “technology.”

    I think you meant to say: “nothing to do with any iron-age technology.”

  5. Bio&Info: “Mr. Mooney, Are you telling me you see no need for the development of means for distinguishing which cancer you have in order to choose between treatments?”

    No. I’m telling you that encouraging the patenting of such means is a counterproductive way to address the need for improved access to the most effective prostate cancer therapies. It’s one thing for a cell phone manufacturer to deal with a patent thicket. I take diseased and dying people more seriously than that. Yes, you heard right. I take diseased and dying people more seriously than I do the interests of companies trying to patent methods of deciding which pre-existing therapy is “more likely” to work on given patient. Perhaps you’ve seen some of the recent FDA discussions on the same topic? They use an interesting word to describe the “research” being done by some of these companies (mostly involving re-frying data from previous clinical studies which were designed for different purposes). Hint: the word wasn’t doo-doo or crap.

  6. “”inventions relating to … methods of selecting beneficial treatment protocols”
    the patent bubble fostered the creation of a pseudo-innovative patenting field relating to “selecting protocols”. Folks, this represents “innovation” only insofar as it is a “new” way of using patents to obtain money from people who are (1) actually trying to treat people or (2) developing new treatments, i.e., it’s a scam.”

    Mr. Mooney, Are you telling me you see no need for the development of means for distinguishing which cancer you have in order to choose between treatments?
    Just imagine you have prostate cancer and, since in your world there is no way of determining what kind of prostate cancer you have, you are treated, practically at random, with one after another of chemotherapy protocols that won’t work with your subclass of cancer…perhaps you have never known anyone who’s had to undergo chemotherapy…it’s brutal and ravages the human body, even when it is curative.
    This example easily extends to many other conditions.

  7. “The broadest reasonable interpretation of the claims must also be consistent with the interpretation that those skilled in the art would reach.”

    That is very quaint. I’ve heard that baloney trotted out a million times. Unfortunately, these claims have very little or nothing to do with any “technology.” Where is the “art” in “obtaining”, “accessing” “querying” and “storing”?

    There isn’t any. Of course you want the PTO to “read in” limitations into the claims where none exists. Everybody wants that. This gets back to the arrogance I referred to earlier. Everybody wants to be treated this way but historically only claims in a few art units were given such leeway. Now the fantasy is ending and it’s BOO HOO HOO HOO HOO HOO HOO!!!!!

    Grow up and write some decent claims.

  8. “Why? The claim isn’t limited to any method of storing the identifier, nor is it limited to any method of obtaining the identifier other than that two “queries” are required.”

    During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” The broadest reasonable interpretation of the claims must also be consistent with the interpretation that those skilled in the art would reach.

    When your interpretation starts to be reasonable, consistent with applicant’ specification, and consistent with the interpretation that those skilled in the art would reach, we can begin to have an intelligent discussion on the issues.

    However, from your responses, it seems that you are nothing more than a troll, in which case, I doubt that your analysis will ever employ a reasonable claim construction.

  9. Is Bilski’s first name “Bernad” as in the Supreme Court, or Bernard as in the Federal Circuit?

  10. “Those are 103 arguments, MM. ”

    I agree that the points I raised are relevant to 103 but they are, in fact, 101 arguments. To the extent the claim recites a “device” and simply handwaves around every other aspect of this alleged invention, it does not matter WHAT (human or machine) is doing the querying. The claim is a claim to an abstract algorith, pure and simple. Throwing in bogus limitations re “device” and “storage” does not alter the analysis.

    “Explain to me how you are going to store an identifier of a monitored device using a human brain.”

    Why? The claim isn’t limited to any method of storing the identifier, nor is it limited to any method of obtaining the identifier other than that two “queries” are required.

  11. “You could easily make one so it can be stored within a human brain. There are several machines on the market that would probably suffice for this intended use.”

    I’ll ask the same question I asked earlier: Explain to me how you are going to store an identifier of a monitored device using a human brain. Monitoring some “brain wave” is one thing. Being able to retrieve stored information, within a brain, that can be used to identify a particular monitored device is another thing entirely.

    The people at the USPTO must be reading too many science fiction novels.

    Still, I’ve seen this type of analysis before. Ask a ten year old how an automobile engine works or how a telephone works and you pretty much get the same type of rigorous analysis — just make up something and hope that nobody calls you out on it.

  12. “I’m not aware of any mind-reading monitoring devices, so it cannot be stored within a human brain. ”

    You could easily make one so it can be stored within a human brain. There are several machines on the market that would probably suffice for this intended use.

    Your very first premise fails. I’m guessing the rest of your nonsensical argument follows it down the tubes but I refuse to analyze further. Insert 25 cents to continue.

  13. Would this claim pass the BPAI in view of Bilski?

    1. A method for a monitoring device to obtain an identifier of a monitored device, comprising: having a monitoring device obtain manufacturer information of the monitored device using a hierarchical approach by comparing a response to a query of the monitored device to an anticipated response; said monitoring device accessing the monitored device using a first method to attempt to obtain the identifier using the manufacturer information; if the identifier is not obtained in the accessing step, having the monitoring device obtain a MAC address of the monitored device as the identifier; if the MAC address is not obtained, having said monitoring device generate the identifier using a second method; and having said monitoring device store the identifier of the monitored device.

  14. As I very lightly skimmed MM’s latest bizarre ranting against information processing, it occurred to me that the last time I attended a lecture at a university by a bio-tech professor that he told us that the most interesting part of bio-tech was trying to understand the information processing functions of the biochemical molecules.

    He said the future of bio-tech was understanding the information processing functions of the molecules. So, I can image that soon bio-tech companies may want to try to claim a molecules that perform an information processing function. Not sure how all this would look as it has been a long time since I took chemistry and biology in college.

    I wonder if anyone has any good references to the information processing aspects as applied to the chemical arts. It would be interesting to see MM’s mind melt–again. And it would probably illustrate how bad law such as Bilski creates more problems than it solves.

  15. “Bilski is the answer to that arrogance.”

    Amen. And addressing arrogance is one of the key functions of the judiciary.

  16. Along with step back’s request, I am also wondering how people are responding to the new Bilski-ish 101 rejections and if they found any arguments to be effective or found any ways to get around them?

  17. “Including today’s temperature?”

    Explain to me how you are going to store an identifier of a monitored device using today’s temperature.

    It seems that it COULD be done, but to do so would take a considerable amount of hardware to maintain the temperature of something(?} so that it could be subsequently used by the monitoring device (the temperature is fluctuating). Regardless you are going to have some transformation or a machine involved.

    You would think that the BPAI hires technically competent APJs — if you did, you would be wrong.

  18. MM wrote: “The crxp never ceases to amaze…. Bilski is the answer to that arrogance.”

    Those are 103 arguments, MM. I think you meant to say “KSR is the answer to that arrogance.”

  19. “Rather, the method could be implemented on a software system, where the elements of claim 1 are implemented solely in software or algorithms.”

    I don’t think the statement above is legally correct.

    Only claim 1 was rejected under 35 USC 101. Presumably the BPAI didn’t have any issue with the rest of the claims under appeal. In particular, claim 2 adds a fairly minor limitation to claim 1, but apparently that limitation is enough to make the claim statutory.

    Claim 13 is just a mechanical translation of claim 1 to recite a device.

  20. Being that these BPAI decisions are works-in-progress; because the Applicant has not yet had a chance to respond to the new Biski-based ground of rejection, the question to you serious practitioners out there is: How should the Applicant respond? Have you found a technique that is effective?

  21. LFFATBPAI “Everything I think of that is “machine readable” also qualifies as statutory subject matter under 101 ”

    Including today’s temperature?

    “I’m not aware of any mind-reading monitoring devices”

    Try using Google. You’ll find some interesting stuff.

    But I’ll ask the same question I asked in the previous thread: why was this device claimed as a method? That is surely what is happening here. I’ve been told over and over again that method claims are less desirable than composition claims because they are harder to enforce. So why bother claiming this device as a method?

    It’s a rhetorical question. Sort of a Socratic thing going on here.

  22. Ex Parte Motoyama

    The crxp never ceases to amaze. A lot of “ifs” in that claimed “method” which is not really a method at all but some sort of effed up decision tree. Who performs this method? A “device”? Does the device read the patent, too, before it decides to infringe?

    The idea that it matters whether a claim such as this one is patentable is the biggest self-serving lie since “everybody needs a house” and “everybody would be better off if they could invest in the stock market instead of putting money in social security money.” The only people who care are patent attorneys and their clients, i.e., the creators and exploiters of the legal instruments. Everybody else just takes a bath in the waste.

    Let’s look at this claim in the context of what happens if the identifier is not obtained in the accessing step AND the MAC address is not obtained. In that case, the claim requires only the following steps: (1) obtaining manufacturer information of the monitored device using a hierarchical approach by comparing a response to a query of the monitored device to an anticipated response; (2) accessing the monitored device using a first method to attempt to obtain the identifier using the manufacturer information; (3) generating the identifier using a second method; and (4) storing the identifier of the monitored device for use by the monitoring device. Can someone tell me what the difference is between the “invention” described by this abstract method claim and the methods used by anyone throughout history to identify the nationality of a stranger? The answer is that there isn’t any. And yet a system was created and thrived whereby such claims are routinely filed and the people who file the claims expect them to be treated very seriously. Bilski is the answer to that arrogance.

    “inventions relating to methods of diagnosing causes of diseases”

    These are still perfectly patentable. As has always been the case, practitioners have to beware of mental stepping their way into a LabCorp problem. But Medistem’s warnings are just the usual red herrings (“nobody will discover new ways of diagnosing until Bilski is overturned!”). Bogus. Bilski changes nothing, if your claim is well-drafted.

    “inventions relating to … methods of selecting beneficial treatment protocols”

    LOL. Remember when people used to actually invent treatment protocols themselves? I guess there’s no business in that anymore. It’s too hard or something. But the patent bubble fostered the creation of a pseudo-innovative patenting field relating to “selecting protocols”. Folks, this represents “innovation” only insofar as it is a “new” way of using patents to obtain money from people who are (1) actually trying to treat people or (2) developing new treatments, i.e., it’s a scam.

  23. “Rather, the method could be implemented on a software system, where the elements of claim 1 are implemented solely in software or algorithms.”

    In 30 years of dealing with computers I have never seen a method “implemented soley in software” capable of performing any step.

    For example, how does something implemented solely in software perform the step of “storing the identifier of the monitored device for use by the monitoring device”?

    I’m not aware of any mind-reading monitoring devices, so it cannot be stored within a human brain. As such, the storing has to be done on something machine readable. Everything I think of that is “machine readable” also qualifies as statutory subject matter under 101 and the act of generating an identifier and storing the identifier on something qualifies as a transformation. As such, the transformation test under Bilski is met.

    However, it is asking too much of the BPAI to actually think these things through.

    Regardless, anybody want to bet that the applicant is able to overcome this 101 rejection in under 5 words?

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