Explaining Patentable Subject Matter: The First Bilski Test Cases

RESEARCH CORPORATION TECHNOLOGIES v. MICROSOFT (Fed. Cir. 2010)

One of the first cases that may address the Supreme Court's ruling in Bilski v. Kappos involves RCT's claimed method of halftoning color images. The district court held the asserted claims invalid for failing to satisfy Section 101 of the patent act. The following two claims are representative:

1. A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images.

11. A method for the halftoning of color images, comprising the steps of utilizing, in turn, a pixel-by-pixel comparison of each of the plurality of color planes of said color image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to provide visually pleasing dot profiles when thresholded at any level of said color images, wherein a plurality of blue noise masks are separately utilized to perform said pixel-by-pixel comparison and in which at least one of said blue noise masks is independent and uncorrected with the other blue noise masks.

Microsoft argues that the inventive portion of the claims are directed to the unpatentable mathematical operation of halftoning and the remaining portions use well known technology to preempt use of the mathematical operation.

* * * * *

IN RE BONNSTETTER (Fed. Cir. 2010)

A second pending Section 101 case involves Bonstetter's claimed "method of benchmarking a job." The specification reports that the invention can be implemented "using pencil and paper" and the claim involves a simple four step process:

Claim 1. A method of benchmarking a job comprising:
identifying subject matter experts (SMEs) for the job;
facilitating discussion with the SMEs to identify and prioritize key accountabilities of the job;
giving a survey to SMEs to determine soft skills necessary for superior performance in the job, the survey incorporating the key accountabilities;
combining responses to the survey from multiple subject matter experts into a composite report identifying and prioritizing skills for superior performance for the job; and
interviewing a job candidate relative to said prioritized skills.

Neither the examiner nor the BPAI suggested that the claim would fail under Section 101. However, in its brief to the Federal Circuit, the USPTO indicated that the claim certainly failed the machine or transformation test (as well as being obvious). The USPTO explained the delayed Section 101 analysis based on internal USPTO delay -- the examiner's rejection was entered in July 2007, before the Federal Circuit's Bilski decision. The USPTO brief only mentions the patentable subject matter issue in a footnote (FN7). However, the issue will likely arise -- especially if the obviousness rejection is reversed.

* * * * *

Accenture Global Servs. GmbH v. Guidewire Software, 2010 U.S. Dist. LEXIS 65193 (D. Del. 2010)

In the Accenture case, district court Judge Sue Robinson has requested briefing on whether Accenture's asserted patents are invalid based on Bilski v. Kappos. The court had previously delayed its ruling on Section 101 pending outcome of that case.

Accenture's claim 1 reads as follows:

Claim 1. A method for generating a file note for an insurance claim, comprising the steps of, executed in a data processing system, of:
prefilling a first set of fields with information identifying a file note, said information comprising at least one suffix indicating a type of insurance coverage for a participant in a claim and identification of the participant, wherein the at least one suffix is preselected from one or more types of insurance coverage applicable to the claim;
obtaining a selection of fields of a first set of fields from a user, the selection identifying information for a second set of fields;
displaying in the second set of fields, the information identified by selection of field of the first set of fields;
permitting the user to add data to a predefined text area related to each field of the second set of fields based on the selected fields;
generating a file note that contains the first set of fields, the second set of fields, and the data in the predefined text area;
identifying a level of significance of the file note; and
storing the file note with the identified level of significance in a claim database including file notes associated with the claim.

60 thoughts on “Explaining Patentable Subject Matter: The First Bilski Test Cases

  1. Even though it was pre-Bilski, it’s unbelievable that the Bonstetter case made it to the Federal Circuit. The so-called “invention” is completely ridiculous; it’s exactly the kind of case that gives patent law a bad name, and provides ammo for the anti-patent crowd.

  2. A word of advice: stfu.

    If you actually noticed what about my “good name” I was esplaining, youda see that I was precisely not commenting on exact patent language cause I hadn’t read the specifications of the exact patent language under discussion and I was limiting my comments to a general situation.

    I knows I don’t take such “corrective posts seriously, when they be wrong on what they be correctin.

  3. Ping can you please esplain how you are protecting your “good” name?

    A word of advice, if you are going to comment on exact patent language, please check your post before you hit submit. It is really hard to take your posts seriously when you don’t take 1 minute to proof.

  4. Ping can you please esplain how you are protecting your “good” name?

    A word of advice, if you are going to comment on exact patent language, please check your post before you hit submit. It is really hard to take your posts seriously when you don’t take 1 minute to proof.

  5. Thanks Alun. It was Lord Hoffmann in the House of Lords who told the English judges how much weight to put on decisions of the EPO-EBA. Can’t remember the case name or his exact words but they were to the effect that an EBA opinion is tantamount to (but not the same as) Binding Precedent. Time and again, England has chosen to abandon cherished notions of patent law, compatible with the EPC, only because they are incompatible with the line laid down by the EBA.

    And the EBA indeed feels free to reverse itself (as in whether a party without own interest to oppose has locus to oppose).

    So, we agree, sort of.

    Interesting is how much deference (if any) the German Supreme Court gives to the EPO caselaw on novelty. If the EPO says a claim is novel, does that mean that it is also novel in that EPC Member State called Germany?

  6. Max, you may not be in a common law country, but I can assure you that the English courts treat decisions of the Enlarged Board of Appeals as binding precedent. I have read decisions of the High Court in which they do that. OTOH, if you meant that the Enlarged Board don’t treat their own decisions as binding precedent, then I suppose you are correct.

    Just to show where I’m coming from on this, I’m only qualified in the US, but I am from England.

  7. You did done stick up for me, ping. I just couldn’t resist cuz yr gripe smelled zackly like Cavey’s favorite beef of olde.

  8. The Return of the Son of Caveman

    Hey Sunshine, watch the Caveman references – I done stick up for you plenty when Caveman/RWA/who-know-and-who-cares-how-many other-puppets gets all up in your grill.

    Just cause I want to protect my good name (such as it is being lazy and all), and don’t comment on stuff I haven’t read, don’t be linking me with Caveman.

    It be your business if you want to put out opinions on stuff that you don’t know, or haven’t read. But don’t get uppity just cause I think that doing such aint for me.

  9. “We can only hope that Rader and Newman prevail.”

    My dearest NWPA, do you not remember what Rader said about Bilski? He’s on board the abstract idea choo choo train.

  10. From the district court’s claim construction order:

    16. “[L]evel of significance:”16 “Adding an indicator to the file note for the
    purpose of specifying the importance of the file note, in addition to the text and topic of
    the file note itself.” The indication of the level of significance must be separate from the
    content of the file note itself. Regarding plaintiffs’ contention that “topic” is the same as the “level of significance,” such a construction would violate the presumption in favor of claim differentiation and would effectively read the “level of significance” limitation out of the claim. This result would be especially improper insofar as the prosecution history demonstrates that the “level of Significance” limitation was part of the basis for allowance.

    It would be funny if it weren’t so sad.

  11. be speaking in general terms – personally, the immediate claims are beyond my commenting cause I be lazy and haven’t read the specifications. Them terms might be well esplained and they might be a bunch of hooey. I don’t rightly know. That’s why I haven’t stuck my foot in my mouth and commented either way.

    The Return of the Son of Caveman

  12. How about those that are not:

    stuck in a long ago era

    but at the same time are not willing to accept without a quibble self-serving unsupported gush that:

    patent laws are purposely broad for a reason.

    The European touchstone “technical” is i) much broader than MoT ii) future-proof and iii) razor-sharp, at all levels from newbie Examiner to appeal court level, to exclude pure business methods from issuing as patents.It is also on all fours with the US Constitution, that wonderful document.

  13. Maxie,

    I be speaking in general terms – personally, the immediate claims are beyond my commenting cause I be lazy and haven’t read the specifications. Them terms might be well esplained and they might be a bunch of hooey. I don’t rightly know. That’s why I haven’t stuck my foot in my mouth and commented either way.

    I do rightly know that such blunderbus as “manager’s don’t invent” and “that’s a consulting firm is purely i d i o t i c dross (method of salting learned from good ‘ol Ned) and anti-patent rhetoric from those stuck in a long ago era and “don’t get” that patent laws are purposely broad for a reason.

  14. ping, what is it about “methods of identifying a level of significance of a file note” that is so “new century”.

    Such methods were already around when the US Constitution was framed. And the Framers deliberately and thoughtfully put them outside the frame of patent-eligibility.

  15. You just don’t get it ping

    Ah yes, another blogger hungry to eat their own words…

    The system is not exclusionary. Anti-patent people often confuse that, misconstrue that and label welcoming with “bubble era“.

    Welcome to the new century. Feel free to open your mind.

  16. “and we all know…”

    You just don’t get it ping. You are a bubble era thinker. Consulting firms typically are just managers-for-hire. Managers don’t typically invent.

  17. …and we all know that consulting firms are not allowed to invent….

    It’s not a question of being “allowed” to invent. It’s a question of “why” would they bother to file patents?

    When consulting firms are filing for patents on methods of “identifying a level of significance of a file note”, it’s safe to say the system is being abused. Of course, IBM’s toilet queue patent is probably a better poster child for the problem.

  18. As much as Mooney’s armchair obviousness analyses from mom’s basement or wherever, over the years have annoyed me, in this case, I have to agree.

    Accenture? Filing patents?

    LOL

    They’re a consulting firm for cripes sake.

  19. Ned, EG
    I think you’re both right, but it may be more of a procedural/preservation issue. If an examiner doesn’t raise a 101 issue during prosecution, the BPAI shouldn’t be able to raise it later sua sponte, but of course, I know the CAFC has done so. (I think it was in the Comiskey case.)
    The result is an odd departure from normal litigation rules, where generally unpreserved issues can’t be raised for the first time on appeal. My guess is the rationale for doing so is jurisdictional, but I’m not sure I’m convinced. In any event, you’re certainly right that Bilski, for instance, was a horrible vehicle for crystalizing 101 issues, where there pretty clearly were 103 issues lurking in the background (especially since SCOTUS doesn’t seem to understand the distinction between 101 and 103).

  20. “the Feds and the Board really need to address Section 101 issues only with claims that are otherwise patentable under 102 and 112.”

    Ned,

    I completely agree with you. 101 is a lousy way to screen out badly defined/unmeritorious inventions.

  21. Ned: Sweet. Glad we have some case law now to go along with our MPEP cite (2136.03(III)).

  22. Ya know, the Feds and the Board really need to address Section 101 issues only with claims that are otherwise patentable under 102 and 112. Most of the claims we see are blatantly invalid for reasons other than 101. For example, the Bilski majority opinion appeared to conflate broad claims and obviousness with 101, just as the Supreme Court did in Flook. If the claims are otherwise novel, non obvious, clear and narrowly claim the invention, the Section 101 issues would be a lot easier to decide and provide us all with clear case law.

  23. This one’s like cake:

    “Claim 1. A method for generating a file note for an insurance claim, comprising the steps of, executed in a data processing system, of:
    prefilling a first set of fields with information identifying a file note, said information comprising at least one suffix indicating a type of insurance coverage for a participant in a claim and identification of the participant, wherein the at least one suffix is preselected from one or more types of insurance coverage applicable to the claim;
    obtaining a selection of fields of a first set of fields from a user, the selection identifying information for a second set of fields;
    displaying in the second set of fields, the information identified by selection of field of the first set of fields;
    permitting the user to add data to a predefined text area related to each field of the second set of fields based on the selected fields;
    generating a file note that contains the first set of fields, the second set of fields, and the data in the predefined text area;
    identifying a level of significance of the file note; and
    storing the file note with the identified level of significance in a claim database including file notes associated with the claim.”

    This preempts the abstract idea that prefilling a first set of fields with information identifying a file note, said information comprising at least one suffix indicating a type of insurance coverage for a participant in a claim and identification of the participant, wherein the at least one suffix is preselected from one or more types of insurance coverage applicable to the claim;
    obtaining a selection of fields of a first set of fields from a user, the selection identifying information for a second set of fields;
    displaying in the second set of fields, the information identified by selection of field of the first set of fields;
    permitting the user to add data to a predefined text area related to each field of the second set of fields based on the selected fields;
    generating a file note that contains the first set of fields, the second set of fields, and the data in the predefined text area;
    identifying a level of significance of the file note; and
    storing the file note with the identified level of significance in a claim database including file notes associated with the claim when executed in a data processing system will generate a file note for an insurance claim.

    LOLOLOLOLOL. So ez. Goodbye claim. Tootles.

  24. We can see what we are in for in reading MM and 6′s posts. J. Moore will likely follow.

    We can only hope that Rader and Newman prevail.

    Please Obama no judge that hasn’t practiced as a patent attorney for 10 years.

  25. Microsoft appears to be correct.

    Written out in long hand, the first claim appears to preempt the use of the abstract idea that a blue noise mask which is comprised of a random non-deterministic, non-white noise single valued function will produce visually pleasing dot profiles when thresholded at any level of gray scale images when utilizing a pixel-by-pixel comparison of the image against the blue noise mask.

    The claim:

    “A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images.”

    For you MoTers out there, remember that a blue noise mask is not a machine much less a particular machine.

    “Could a blue noise mask be used on data that is not image data?”

    Of course Broje, but depending on the specific mask and the specific non-image data then it would nearly 100% likely produce garb age data that doesn’t mean anything.

  26. If drafted properly, the claims might have been allowable.

    However, as drafted, there is only one alleged step and it doesn’t do anything. There is a comparison, but no explanation as to what is done with the result of the comparison.

  27. BTW, that claim I cited above also dies under 112, see IPXL holdings. There is no method step recited, and the only limitation is a purely structural one. Is it a method or a product claim?

  28. RCT Claim 1
    1. A method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise mask in which the blue noise mask is comprised of a random non-deterministic, non-white noise single valued function which is designed to produce visually pleasing dot profiles when thresholded at any level of said gray scale images.

    Brother, the carp some lawyers and examiners produce.
    1. A “method claim” without even one step because “by utilizing” is not a step, it’s a limitation telling what kind of a method it is or the objective;
    2. “which . . .” is a grammatical flaw that could be taken two ways — restrictive or non-restrictive ;
    3. You can’t tell WHAT is designed: the method, the comparison, the image, the mask, or the function;
    4. “visually pleasing” is about as definite as “low-IQ patent lawyer”;

    Hard to believe anyone would have the chutzpah to litigate such a claim.

  29. As to the first post’s question of how this stuff gets issued in the first place, note should be taken that the claims are not issued but on appeal after rejection during examination.

  30. Claim 1. A method for generating a file note for an insurance claim, comprising the steps of, executed in a data processing system, of:
    prefilling a first set of fields with information identifying a file note, said information comprising at least one suffix indicating a type of insurance coverage for a participant in a claim and identification of the participant, wherein the at least one suffix is preselected from one or more types of insurance coverage applicable to the claim;
    obtaining a selection of fields of a first set of fields from a user, the selection identifying information for a second set of fields;
    displaying in the second set of fields, the information identified by selection of field of the first set of fields;
    permitting the user to add data to a predefined text area related to each field of the second set of fields based on the selected fields;
    generating a file note that contains the first set of fields, the second set of fields, and the data in the predefined text area;
    identifying a level of significance of the file note; and
    storing the file note with the identified level of significance in a claim database including file notes associated with the claim.

    “identifying a level of significance of the file note”

    This is really the only interesting step in the claim, which is otherwise just a bunch of obvious crrrp. And this step is abstract.

    101 fail.

  31. Claim 1. A method of benchmarking a job comprising:
    identifying subject matter experts (SMEs) for the job;
    facilitating discussion with the SMEs to identify and prioritize key accountabilities of the job;
    giving a survey to SMEs to determine soft skills necessary for superior performance in the job, the survey incorporating the key accountabilities;
    combining responses to the survey from multiple subject matter experts into a composite report identifying and prioritizing skills for superior performance for the job; and
    interviewing a job candidate relative to said prioritized skills.

    This claim is so incredibly obvious that the 101 issue is irrelevant. To be sure, there is no transformation of anything tangible. “Skills” are “prioritized” and job candidates are interviewed “relative” to the skills. Wow. As if everyone prior to these geniuses was just interviewing people randomly. I’d love to see what prior art was submitted by these gooons.

  32. Claim 1. A method of benchmarking a job comprising:
    identifying subject matter experts (SMEs) for the job;
    facilitating discussion with the SMEs to identify and prioritize key accountabilities of the job;
    giving a survey to SMEs to determine soft skills necessary for superior performance in the job, the survey incorporating the key accountabilities;
    combining responses to the survey from multiple subject matter experts into a composite report identifying and prioritizing skills for superior performance for the job; and
    interviewing a job candidate relative to said prioritized skills.

    This claim is so incredibly obvious that the 101 issue is irrelevant. To be sure, there is no transformation of anything tangible. “Skills” are “prioritized” and job candidates are interviewed “relative” to the skills. Wow. As if everyone prior to these geniuses was just interviewing people randomly. I’d love to see what prior art was submitted by these goons.

  33. “Visually pleasing?”

    Eye of the beholder, and all that.

    Give me a break.

    Indefinite, unless “visually pleasing” is a defined term with objective measurement criteria.

  34. Please asks how such stuff gets allowed.

    Decades ago, when I started to be trained as a patent attorney, one of the first things I learned was the consequences of including in claims the word “for”. It was explained to me that it is ambiguous. Examiners see it as not limiting. So the stated function which follws “for” will simply be ignored in all considerations of patentability. The other features of the claim will have to be enough to get you through to issue.

    Quite the contrary, however, when it comes to accusing an infringer. He says that his machine is not “intended for” pleasing, so he lacks an essential feature of the claim so doesn’t infringe.

    Is not that why “such stuff” gets allowed? Nobody is harmed, except perhaps the client of the patent attorney who writes “such stuff”.

    Me, I suspect “pleasing” in the claim would be helpful when it comes to 103 and a kind PTO Examiner. But that’s another story.

  35. “Utilizing a comparison” is an abstraction. That is the only step recited in the claimed methods in the RCT v. Microsoft case. All the other text in the claims is worthless, irrelevant crrrp.

    101 fail.

  36. Looking at claim 1 of RCT, I’m trying to figure out if there is a preemption problem based on whether the transformation of the data would be useful for transforming data that represents anything besides an image. If so, maybe specifying that the data is an image is enough to make this a claim to a photographic process, instead of to the general principle. Could a blue noise mask be used on data that is not image data? I can’t think of a situation where that would be possibly useful. Can anyone think of one?

  37. What the heck is a “visually pleasing dot profile”? How does this stuff get allowed?

  38. I may have difficulty seeing clearly, Dear, but I can assure you I’m not blind. Writing it so doesn’t make it so, you know.

    To continue: Can any reader show me in Diehr or Bilski where the Flook approach to the assessment of obviousness is disapproved of? If there is no such disapproval, are not the lower courts and the PTO supposed to be guided by it (even if it is only obiter)? If so, there’s going to be lots more 103 fun, from now on.

    Dear, you too, unless you are blind. Do you want to “run that through” Diehr?

    Nice word “cabined”. Doesn’t fit but never mind. still a nice word. Makes you feel good, right?

  39. The first example can only be performed by a computer and is therefore a computer implemented method; i.e., a type of Turing machine which transforms digital signals into a particular visual pattern(assuming that support is found in the spec. for such a machine.) In essence a digital signal processing method which should be patentable under 101. However, as far as “visually pleasing”… this likewise depends on what is described in the spec. although “visually pleasing” does seem indefinite without more.

  40. But what about: “Obvious but one has to wonder how did this patent issue in the first place.”

    No, not really. I don’t wonder, because it didn’t issue as a patent.

  41. MaxDrei asks “But is that not the very approach adopted in Flook, and now explicitly approved in Bilski?

    This is the same MaxDrei that blindly thinks that Malcolm Mooney didn’t have his bu_tt kicked and handed to him in the Diehr-leading Bilski decision.

    BILSKI 14

    The US Supreme Court Majority Decision has laid out the law. Here once again is the nail to the coffin: “Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.” Thus, the ascendency and the supremacy of Diehr is established. The law of the land annunciated at “Bilski 14”. Both Benson and Flook are cabined and limited by Diehr, not the other way around.

    Benson and Flook are limited by Diehr. Anytime you want to pull a meaning from either Benson or Flook you need to run that through what Diehr teaches.

    Diehr Wins.

    Inventors Win.

  42. “The specification reports that the invention can be implemented “using pencil and paper[.]”

    Here’s the full sentence found in the application:

    “Can be implemented using paper and pencil, Intranet or Internet.”

    I cannot believe a patent attorney/agent made such statement in an application and provide a wide-open invitation for a 101 rejection.

  43. Agent: the whole point of EPO jurisprudence is that it does not include “Binding Precedent”. Rather, its jurisprudence evolves Darwinistically. But the Decision everybody cites these days is Dun’s Licensing T_0154/04. You can download it from the EPO website by searching in the Caselaw of the Boards of Appeal, and putting the T number (with the low hyphen) into the search field.

  44. That the invention can be implemented “using pencil and paper” doesn’t seem to be a relevant test because just about any computer-related invention can be implemented with pencil and paper.

    Additionally, even when using pencil and paper, the invention is tied to a particular machine, since the broadest reasonable interpretation of “pencil and paper” includes “a machine for using mechanical energy to communicate symbols”?

  45. To all:

    The Prometheus and Classen cases where cert was granted, with the rulings in both cases being vacated and remanded for reconsideration in light of Bilski might also be candidates, along with AMP v. USPTO. Get out your Ouija board or maybe consult the Oracle from Delphi for how the Federal Circuit will rule in this trio of cases after the muddled mess we received from our Judicial Mount Olympus who wouldn’t know patent-eligible subject matter under 35 USC 101 if it hit them square in the face.

  46. In the August 2005 CAFC decision in Datamaze v Plumtree Software claims were invalidated because the term “aesthetically pleasing” was held to be indefinite.

    It may be that the RCT specification contains some standard as to what is visually pleasing and what is not, but as the CAFC noted in its decision what is pleasing to some is displeasing to others. How do you determine what is visually pleasing, as the CAFC noted?

    Anyone knowledgeable about drafting and seeing that language in the claim should go: “Ouch!!” Denitiely words on the list of patent profanities in the light of the CAFC opinion.

  47. Thanks for the response, Max. What is your EPO reference for this?
    Yes Max – I agree, this was the approach of Flook. BTW, I now read the claim – the 112 problem is HORRIBLE!
    What the hell is a “visually pleasing dot profile” ????

  48. Agent, the EPO has already discarded its earlier approach, of deeming the algorithm to be part of the prior art. But is that not the very approach adopted in Flook, and now explicitly approved in Bilski?

    Not a US attorney. Only asking.

  49. Microsoft is suggesting an EPO approach – instead of deciding if the claim as a WHOLE recites patentable subject-matter or is obvious, Microsoft wants to split the claim into pieces, and then analyze the pieces. I believe that this is an EPO approach, and was the approach taken in the cancelled Comisky opinion.
    Thoughts?

  50. ” Claim 1. A method of benchmarking a job comprising:
    identifying subject matter experts (SMEs) for the job;
    facilitating discussion with the SMEs to identify and prioritize key accountabilities of the job;
    giving a survey to SMEs to determine soft skills necessary for superior performance in the job, the survey incorporating the key accountabilities;
    combining responses to the survey from multiple subject matter experts into a composite report identifying and prioritizing skills for superior performance for the job; and
    interviewing a job candidate relative to said prioritized skills.

    Neither the examiner nor the BPAI suggested that the claim would fail under Section 101. However, in its brief to the Federal Circuit, the USPTO indicated that the claim certainly failed the machine or transformation test (as well as being obvious).”

    Obvious but one has to wonder how did this patent issue in the first place. Here is my new method patent:
    1) Identify business procedure
    2) write patent to describe it
    3) ????
    4) Profit

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