Recent patentable subject matter decisions at the BPAI

By Dennis Crouch

Here are several recent BPAI decisions on patentable subject matter eligibility.

New Rejection in Answer: Examiner’s Answer raised new a new Section 101 issue, but applicant failed to respond in the reply brief. BPAI Holding: “We therefore summarily sustain this rejection.” Ex Parte Maeng, 2011 WL 6012458 (BPAI November 30, 2011).

Delay in Adjudication: L’OREAL claims a “method for recommending a beauty product” that includes several steps, including applying a beauty product to a person and then seeing how the person looks under various simulated lighting environments. The examiner rejected the claim as unpatentable based upon its failure to satisfy the machine-or-transformation test. On appeal, the BPAI reversed the rejection, holding that “a full analysis as outlined in Bilski v. Kappos … should have resulted in a finding by the Examiner that the claimed subject matter either was or was not an abstract idea, and hence, respectively, that the claimed subject matter was not patent eligible or was patent eligible in this particular instance.” This case highlights a problem with the growing backlog at the BPAI. The Examiner’s final rejection was mailed in 2009 and she mailed the Examiner’s Answer in February 2010, a few months prior to the Supreme Court’s decision rejecting the machine-or-transformation test as a determinative test of patentable subject matter eligibility. Ex Parte Hessel, 2011 WL 6012477 (BPAI November 30, 2011)

CyberSource Rejections: Citing the Federal Circuit’s recent decision in CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011), the BPAI has affirmed a Section 101 rejection of an IBM application that claims a “computer-implemented method for partitioning a domain dataset.” Despite the “computer implemented preamble, the BPAI held that the claimed process was not patent eligible because it “could be performed by a human writing on a piece of paper.” The Board quoted CyberSource for the proposition that “a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101.”

IBM had also include claims directed to a “system for partitioning” that included “nominal recitations of conventional hardware in the body of the claim (e.g., ‘a memory’ and ‘a processor’).” As instructed by CyberSource, the court considered the “underlying invention for patent-eligibility purposes” rather than particular nominal claim limitations. Here, the BPAI found that the true invention was the process and that the system claims were simply reformulated versions of the method and therefore, that the system claims should be interpreted as process claims.

In analyzing the underlying invention of independent “system” claims 26, 27, and 28 as a process, we again conclude that the scope of the recited functions (steps) covers functions that can be performed in the human mind, or by a human using a pen and paper (e.g., claim 26: “establish an evaluation function” and “partition said domain subset”). Therefore, we conclude that unpatentable mental processes fall within the subject matter of independent claims 26-28.

IBM also include “Beauregard claims” directed to an “article of manufacture” comprising “a computer readable medium.” The BPAI likewise found those claims unpatentable under 35 U.S.C. §101 as interpreted by CyberSource. Ex Parte Vilalta, 2011 WL 6012377 (BPAI November 29, 2011). On the flip side of this, the BPAI has also been holding that claim scope must be determined before Section 101 analysis can be complete. See Ex Parte Black, 2011 WL 6012476 (BPAI November 28, 2011).

Software Not Patentable: OPNET Tech’s patent application is directed toward a “network monitoring system” that includes a set of “collectors”, “analyzers”, and “reporters” as well as an “automated engine” configured to control the applications in achieving a target task. In the specification, the applicant wrote that each element of the system could be created in software and the Board concluded that “the invention can exist solely as software.” Citing the Federal Circuit’s 1994 Warmerdam decision, the Board held that a claim that covers a “purely software embodiment” cannot be patentable subject matter. Ex Parte Cohen, 2011 WL 6012432 (BPAI November 29, 2011). On the flip side, the BPAI held that a “web based system” is patent eligible because such a network based requires “more than software per se, because a web, upon which a web-based system is based, is physical, in addition to software, in that it requires computers and routers and telecommunications equipment to operate.” Ex Parte Vogel, 2011 WL 6012447 (BPAI November 21, 2011).

Providing, Receiving, and Manufacturing: Small paper manufacturer Grays Harbor has seemingly spent a small fortune prosecuting its patent application No. 09/849,504. The invention relates to their computerized system for processing paper and was filed back in 2001. One step of rejected method claim 11 was written as follow “receiving a promotions order from a third-party advertiser to place promotional material on an enclosure…” OK, nothing brilliant in this limitation (or another limitation involving “providing instructions”) with regard to inventiveness, but the Board’s rejection was odd – holding that that the claim’s “recitation of the steps of receiving and providing are merely abstract ideas because each step is recited in the future tense of ‘to place’, ‘to create’, ‘to deliver’, and hence is only contemplated, rather than executed.” Ex Parte Quigg, 2011 WL 6012448 (BPAI November 22, 2011)

87 thoughts on “Recent patentable subject matter decisions at the BPAI

  1. Ned,

    how you twisted the argument and erected the strawman. This gets really old fast and is annoying as Hades.

    The case, of course, is In re Bilksi that held the MOT to be the exclusive test.

    Is there a reason you would use a case that is not good law in attempting to back up your position?

    I juxtapose your two quotes to highlight your own “games.” I am not sure if you realize how shallow your posts show you to be, or why you seem to care so little about effective advocacy.

    Accuse.
    Umbrage.
    Poor legal logic.
    All so rather juvenile.

    Is there any wonder why you continue to be mauled in these 101 discussions?

  2. NED:”Now, the Federal Circuit drew the natural conclusion that anything that simply manipulates abstract concepts such as data and risk is itself abstract. But is this right?”

    AI: WHT? Oh God here we go again. Cite please?

    NED: What is your view?”

    AI: You are FOS.

  3. Ned, I dont know why the Supreme Court says math is abstract and therefore one of the Court created Judicial exceptions. And I really don’t care. My job as an Actual Inventor is to make sure my inventions submitted for patents can’t be declared nothing more than math equations when reduced to practice.

    Now that you have tacitly admitted you/we EVERYONE knows WHY Bilski’s claims were called abstract by SCOTUS, why don’t you stop asking WHY, like a three year old, to every answer given to you?

  4. Sockie, I have been moving all your posts to trash where they belong.  However this one intrigues me.

    The MOT is not THE test, according to the Bilski court.  However, they went on to state that the hedging method of claim 1 was abstract.  Why?

    I just pointed out that Bikski claim 1 was not directed to a machine, an article of manufacture or a composition of matter, nor any process of using or making same.  Rather the claims had nothing to do with machines, etc.  I speculated that this just might be the reason they were "abstract."

    Think about it.  Why are mathematical algorithm's abstract.  They manipulate numbers.  Numbers are abstract.

    Why are claims like the Bilski claims abstract?  The SC said they were abstract (in the same way?) as mathematical algorithms.  Why?  Because they manipulate abstract concepts such as price, risk, and the like?  

  5. So Ned, you are saying that all nine justice in Bilski did not reject MOT as THE test?

    Jsut want to check on what you think that you are saying – and what you think is “twisted” – cause it sure looks like you are the one twisting things here.

  6. AI, "According to the Supreme Court, the " concept of hedging", described by Bilski in claim 1 was reduced to nothing more than a mathematical formula."

     I think you misread Bilski on this point.  I think they suggested that the addition of the mathematical formula was not enough to make the subject matter of claim 1 non abstract.  

    They declared claim 1 to BE abstract.  It described "the" basic hedging algorithm (process) just as a mathematical algorithm describes the process steps to manipulate data.  They said the two were equivalent.  The hedging process was abstract.  Period.

    But why?

    And for that matter, why are mathematical algorithm's abstract.  They were simply declared to be such in Benson.

    The Supreme Court seems very reluctant to explain themselves.  Very.

    Now, the Federal Circuit drew the natural conclusion that anything that simply manipulates abstract concepts such as data and risk is itself abstract.  But is this right?

    What is your view?

  7. Quinn acolyte, why do you continuously twist arguments and erect strawmen?  Any substantive response to you would consist almost entirely of pointing out just how you twisted the argument and erected the strawman.  This gets really old fast and is annoying as Hades.

  8. Ned, all inventions start out as abstract mental concepts and thus need to be reduced to practice.

    According to the Supreme Court, the ” concept of hedging”, described by Bilski in claim 1 was reduced to nothing more than a mathematical formula. Math formula’s are considered a Court created judicial exception to statutory subject matter. End of story.

    Now stop this ridiculous extrapolation to your paid blogging points. It’s an insult to the law and all that are sincerely trying to follow it.

  9. Ned: ” What are we to take from this? I we to assume that all business methods that do not otherwise passed MOT, i.e., those that are not tied to technology, are abstract? That is a reasonable conclusion. ”

    AI: No, that is an insane conclusion. Because it is based numerous false assumptions.

    Let me correct a few of them for you Ned.

    1. MOT is not the exclusive test and therefore NOT required.

    2. Methods, business, medical, chemical or otherwise, are not required to pass the MOT.

    3. Technology is not tied or limited in definition to the MOT of the 1800’s. The iron age.

    Now, I predicted in your last 300 post thread that you would come back and start arguing these same defeated points over again. For you to keep doing his is the true definition of insanity, and/or solid evidence you are a paid shill on this topic.

  10. we to assume that all business methods that do not otherwise passed MOT, i.e., those that are not tied to technology, are abstract? That is a reasonable conclusion.

    Ad infinitum boredum.

    Ned – ALL NINE JUSTICES SAID MOT was not determinative.

    How can you be so obtuse?

  11. AI, just one more observation, the declaration by the Supreme Court in Bilski that the notoriously old hedging process was abstract is the same thing as the Supreme Court declaring in Benson that mathematical algorithms were abstract. Actually Bilski actually said this in so many words.*

    What are we to take from this? I we to assume that all business methods that do not otherwise passed MOT, i.e., those that are not tied to technology, are abstract? That is a reasonable conclusion.

    From Bilski:

    “”Hedging is a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.” 545 F.3d, at 1013 (Rader, J., dissenting); see, e.g., D. Chorafas, Introduction to Derivative Financial Instruments 75-94 (2008); C. Stickney, R. Weil, K. Schipper, & J. Francis, Financial Accounting: An Introduction to Concepts, Methods, and Uses 581-582 (13th ed.2010); S. Ross, R. Westerfield, & B. Jordan, Fundamentals of Corporate Finance 743-744 (8th ed.2008). The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook. Allowing petitioners to patent risk hedging would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea.”

  12. AI, thanks for the quote. All of us will agree that that is what the Supreme Court said. Note, however that the Supreme Court stated that claims one and four merely explained the basic concept hedging. In point of fact, the claims did more than that, they described the basic process of hedging, a process that was notoriously old.

    It is interesting in today's discussion in the Supreme Court concerning Prometheus, the Supreme Court seem to acknowledge, and in particular Kennedy seem to acknowledge, that they conflated novelty and abstractness in Bilski.

  13. Meanwhile, I’ll continue to celebrate the growing trend

    Your one month trend of August was a long time ago.

    (the tune of Bruce Springsteen’s “Glory Days” plays in the background)

  14. Stop building these straw man issues.

    You are kidding, right?

    That’s like asking Malcolm to stop obsessing over Gene Quinn.

    That’s like asking Malcolm to stop obsessing over sockies.

    That’s like asking Malcolm to stop obsessing over Trolls.

    That’s like asking Malcolm to start using some actual legal logic.

    Not. Going. To. Happen.

  15. Why? Because he won’t go away. Remember, evry word whether responded to or not (whether accurate or not – whether convincing or not) is money in the bank for him.

    Ka-ching!

  16. That quote needs a Bilski number.

    First we had Bilski 14.
    Then we had Bilski 11.

    Ned loves Bilski numbers because they are the “cites” he craves.

  17. And the bombasts in Ned’s camp does answers

    – but only those that they like and only those that they want – never the ones they do not like nor the ones they do not want

    And the bombasts in Ned’s camp cites support

    – from dissents and portions of law that are not controlling – but miscites controlling case law – but does not accurately cite controlling case law (examples include Alappat, Diehr, Bilski and Ultramercial) – when it comes to the acutal state of law, all “we bombasts in AI’s camp” get from the bombasts in Ned’s camp is crickets.

  18. The problem with Ned is he never fades away. It’s like spraying C ock r oa ches. As soon as you ease up they come back in the same way over and over again.

  19. Ned, I have time and time again to only have you ignore the post, or go off into some fallacious argument that is usually irrelevant, circular or both. I imagine your sponsors would occlude you from doing anything different. But nonetheless here is it again:

    “Under Benson, Flook, and Diehr, how- ever, these are not patentable processes but attempts to patent ab- stract ideas. Claims 1 and 4 explain the basic concept of hedging and reduce that concept to a mathematical formula. This is an unpat- entable abstract idea..” Bilski.

  20. Not sure what that would do. People have been giving Ned “copy and pastes” and pin-cites and asking him questions on these things, and when cornered, simply refuses to answer anyway.

    Why bother with Ned Heller?

  21. AI, no one agrees with you AI.  (Virtually?) everyone agrees that the SC did not explain why the Bilksi claims were abstract.  They just said so.

    But, if you think they did explain, go ahead and copy and paste.  We await your reply.

  22. Ned, Citing the Court created judicial exceptions can hardly be called citing your own opinion.

    And the fact remains, the Bilski court said specifically and exactly why Bilski’s process was considered legally Abstract.

    So all this theoretical tinkering on your part is not needed or called for by anybody.

    Just deal with it.

  23. “Examiner’s Answer raised new a new Section 101 issue, but applicant failed to respond in the reply brief. BPAI Holding: “We therefore summarily sustain this rejection.” Ex Parte Maeng, 2011 WL 6012458 (BPAI November 30, 2011).”

    Bad counsel … plain and simple. I’ve seen it before … a new grounds of rejection gets entered in the Examiner’s Answer but isn’t responded to by the attorney. If I was the client, I would fire the attorney.

  24. MM: “All anyone has to do is scroll up this thread to see what a lying jxckxss and hypocrite you are”

    AI: Projecting again Malcolm are we? All one has to do is google this blog for Malcolm Mooney or MM, and they will see the above is exactly what you are.

    And if they really want to have a good time they should google Noise Above the Law ( NAL) and Malcolm Mooney and the Printer Matter Doctrine.

    MM:Meanwhile, I’ll continue to celebrate the growing trend towards diminished patent protection for computer-related and/or “business method”

    AI: You mean from Court cases like Bilski that upheld business methods as patentable subject matter and refused to even entertain the questioning of software?

    And cases like Alappat, and Ultramercial that affirms software as Patentable Subject Matter?

    And we can’t forget about Research Corps use of the Diehr Concept and Application Test/analysis ( D-CAT) which greatly expands the application of all processes as statutory subject matter.

    Heck even your precious Cybersource is coming back to bite you in the rear end with it’s “a method that can be performed by human thought alone is merely an abstract idea” definition being used by the Board to overturn examiners rejections. What Actual Inventor or smart Patent Attorney can’t write specs and draft claims that are not performed entirely in ones mind?

    And since the MOT is dead, and the Supreme Courts DCAT controls, and is in full use by the Federal Circuit, there is not an Actual Inventor in the country now that can’t get a so called business method through the PTO with just a little persistence and maybe an appeal. And soon not even an appeal will be needed.

    Yup Malcolm, there is a trend towards diminished patent protection for business methods alright. Well, maybe in the looney bin. But don’t worry, you can always get Nedo to write a theory and you both can hold hands and pretend it is the law.

  25. Once the issue of “effectively claiming a mental process is recognized”

    There is no such issue because effectively claiming a mental process is impossible to do, and you have repeatedly failed to prove otherwise. Stop building these straw man issues.

  26. “AI, I would suggest something along the lines of the following: an idea not tied to a useful application is abstract. I draw that from the original Supreme Court case to define abstractness:”

    But your suggestion is not asked for by anybody and is not needed by anyone. The Court already knows. If it is a mental process it is one of the Court created judicial exceptions. End of story.

  27. Malcolm, if that is true, you seem to consider subject matter that defines over the prior art by its information to be abstract.

    Actually, I think the problem really is not 101, but 102. I tend to gravitate to the government’s position in Prometheus.

    That’s nice. I don’t care one way or the other and I have no idea why anyone else would care one way or the other. Once the issue of effectively claiming a mental process is recognized, it can be rendered ineligible, unpatentable, or unenforceable. I really could care less as long as one of those things happens every time such claims are presented to the USPTO or asserted in court.

  28. Malcolm, if that is true, you seem to consider subject matter that defines over the prior art by its information to be abstract.

    Actually, I think the problem really is not 101, but 102. I tend to gravitate to the government’s position in Prometheus.

    Take for example the player piano with new music. The player piano is a machine. But the new music cannot be used to define an improvement to the machine because it does not alter the machine functionally. It alters the machine’s operation, to be sure, but the operation of a machine does not define a new machine. The operation of a machine is, at best, claimable as part of a process.

  29. AI, I would suggest something along the lines of the following: an idea not tied to a useful application is abstract. I draw that from the original Supreme Court case to define abstractness:

    “The word principle is used by elementary writers on patent subjects, and sometimes in adjudications of courts, with such a want of precision in its application, as to mislead. It is admitted, 175*175 that a principle is not patentable. A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right. Nor can an exclusive right exist to a new power, should one be discovered in addition to those already known. Through the agency of machinery a new steam power may be said to have been generated. But no one can appropriate this power exclusively to himself, under the patent laws. The same may be said of electricity, and of any other power in nature, which is alike open to all, and may be applied to useful purposes by the use of machinery.

    In all such cases, the processes used to extract, modify, and concentrate natural agencies, constitute the invention. The elements of the power exist; the invention is not in discovering them, but in applying them to useful objects. Whether the machinery used be novel, or consist of a new combination of parts known, the right of the inventor is secured against all who use the same mechanical power, or one that shall be substantially the same.”

    LE ROY ET AL. v. TATHAM ET AL., 55 US 156 – Supreme Court 1852

    In this sense, the Benson claims were abstract because they were not limited to a useful application. Ditto the claims in Flook, as they were not tied to the measurements of anything. Diehr, having inputs and outputs, clearly was not abstract.

    Now consider Bikski. Assuming the idea of hedging, where does one move from the abstract idea into the non abstract: when the idea is applied and produces a useful result. But that clearly is what Bilski disclosed an claimed. The claims were not directed to hedging in the abstract as far as I could tell. They were, however, notoriously obvious, at least until the claims narrowed to specific mathematics.

    But, AI, assume your definition: consisting entirely of mental steps, there was nothing abstract about the Bilski claims as only the balancing step was mental. The rest of it involved acts involving at least two people.

    link to scholar.google.com

  30. Megan:

    It’s the role of the marketplace and not the examiner, or the PTO to determine the value of an invention.

    After all the Examiner is not an Actual Inventor, or and Entrepreneur and is not qualified to make such evaluations.

    Maybe if they spent more time examining and less time trying to determine if they personally like an invention there would be less of a backlog.

  31. …I believe that the US Constitution grants Congress the

    Great – but you haven’t given what I asked for, now have you?

    Congress may very well be granted that power, but I didn’t ask you if that power was granted – show me where Congress has actually taken that step and provided for such actual sanctions.

    Keep digging. Maybe you left your clicker in the last great big hole you were in (but there are so many holes you get into).

  32. shillywilly And yet, you still whine all over these boards

    LOL. All anyone has to do is scroll up this thread to see what a lying jxckxss and hypocrite you are, shilly. Please continue obsessing about me while stroking the tender ego of your beloved Quinnie Poo. Meanwhile, I’ll continue to celebrate the growing trend towards diminished patent protection for computer-related and/or “business method” bxllcrxp.

  33. your quote above seems to imply that you think that I am Gene Quinn….

    No, shillywilly, your quoted comment shows directly and unambiguously that you admire Quinnie Poo because he (allegedly) actually seeks gentlemanly discourse. Apparently you admire such features in a human being in spite of the fact that you are obviously unwilling to emulate them. That’s just one of the reasons you are the most hypocritical commenter here. I’ve previously articulated some of the other reasons. Shall I repeat them again? Nah.

  34. Perhaps you missed the key words (or more likely), you do not understnad the key words:

    the legal basis

    No, I didn’t miss or not understand those words. I believe that the US Constitution grants Congress the power to pass laws/rules regulating patents. I assumed you knew that. Apparently I was wrong. It looks like it’s time to start using The Clicker.

  35. And yet, you still whine all over these boards on a consistent (consistent? shtt, you whine more than all others combined) basis…

    Your actions speak so loudly I cannot hear the l_ies you type.*

    *paraphrased, of course.

  36. And your quote above seems to imply that you think that I am Gene Quinn…

    I am not.

    I was providing the factual basis of a situation that had absolutely nothing to do with me personally – but nice try at kicking up the dust.

  37. Sure. Frivolous filings that waste finite government resources need to be discouraged. There you go.

    Perhaps you missed the key words (or more likely), you do not understnad the key words:

    the legal basis

    Talk about keep digging….

  38. As I’ve noted previously, shillywilly, the winds have been blowing in one direction for quite some time, a direction that I strongly favor. There’s no crying in MM’s office. On the contrary, the dance floor is packed and the party is hot.

  39. shillywilly Where do you get the idea that I want a “gentlemanly” discourse?

    Too funny. Here’s just one recent example, shillywilly, of your pathetic, hypocritical and habitual playing of the “civility” card.

    Dec 1, 2011 6:22 pm:

    it was IPWatchdog that took offense at MaxDrei, who attempted to post in the “loose” style so familiar to the paper table pounders here. When called on that table to provide facts, MaxDrei descended to the typical vitriol that he finds so witty and was put in his place by a blog master that actually seeks gentlemanly discourse…

    Go ahead, shillywilly. Keep digging and prove that you are an even bigger hypocrite than we already know you are.

    you want to provide the legal basis for “frivolous patent filing sanctions?

    Sure. Frivolous filings that waste finite government resources need to be discouraged. There you go.

  40. MM, one day an Actual Inventor is going to take the DCAT all the way to the Supreme Court of the United States if needed, and that AI, will win.

    And what are you and the rest of the anti patent crowd gonna do?

    Whine, call them “dweebs” , then go into hiding for two months like you did after Bilski?

    The ascendency of Diehr, and the DCAT dominance is certain.

    Even now we can win at the BPAI, and the CAFC.

    And that is very satisfying!

  41. “OPNET Tech’s patent application is directed toward a “network monitoring system” that includes a set of “collectors”, “analyzers”, and “reporters” as well as an “automated engine” configured to control the applications in achieving a target task. In the specification, the applicant wrote that each element of the system could be created in software and the Board concluded that “the invention can exist solely as software.” Citing the Federal Circuit’s 1994 Warmerdam decision, the Board held that a claim that covers a “purely software embodiment” cannot be patentable subject matter. ”

    Well done.

    “On the flip side, the BPAI held that a “web based system” is patent eligible because such a network based requires “more than software per se, because a web, upon which a web-based system is based, is physical, in addition to software, in that it requires computers and routers and telecommunications equipment to operate.” Ex Parte Vogel, 2011 WL 6012447 (BPAI November 21, 2011).”

    In other words, throw in a bit of tardation and everything is O K.

    “Providing, Receiving, and Manufacturing: Small paper manufacturer Grays Harbor has seemingly spent a small fortune prosecuting its patent application No. 09/849,504. The invention relates to their computerized system for processing paper and was filed back in 2001. One step of rejected method claim 11 was written as follow “receiving a promotions order from a third-party advertiser to place promotional material on an enclosure…” OK, nothing brilliant in this limitation (or another limitation involving “providing instructions”) with regard to inventiveness, but the Board’s rejection was odd – holding that that the claim’s “recitation of the steps of receiving and providing are merely abstract ideas because each step is recited in the future tense of ‘to place’, ‘to create’, ‘to deliver’, and hence is only contemplated, rather than executed.” Ex Parte Quigg, 2011 WL 6012448 (BPAI November 22, 2011)”

    An interesting case I may have to look into.

  42. “L’OREAL claims a “method for recommending a beauty product” that includes several steps, including applying a beauty product to a person and then seeing how the person looks under various simulated lighting environments. ”

    More patentable than a lot of stuff we see on these here boards.

    “CyberSource Rejections: Citing the Federal Circuit’s recent decision in CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011), the BPAI has affirmed a Section 101 rejection of an IBM application that claims a “computer-implemented method for partitioning a domain dataset.” Despite the “computer implemented preamble, the BPAI held that the claimed process was not patent eligible because it “could be performed by a human writing on a piece of paper.” The Board quoted CyberSource for the proposition that “a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101.””

    Hat tip to the BPAI.

    “As instructed by CyberSource, the court considered the “underlying invention for patent-eligibility purposes” rather than particular nominal claim limitations. Here, the BPAI found that the true invention was the process and that the system claims were simply reformulated versions of the method and therefore, that the system claims should be interpreted as process claims.”

    Idk about the system claims as I haven’t read em. But I also don’t know about this interpreting as a method claim business if it is to a product.

    Well done on the B claims tho.

  43. they are properly claimed in a manner which distinguishes them structurally

    WAH WAH WAH

    Someone pass Malcolm his tissues (but do so in a ‘gentlemanly fashio’ and also give him the case law cites (once again) to the “proper”-ness of claiming in functional terms.

  44. Dennis, what is the style name of the “CyberSource Rejections:” IBM application you discuss above so I can pull it up?

  45. LOLZ Back at you Malcolm.

    Where do you get the idea that I want a “gentlemanly” discourse? “Substance” does not have to be “gentlemanly.”

    Oh, wait – I remember, you think everyone “out there” is one giant conspiracy-sockie-troll.

    NAL pay you a visit for the holidays yet?

    and yet frivolous filers can be (and are) sanctioned.” – your kidding, right? you want to provide the legal basis for “frivolous patent filing sanctions? Step right up to it big guy and back up what you say.

    Yeah, thought so.

  46. “AI, entirely in the mind?”

    You have a better definition for abstract? I like the the Board quoted CyberSource defintion:

    “a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101.”

  47. Not so easy. Just because you say something is abstract does not make it so. You have to prove it. Examiners have a responsibitly to establish a prima facie case, and its good to know the board will hold their feet to the fire.

  48. you would say that about any case in the computer art.

    Not true. Improvements to computing machines are certainly patent eligible, provided they are properly claimed in a manner which distinguishes them structurally from prior art computing machines.

  49. They may have, but coming from you it means nothing, because you would say that about any case in the computer art.

  50. Benson and Flook when viewed thru the lens of Diehr may be patent eligible subject matter. ( See Bilski 14). But Bilski was not. Why?

    Okay, here is a Clue,

    MOT was made irrelevant, as it should be, but even DCAT can’t overrule a Court created judicial exception.

  51. Obviously not to whom? You? I think everyone else that has read the Courts decision accepts and understands their reason for why Bilski was deemed abstract.

    It is as simple as one word.

    But you don’t want to accept it and that’s your right.

    But please stop whining about it not being a reason stated by the Court because it clearly was one.

  52. Everyone has a right to use the patent system

    Everyone has a right to use the court system, too, and yet frivolous filers can be (and are) sanctioned.

    Get off your Fn high horse Megan.

    Is this your idea of “gentlemanly” discourse, shillywilly?

    LOL.

  53. What a great use of Examiner time! No wonder there is such a backlog

    BS

    Everyone has a right to use the patent system and that person paid his money to have his application processed. Not only that, but such ‘easy’ applications to determine unworthy for patenting take up relatively little examiner time, and thus “earn” more for the government (on a per-widget basis) than the tougher and closer calls which demand more resources.

    Get off your Fn high horse Megan.

  54. Re L’oreal: I now have a new invention for selling a car: opening dooor for prospective client; seeing how said client looks behind the wheel. ta da !

    I think that’s anticipated. But maybe throw in a limitation “wherein said client comprises a device capable of connecting to a social network” and you’re golden.

  55. The claimed method required issuing energy supply contracts at fixed prices to two different groups having opposite risk profiles until the risk was balanced. What is abstract about that?

    Everything.

  56. “…but, really, that’s stretching for a count,…”

    Examiners don’t get a count for an abandonment after a Board decision. The examiner gets the disposal count for the examiner’s answer. Same with an allowance after a Board decision. No count.

  57. “method for recommending a beauty product” that includes several steps, including applying a beauty product to a person and then seeing how the person looks under various simulated lighting environments.

    Good grief.
    Method for selling a product:
    – convincing customer to try on product, then
    – commenting on how great customer looks wearing product.

    Wow! What a great use of Examiner time! No wonder there is such a backlog. There should be a rejection “No, your patent application is a waste of my time.”

  58. AI, entirely in the mind?

    Explain to me how Bilski was abstract then? The claimed method required issuing energy supply contracts at fixed prices to two different groups having opposite risk profiles until the risk was balanced. What is abstract about that? There are suppliers and two groups of buyers, real physical people, and real transactions that have to involve offer and acceptance, and some physical record of the contracts (at least implicitly). The balancing itself might be done in the mind. But determining when to terminate a process can be done in the mind per Diehr and still be patent eligible.

    That hedging according to this method was notoriously old as stated by Rader is no excuse not to deal with the claim under 102 and not under 101.

  59. Malcolm, they reached the right result in all four recent cases. It is just that the reasoning in Benson, Flook and Bilksi is a bit, let us say, opaque?

    Benson had it right when they said that the algorithm had no use. They should have stopped there.

    Flook did not operate on any inputs.

    Diehr had both inputs and outputs.

    All this related to the MOT and its application.

    Bilski failed the MOT. Its utility was not within the Useful Arts. But, if you eliminate both of these as a reason to deny patent eligibilty, one must have the decency to explain why.

    The Bilski court provided no explanation, at least, not that made any sense whatsoever as the claimed subject matter was not hedging in the abstract, but a claim to a specific application of hedging.

  60. “Examiner’s Answer raised new a new Section 101 issue, but applicant failed to respond in the reply brief. BPAI Holding: “We therefore summarily sustain this rejection.” Ex Parte Maeng, 2011 WL 6012458 (BPAI November 30, 2011).”

    Surprised that the applicant/appellant didn’t at least challenge this “new ground of rejection” in a reply brief. 37 CFR 41.39(a)(2) permits the Examiner to raise a “new ground of rejection” in the Answer which normally should be responded to in the reply brief. But what isn’t exactly clear is whether, under 37 CFR 41.50(a)(1), the Board can simply affirm that “new ground” in the Examiner’s Answer, even when no reply brief is filed.

  61. I presume you meant FUBAR – otherwise, please explain the auxiliary R.

    Re L’oreal: I now have a new invention for selling a car: opening dooor for prospective client; seeing how said client looks behind the wheel. ta da !

  62. On Mr Quigg’s case… when the did the period for Appeal to the CAFC get shortened to “non-existant” ? Board Decision dated was Friday, November 25, 2011. Holiday weekend, no less. Notice of Abandonment dated Thursday, December 1, 2011. Ok, Gray’s Harbor Paper is in receivership, but, really, that’s stretching for a count, and an outright lie by the Examiner, unless the period for appeal has changed… (“decision… rendered on 11/25/11 and because the period for seeking court review of the decision has expired….) I guess those docket clerks ate too much turkey…

  63. Examiners STILL reject applications for failing the MOT 99.9% of the time.

    Good. The only mistake the Examiner made in L’OREAL was failing to conclude his/her rejection with a “finding” that the claimed invention was abstract. That’s an easy fix.

  64. “On appeal, the BPAI reversed the rejection, holding that “a full analysis as outlined in Bilski v. Kappos … should have resulted in a finding by the Examiner that the claimed subject matter either was or was not an abstract idea, and hence, respectively, that the claimed subject matter was not patent eligible or was patent eligible in this particular instance.”

    I am pleased that the Board smacked this examiner down, because even though they are no longer allowed to do it, Examiners STILL reject applications for failing the MOT 99.9% of the time.

    And these are rejections being issued after Bilski Vs Kappos. Now that we at least have a board decision maybe the trend will begin to reverse.

    I would particularly like to follow this case since it is obviously not something that can be done entirely in ones mind, ( abstract ) and yet does not require a in re Bilski machine process or transformation. ( MOT)

    This invention clearly passes the DCAT, Diehr concept and application test/analysis. Its time the board recognized this test explicitly so the examiners can begin to fall in line.

  65. But this only illustrates the problem Bilksi created for us by not telling us why the Bilski claims were “abstract” when clearly they were not.”

    The Supreme Court was very specific as to why. And this has been pointed out to you and quoted verbatim, time and time again.

    So why do you continue to say otherwise?

  66. Bilski just has to be the most FURBAR case in the whole line of Supreme Court 101 cases.

    Nope. Because they reached the right result in Bilski.

  67. I see nothing “abstract” about the beauty products claim. But this only illustrates the problem Bilksi created for us by not telling us why the Bilski claims were “abstract” when clearly they were not.

    Ref: Bilski. There, the idea of hedging was abstract, but the method claimed was a specific application of the concept. That application might be old or obvious, but it was not abstract. Under any of Benson, Flook or Diehr, the application of a abstract idea to a specific application is patent eligible.

    It did not, however, pass the MOT. That could have ended Bilski, but the SC did not rely on the MOT.

    They could have said the utility was not within the Useful Arts. But they did not say that either.

    What they did say made no sense, and what they did not say is equally important, as it serves to confuse.

    Bilski just has to be the most FURBAR case in the whole line of Supreme Court 101 cases.

  68. WL indicates a citation to the commercial (not free) research platform called Westlaw. While many court decisions are available for free at scholar.google.com, these opinions do not appear to be. Fortunately, they are available on the USPTO’s website.

    link to des.uspto.gov

    You can search by inventor name, so for Ex Parte Quigg, select Inventor Name and type in Quigg. Hope that helps.

  69. One step of rejected method claim 11 was written as follow “receiving a promotions order from a third-party advertiser to place promotional material on an enclosure…” OK, nothing brilliant in this limitation (or another limitation involving “providing instructions”) with regard to inventiveness, but the Board’s rejection was odd – holding that that the claim’s “recitation of the steps of receiving and providing are merely abstract ideas because each step is recited in the future tense of ‘to place’, ‘to create’, ‘to deliver’, and hence is only contemplated, rather than executed.” Ex Parte Quigg, 2011 WL 6012448 (BPAI November 22, 2011)

    The other alternative would be simply ignore the information on the “orders” and the “instructions” and find the claim obvious in view of the incredibly ancient prior art method(s) comprising receiving “orders” and responding to said orders by providing “instructions”. Both methods of denying issuance achieve the same result: preventing someone from effectively patenting otherwise unpatentable information (unpatentable information = unpatentable facts = “abstractions”).

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