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Patentable Subject Matter of a Machine that Uses a Mathematical Algorithm

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Ex Parte Gutta (BPAI 2009)(Precedential)

In its fourth precedential opinion of 2009, an enlarged panel of the BPAI has created a new test for judging whether a claimed machine (or article of manufacture) that takes advantage of a mathematical algorithm falls within the patentable subject matter requirements of 35 U.S.C. Section 101. The two-part test parallels the Federal Circuit’s Bilski decision that focused on the patentablility of method claims. Of course, Bilski is now pending before the Supreme Court and a decision is expected in the Spring of 2010.

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Patent Prosecution Tips: Drafting Preambles

Patent

In a recent posting on Patently-O, I asked for advice on whether it is a better practice to use a generic preamble (e.g., "A method comprising") versus a more detailed preamble (e.g., "A method for content selection of digital media stored in a memory…., the method comprising"). Ron Slusky has provided his suggestions in this guest post. Ron's two-day seminar based on his book Invention Analysis and Claiming: A Patent Lawyer's Guide is being offered in Philadelphia on November 16-17.

By Ron Slusky

Any extra word in a claim "can and will be used against you in a court of law." Thus on the one hand, recitations in a detailed preamble may unduly limit the claim in unintended ways. By contrast, a generic preamble can never get you in trouble in that regard.

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