Patentable Subject Matter of a Machine that Uses a Mathematical Algorithm

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.

The BPAI’s test for a claimed machine (or article of manufacture) involving a mathematical algorithm asks two questions. If the a claim fails either part of the two-prong inquiry, then the claim is unpatentable as not directed to patent eligible subject matter.

(1) Is the claim limited to a tangible practical application, in which the mathematical algorithm is applied, that results in a real-world use (e.g., “not a mere field-of-use label having no significance”)?

(2) Is the claim limited so as to not encompass substantially all practical applications of the mathematical algorithm either “in all fields” of use of the algorithm or even in “only one field?”

In Gutta, the BPAI applied its new test to find its system claim unpatentable. Gutta’s system claim (claim 14) includes two coupled components — namely a memory and a processor.  The claim indicates that the processor is configured to identify a “mean item” whose symbolic value minimizes the variance of a set.  On those facts, the BPAI found that the claim failed the first prong by not limiting itself to any “tangible practical application in which the mathematical algorithm is applied that result in a real-world use.” Likewise, the claim failed the second prong because it “encompasses substantially all practical applications” of the algorithm.  “That is we are unable to identify any other practical application [of the algorithm] outside of the broadly defined claim.”

Interestingly, the decision was issued in August 2009, but made precedential in December 2009. By then, Gutta had abandoned the application. The patent application (SN 10/014,192) is assigned to Koninklijke Philips Electronics.

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607 thoughts on “Patentable Subject Matter of a Machine that Uses a Mathematical Algorithm

  1. 606

    AI had it right at with a recent post on another thread link to patentlyo.com

    where I replied:

    “Malcolm, what could it have been that Noise did to damage your psyche so badly?

    Was it the way you were embarrassed and forced to flee during the Printed Matter Doctrine discussions?”

    That was only the start.

    I took the bully’s playground from him, beating him in the mudpit without resorting to the levels of slime that he descends to.

    Its brutal for him to be so exposed – a vacuous fool provecatuer, whose ability to be provocative is limited to non-legal stale tricks (and thus not very provocative at all).

    As they say… Sucks to be Malcolm (what the sam hill).

  2. 605

    Malcolm, in case you missed it:

    AI had it right at with a recent post on another thread link to patentlyo.com

    where I replied:

    “Malcolm, what could it have been that Noise did to damage your psyche so badly?

    Was it the way you were embarrassed and forced to flee during the Printed Matter Doctrine discussions?”

    That was only the start.

    I took the bully’s playground from him, beating him in the mudpit without resorting to the levels of slime that he descends to.

    Its brutal for him to be so exposed – a vacuous fool provecatuer, whose ability to be provocative is limited to non-legal stale tricks (and thus not very provocative at all).

    As they say… Sucks to be Malcolm (what the sam hill).

  3. 604

    hmmmm, time to play Columbo again.

    let’s look at the clues of the post by Done Deal.

    “There are only five posters at patently-O”
    while not true -this is indicative that this poster is one of the five listed.

    Given the content, tone and circular, conclusory statements, we can safely rule out NWPA, NAL and AI.

    That leaves 6 and Malcolm.

    While the post is wrong may indicate 6, the vapid lack of any real legal logic and “numerous commentators” pretending to be the voice of reason and the masses – but sucha slimy trick is easily seen to be a reference to the many pseudonym’d hydra perveyor of fluff Malcolm. Add to that the malcomy examiner boilerplate and the subtle “don’t ANYONE ELSE argue on the internet – this is MY playground” message.

    yet another case of rare/usual/whatever.

    Malcolm, it is NOT a new slime trick to use several of your old slime tricks in one post. All of the old slime tricks merely do what each does on its own right – nothing but embarrass you – the loud, whiny powerless x-bully.

  4. 603

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