Ex Parte Birger: Form over substance, or not?
In Ex Parte Birger the BPAI has knocked out another set of claims under Section 101. (See link below for a copy of some selected papers from the case.) For example claim 1, which was singled out as “representative” by the Board, was rejected for a litany of reasons under 101 (“claimed invention is directed to software per se, abstract ideas, abstract concepts, and the like, including data per se, data items, messages, addresses, identities, data structures, software layers, software applications, software protocols, and the abstract intellectual processes associated with them within the claims on appeal”). Generally, I see the Board’s point, but its not quite an open and shut case — I can see that some of the claim limitations are more conceptual/abstract in nature than “machine-like”, but on the other hand some of the components are arguably more machine-like in nature. See claim 1 below with my comments about whether the element is “abstract” or “machine” in brackets:
1. A method for communicating [abstract] between two endpoints [abstract unless defined as apparatus in specification] connected to a network [machine], the method comprising having a first endpoint use a global address [again, if "global address" is interpreted as electronic/machine-readable data, then this is arguably "tangible data", but if not interpreted as electronic data, then it can be "abstract data"] of a second endpoint to communicate [again, if communication is deemed electronic over a "machine" network, then "communication" can be viewed as tangible v. abstract] with the second endpoint, wherein:
the global address specifies a protocol [could be viewed as "tangible" if it is defined in specification as a tangible machine-readable data sequence or organization, or abstract if not], a network identifier [same analysis as for "global address"], and an address meaningful for the combination of the protocol and a network identified by the network identifier,
an application [this is abstract if it is not specified to be executing on a computer] sends messages [these could be viewed as tangible electronic data traffice] directed to the second endpoint through an identity-based communication layer [could either be viewed as abstract or "tangible data" depending on how described] that is situated between a network layer [could be either machine or abstract depending on how disclosed] and an application layer [again, same thing], the messages being independent of the protocol, and
the identity-based communication layer transmits the messages to the second endpoint using the protocol, the network, and the address specified by the global address [again, if "message" is interpreted as phyiscal, electronic data, and the network as a "machine", then this should be not be abstract].
I will have more analysis on this later, but for now I think attorneys should take care to describe and claim inventions such as that described in Birger’s claim 1 from the point of view of describing the electronic operation of machine/circuit components as opposed to describing the invention from a conceptual software perspective wherein the machine operation is largely opaque to the programmer or user. In this case, I think the claims are lot more abstract/conceptual than concrete, machine-like, at least if you give the suspect claim terms their more abstract meanings. I think the problem that many of us are going to have is reverting back to describing and claiming inventions at this level of operational detail having been able to use the more conceptual block diagrams and flow charts we are used to under a less exacting application of Section 101′s prohibition on abstract inventions.