Ex Parte Proudler – “Abstract Functionality” no good for Section 101

The BPAI has wasted no time in applying the newly reinvigorated prohibition on patenting abstract ideas following the Bilski decision, finding the claims in Ex Parte Proudler nonstatutory under Section 101.  I have attached a copy of the application and the appeal briefs which include a full listing of the claims.  The Proudler abstract described the invention as follows:

“A method of controlling the processing of data is provided comprising defining security controls for a plurality of data items, and applying individualised security rules to each of the data items based on a measurement of integrity of a computing entity to which the data items are to be made available. (Abstract, Fig. 3).”

Depending on how you look at the claims and how much “structure” you read into them as inherent you can view the 101 rejection, as to at least some claims, either as an overly aggressive application of the “abstract idea” prohibition or as justified based on how nebulous the claim language is — i.e., one could arge that the claims at best mixabstract data processing concepts and tangible data processing steps and structure.

For example, take claims 1, 33 and 50:

1.         A method of controlling processing of data in a computer apparatus, wherein the data comprises a plurality of usage rules for a plurality of data items stored by said computer apparatus, and comprising:

applying individualised usage rules to each of the data items based on a measurement of integrity of a computing entity to which the data items are to be made available, said data items being logically grouped together as a set of data items, and

instantiating the set of data items at the computing entity depending upon the integrity of the computing entity and the usage rule applicable to each data item in said set.

33.       A method of controlling processing of data, wherein the data comprises a plurality of rules associated with a plurality of data items comprising a set of logically related data items, each data item in the set having a rule associated therewith, said rules acting to individually define usage and/or security to be observed when processing each of the data items in the set of data items, and in which forwarding of the set of data items is performed in accordance with mask means provided in association with the rules.

50.       A computer apparatus for controlling processing of data, wherein the data comprises a plurality of usage rules for a plurality of data items stored by said computer apparatus, said computer apparatus controlling instantiation of the data at a computing entity, said computer apparatus including:

programming for applying individualised usage rules to each of the data items based on a measurement of integrity of the computing entity to which the data items are to be made available, said data items being logically grouped together as a set of data items, and

programming for individually instantiating data items in the set of data items at the computing entity as a function of the integrity of the computing entity and the usage rule applicable to each data item in said set.

Here is what the BPAI said about claims 33 and 50:

“This brief analysis is clearly seen from representative independent claim 33 on appeal. The manner in which the so-called “computer apparatus” of the preamble of independent claim 50 is recited in the body of this claim is characterized as directly reciting in its two clauses “programming for” achieving a certain abstract functionality.  Thus, no true hardware structure is recited. The Specification at page 4, lines 19 and 20, also indicates that a “computing entity, either hardware or software, is often called a ‘node’ and this term will appear here and after.”  In view of this assessment, the broadly recited “computer apparatus” in independent claim 50 is additionally recited in independent claim 1 on appeal and must be construed in like manner.  Corresponding abstract functionalities are recited in all of these independent claims. 

With this background in mind, all claims on appeal, claims 1-43, and 50, are rejected under 35 U.S.C. § 101 as being directed to nonstatutory subject matter.  Consistent with our earlier noted invention statement from Appellants’ disclosed abstract, the disclosed and claimed invention is directed to software per se, abstract ideas, abstract concepts, and the like, including data per se, data items, data structures, usage rules, and the abstract intellectual processes associating them within the claims on appeal. ”

In addition, here is what Proudler has to say on the law of Section 101: 

“Statutory Subject Matter

The subject matter of claims permitted within 35 U.S.C. § 101 must be a machine, a manufacture, a process, or a composition of matter.  Moreover, our reviewing court has stated that “[t]he four categories [of § 101] together describe the exclusive reach of patentable subject matter.  If the claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of  § 101 even if the subject matter is otherwise new and useful.”  In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007); accord In re Ferguson, 558 F.3d 1359 (Fed. Cir. 2009). This latter case held that claims directed to a “paradigm” are nonstatutory under 35 U.S.C. § 101 as representing an abstract idea.  Thus, a “signal” cannot be patentable subject matter because it is not within any of the four categories. In re Nuijten, 500 F.3d at 1357. Laws of nature, abstract ideas, and natural phenomena are excluded from patent protection.  Diamond v. Diehr, 450 U.S. at 185. A claim that recites no more than software, logic or a data structure (i.e., an abstraction) does not fall within any statutory category. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). Significantly, “Abstract software code is an idea without physical embodiment.”  Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007). The unpatentability of abstract ideas was confirmed by the U.S. Supreme Court in Bilski v. Kappos, No. 08-964, 2010 WL 2555192 (June 28, 2010).”

For the purpose of highlighting the difference between what I term tangible data vs. abstract or intangible notions of data, I will parse claim 33:

“A method of controlling processing of data,” — so far this looks like statutory subject matter, but is “processing” restricted to a computer, or can it be paper and pencil or in the mind, i.e., abstract?

“wherein the data comprises a plurality of rules” — question: is the “data” a plurality of rules, or does it represent a plurality of rules, or is the data even electronic, or just data floating in the ether?

“associated with a plurality of data items comprising a set of logically related data items” – note again that these “data items” are not expressly limited to electronic data, or even more particularly electronic data represented by the electrical state of a machine, and therefore arguably “abstact” unless you deem this as inherent in the limitation

“, each data item in the set having a rule associated therewith,” — note again that the “rules” are simply stated as abstract notions, not as being represented by electronic data in the system

“said rules acting to individually define usage and/or security to be observed when processing each of the data items in the set of data items,”  — again, no tangible data recited – just abstract notions of functionality not tied even to electronic data, much less machine functionality

“and in which forwarding of the set of data items is performed”  — here again the term “forwarding” is not tied to any actual machine operation and is just an abstact statement of function,

“in accordance with mask means provided in association with the rules.” – here the ”mask means” gets closer to requiring structure if you read the limitation to cover the “system” components described in the specification, and you believe the system components include both hardware and software.

But in any event, you can see that much of this claim is arguably referring to abstract data floating in the ether as opposed to tangible electronic data being stored and processed in a computing system.  (On the other hand, if you look at In re Nuijten, the Federal Circuit was willing if not anxious to read physicality into the term “signal” even though no such express limitation was present.)

Application papersEx Parte Proudler

Ex Parte Proudler

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