Archive for the ‘Board of Patent Appeals and Interferences’ Category

Early-Feb. SW/Business Process BPAI Decisions

Tuesday, February 21st, 2012

Ex Parte Hu (Appl. #10/982,135, Tech Center #: 2100)
Example Claim:
26. A computer-readable [storage] medium [storing] one or more sequences of instructions which, when executed by one or more processors, causes the one or more processors to perform the method recited in claim 1.

U.S. Patent Publication No. 2006/0101033A1 (Published May 11, 2006) (Amendments from Nov. 22, 2007 shown in brackets).

Decision: Claim allowed.  “We find that the computer-readable storage medium is directed to a tangible storage medium, which can be read by a computer.  While a computer-readable medium is broad enough to encompass both tangible media that store data and intangible media that carry a transitory, and propagating signal containing information, a computer readable storage medium is distinguished therefrom as it is confined to tangible media for storing data.  Therefore, because the cited claims are limited to a tangible medium within one of the four statutory classes of 35 U.S.C. § 101, they are directed to statutory subject matter.”  Ex Parte Hu, No. 2010-000151 (B.P.A.I. Feb. 8, 2012) at 4 (emphasis added).

Tip: A computer-readable storage medium is considered non-transitory.



Ex Parte Rigoutsos (Appl. #10/305,582, Tech Center #: 2100)
Example Claim:
1. A method for annotating a query sequence, the method comprising the steps of:

accessing patterns associated with a database comprising annotated sequences;

assigning attributes to the patterns based on the annotated sequences; and

using the patterns with assigned attributes to analyze the query sequence.

Ex Parte Rigoutsos, No. 2009-010520 (B.P.A.I. Feb. 7, 2012) at 2.

Decision: Claims rejected.  “Claims are directed to a method for annotating a query sequence, which does not qualify as a patent eligible process under 35 USC § 101 . . . .” Id. at 3.  The claimed method is not tied to a particular apparatus and the language is “broad enough to encompass a manual method by a user.”  Id. at 9.  Additionally, there is “no transformation expressly set forth.”  At most, the claim “recites adding additional data to other data without expressly setting forth any of the specifics of the process.” Id. at 10.

Tip: Limit software process claims to computer implementations and/or be explicit in claiming a transformation (e.g., a method for transforming a query sequence into an annotated query sequence . . . .).



Ex Parte Edelson (Appl. #11/101,436, Tech Center #: 3600)
Example Claim:
11. A computer-implemented method for creating recurrent yield monetary asset based financial instrument derivatives by a rollup entity in communication with at least one recurrent yield monetary asset resource, said recurrent yield monetary asset having an asset value, said method comprising:

communicating between said rollup entity and said at least one recurrent yield monetary asset resource regarding acquiring an at least one recurrent yield monetary asset selected from the group consisting of royalties, salaries, royalty-type streams of revenues, publishing royalties, copyright royalties, trademark royalties, patent royalties, oil-revenue royalties, movie and video publishing royalties, said recurrent yield monetary assets;

transferring from said at least one recurrent yield monetary asset resource to said rollup entity said recurrent yield monetary asset;

depositing said one recurrent yield monetary asset into a rollup entity earnings account;

calculating at least one of the group consisting of a cash value and a number of shares of said financial instrument derivatives based on said asset value; and

issuing from said rollup entity to said at least one recurrent yield monetary asset resource said calculated number of shares of said financial derivative instrument.

Ex Parte Edelson, No. 2011-004285 (B.P.A.I. Feb. 6, 2012) at 7.

Decision: Claim rejected.  “[C]laim 11 performs no physical transformation and does not recite how a specific machine is used, and therefore recites no more than an abstract idea.”  Id. at 8.  “Claim 11 does no more than lay out the concept of issuing a derivative instrument.”  Id. The board cited Bilski, Cybersource, and Dealertrack for the proposition that abstract ideas are not patent eligible and that simply adding computer aided does not make them so.  Id. at 8–9.

Tip: In business method context, attempt to claim explicit computer structures (data structures, data processing steps) to highlight any technical aspects of the invention.



Ex Parte Webb (Appl. #11/485,413, Tech Center #: 3700)
Example Claim:
1. A method of playing a card game using at least one standard deck of cards, the method comprising:

(a) dealing two cards to a player, at least the two cards defining a player hand;

(b) resolving a side game based on a numerical hand result of the player hand determined according to a modulo 10 count system;

(c) continuing with a primary game using the same cards used to resolve the side game; and

(d) resolving the primary game based on a numerical hand result of the player hand determined according to a conventional count system, wherein at least one of the side game and the primary game is a proposition game that is resolved according to a payscale.

Ex Parte Webb, No. 2010-008274 (B.P.A.I. Feb. 6, 2012) at 2.

Decision: Claims rejected.  The “claims contain no limitations as to the mechanism for playing the game.”  Id. at 5.  “The claimed method does not sufficiently recite a physical instantiation.”  Id. The board cited Bilski for the proposition that an abstract concept is not patent eligible and then “conclude[d] that Appellant’s claims attempt to patent and preempt an abstract idea of the game in all fields, and thus is ineligible subject matter under 35 U.S.C. § 101.”  Id.

Tip: A statutory claim may have been possible with more explicit steps for playing the game – this decision is questionable in that the game does require a deck of cards to play and the rules require use of the cards to play the game.



Ex Parte Svendsen (Appl. #11/403,597, Tech Center #: 3600)
Example Claim:
1. A method of operating a central system communicatively coupled to a user system via a network, the user system associated with a portable media player, comprising:

communicating with the user system via a communication interface connecting the central system to the network to identify media content of a plurality of media files forming a user media collection stored at the user system, the communication interface being one of a wired communication interface and a wireless communication interface;

storing information identifying the media content of the plurality of media files in the user media collection;

receiving, via the communication interface, a play history of the portable media player from the user system associated with the portable media player;

selecting a plurality of previews for the portable media player based on the play history of the portable media player and the information identifying the media content of the plurality of media files in the user media collection; and

providing, via the communication interface, the plurality of previews to the user system, wherein the user system provides the plurality of previews to the portable media player.

Ex Parte Svendsen, No. 2011-012505 (B.P.A.I. Feb. 6, 2012) at 2.

Decision: Claims allowed.  The board noted the computer steps were “clearly integral to” the invention.  Id. at 7.  Further, the claims “recite a practical application of this core concept with computer technology (e.g., networks, user systems, user media collections, portable media players), specific method ‘steps [that] are likely to require intricate and complex computer programming’ for communications between the aforementioned computer technology structures, and, by the claims own terms, extensive use of those communications interfaces.”  Id. at 6 (alterations in original).

Tip: Claims reciting specific steps that use computer and other apparatus are clearly inside 101.



Ex Parte Pedersen (Appl. #11/286,277, Tech Center #: 2100)
Example Claim:
7. A device configured to perform a process for automatically ranking and/or relating documents, the process comprising:

in response to a user’s interactions with windows of respective documents, exchanging windowing events and file system events between applications or programs hosting the windows and a windowing system and a file system; and

capturing or observing the windowing events and the file system events of the different applications or programs and using the windowing events and the file system events to automatically generate relationship information comprising relationships between the documents and/or to automatically generate importance information comprising information indicating importance of the documents.

Ex Parte Pederson, No. 2009-012586 (B.P.A.I. Feb. 5, 2012) at 2.

Decision: Claims rejected under 35 U.S.C. § 112, second paragraph as being indefinite.  Id. at 3.  The recitations of the claim “create an insoluble ambiguity” about whether it “claim[s]: (1) a physical device or software per se having (a) a single or multiple means-plus-function limitation(s) or (b) purely functional limitation(s) or (2) a machine-implemented method.” 4.  “[T]the disclosed computing device includes, ‘any type of computing device, such as a workstation, a server, a handheld device, a virtualized computer, and so on.’  The computing device thus can be hardware or software (e.g., virtualized computer), and the ‘any’ descriptor does not describe with particularity the entire scope of what type of computing device (e.g., physical or virtual) is encompassed by the mean-plus-function limitation(s) and its or their equivalents.  The Specification thus does not provide adequate corresponding structure or adequately identify the corresponding structure that performs the recited function(s).”  Id. at 6 (citations omitted).

Tip: This claim may have flown as a pure process claim, or as a more conventional computer apparatus claim.  It would be advantageous if this form of claim was available, and not interpreted as a means claim.

[Brian Wallenfelt contributed to this posting.]

The Board Takes Bilski for a Test Drive and Runs Over Some Software Claims

Tuesday, September 28th, 2010

July and August have been busy months for the Board of Patent Appeals and Interferences.  Not including the Ex Parte Proudler and Ex Parte Birger cases I previously reported on, the BPAI has issued at least ten opinions in which software-related claims were rejected under Section 101 in view of Bilski.  These opinions, excerpts of which are provided below, present both understandable and puzzling Section 101 rejections.  A number of the rejections are understandable due to a lack of computer structure or electronic functionality in the claim to tie the software elements to a machine implementation. Of particular note, it appears that machine limitations in method claims are not enough per se to bring the claim into the machine sphere of the machine or transformation test, according to these Board decisions, despite the PTO’s Interim Guidance, which seems to indicate otherwise.