BPAI Reverses 101 Rejection... but...

Today's biggest 101 story isn't any patent that issued (though I was teased by U.S. Patent No. 7,526,446 to Algorithmics International on "System and methods for valuing and managing the risk of credit instrument portfolios" for things like credit default swaps.  They wisely filed only system claims, no methods, in 2002.  And is there even a market for these swaps anymore?)  Instead, we look to the BPAI's decision of Ex parte Duvaut.  [Since I expect Leigh Martinson will be covering this story more fully on his BPAI Watchdog blog, I'll just give the upshot without much commentary.]

Here's claim 1, rejected under 101 by the Examiner:

The first thing you notice..okay the SECOND thing you notice, after that blob of formula in the middle, is that this is a system claim, not a method.  But we know that examiners and the BPAI aren't reading Bilski / Nuijten / Comiskey so narrowly, and that system and Beauregard claims are no longer immune.

The BPAI did some interesting things here.  First, it read the "DSL communications system" of the preamble as limiting, since that gave life and meaning otherwise absent from the claim.  Second, it found that the specification gave structure to that system, so that it encompassed a statutory machine under 101.  Then it analyzed under Alappat whether the claim preempted the entire use of an abstract idea.  In concluding it did not, the Board said:

The recited communications system is a particular machine that transmits data on a digital subscriber line The claimed machine is, therefore, tailored to DSL applications. Moreover, the recited DSL communications system is programmed or configured to provide a PSD mask for spectral shaping a DBM mode downstream transmission defined by a specific equation (FF 2). Thus, the recited DSL communication system is not a general purpose computer but a particular or special purpose machine. See Alappat, 33 F.3d at 1545. When considering claim 1 as a whole, as Appellants argue (App. Br. 6 and 10), claim 1 recites more than a mathematical algorithm and is directed to a patent-eligible machine under 35 U.S.C. § 101. 

Who'da thunk it.  Looks like great stuff for practitioners arguing 101 rejections.

But not so fast.  The Board got slick and determined that this claim is a means-plus-function claim under 112/6, despite it not using typical "means for" language.  And the spec, said the Board, does not enable everything within the scope of the claim.  It is thus an improper "single means" claim, and invalid as not enabled under 112/1.  Ouch.  Additionally, the claim fails under the precedential Miyazaki decision since it contains "purely functional" language.  More ouch.

When you finish scratching your heads, answer this Hobson's choice: if you had your choice of rejections to fight, which would you choose: Non-statutory subject matter or enablement?