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March 09, 2010

BPAI to HP: Equal Protection Clause doesn't save claims from 101

For a move even Stephen Colbert would admire for its ballsiness, we extend kudos to Hewlett-Packard, who argued the following in its appeal brief of App. No. 09/976,630:

Appellants respectfully submit that denial of Appellants to the same protections as afforded to other patentees is a violation of Appellant's rights under at least the equal protection clause of the 14th Amendment to the U.S. Constitution 

No mention of In re Nuijten, which was decided several months earlier. Or maybe HP thinks that it is unconstitutional to apply KSR, too, since there are oodles of obvious claims out there in issued patents...

Today, the Board of Patent Appeals and Interferences responded appropriately in its Ex Parte Haines decision:

Section 101 rejection of claims 21-27

  Appellant alleges that the USPTO has issued patents to others that contain “propagated signal claims.” Appellant contends that the § 101 rejection of the instant claims is a violation of Appellant’s rights under the equal protection clause of the Fourteenth Amendment to the U.S. Constitution. App. Br. 14.

  However, Appellant has not cited any authority in support of the novel legal argument. The U.S. Patent and Trademark Office is not part of a state (or local) government, but an agency of the U.S. Department of Commerce. Cf. U.S. Const. amend. XIV, § 1 (“No State shall . . . deny to any person within its jurisdiction the equal protection of the laws.”). We are not persuaded that the USPTO has violated Appellant’s rights to equal protection of the laws under the Constitution.[FN1]

[FN1]: Absent showing that the agency acted pursuant to some impermissible or arbitrary standard, an argument based on the equal protection component of the Due Process Clause of the Fifth Amendment would also fail. See In re Boulevard Entertainment, Inc., 334 F.3d 1336, 1343 (Fed. Cir. 2003) (TTAB decision that affirmed the refusal to register marks containing the term “jack-off” did not violate equal protection principles, even though the USPTO had previously registered similar marks for other applicants).

February 08, 2010

BPAI Announces April Conference

Bpai_smallgraphicThough the USPTO is closed for Snowmageddon and no new BPAI decisions are being posted today, apparently the website controllers were able to flip the switch recently to announce the First Annual Board Conference. The conference has been billed as "A comprehensive conference, providing insight and analysis, from filing an appeal brief, through the U.S. Court of Appeals for the Federal Circuit’s view on the role of the Board in the development and advancement of the patent system."

In addition to various sessions with judges of the Board, the conference will feature a panel discussion with Chief Judge Michel and Judge Rader of the Federal Circuit, and a luncheon speech from Director Kappos.

This sounds like it could be an excellent event.

January 20, 2010

BPAI Finds Particular Machine

Providing yet another data point for Bilski evaluations, the BPAI today decided Ex Parte Moyer, finding the following claim a) to be tied to a machine; and b) that the machine was "particular."

1. In a data processing system, a method of forming an immediate value comprising:

receiving a data processing instruction at an input of a processor;

the processor using a first field of the same data processing instruction as a portion of the immediate value;

the processor using a second field of the same data processing instruction to determine a positional location of the portion of the immediate value within the immediate value; and

the processor using a bit value in a third field of the same data processing instruction to determine a remainder of the immediate value.


We find that claim 1 recites a processor in each of the steps of the claimed process which imposed a meaningful limitation to the scope of claim 1 to process the received data processing instruction. Thus, we conclude that claim 1 is “tied to” a machine, i.e., a processor. We next decide whether the processor processes the data processing instruction claimed in claim 1 is a “particular machine” within the meaning of the M/T test.

Our reviewing court provided guidelines that can be appropriately applied to this case that “[w]e have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.” In re Alappat, 33 F.3d 1526, 1549 (Fed. Cir. 1994) (citation omitted), abrogated by Bilski, 545 F.3d 943 (regarding the “useful, concrete, and tangible result” test originally set forth in Alappat at 1544).

Here, the processor recited in claim 1 is programmed to process data processing instructions in a particular way, i.e., forming an immediate value/operand of 32 bits with only one instruction (FF 1). Therefore, we conclude that the processor claimed in claim 1 is a “particular machine” within the meaning of the M/T test. Accordingly, we conclude that claim 1 satisfies the machine prong of the M/T test.


In contrast to Benson, the present claimed process of the instant invention for processing a data processing instruction by a processor is not an abstract idea because the claimed process has real world use (to form a 32 bit immediate value/operand with only one instruction) and is practical in the computer field. In addition, the claimed process is neither a mathematical formula nor a mathematical algorithm. The claimed process, if allowed, would not patent an abstract idea or pre-empt any other uses of the mathematical formula, but rather give a limited monopoly of the claimed process to the Appellant. Indeed, claim 1 as written is not “so abstract and sweeping” that it would “wholly pre-empt” the use of any apparatus employing the claimed process recited therein.

The Board also reversed the claim's obviousness rejection.


January 07, 2010

BPAI Invokes Gutta to Reverse 101 Rejection

In Ex Parte Morrison the Board of Patent Appeals and Inteferences reversed the 101 rejection of the following claim today, citing the newly precedential Ex Parte Gutta case:

1. A system that facilitates managing product life cycle, comprising:

a data-receiving component that receives data on availability of components to a product and suitable substitution components and determines relevance of the components to the product;

an analyzing component that evaluates the received data, and determines, infers or predicts obsolescence and/or risk to end-of-life (EOL) of a subset of the components to a product by scoring each component on a numerical EOL scale; and

a notification component that provides notification to at least one of individuals, computers and systems regarding obsolescence and/or risk to end-of-life of the subset of the components to a product, and provides recommendations in accordance therewith.

Appellants argue that the claim necessarily requires computer implementation, because without the computer the functions recited in the claims, most notably notification to individuals, computers and systems cannot be performed.


As the Examiner contends, it is the policy of this Office to not reject under statutory grounds novel and unobvious computer based algorithms when claimed as residing on a computer readable medium. Ex Parte Li, Appeal No. 2008-001213, (BPAI Nov. 6, 2008). The claims in the instant appeal, however, are composed of modules reciting functional algorithms or steps that are disclosed as embodied as software, but omitting the computer readable medium. (Spec. ¶ [0061]).

The recent CAFC decision In re Bilski, discussed above, addressed the statutory limitations of method claims. While method steps are incorporated in the appealed claims, for which neither a particular machine nor a transformation of an article is present, the claims are at least nominally styled as system claims.

For guidance on system claims, we look instead to the precedential Ex Parte Gutta, 2009 WL 2563524 (BPAI 2009). For a machine or manufacture that embodies an algorithm expressed as a series of steps, we are guided, based on Flook, Benson and Diehr, to see if the claim 1) recites a mathematical algorithm applied to a tangible practical application that resulted in a real-world use, and 2) did not encompass substantially all practical applications of the mathematical algorithm. (Ex Parte Gutta 2009 WL 2563524, at *7).

We look to representative claim 1 and notice, as the Appellants point out, that one of the components will notify an individual, computer or other system regarding the obsolescence or risk to EOL of the components of a product. (App. Br. 5-6). We find this notification of the end of life risks of the product to be a real-world use of the system, including the algorithm as claimed. While we do not necessarily endorse the useful, concrete and tangible tests, as addressed by the Appellants, we do find sufficient support for satisfaction of the Ex Parte Gutta test. We thus agree that the Appellants have demonstrated error in the Examiner’s rejection under 35 U.S.C. § 101. (emphasis added)

The Board affirmed the rejection of the claim under 102, however.

December 30, 2009

Instructive 101 case from the BPAI?

Although I try to keep this blog focused mostly on issued patents, today's BPAI decision in Ex Parte Hughes is worth sharing.  In light of last week's precedential Ex Parte Gutta decision, do you think the Board erred when it reversed the examiner's 101 rejection of this claim?

1. An apparatus executing computer instructions for chronicling a portion of an electronic market comprises:

a computer system including

a processor;

a main memory coupled to the processor; and

persistent storage, associated with the computer system, the computer system executing:

instructions for recording a first activity relating to a security interest in an order book in the main memory of the computer system; and

instructions for recording the first activity in the persistent store.

Gutta says that its two-part test applies "if an applicant chooses to claim the manufacture in terms of applying a mathematical algorithm." This claim, when compared to the one held unpatentable in Gutta, may illustrate more precisely what the Board had in mind. Here, the panel found the claim sufficiently tied to a particular machine:

However, each of the independent claims on appeal recites devices, e.g., a computer system, a processor, a main memory coupled to the processor, and a persistent storage, which tie the claims to a particular machine or apparatus, and thus qualify the claims as patent eligible subject matter
Why the different treatment? Perhaps it is merely that Hughes's claim 1 can be seen as (albeit minimally) "tying these steps to...concrete parts, devices, or combinations of devices" since its method actually makes use of those parts (i.e., recording "in the main memory" and "in the persistent store"). In contrast, in Gutta's claim 14, the memory and processor are tossed in simply to encase the method within a "system", and are not at all "tied" to the steps of the method. Also, in Gutta the Board noted particularly that the method is described in the Specification "as a mathematical formula."

One takeaway is that Gutta's holding may not be as broad as originally thought, and that there may be some easy ways to circumvent it (at least until the forthcoming Bilski decision). Of course, with these claims, there's not much "there" there -- the 103 rejections were affirmed, rendering the 101 reversal as little more than dicta. But useful, still.

Query: Has anyone else had difficulty searching the BPAI decision database? For the last week or two, it seems the text searching capability has been ineffective.

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