Some Tidbits

Welcome, Patently-O readers (i.e., everybody)!  Thanks to Prof. Crouch's writeup on Friday, I now have a taste of what a novelist must feel when his book is featured by Oprah.  Dennis, I promise I'll come on your show and let you chastise me for my fabrications when they're discovered.

Though I'd prefer to not write "what this blog is about" (I'd rather just write the content than the meta-content), based on some of the comments generated by the Patently-O post, I thought a few points were in order:

• Positive, not normative.  Everybody has an opinion of how things should be, and there are a ton of blogs that discuss why a particular policy or court decision is good or bad.  This blog isn't one of them.  Instead, I'm trying to limit my analyses to simply reflect what is.  With respect to Bilski, this simply means that I'm looking at claims in light of the machine-or-transformation test as I understand it, without comment on what might be a better 101 test.  It's not pro-patent or anti-patent.  It just is.

• 1201 Thursday?  One commenter noted the analogy that Tuesday:Issued Patents :: Thursday:Published Applications.  That's true, and there are several newshounds who scope out publications to see what competition is up to (see, e.g., all the stories about Apple patent filings).  While these new publications may be interesting from a technology perspective (though often not, due to the 18 month delay), they typically have not been examined and therefore aren't as instructive for my needs.

• BPAI Decisions.  I've been following these pretty closely, too.  Some of the Bilski-citing decisions, particuarly when that issue is raised sua sponte, are enlightening on the 101 front.  Though of less significant value, I have also tried to note cases where 101 was not raised by the post-Bilski BPAI (e.g., Ex parte Shuler and its "cattle information server", and Ex parte Dutta (IBM!) and its clearly defined "registration server").  But I generally won't discuss those decisions here, as there are other blogs with that more specific focus, such as Leigh Martinson's BPAI Watchdog.

• One BPAI Decision.  In my first exception to the above limitation, (I said "generally" for a reason...) there was a decision on Friday that helped answer a question I'd had for a while: Can the particular machine be implied by context or inherent in other claim terms?  In Ex parte Borenstein (IBM yet again), the Board dealt with 101 rejections for both utility and non-patentable subject matter.  The most useful passage is as follows:

Regarding the non-statutory test, while the storage of information in independent claim 1 could arguably be done as a mental process, the recitation of a structured relationship between multiple stores that requires 'path information' inherently implies that this information must be stored on a computer or database.  This 'particular' computer or database is sufficient structure to meet the machine prong of the machine-or-transformation test of In re Bilski.

Of course, the Board affirmed the 103 rejections, so this may all just be dicta.  But noteworthy nonetheless, and probably is good argument to use with your next Examiner interview after a 101 rejection.