Four Ways to Slip Past 101

I sometimes tell people that the hardest thing about writing this blog is deciding what not to post. 
Often, finding good patent examples is like shooting fish in a barrel.  This week is no exception, at least on the Bilski front.  But I’ll limit myself to two patents for now. 

In past posts, I’ve discussed a number of scenarios, trying to explain why—in my opinion—certain claims that should not have been allowed under Bilski (and Comiskey and Nuijten) were, in fact, allowed.  These scenarios can be categorized into at least four groups:

A: The Arbitrary Label (e.g., replace “general purpose computer” with “widget information retrieving engine”)

B: The “Helpful” Examiner (e.g., “Here’s what you need to get this allowed…”)

C: The Old Standard (e.g, “This produces a useful, concrete and tangible result…”)

D: The Pure Miss (e.g, 101 is handed up on a silver platter, but the examiner instead ignores it or pulls a Patrick Stefan)

Below are issuances demonstrating the first two categories.  I expect it won’t be long before we have some more examples of the last two.

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Example A: The Arbitrary Label.

In past posts, I’ve noted that to show a machine is “particular”, it is helpful to give it a unique, descriptive name.  The best examples (e.g., “registration server” and “cattle information server”) not only have these specialized labels, but have specifications that disclose these machines in ways that show they are more than just general purpose computers, especially if hardware arrangements are involved. 

But we’ve also seen the opposite extreme, where it is clear that merely giving a fanciful moniker to what may be an otherwise ordinary machine does not suffice (see e.g., today’s BPAI Ex parte Labadie decision, where a “collaborator” didn’t cut it).  As they say, such a renaming “exalts form over substance.”

So what do we make of the following claim?

U.S. Patent No. 7,529,709  Systems and methods to facilitate a transfer of a refund amount from an educational institution to a student Assignee: Higher One, Inc. (New Haven, CT) 1.  A computer-readable medium having computer-executable instructions executed on a computer processor to control a transfer of a refund amount from an educational institution to a student, said instructions comprising: receiving at a refund controller that is independent from an educational institution a request from the educational institution for authorization of an instant paper check drawn on a a soft bank account that is independent from the refund controller of a payment amount equal to at least a portion of a total refund amount associated with the student of the educational institution; verifying at the refund controller that the payment amount is equal to or less than an amount of funds available to the student; and sending authorization from the refund controller to the educational institution to issue an instant paper check for the payment amount to the student.

Commentary:  First, let’s blow past the fact this is a Beauregard claim to the computer-readable medium, rather than the method itself.  We certainly can’t expect the PTO to give per se blessings to such CRM claims anymore.  So, if there is any machine in there, it’s the “refund controller.”

The specification is mixed on how it defines the refund controller.  On the one hand, it equates the refund controller with non-machines:

The facilitating bank 520 may also receive instructions (e.g., from the university 510 or from a refund controller 540)...

Although the method of FIG. 6 has been described as being performed by a refund controller, note that some or all of the steps might instead be performed by a facilitating bank and/or a university.

Interesting.  On the other hand, with respect to one of the patent’s figures, the spec certainly paints the refund controller as a machine:

As used herein, devices (such as the refund controller and the student devices 760) may communicate via one or more communication networks…

The refund controller and student devices 760 may be any types of devices capable of performing the functions described herein. The refund controller may be associated with, for example, a Web server…

Perhaps most importantly, the “guts” of the refund controller are described with some specificity:

The refund controller comprises a processor 710, such as one or more INTEL.RTM. Pentium.RTM. processors, coupled to a communication device 740 configured to communicate via the communication network 750...The refund controller may also include an input device 720, such as keyboard (e.g., to provide refund search information) and/or an output device 730, such as a monitor or printer (e.g., to provide refund reports).

This passage strongly suggests that the refund controller really is a machine.  So the question turns to its particularity.  And I’m not so sure about that one.  We've seen these kind of "particular" machine before, haven't we?

But it seems clear that the label here helped get this claim over the 101 hurdle, and probably will make for a tougher fight if challenged in litigation.

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Example B: The “Helpful” Examiner

I’ve also noted in past posts about times when examiners appear to pay some lip service to Section 101’s requirements, but are satisfied by fairly minor amendments to the claims.  In their defense, most of these past examples (and today’s) are based on pre-Bilski office actions and responses.  But there have been several post-Bilski cases, too.

Here’s an easy one.

U.S. Patent No. 7,529,703  Method and system for artificial neural networks to predict price movements in the financial markets Assignee: Citigroup Global Markets, Inc. 1.  A computerized method for predicting a price movement in a financial market comprising: generating a plurality of signals, comprising: choosing an output variable indicative of price movements in a financial market; choosing a plurality of input variables that are market-related to the output variable; obtaining market data for the output variable and the input variables over a predetermined time period; constructing at least one training set of data from the obtained market data for the output variable and the input variables; calculating, by the use of a computer, a weight to be assigned to each of the input variables using the at least one training set of data to reflect a correlation between the output variable and the input variable as found in the obtained market data; and transforming the output variable into a score; generating a signal based on the value of that score to predict a next price movement in the financial market based on the calculating of the weights; and predicting the next price movement in the financial market based on a majority of signals being the same.

Commentary: This one speaks for itself in light of the applicant’s pre-Bilski response to the last office action:

Claims 1-6, 16, and 18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.  In accordance with the Examiner’s suggested amendment in the teleconference on July 17, 2008, claim 1 has been amended to recited “calculating, by the use of a computer” in order to overcome this rejection.

Colleagues have told me stories of examiners being similarly satisfied by the inclusion of “computer” language in the past.  (I never encountered any of those examiners, personally.)  But it’s hard to imagine any of them continuing to give applicants such advice today.

Stay tuned for more...