BPAI Affirms "Apparatus" 101 Rejection

The BPAI once again expanded the application of Bilski beyond method claims this morning, with an affirmation of an examiner's rejection of a "Text to XML transformer."  It's worth the read, and seems to fall in line with the Ex Parte Miyazaki holding about functional claiming (i.e., you better have some real structure there).  There it was about 112/6.  Here, for 101, the Board said, "At most, we find nominal recitations of structure in the claims."

The case is Ex Parte Snyder, for an application assigned to XAware, Inc.  I'll leave the commenting to others while I work on today's patent issuances.  But I will give one practice tip we can learn here:  When fighting a 101 rejection, don't include the following argument in your appeal brief:

"The Patent Office has failed to grasp the simple fact that a computer program run by a general purpose computer could just as easily be a hardwired circuit. There is no question that a hardwired circuit is patentable. Clearly the Patent Office is still wasting everyone’s time and money by not acknowledging that computer implemented Products are clearly statutory. A computer running a program that does not function to provide just “printed matter[,]” is clearly a Machine as defined by the statute 35 USC 101."

5/13/2009 UPDATE - Compare this decision, striking an apparatus under 101, with the newly precedential Ex Parte Catlin, which struck down a method claim under 112, following WMS Gaming/Aristocrat logic about means-plus-function claims lacking sufficient algorithmic structure.  In particular, see Footnote 2:

If the first step of these method claims were found not to invoke 35 U.S.C. 112, sixth paragraph, then the step simply recites purely functional language and would impermissibly cover every conceivable act for achieving the claimed result, and the scope of the claimed step would not be enabled under 35 U.S.C. 112, first paragraph.

Does this imply that Snyder's rejection really should have been under 112 for enablement, rather than 101?