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.