12:01 Tuesday

Latest Tool to Fight BPAI Backlog: Laziness?

Today's decision in Ex Parte Schmieding (assignee: Naples, Fla.-based Arthrex, Inc.) may set a record for shortest BPAI decision on the merits. Here's the decision in its entirety:

DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims 1 and 6-14. Claims 14 and 16-20 were “withdrawn from consideration but not canceled” (App. Br. 2; Reply Br. 2). We have jurisdiction under 35 U.S.C. § 6(b). The Examiner rejected claims 1 and 6-13 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Cerundolo and Johnson. Upon consideration of the evidence on this record and each of Appellant’s contentions, we find that the preponderance of evidence on this record falls in favor of Appellant for the reasons set forth in Appellant’s Brief and Reply Brief. Accordingly, we reverse the rejection of record. REVERSED

That's it. Even the Federal Circuit, through its powerful "Rule 36", can only use it to affirm decisions, not to reverse them, as the Board has done here.

If anyone is aware of similar (or even shorter) BPAI decisions on the merits, please share.

IBM and the Art of Arbitrary Application of Abstractness

Quiz: Which of the two following IBM claims do you think is more “abstract”? Which one do you think the BPAI sua sponte rejected under Section 101?

A. A computer-implemented method of responding to a problem condition, comprising: automatically detecting availability of a first candidate to respond to a problem condition; responsive to the detecting: automatically assigning responsibility for the problem condition to the first candidate; and receiving a confirmation from the first candidate indicating acceptance of responsibility for the problem condition.

B. A method for integrating file system events into a database management system (DBMS), comprising: designating a file of interest; detecting a file state change event associated with the file of interest; updating a file events table of a database upon a detection of the file state change event; generating a database trigger upon a change in the file events table; and updating the database with data from the file of interest upon receipt of the database trigger.

Commentary: On the surface, claim (A)’s “computer-implemented” preamble pays some lip-service to concreteness, but otherwise includes only apparently abstract concepts of “candidates,” “problems” and “responsibilities.” Meanwhile, claim (B) includes a somewhat 'particular' “DBMS,” a “database” and “file events.” Easy, right?

But as you might expect with non-precedential decisions (as all but a handful of BPAI cases are), outcomes can be very panel-specific and leave you scratching your head. Here, the Board said nothing regarding the patentability of claim (A)'s subject matter, while reversing a 102 rejection. Ex parte Herbeck.

Only two weeks earlier, in Ex parte Vishnubholta, a different three-member panel affirmed a 102 rejection for claim (B), but added a new rejection under 101. In particularly strong language, the Board found

"[T]he claim fails to recite a machine or transformation of an article of manufacture…Rather, [the claim elements and limitations] are merely abstract ideas that comport with the teachings of Bilski."

Adding insult to injury, the Board went even further, finding that

"[T]here is not even a machine or transformation recited in independent claim 1 that would have qualified as 'insignificant extra-solution activity.'"

In the NFL, this behavior might warrant a 15-yard penalty for taunting the sacked quarterback.

Perhaps the Board was trying to demonstrate the breadth of 101 rejections: in addition to the Bilski rejection for abstractness, the panel also rejected a Beauregard claim under Nuijten for including "signal waves", and affirmed the rejection of a system claim as "software per se" under Warmerdam. Three claim types; three demises under 101.

While another precedential BPAI decision on abstractness could be immensely helpful in the wake of Bilski, if that decision is anything like Vishnubholta, it could signal a tough road for many software patents.