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Patentable Subject Matter After In re Bilski Patent Prosecution before USPTO Examiners and the Board of Appeals and Interferences Decisions Robert R. Sachs.

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Presentation on theme: "Patentable Subject Matter After In re Bilski Patent Prosecution before USPTO Examiners and the Board of Appeals and Interferences Decisions Robert R. Sachs."— Presentation transcript:

1 Patentable Subject Matter After In re Bilski Patent Prosecution before USPTO Examiners and the Board of Appeals and Interferences Decisions Robert R. Sachs June 16, 2009 It’s the end of the world as we know it, and I feel fine…. REM, Document

2 2 Impact of In re Bilski on Prosecution  101 rejections appearing more frequently, but still randomly  101 Rejections are being pushed by supervisors  Examiners accept claim limitations that the Board rejects  Different Examiners/Supervisors impose different requirements  “Seems like every week we get a different policy instruction from the 101 Advisory Board.”  Examiner in Art Unit 2600

3 3 101 Rejections by Examiners  Example 1: “Independent claim 1 is not tied to a particular apparatus or machine because the steps of computing, locating, verifying and identifying do not necessarily involve the use of a computer or machine. One skilled in the art could interpret "relationships", "sources", and "hierarchical business categories“ as data written out on paper. Therefore, claim 1 is not tied to a particular apparatus or machine. In addition, claim 1 does not transform the underlying subject matter (data) into a different state or thing.”  Example 2: “Here, applicant's method steps are not tied to a particular machine and do not perform a transformation. Thus, the claims are non- statutory.”  Yes, that’s the entire analysis.

4 4 BPAI Decisions Since Bilski  63 Decisions with 101 issues  40 101 rejections affirmed  24 Sua sponte 101 rejections  10 Remands for 101 rejection by Examiner  4 Decisions in direct conflict on Beauregard claims  5 Reversals of 101 rejections  0 Hope for the future…

5 5 Board’s (Ir)rationales  Cornea-Hasegan (MacDonald, Homere, Hughes ) 1. A method, comprising: normalizing by a processor operands a, b, and c for a floating-point operation; predicting by the processor whether result d of said floating point operation on said a, b, c might be tiny; if so, then scaling by the processor said a, b, c to form a', b', c'; calculating by the processor result d' of said floating-point operation on said a', b', c'; determining by the processor whether said d is tiny based upon said result d'; if so, then calculating by the processor said d using software; and if not, then calculating by the processor said d using floating point hardware.  “The recitation of a processor in itself, however, does not tie the process steps to a particular machine. In other words, the recitation of a processor does not limit the process steps to any specific machine or apparatus.”  Fail: The claim is clearly limited to a computer, not a toaster, pencil- paper, etc.  “The steps manipulating other data (floating-point operands) and determining whether to calculate d using floating point hardware are insignificant extra-solution activity.”  Fail: Court completely missed that the point of the invention is determining when to compute the FP value in hardware.

6 6 Board’s (Ir)rationales  Becker (Thomas, Courtney, Siu) 1. An automation system comprising: at least one automation object, each automation object having a hierarchy of components, said hierarchy comprising a first component generating system functionality related to internal services of the system, a second component generating base functionality related to generic services that facilitate manipulation of the at least one automation object, and a third component operable to manage at least one module, wherein each module comprises at least a module component operable to generate a technological functionality.  “To the extent that Appellants’ claims may transform data, we note that transformation of data, without a machine, is insufficient to establish patent-eligibility under § 101.”  Fail: Transformation is ok if the data is for real world entities. The objects here represented physical “engineering systems.”

7 7 Board’s (Ir)rationales  Enekel (Thomas, Blankenship, Dang) 1. A machine-processing method for computing a property of a mathematically modelled physical system, the steps comprising: a)reading, via a machine processing unit, input data including a value… b)b) building, via said machine processing unit, a value of a second… d) outputting, via said machine-processing unit, said value of the first polynomial p(x) representing said property of the mathematically modelled physical system.  Recitation of a “machine processing unit” does not tie the method to a particular machine. Further, there is no article that is transformed by the claim to a different state or thing.”  Fail: Board ignored limitation that the claims call out data representing physical objects.

8 8 More Silliness  Harris (Horner, Fetting, Nappi) 5. A method, comprising: allowing each of accepting bids from a plurality of users to submit bids for a specified item being auctioned, said bids being submitted from any of a number of clients over a network to a server which collects said bids; and defining rules for actions in said auction, said rules including at least a time when the action will take place, and an actual action that will take place at the defined time; and keeping the rules secret until the defined time.  “Similarly, the reference to submitting bids to a server in claim 5 within an auction context is not limited to an electronic server, as any auction staff collecting such bids would be (human) servers.”  Fail: ROTFLMHO if I wasn’t ROTFCMEO

9 9 Digital Content is Not Tangible?  Nakamura (MacDonald, Lucas, Thomas) 16. An additional information embedding method, for adding additional information to digital content to determine whether said digital content has been processed, comprising the steps of: generating multiple sets of additional information that are correlated with each other and that correspond to the data form of predetermined digital content; and synthesizing said additional information and content data for said digital content; and wherein the additional information are correlated with each other by a mapping relationship defined by a predetermined function, said predetermined function dependent on a data string, the data string forming a predetermined message.  “ To the contrary, the method steps of claims 16 and 18 can reasonably be interpreted to encompass a human being performing these steps.”  Fail: Completely ignores the reality of the claim for managing digital content  “the digital content acted on by the methods do not represent physical and tangible objects. Rather, the data represents intangible digital watermark expressions.”  Fail: what is a watermark but a specific pattern of physicals bits in digital content?  “Here we do not have a transformation of subject matter but merely an abstract expression that is created from synthesizing two types of digital content. However, such synthesizing does not require any tangible output into the real world…Instead, we are merely looking at transforming one digital representation into another digital representation.”  Fail: “Synthesis” is by definition a “transformation”. Do we pack up now and go home?

10 10 No Regard for Beauregard?  Cornea-Hasegan:  “Appellant’s claim 18 recites a “computer readable media including program instructions which when executed by a processor cause the processor to perform” a method.  Not Patentable: “Limiting the claim to computer readable media does not add any practical limitation to the scope of the claim.”  Li:  “A computer program product, comprising a computer usable medium having a computer readable program code embodied therein”  Patentable: It has been the practice for a number of years that a “Beauregard Claim” of this nature be considered statutory at the USPTO as a product claim. (MPEP 2105.01, I).

11 11 What’s a Particular Computer?  Borenstein (Crawford, Walker, Mohanty) 1. A method for providing catalog information for presentation to a user of a store in an electronic commerce system, comprising the steps of: storing a first portion and at least a second portion of said catalog information in said store and in at least one profile store, respectively, to share said at least one second portion of said catalog information between said store and at least one second store; and storing path information defining a sequential relationship between said store and said at least one profile store for retrieving said catalog information for said store.  “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.  “As independent claim 15 recites a computer program product, it is not a method claim that must be analyzed under In re Bilski.”

12 12 What’s a Particular Computer?  Buhan (Dixon, Lucas, Courtney) 1. A method for storing content encrypted by control words in a receiver/decoder unit having a local storage unit and being connected to a security unit, said control words as well as a necessary right for the access to the content being transmitted in entitlement messages that can be decrypted by system keys, the method comprising storing the encrypted content as well as the entitlement messages in the storage unit, and storing in the storage unit the system keys in encrypted form, the system keys being encrypted by predefined local key contained in the security unit.  “ “We note a receiver/decoder unit having a local storage unit is mentioned in the preamble, which storage unit is embodied in the first step of storing the encrypted content. We also note in the preamble a security unit, which is embodied in the second step of storing the system keys. Both the local storage unit and the security unit constitute tangible, solid, real-world machines, the former exemplified by a magnetic hard disk, and the latter by a smart card (See Fig. 1). We find these elements sufficient for satisfying the “particular machine” prong of the Bilski machine or transformation test.  “

13 13 The Rules of the Board  Any type of digital information can be characterized as abstract and unrelated to physical objects.  Recitation of a processor, memory, and conventional components won’t save you.  But recitation of hardware elements in a cooperative relationship just may.  Beauregard claims will get Bilski review—and you better claim “storage” medium. 50/50 chance from there.  Digital data is “abstract”.  Like your bank account or your 401k is abstract.

14 14 The Rules of the Board  “Insignificant” post solution activity is anything the Board says it is.  But they will likely accept “displaying a visual depiction” of the output. Whatever.  The Board will completely ignore “what one of skill in the art” would understand a claim to mean.  Servers are “humans”  If there is a possible interpretation of the claim—no matter how strained—that reads on human activity—then the claim is unpatentable.  Auditory signals covers human voice.  “ Data structure” claims are “non-functional descriptive matter.” Warmerdam requires “a physical, interconnected arrangement of hardware. ”

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