Recent Board Decisions on § 101 Show Generally Consistent Approach (and some inscrutability with respect to business-related processes)
From time to time it is instructive to review how the BPAI is dealing with software § 101 issues. Thirteen recent decisions are summarized further below. A few observations from these cases include:
- Almost all claims on appeal for § 101 issues involved method claims or program product claims that did not include a limitation to a “non-transitory” medium.
- Claims that were clearly limited to computer apparatus implementations were found § 101 compliant.
- Program product claims that were not limited to non-transitory mediums were found non-statutory.
- Software limitations that are not expressly tied to execution on a computer or other machine, even if they imply computer implementation, will invite § 101 rejections, and may render the claim non-statutory in the Board’s view.
- At least one method claim to a business related process, in this case an order management process, was rejected under § 101 even though it appeared to be clearly limited to an “electronic” implementation - see notes on Serial No. 11/758,521 below. In this particular case, the Board affirmed the rejection of the subject claim under § 101 by disqualifying a number of the limitations as mere “data gathering steps” or “data output steps.” On a different day, or with a different panel, its conceivable this case could have just as easily passed muster under § 101 as opposed to being rejected. On the other hand, it did involve method claims not tied to a machine implementation per se.
Presented below are the case summaries:
11/563,897 – Affirmed
This application was directed to apparatus and methods for facilitating communication between a managed system and multiple management systems. The examiner rejected the following claims under § 101:
7. A method, comprising: updating a logical system entity in response to an attribute value change indication from a physical system entity; and in response to updating the logical system entity, triggering a protocol entity of a protocol agent to send at least one notification to a management system using a protocol associated with the protocol agent, wherein the protocol entity is triggered using at least one mapping between the logical system entity and the protocol entity.
9. The method of claim 7, wherein the at least one mapping between the logical system entity and the protocol entity comprises a mapping between (1) at least one of an object, an attribute, and an attribute value of the logical system entity, and (2) at least one of an object, an attribute, and an attribute value of the protocol entity.
10. The method of claim 7, wherein the logical system entity forms a portion of a protocol-independent information model.
11. The method of claim 7, wherein the protocol agent comprises a protocol-specific information model associated with the protocol, wherein the at least one notification is formatted using the protocol-specific information model.
The examiner, relying on the machine-or-transformation test, determined that no machine is present and asserts that the “managed system” is not hardware but the type of data being processed. The Board affirmed the examiners determination because the “managed system” in the claims is not performing any step of the claimed method. The Board also notes that there is no other machine in these claims that is necessary for the performance of the method.
11/850,192 – Affirmed
This application claimed computer readable medium without including the limitation of “non-transitory.”
10. A computer readable medium comprising code segments to be executed by a computer . . . .
The examiner gave the claims the broadest reasonable interpretation and rejected the claims under § 101. The applicant did not attempt to amend the claims to include the limitation. There is not much here for discussion by the Board because it must affirm the examiner in this situation.
11/758,521 – Affirmed
This application was directed to an order management system. The claims rejected under § 101 are method claims.
- A method of rendering a progress, through a plurality of separate entities each linked by a network to a display and a data repository, of an order of a user for a custom made product carried in inventory, the method comprising:
electronically receiving, via said network, purchase order information:
associated with the order that is generated by a first said entity of the plurality of separate entities; and
a specification of the user for the custom made product; and
a delivery address of the user;
electronically receiving, via said network, order status information associated with the order that is generated by a second said entity of the plurality of separate entities;
electronically receiving, via said network, manufacturing status information associated with the order that is generated by a third said entity of the plurality of separate entities;
electronically receiving, via said network, shipper status information associated with the delivery of the custom made product to the delivery address, wherein the shipper status information is generated by a fourth said entity of the plurality of separate entities;
electronically storing in the data repository the received purchase order information, the order status information, the manufacturing status information, and the shipper status information; and
in response to an input of the user, forming a first transmission for delivery via the network, wherein the first transmission includes data sufficient to electronically rendering, on the display, a current status of at least one of the purchase order information, the order status information, the manufacturing status information, and the shipper status information.
- The method of claim 1, wherein the user is an end customer purchasing the custom made product.
The Board determined that: (1) the receiving steps were mere data gathering, which represent insignificant extra-solution activity, (2) the storing steps could be performed by a person mentally based on the broadest reasonable construction, and (3) the forming step was determined to merely perform an output step. The dependent claims were determined to include field-of-use limitations that were not sufficient to render the process patent-eligible.
11/540,769 – Reversed
This application was directed to a system and method to implement real-time bidding using instant messaging. The first group of rejected claims recited an instant messaging server that included instructions to communicate with a market place environment and a client machine.
- A system comprising:
an instant messaging (IM) server including at least one processor and memory including instructions to:
communicate with a market place environment via a first communication channel and to communicate with a client machine via second communication channel, the first and second communication channels using a real-time communication protocol, at least one of the first and second communication channels being a secure channel;
communicate an event notification instant message in response to detecting a predetermined event including at least a bid placed on a listing watched by a user to the client machine; and
communicate a bid to the market place environment via the secure channel.
The second groups of rejected claims recited a processor-implemented method for real-time bidding:
- A processor-implemented method comprising:
at a network-based commerce system including at least one processor and memory storing instructions, the at least one processor executing the instructions to perform the operations of:
detecting a predetermined event including at least a bid placed on a listing watched by a user;
communicating an event notification related to the detected predetermined event via a first communication channel between the network-based commerce system and a client machine of the user using a real-time communication protocol; and
accepting a bid in response to the event notification via a second communication channel between the network-based commerce system and the client machine of the user using the real-time communication protocol, the second communication channel being a secure channel.
The Board reversed the examiners rejection because the examiner essentially combined § 101 and § 112 in his analysis. The Board also rejected the examiners assertion that propagating signals were within the scope of the recited instructions because physical memory within the server was explicitly recited for storing. The Board also found that the second set of claims is narrower than an abstract concept because it is directed to a processor-implemented method that is performed on a particular machine.
12/055,540 – Reversed
This application was directed to networked mail processing systems that operate to increase efficiency. The claims rejected under § 101 were method claims. The rejected independent claim was:
9. A method for providing a sender of a mail piece with a recipient address within a recipient entity, the sender and recipient entity each having a respective mail processing system coupled to a network, the method comprising:
receiving at the recipient entity mail processing system a request from the sender mail processing system for the recipient address within the recipient entity;
comparing, in the recipient entity mail processing system, information included in the request with information stored in a database to determine, based on the information included in the request, a correct recipient address; and
providing the correct recipient address from the recipient entity mail processing system to the sender mail processing system.
The examiner concluded that this method failed the machine-or-transformation test because the “mail processing system” is not particular in the context of the claim and fails to disclose a transformation. The Board disagreed because the steps of the method required the use of the processing system. The Board reached this conclusion by looking to the specification, which included a specific discussion of the processing that is performed. The mail processing system was determined to be a special purpose computer or “particular machine” sufficient to satisfy § 101.
This appeal was filed prior to the Bilski opinion. The Board left the § 101 question to the examiner if there was to be further prosecution. The claims to be subjected to 101 analysis were all claims to computer-readable storage medium.
14. A computer-readable storage medium carrying on or more sequences of instructions which, when executed by one or more processors, causes the one or more processors to perform the method recited in Claim 1.
As noted in one of the opinions above, these claims were indicated § 101 compliant if the limitation “non-transitory” was inserted. Other claims to a computer-implemented method for detecting changes to the result query expression computed by a database server passed under § 101 and were rejected under §§ 102 and 103.
11/009,339 – Affirmed
This is another application that claimed a computer readable storage medium without the “non-transitory” language.
25. A computer readable storage medium comprising computer code for implementing a method of sharing access to a cluster of computers, the method of sharing access to the cluster of computer comprising the steps of . . . .
11/483441 – Affirmed
This application was directed to a computer client application for interfacing with an online dating database of profiles.
- A dedicated computer client application for interfacing with an online dating database of profiles, comprising:
a window displayed on a client computer desktop of an operating system executing in a computer, the window being displayed in connection with an online dating computer application executing by the operating system, the window covering only a portion of the computer desktop and no more than one-quarter of the computer desktop;
a summary profile from an online dating database communicatively coupled to the computer over a computer network, the profile being displayed in said window, said summary profile being derived from a profile of a member in the online dating database matching a criterion; and
a button disposed in said window and associated with said summary profile, said button inviting said member to add the user to a match list of the member and the user.
During prosecution, the examiner determined that the claimed application encompassed software per se and is not statutory. There was confusion as to whether the claims were to a process or a machine. The applicant asserted in the Appeal Brief that the “client application” constituted a process. However, the applicant stated that the “client application” was a machine in the Reply Brief. The Board determined the argument that the “client application” was a machine was not timely filed and was not considered. Therefore, the Board affirmed the examiner’s rejection. The rest of the claims in the patent application depend from claim 1 and were also rejected under § 101.
11/875,758 – Affirmed
The claims rejected under § 101 were directed to a system for managing multiple email addresses, but were written as method claims. The claim language is:
8. A system for managing multiple email addresses, the method comprising:
email addresses selected, on a user computer system having an email client interface, for an email to be sent through a computer system in communication with the mail server, wherein the email addresses comprise an email distribution list;
an interrogation module, associated with the email client, for querying, before sending the email, for duplicate contacts associated with any of the email addresses in the email distribution list for the email;
an update module, associated with the interrogation module, for updating the email distribution list to the email addresses left in a remaining email distribution list produced through removal, if any, of the duplicate contacts identified by the querying by the interrogation module; and
a completion module for sending the email to contacts associated with each of the email addresses in the remaining email distribution list in communications with the mail server.
The examiner determined that this independent claim did not contain a concrete structure so it did not merely claim software in the abstract. The applicant argued that the “user computer system having an email client interface” constituted hardware. The Board agreed with the examiner that the “computer systems” were not tied to any of the modules and were not otherwise claimed as part of the system. The Board stated that the “email addresses” were the system component and are software. The Board also stated that none of the modules recited include hardware. All other claims dependent on claim 8 were rejected too.
10/854,532 – Reversed
The claim rejected under § 101 was directed to a telecommunication system.
11. A telecommunication system, comprising a first endpoint for compressing application messages to be transmitted on a transport layer, and a second endpoint for decompressing application messages received from the transport layer, wherein
said first endpoint is configured to transfer from at least one application client at least one application message to a compression entity configured to compress application messages according to a signalling compression method; compress said at least one application message according to said signalling compression method; transfer the at least one compressed application message back to said at least one application client; and transfer the at least one compressed application message to a transport layer to form a transport layer data packet stream including at least one application message compressed according to said signalling compression method;
said second endpoint is configured to receive transport layer data packet stream including application messages, at least one of the application messages being compressed according to said signalling compression method; transfer the received transport layer data packet stream to at least one application client; identify uncompressed application messages directed to said at least one application client; transfer unidentified application messages to a decompression entity configured to identify and decompress application messages compressed according to said signalling compression method; decompress said at least one application message compressed according to said signalling compression method; and transfer the decompressed application messages back to said at least one application client.
The examiner found that the claimed system comprising of endpoints is software per se after consulting the Specification. As written in the claim, the endpoints do not contain physical components. However, the Board determined that the Specification defined the endpoints as “user equipment.” The Board determined that the endpoints were articles of manufacture and not pure software.
10/876,215 – Affirmed
The majority of claims rejected under § 101 were directed to a method for schedule shifting.
34. A method for scheduling shifts, the method comprising:
establishing parameters for a first program in a multi-institution scheduling system, the parameters including a list of other programs associated with the first program; and
creating a shift for the first program including selecting other programs from the list of associated programs that have access to the shift for scheduling at the same time as the first program has access to the shift for scheduling.
The examiner determined that the method was not tied to a particular machine or apparatus and did not transform an article into a different state or thing. A “multi-institution scheduling system” is listed in the independent claim and this system is described in the Specification as “clearly a machine or apparatus” according to the applicant. The Board stated there was not a tie to the method and refused to import limitations from the Specification. This seems to be at odds with how the Board panel handled the 10/854,532 application.
Another independent claim rejected under §101 was directed to a computer readable medium.
44. An article of manufacture comprising:
a computer readable medium bearing code embodied therein for a multi-institution scheduling system and including . . . .
The Board affirmed the rejection here because the applicant did not limit the scope of this claim to only include non-transitory signals.
10/460,955 – New Ground for Rejection
This opinion was different than the others because the Board entered a § 101 rejection as a new ground of rejection. The rejected claims were directed to methods for responding to queries and generating an abstraction hierarchy.
25. A method that facilitates generating responses to queries, comprising:
receiving a query;
processing the query for informative terms; and
mapping the query into an abstraction hierarchy in accordance with a distribution of potential answer terms, to facilitate identifying an answer term to the query.
38. A method of generating responses to queries, comprising:
receiving a question;
extracting a term from the question;
generating a table of potential answers from a question/answer hierarchy, the table including the potential answers in which the term occurs;
testing the table of potential answers for a discriminating term;
storing the discriminating term as an informative term;
ranking a plurality of the informative terms by relevance to a potential answer to the question; and
utilizing one of the informative terms to find the potential answer.
41. A method of generating an abstraction hierarchy, comprising:
receiving an existing abstraction hierarchy of nodes of questions and corresponding informative terms;
receiving a new question;
generating informative terms for the new question;
calculating a similarity value between the new question and every question in the existing abstraction hierarchy; and
grouping the new question with the most similar question in the existing abstraction hierarchy based on the similarity value.
The Board determined that all of the steps of the independent claims could be performed in the human mind. The claims also failed to expressly require the method to be performed by any machine.
11/011,373 – Affirmed
The claims rejected under §101 were directed to a method of playing a casino game.
1. A method of playing a casino game, comprising:
(a) receiving at least a first wager for at least a first playing mode, the first playing mode being compulsory; and
(b) receiving at least a second wager for at least a second playing mode, wherein the second playing mode is without a house advantage;
(c) dealing playing cards to at least one player, dealing at least one non-player card, and forming a player hand;
(d) resolving the first wager according to a poker rank of the player hand against a payout scale; and
(e) resolving the second wager without a house advantage according to the poker rank of the player hand against a poker rank of another player hand.
The examiner determined that claims did not satisfy either prong of the machine-or-transformation test. The only arguable step was that of “dealing playing cards.” The relationship of the cards to the method depends only on the information displayed, not the machine or apparatus conveying the information. The Board held that “dealing playing cards” did not tie the method to a particular apparatus or machine. The Board stated that this was an attempt to preempt the use of all machines and processes employing this particular manner of wagering. The applicants only argument seemed to be that the machine-or-transformation test was dismissed by Bilski.
My thanks to Kyle Helgemoe from William Mitchell College of Law for researching and summarizing the cases.