The U.S. Court of Appeals for the Federal Circuit in In re Bilski (see IP Update, Vol. 11, No. 11), modified the test for patent eligibility of process claims, but left unresolved whether or when recitation of a computer suffices to tie a claim to a “particular machine.”  In a series of recent decisions, the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences (the BPAI or Board) has considered the issue and found computer-related method claims as failing the machine prong of the Bilski test.

In Ex parte Gutta, Appeal No. 2008-3000 (BPAI, Jan. 15, 2009) (Pate, III, APJ), the applicant claimed a “computerized method performed by a data processor” for recommending items to a target user, based at least in part on the selection history of a third party, and displaying the result.   The Board raised a new ground of rejection against the claims under § 101.  The Board characterized the recitation of a “computerized method performed by a data processor” as a field-of-use limitation in which a general purpose computer is associated with the method steps in an unspecified manner.  The step of “displaying” was characterized as insignificant post-solution activity that need not be performed by any particular structure.

Ex parte Barnes, Appeal No. 2007-4114 (BPAI, Jan. 22, 2009) (Silverberg, APJ) dealt with a “fault identification method” that identified faults in a volume of seismic data.   Again, the Board, citing Bilski, raised § 101 as a new basis of rejection.  The Board noted that the claims “call for the gathering, analyzing and displaying of data without any details as to how the data is gathered, analyzed or displayed.”  The Board determined that the claims did not specifically call for a machine, but instead were drawn to “analyzing of data.”  According to the Board, a “claim that is drawn only to the analyzing of data … seeks to pre-empt the use of a fundamental principle.”  Additionally, displaying of data “without more (e.g., a reference as to how and why it is displayed)” was deemed “insignificant postsolution activity.”  Based on these remarks, the Board decided the claims failed the Bilski patent eligibility test.

In Ex parte Becker, Appeal No. 2008-2064 (BPAI, Jan. 26, 2009) (Siu, APJ) the Board again issued a new ground of rejection under § 101.   The rejected claims recited a “method for creating a hierarchically structured automation object and embedding said automation object into an engineering system.”  The Board indicated even if the claims did transform data, that “transformation of data, without a machine, is insufficient to establish patent eligibility.”  The Board concluded that the claims failed the Bilski test, as they did not require a particular machine or apparatus, nor transformed an article into a different state or thing.

Ex parte Atkin, Appeal No. 2008-4352 (BPAI, Jan. 30, 2009) (Martin, APJ) is the second Board decision extending the Bilski test for eligibility of process claims to apparatus claims.  The first such decision, Ex Parte Cornea-Hasegan (see Practice Note for In re ComiskeyIP Update, Vol. 11, No. 12 ), relied on a portion of In re Comiskey which was subsequently revoked by the Federal Circuit.  In Atkin, the Board first rejected claims directed to a “method for converting a unidirectional domain name to a bidirectional domain name” as simply manipulating a series of characters, without being tied to a machine or transforming an article.  Then, the Board issued twin rejections under §§ 101 and 112 against claims directed to a system.  The Board declared that the term “system” may be broadly interpreted as including a method, rather than simply an apparatus, and decided that elements such as “a label definer,” “an inferencer” and “a character reorderer” did not imply any particular structure, “encompass any and all structures for performing the recited functions” and “are at least as broad as [the] method claims.”  Thus, the system claims were rejected on the same grounds as the method claims and were further deemed not enabled.  The Board left the examiner to consider whether additional claims directed to a computer readable medium having data stored in it (known as “Beauregard claims”) are patent eligible.  Such claims have received mixed treatment by the Board under Bilski.

Ex parte Nawathe, Appeal No. 2007-3360 (BPAI, Feb. 9, 2009) (Homere, APJ) dealt with a “computerized method” for representing multiple documents as fixed sets of tables in a relational database.   In this appeal, the applicants specifically argued § 101 eligibility, including a machine-or-transformation test for eligibility, although (as a result of the timing of the appeal) not in view of Bilski.  The Board determined the term “computerized” related to “a general purpose processor … as opposed to a particular computer specifically programmed for executing the steps of the claimed method.”  Further, the Board stated “the documents are not an article (i.e., physical entities).  Rather, they are mere data that represent such entities.”  Thus, the method claims were rejected under the Bilski test.  In contrast, similar apparatus claims, with elements written in “means-plus-function” form, identified as corresponding to modules in a computer, were deemed eligible because the claims recited “a physical apparatus with physical modules for transforming a data structure” and consequently were not directed to an abstract idea.

Practice Note:   Thus far, the many Board decisions rejecting computer-related method claims have not provided guidance as to how such claims may be presented in such a manner as to satisfy Bilski.  Typical computer-implemented method claims are at risk to be found not tied to a “particular machine,” merely imposing a field-of-use limitation or involving insignificant post-solution activity.  Moreover, the Board seems comfortable with the concept of expanding Bilski beyond process claims.  Thus far, § 112, ¶ 6 claim elements (that are statutorily structural recitations) combined with adequate disclosure of corresponding structure (to avoid § 112, ¶ 2 issues) appears to be the safest (if not wholly satisfactory) route ensure subject matter eligibility under Bilski.