A series of recent decisions provides some insight into how the U.S. Patent and Trademark Office, in particular the Board of Patent Appeals and Interferences (the BPAI or Board), is handling §101 issues in the wake of last summer’s Bilski decision in which the U.S. Supreme Court held that the U.S. Court of Appeals for the Federal Circuit had improperly made the so-called "machine-or-transformation" test the sole test for determining patent-eligible subject matter.

In Ex parte Kelkar, Appeal No. 09-004635 (BPAI, Sept. 24, 2010) (Adams, APJ), the claims related to a method for determining similarity between portions of gene expression profiles and related program product claims. The Board determined that the method claims failed both prongs of the so-called machine-or-transformation test. Although the preamble stated the method was "in a computer," this was considered to be a field-of-use limitation that did not impart eligibility. The Board also concluded the method claims were directed to an ineligible abstract idea; a mathematical algorithm. Although the algorithm was applied to a defined type of data, the Board concluded that limiting the use of a formula to a particular technological environment did not impart eligibility. As to the recordable medium (so-called Beaureguard) claims, the Board agreed with the examiner that the recited "code stored on a recordable media" read on a "carrier wave storage" and therefore encompassed ineligible transitory subject matter.

Ex parte MacKenzie, Appeal No. 09-007332 (BPAI, Oct. 5, 2010) (Courtenay, APJ) involved an appeal of rejections under §§102 (anticipation) and 103 (obviousness) of the Code, but the Board instead rejected the claims under §101. The Board found the cryptographic method claims ineligible for being "fundamentally directed to a mathematical algorithm." This finding was also extended to apparatus claims on appeal, describing them as merely combining the mathematical algorithm with generic structures. Additionally, the apparatus claims were indicated as "not limited to a tangible practical application" and not "limited so as to not encompass substantially all practical applications … even in one field of use."

In Ex parte Venkata, Appeal No. 09-007302 (BPAI, Oct. 6, 2010) (Homere, APJ), the claims related to a service discovery system. Although the preamble was directed to a "system," the Board agreed with the examiner that the claims encompassed "software per se," which is considered non-statutory material, and not patent eligible.

Practice Note: These appeals illustrate how the Board is approaching a determination of patent eligibility in view of the Supreme Court’s Bilski decision. However, it is noted that the briefing in these appeals was completed prior to the Supreme Court’s Bilski decision and without the benefit of the subsequent guidance provided by the U.S. Patent and Trademark Office (USPTO) to aid applicants in presenting at least computer media claims and computer-implemented method claims that are patent eligible.