The U.S. Court of Appeals for the Federal Circuit in In re Bilski (see IP Update, Vol. 11, No. 11), substantially modified the test for patent eligibility of process claims, creating a new “machine or transformation test.” In one of its first precedential cases applying the new Bilski test, the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences (the BPAI or Board) has explained its evolving views regarding of the effect of the Bilski decision on computer-based process claims. Ex parte Koo, Appeal No. 2008-1344 (BPAI, Nov. 26, 2008) (Jeffery, APJ).
Koo filed a patent application claiming, among other things, a “method for optimizing a query in a relational database management system.” Koo appealed to the Board to overcome a rejection for obviousness under § 103. Although agreeing with Koo that the § 103 rejection was not appropriate, on its own initiative the Board raised a new basis of rejection against the application¾subject matter ineligibility under § 101.
Applying the framework set forth in Bilski, the Board concluded that since the claim recited a method, it was a statutory process claim and therefore subject to the “machine or transformation test” for patent eligibility. Under the first prong of this test (i.e., was the claim limited to a particular apparatus), the Board concluded that a nominal recitation of a “system” in the preamble did not limit the claim to a particular machine or apparatus. Rather, applying the “broadest reasonable interpretation” of the claims, i.e., the standard used during U.S. Patent and Trademark Office (USPTO) examination, the BPAI concluded that the recited “system” could be a software system, with steps such as “evaluating,” “determining” and “reforming” being implemented in software or algorithms. Under the second prong of the Bilski test (whether the claimed method resulted a transformation of something), the Board concluded that the claims did not transform an article, or even transform data or signals (which under Bilski would further have to represent physical articles). Thus, the Board concluded that some of the claims on appeal were not patent eligible under § 101, leaving the examiner to reconsider the patentability (or patent eligibility) of the remaining claims.
Practice Note: Where a computer-related method claim is capable of a construction that does not require use of a “particular machine or apparatus,” the USPTO may assert § 101 subject matter ineligibility. As demonstrated above, the mere mention of a “system” in the preamble may not be enough to save the claim from being subject to the two-part Bilski analysis for subject matter eligibility.
Of related interest is a one-paragraph affirmance by the Federal Circuit based on Bilski. In Classen Immunotherapies v. Biogen IDEC, Case Nos. 06-1634, -1649 (Fed. Cir., Dec. 19, 2008) (Moore, J.) (nonprecedential), in the context of claims directed to a “method of determining whether an immunization schedule affects the incidence or severity of a chronic immune-related disorder,” the Federal Circuit affirmed to a ruling of ineligibility under §101 on the ground that the claims failed the Bilski machine or transformation test.