In a decision applying the Bilski “machine-or-transformation test” (see IP Update, Vol. 11, No. 11), the U.S. Patent and Trademark Office’s Board of Patent Appeals and Interferences (the Board) continued its practice of invalidating computer implemented method claims under § 101. Ex parte Gutta, Appeal No. 2008-3000 (BPAI, Jan. 15, 2010) (Pate, III, APJ).

The application included claims directed to a “computerized method performed by a data processor,” including steps directed to obtaining, partitioning, modifying and processing user selection histories, then generating and displaying a score based on the histories. The applicants appealed to the Board to overcome a rejection under § 102. Although the Board agreed in part with the applicants on anticipation, on its own initiative the Board raised a new rejection against the method claims as patent ineligible under § 101.

Applying the machine prong of the Bilski test, the Board sought to identify claim limitations using a specific machine in a manner that imposed meaningful limits on the scope of the claims. The Board found that recitation of a “computerized method performed by a data processor” was merely a field-of-use limitation that did not impart eligibility. Of the claimed steps, the Board indicated that only the “displaying” step might have tied the claims to a particular machine. However, the Board found that the recited displaying step “need not be performed by any particular structure” and “may be accomplished simply by writing the resulting score on a piece of paper.” The Board further concluded the step was mere post-solution activity insufficient to impart eligibility. Under the transformation prong of the Bilski test, the Board found the data used by the method represented intangible histories, not physical and tangle objects as required under Bilski.

Practice Note: The U.S. Patent and Trademark Office (USPTO) recently issued guidelines for examination under § 101 (seeIP Update, Vol. 12, No. 9 ). The guidelines explain that computer-implemented process claims can successfully provide a “particular machine” under Bilski. Specifically, the guidelines indicate a “particular machine” exists if a “claim clearly convey[s] that the computer is programmed to perform the steps of the method.” For example, Gutta’s claims may have satisfied the Bilski test if it had been clear that a computer performed the displaying step. However, the future is uncertain for either the Bilski machine-or-transformation test or the interim guidelines in view of the forthcoming decision from the Supreme Court in Bilski. (See Hot Topic dated November 10, 2009 ).