In a recent decision applying the new “machine-or-transformation test” set forth by the Federal Circuit in In re Bilski (see IP Update, Vol. 11, No. 11), the U.S. Patent and Trademark Office Board of Patent Appeals and Interferences (the BPAI or Board) continued its recent practice of invalidating software- and electronic-related method claims under § 101. Ex parte Motoyama, Appeal No. 2008-2753 (BPAI, Feb. 27, 2009) (Dang, APJ).

The application at issue claimed, among other things, a “method for a monitoring device to obtain an identifier of a monitored device,” including steps directed to obtaining, accessing, generating and storing identifiers and information. The applicants appealed to the Board to overcome a rejection for obviousness under § 103. Although agreeing with the applicants that the obviousness rejection was improper, on its own initiative, the Board raised a new rejection against the method claim as ineligible subject matter under § 101.

Applying the framework set forth in Bilski, the Board first concluded that the claim did not fall within the categories of machine, manufacture or composition of matter of § 101. Thus, the method claim was subject to the Bilski “machine-or-transformation test” for eligibility under § 101. Under the first prong of the test, a claim is eligible where it is tied to a particular machine or apparatus. In this case, although the preamble of the claim recited “a monitoring device,” none of the claimed steps required implementation by any machine. As noted by the Board, a reasonably broad interpretation of the claims would include software or algorithmic implementations of the claimed steps.

Under the second prong of the test, a claim is eligible if it transforms a physical and tangible article or data representative of such an article. In this case, the Board found that none of the claimed steps—involving “obtaining,” “accessing,” “generating” and “storing” —performed an eligible transformation. Having failed both prongs of the Bilski test, the method claim was found to be invalid under § 101.

Practice Note: In January, the U.S. Patent and Trademark Office (the USPTO) issued a memorandum to its examiners, revising earlier guidelines for examining claims under § 101. The memorandum explains that the Bilski “machine-or-transformation test” is slightly different from the test previously proposed by the USPTO. The memorandum also notes that “mere field-of-use limitations” and “insignificant extra-solution activity” will not rescue an otherwise ineligible method. The letter advised that revised examination guidelines will be “forthcoming.”