Chaos: Patentable Subject Matter Rejections at the USPTO

The recent trouble with software patents arguably began with the oral arguments in the Microsoft v. AT&T case back in February:

JUSTICE BREYER: I take it that we are operating under the assumption that software is patentable? We have never held that in this Court, have we?

MR. JOSEFFER [DOJ Atty]: No, but as I was saying before -

JUSTICE BREYER: So what should we do here? Should, if we are writing this, since it's never been held that it's patentable in this Court -

* * *

JUSTICE STEVENS: Your time is up, but I want to ask you one yes or no question. In your view is software patentable?

MR. JOSEFFER: Standing alone in and of itself, no.

While the Supreme Court didn't ultimately rule on this issue, the PTO "ran with the ball" over the last year, creating a slew of conflicting rationales over the patentability of specific software and algorithmic processes. By the time the CAFC decided Comiskey and Nuijten, the BPAI was in full assault mode on algorithms. Now, it is becoming apparent that the PTO's issues with software are going to get worse before they get any better.

• In the case of Ex Parte Yang-Huffman (link), decided on October 4, 2007, the BPAI took a unique approach to rejecting the claims, in a manner eerily similar to EPC's Article 52, finding that "software per se" was not patentable subject matter:

The Examiner has made a direct point that the claimed [invention], based on the Specification as filed as well as their own recitation in the respective claims on appeal, directly relate to software elements per se. Appellant has not indicated among the claims rejected what structural relationships are actually stated in the claims on appeal despite his general argument to that affect. Moreover, we do not agree with Appellant’s view that MPEP § 2106 clearly indicates that software is not per se non-statutory. We do not view the claims as being consistent with any permissive language contained within this section of the MPEP. Nevertheless, there is no authority that we know of which permits software per se to be considered statutory within 35 U.S.C. § 101. Appellant’s arguments in the Brief and Reply Brief do not contest the Examiner’s view that the noted features in the claims are actually software elements per se.

Oddly enough, the BPAI suggested that, since the claims recited the processing of "mere informational elements", the subject matter was not new and/or nonobvious. Nevertheless, the BPAI rejected the claims under 35 USC 101:

To be sure, the mere receipt and providing features of representative independent claim 1 on appeal are not characterized as being unique methodologies per se, but only the nature of the information related to or the characterization of the information element is argued to be operatively unique. These considerations are prompted by the recent decision by our reviewing court in In re Comiskey, Slip Op. at 21 (Fed. Cir. Sep. 20, 2007).

• In Ex Parte Kinzhalin et al. (link), decided October 24, 2007, the BPAI found it insufficient that the claim recited an "automated" procedure that was clearly described in the specification as a computer-related process:

We come to the crux of the matter: do the words "method for automated acquisition" in the preamble serve to tie the claimed mental steps "to a particular machine"? We cannot see that they do; "automated" is merely an expression of intended use that, at best, recites a desired result of the claimed method. Crucially, however, the claim fails to positively recite any concrete, physical implementation to achieve this "automated" result as the term is wholly unsupported by physical steps or structure in the claims. Perhaps the intended use of the method will involve a machine, but we decline to infer such intentions suggested in the present specification into the claims.

• In Ex Parte Rodriquez et al. (link), decided on September 21, 2007, the applicant recited "a computer program product in a computer readable medium for use in a data processing system." While the issue of patentable subject matter wasn't raised by the examiner, the BPAI, in an apparent nod to the Nuijten decision, reasoned that, since the specification referred to "transmission type media," the specter of non-statutory subject matter had reared its head:

Examiner is alerted to the wording in the Specification at the bottom of page 15, and repeated in FF 2 above. An example of a computer readable medium as specified in claims 15 and 16 is defined by the Specification to include "transmission type media such as … wireless communication links using … radio frequency transmissions." . . . Thus, as defined in this application, a computer readable medium includes a mere signal under transmission, not necessarily a physical tangible object. Such a claim for computer instructions is not considered by this office to be statutory under 35 U.S.C. 101. As claims 15 and 16 have received affirmance of their rejections under the art of record, a rejection for lack of statutory subject matter is not considered at this moment to be necessary. However, Examiner is advised to keep this consideration in mind if the prosecution continues.