Tuesday, July 08, 2008

BPAI Weighs In Again On Computer-Implemented Inventions and Section 101

Ex Parte Wasynczuk, No. 2008-1496, June 2, 2008 (Informative Opinion)

In a rather interesting appeal, the PTO applicant appealed a section 101 rejection on two sets of claims, where a system claim (claim 1) recited a "computer-implemented system" and a method claim (claim 9) recited a "computer-implemented method for simulating operation of a physical system."

Starting with the method claim, the BPAI found that the method of simulating operation of a physical system involved no transformation of an article to a "different state or thing", but nevertheless qualified as a "process" under section 101:

Appellants' claims are similar to the method claims rejected in Comiskey in that the claims do not transform any article to a different state or thing. The simulation data produced by the claims, while perhaps "useful" in one sense, is simply not the product of any transformation as understood in the case law. Contrary to Appellants' contention that a computer-simulated physical system is a real world thing, we find otherwise. Appellants' claims are directed to simulating using models (i.e. modeling) of physical systems (FF 3). These models are mathematical representations of physical systems (FF 5). That Appellants have claimed the invention in prose form (as simply "simulating") and have only mentioned exemplary mathematical techniques used to perform the simulation (FF 5) does not convert the simulating into anything more than simply solving purely mathematical representations of physical systems. We also note that the claimed simulating does not receive information from a real world physical system nor does it output data that controls a real world physical system. We do not find a transformation of any article to a different state or thing.

However, unlike the method claims in Comiskey, Appellants' claims recite a process that employs one of the other statutory categories. Specifically, claim 9 recites that the first simulating step is performed on "a first physical computing device" and the second simulating step is performed on "a second physical computing device" which we conclude is "a particular apparatus" to which the process is tied, not simply a generic computing device for performing the steps. Appellants' Specification describes this embodiment which uses two computing devices (FF 7) as well as a second embodiment, not covered by this claim, which uses a single computer (FF 8). Because the claim recites a particular apparatus, (1) the method operates on another class of statutory subject matter such that the method is a patentable "process", and (2) the method is not directed to an abstract idea. Unlike in Benson, this claim is directed to a particular machine implementation of the mathematical algorithm that does not encompass every substantial practical application of an abstract idea. Benson, 409 U.S. at 71-72. Accordingly, the claims meet the conditions set forth in the case law of the Supreme Court and the Federal Circuit.
Regarding the system claim, one would think that the argument would be open-and-shut for the applicant. Think again, dear reader:
The Supreme Court has held that "[e]xcluded from such patent protection are laws of nature, natural phenomena, and abstract ideas." . . . Clever claim drafting cannot circumvent these principles. That is, even when a claim appears to apply an idea or concept as part of a seemingly patentable process, one must ensure that it does not in reality seek patent protection for that idea in the abstract.

[U]nlike claim 9, we do not find a particular machine being recited in claim 1. Instead, the sole structural limitation recited is the "computer-implemented system" of the preamble of claim 1. As Appellants have set forth by example, the claimed computer is not any particular apparatus (FF 6). Rather, we find that the computer or processor is essentially any conventional apparatus that performs the claimed functions. Thus, we conclude the system of claims 1-8,29, and 31-33 cover ("preempt") every substantial practical application of the abstract idea. We conclude that these claims are so broad that they are directed to the "abstract idea" itself, rather than any practical implementation of the concept.

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