Another Bilski Decision From the BPAI
Ex Parte Nawathe et al., Appeal No. 2007-3360, February 9, 2009
The applicants claimed a system and method for representing a normalized eXtensible Markup Language (XML) data structure as fixed sets of tables in a relational database (RDB). The examiner rejected the claims under 35 U.S.C. §101 as being directed to non-statutory subject matter.
Claim 1 recited
1. A computerized method comprising:According to the BPAI,
inputting multiple extensible Markup Language (XML) documents;
creating a data representation of said multiple XML documents; and
reducing redundancy across said multiple XML documents via a fixed set of tables.
[T]he recited method, while being computerized, is not tied to a particular machine for executing the claimed steps. We find that the computerized recitation purports to a general purpose processor (Fig. 2.), as opposed to a particular computer specifically programmed for executing the steps of the claimed method [271 Note: what's the difference?]. Next, while it can be argued that the creating step transforms the input XML documents into represented data (i.e. a different state), we find that the documents are not an article (i.e. physical entities). Rather, they are mere data that represent such entities. Similarly, while it can be argued that the redundancy reducing step transforms the XML documents into a smaller set of the documents, they are not an article being transformed.However, a related apparatus claim recited
25. An apparatus comprising:Here, the BPAI found the language rendered statutory subject matter into the claim:
means for creating a graph based data structure representing multiple standard XML tree structures;
means for transforming said graph based data structure to a fixed set of tables; and
means for using said fixed set of tables.
Appellants argue that the recited apparatus refers to the general purpose computer depicted in Figure 2. (App. Br. 33.) Further, Appellants submit that the different means recited in the claim correspond to the different modules in the computer for performing the recited functions. (Id. at 12.) We find that since the claim recites a physical apparatus with physical modules for transforming a data structure into a fixed set of tables, it is not a directed to an abstract idea. Therefore, Appellants have shown that the Examiner erred in finding that claim 25 is directed to an abstract idea. Thus, we will not sustain this rejection.
Apparently, the Board did not see fit to explain why a "computerized method" to a "general purpose computer" is nonstatutory, while an "apparatus" directed to the same general purpose computer is. The implication here is that, if the method claim recited the computer, the claims would be statutory. However, other BPAI precedent (Ex parte Gutta) states that this would not be enough.
Read the decision here (link)
Read the application here (link)
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Knee-jerk reaction: is this the counterpart case to the transitional "Pension Benefits" case of some years ago at the EPO? I wonder if US patent law is tapping its way along the broad path already explored by disparate, free expression TBA caselaw at the EPO. If so, will it I wonder eventually arrive at the same "technical" destination (although under a different catchword)?
The BAPI seems to like the recitation of 'modules' or the like, rather than just a processor.
As a mathematician and computer guy, I think I can see the distinction. (Or maybe I'm just catching the BPAI disease; I hope not.)
Here's an example:
As a mathematician, I can devise a clever computational method for inverting a large matrix. (This is a mathematical operation that can get pretty tedious and complex if the matrix is large.) The BPAI says that my computation method, even if it resulted from a brilliant insight, and even if I say the computations can be performed on a computer, is non-statutory.
But if I say I have invented a machine that can efficiently invert large matrices (even if the machine's physical form is that of a general purpose computer, and even if the method used by the computer is my clever computational algorithm) then the matter is statutory.
So - the machine that implements the method as part of its design is statutory, while the method itself, even if embodied in a machine, is not.
Does it all come down to which noun is the subject of the claim sentence?
Q: As a practical matter, what potentially infringing devices would read on the disallowed Claim 1 that would not also read on the allowed Claim 25?
"But if I say I have invented a machine that can efficiently invert large matrices (even if the machine's physical form is that of a general purpose computer, and even if the method used by the computer is my clever computational algorithm) then the matter is statutory."
It depends on the Board hearing your appeal. Other boards would say "exalts form over substance" and "preempts all uses of the algorithm" and say the matter is nonstatutory.
Schrodinger's claims -- we don't know if they are statutory or not until the BPAI looks at them and determines their state.
The Board should open a dictionary and 35 USC.
The word article doesn't require that the item be "physical".
35 USC 100 doesn't define --process-- to be restricted to a particular machine or that there be a transformation.
35 USC 101 indicates that processes and new and useful improvements thereof are patentable.
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