Tuesday, June 16, 2009

Bilski at the BPAI - What a Mess (Part 1)

SCOTUS review notwithstanding, the process of determining patentable subject matter after Bilski has become a weird, metaphysical endeavor. It has gotten to the point that a given claim may receive 4 different interpretations from 4 different people, and each of them could be arguably correct. In the case of computer-related inventions, the end result of a patentability analysis is rarely supportable with a single, cogent rationale.

Worse still, and unless the SCOTUS decides to radically shift section 101, Bilski will ultimately provide only a portion of the patentable subject matter puzzle. Remember that the CAFC only addressed one aspect of patentability, i.e., "transforms a particular article into a different state or thing" - the "tied to a particular machine or apparatus" prong was largely untouched. This gap has the potential for lots of mischief: without any definitive guidelines, how does one determine what qualifies as "a particular machine or apparatus"?

While the district courts are only beginning to deal with this question, the BPAI has been churning out decisions on a fairly regular basis. Since the beginning of 2009, the BPAI has issued 59 decisions based on Bilski. The results have not been pretty for Applicants. Out of the 59 decisions,

• 1 decision remanded the case to clarify the record,

• 9 decisions "passed" on the question and remanded (these decisions came aound the time the PTO issued the “Clarification of 'Processes' under 35 U.S.C. § 101” memorandum),

• 22 decisions affirmed all of the examiner's 101 rejection,

• 19 issued new grounds of rejection on appeal based on section 101,

• 4 affirmed certain rejections, but reversed others, and

• 4 reversed all of the examiner's 101 rejection.
Thus, section 101 rejections currently have a 92% rate of being at least partly affirmed at the BPAI in 2009. It is worthwhile to note that all of the BPAI's Bilski cases in 2009 dealt with business methods and algorithmic processes. The 92% rate is remarkable, given the fact that, as recently as 2005, the BPAI did not uphold a single rejection based on patentable subject matter.

So what was so special about the reversed 2009 cases? See for yourself:

Ex Parte Holmstead et al., Appeal No. 2009001485
Ex Parte Myka et al., Appeal No. 2008003874
Ex Parte Buhan et al., Appeal No. 2008003441
Ex Parte Borenstein et al., Appeal No. 2008003475

And for the partially-reversed cases:

Ex Parte Petculescu et al., Appeal No. 2008002859
Ex Parte Altman et al., Appeal No. 2008002386
Ex Parte Bodin et al., Appeal No. 2008004315
Ex Parte Nawathe et al., Appeal No. 2007003360

As you will see, there is nothing unusual or remarkable about the claimed features. Nevertheless, the BPAI found reason to reverse the examiner and find the claims recited patentable subject matter. Some examples follow:
Claim: (Ex Parte Holmstead) A computer-readable medium having stored thereon instructions that, when executed, direct a printer to . . .

BPAI: The Specification indicates that computer-executable instructions (in the form of logic or computer code) are stored on one or more computer readable media, such as ROM 106 and/or as firmware 110. (FF 1.) The Specification further explains that firmware 110 is a component of the printer 100, and is (1) implemented as a permanent memory module stored on ROM 106; (2) programmed and tested like software; and (3) contains programming constructs used to coordinate operations of hardware within the printer. (FF 2.) Based on this functionality, we find that the recited computer-readable medium fully comports with the definition of a “machine”


Claim: (Ex Parte Myka) A method for wireless bonding of devices and communicating media file transfer parameters, the method comprising . . .

BPAI: The steps of claims 14 and 24 are performed by a master device or a bondable/bonded slave device. (FF 1-2.) As argued by the Appellants, for example, the independent claims include 'communicating information between the master device and the bonded device.' (Appeal Br. 7.) Therefore, the methods recited in independent claims 14 and 24 are each tied to a particular machine or apparatus.


Claim: (Ex Parte Buhan) A method for storing content encrypted by control words in a receiver/decoder unit having a local storage unit and being connected to a security unit, said control words as well as a necessary right for the access to the content being transmitted in entitlement messages that can be decrypted by system keys, the method comprising . . .

BPAI: We note a receiver/decoder unit having a local storage unit is mentioned in the preamble, which storage unit is embodied in the first step of storing the encrypted content. We also note in the preamble a security unit, which is embodied in the second step of storing the system keys. Both the local storage unit and the security unit constitute tangible, solid, real-world machines, the former exemplified by a magnetic hard disk, and the latter by a smart card (See Fig. 1). We find these elements sufficient for satisfying the “particular machine” prong of the Bilski machine or transformation test, and thus find the Examiner erred in rejecting these method claims.


Claim: (Ex Parte Borenstein) A method for providing catalog information for presentation to a user of a store in an electronic commerce system, comprising the steps of . . .

BPAI: while the storage of information in independent claim 1 could arguably be done as a mental process, the recitation of a structured relationship between multiple stores that requires “path information” inherently implies that this information must be stored on a computer or database. This “particular” computer or database is sufficient structure to meet the machine prong of the machine-or-transformation test of In re Bilski. As independent claim 15 recites a computer program product, it is not a method claim that must be analyzed under In re Bilski.
To view the complete listing of 2009 Bilski decisions at the BPAI, click here (link)


6 Comentários:

Step Back said...

I looked at the most recent example dated June 15th, In re Toth (early pub = 20060264262, Appeal 2009-009323). How can any Board in their right mind reasonably assert that the bowling tournament "could be" computer simulated? This is madness.

Anonymous said...

In other words, the board got 4 decisions out of 59 wrong. Not a bad error rate for the board I must say. The board is, after all, human.


Quotidian Dude said...


One of the most informative and helpful posts I've seen on Bilski.

Thanks for your effort.


zoobab said...

Where is the Bilski patent application by the way?

I searched for 1 hour on the internet and the messy USPTO website, I was unable to find a copy of the pending patent application.

It seems that the USPTO website has only the pending patent applications from 2001 only, while Bilski was applied in 1997 it seems. 12 years of uncertainty for the rest of the world, it is already too long.

Step Back said...


The Bilski application was filed without early publication. So the general public has no access to it. It would be nice if Bilski et al published a copy of their spec and drawings. In the mean time, we are operating on speculation and conjecture in trying to determine what their claims mean. (Claims are to be read in light of the spec. --Philips v. AWH)

still_learnin said...

zoobab asked "Where is the Bilski patent application by the way?"

I found the app in some Bilski docs which the PTO has made available at this link:

Joint Appendix – Including Board Decision and Bilski’s Application

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