11/875,758 – Affirmed
The claims rejected under § 101 were directed to a system for managing multiple email addresses, but were written as method claims. The claim language is:
8. A system for managing multiple email addresses, the method comprising:
email addresses selected, on a user computer system having an email client interface, for an email to be sent through a computer system in communication with the mail server, wherein the email addresses comprise an email distribution list;
an interrogation module, associated with the email client, for querying, before sending the email, for duplicate contacts associated with any of the email addresses in the email distribution list for the email;
an update module, associated with the interrogation module, for updating the email distribution list to the email addresses left in a remaining email distribution list produced through removal, if any, of the duplicate contacts identified by the querying by the interrogation module; and
a completion module for sending the email to contacts associated with each of the email addresses in the remaining email distribution list in communications with the mail server.
The examiner determined that this independent claim did not contain a concrete structure so it did not merely claim software in the abstract. The applicant argued that the “user computer system having an email client interface” constituted hardware. The Board agreed with the examiner that the “computer systems” were not tied to any of the modules and were not otherwise claimed as part of the system. The Board stated that the “email addresses” were the system component and are software. The Board also stated that none of the modules recited include hardware. All other claims dependent on claim 8 were rejected too.
10/854,532 – Reversed
The claim rejected under § 101 was directed to a telecommunication system. The examiner found that the claimed system comprising of endpoints is software per se after consulting the Specification. As written in the claim, the endpoints do not contain physical components. However, the Board determined that the Specification defined the endpoints as “user equipment.” The Board determined that the endpoints were articles of manufacture and not pure software.
10/876,215 – Affirmed
The majority of claims rejected under § 101 were directed to a method for schedule shifting. The examiner determined that the method was not tied to a particular machine or apparatus and did not transform an article into a different state or thing. A “multi-institution scheduling system” is listed in the independent claim and this system is described in the Specification as “clearly a machine or apparatus” according to the applicant. The Board stated there was not a tie to the method and refused to import limitations from the Specification. This seems to be at odds with how the Board panel handled the 10/854,532 application.
Another independent claim rejected under §101 was directed to a computer readable medium. The Board affirmed the rejection here because the applicant did not limit the scope of this claim to only include non-transitory signals.
10/460,955 – New Ground for Rejection
This opinion was different than the others because the Board entered a § 101 rejection as a new ground of rejection. The rejected claims were directed to methods for responding to queries and generating an abstraction hierarchy. The Board determined that all of the steps of the independent claims could be performed in the human mind. The claims also failed to expressly require the method to be performed by any machine. In fact, after looking at the claims, it seems to me that no machine is even mentioned.
11/011,373 – Affirmed
The claims rejected under §101 were directed to a method of playing a casino game. The examiner determined that claims did not satisfy either prong of the machine-or-transformation test. The only arguable step was that of “dealing playing cards.” The relationship of the cards to the method depends only on the information displayed, not the machine or apparatus conveying the information. The Board held that “dealing playing cards” did not tie the method to a particular apparatus or machine. The Board stated that this was an attempt to preempt the use of all machines and processes employing this particular manner of wagering. The applicants only argument seemed to be that the machine-or-transformation test was dismissed by Bilski.
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