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Feb 9th-21st SW/Business Process BPAI Decisions

This post reviews recent decisions from the Board of Patent Appeals and Interferences that relate to software patents.  For the most part the appellants lost in these decisions and the claims remain rejected.

Ex Parte Warkentine represents the only successful appellant in the decisions we reviewed.  Here, although a machine was not expressly claimed, the machine or transformation test was passed because the claimed step of “to display” required a machine and could not be performed solely in the mind.

Many of the claim rejections were unsurprising, including a number of rejections for claiming transitory signals (“A computer readable medium” in Ex Parte Perkins and Ex Parte Sawyer; and “A computer-readable medium” in Ex Parte Gonzales-Tuchmann).  More surprising was the decision in Ex Parte Keohane that “a recording medium” with “means, recorded on said recording medium” also could be “reasonably construed” to encompass a transitory signal.  It is arguably a stretch to say that the claim covers a transitory signal given the plain meaning of the language:  (“To set down for preservation in writing or other permanent form.” Record, TheFreeDictionary, (last visited Mar. 2, 2012)).  Claims were also rejected for being directed only at “non-functional descriptive material” (Ex Parte D. and Ex Parte Gonzales-Tuchmann).  Finally, in Ex Parte Alverson claims were rejected as abstract because the specific steps claimed encompassed “human thought and processing.”

A summary of each of these decisions is available below.


Ex Parte Warkentine (Appl. #11/752,105, Tech Center #: 3700)
Example Claim:
1. A method for placing a pelvic implant in a patient, said pelvic implant including a cup having a predetermined cup component and a femoral stem having a predetermined stem component, comprising:

obtaining image data corresponding to the cup and femoral stem;

using the image data to display a geometrical relationship between the cup and the femoral stem corresponding to a location of the cup and femoral stem in the patient; and

virtually positioning at least one of the cup within the patient’s pelvis and the stem within the patient’s femur such that a combined anteversion between the predetermined cup component and the predetermined femoral stem component corresponds to a predetermined combined anteversion.

Ex Parte Warkentine, No. 2010-010619 (B.P.A.I. Feb. 21, 2012) at 2.

Claims allowed under §101.  “When the image data is transformed to display a geometrical relationship, that transformation and resultant display cannot solely occur in the mind of the surgeon, or the image data is not displayed.”  Id. at 5.  Accordingly, the claimed invention is not merely an abstract idea/mental process.

Tip: A claim will not be rejected as abstract if it includes steps that cannot be performed solely in the mind.



Ex Parte Perkins (Appl. #10/085,927, Tech Center #: 2400)
Example Claim:
9. A computer readable medium having instructions for:

providing an interface having instructions to send association data;

identifying an identity service using the association data, the identity service managing resource data; and

locating a resource using the resource data.

U.S. Patent Publication No. 2003/0163575A1 (Published Aug. 27, 2003).

Claim Rejected.  The specification says “[t]he computer readable medium can comprise any one of many physical media such as, for example, electronic, magnetic, optical, electromagnetic, infrared, or semiconductor media.”  Ex Parte Perkins, No. 2009-007029 (B.P.A.I. Feb. 16, 2012) at 4.  Accordingly, “the computer readable medium recited in these claims covers non-statutory transitory signals, namely electronic, magnetic, optical, electromagnetic, or infrared media.”  Id. at 5.  Because the “claims embrace patent-ineligible signals, they are therefore non-statutory under § 101.”  Id.

Tip: Avoid claiming transitory signals by, for example, expressly claiming either a non-transitory computer readable medium or a computer readable storage medium.



Ex Parte Alverson (Appl. #11/101,436, Tech Center #: 3600)
Example Claim:
1. A contractor certification system for obtaining lines of credit for a building contractor comprising:

a. survey means comprising a questionnaire stored in a computer database, which is provided to selected candidates within different organizational levels of a building contractor’s business for electronically gathering answers concerning information detailing business and financial practices, said answers being used for assessing business and financial practices of said contractor’s practices by an independent third party, said financial practices being used to predicate risk ranking when securing lines of credit for said contractor’s business, said business practice information comprising management structure, reporting structure, internal communications procedures, safety and labor management practices, said financial practice information comprising current projects, funding, gross margins and close out procedures;

b. said different organizational levels comprising at least one worker, foremen, project manager, engineer, and principal;

c. mapping means for studying said answers provided to said questionnaire on said computer database to select job site visits and candidates for interviews, said mapping means comprising examining and correlating said answers to determine matches, discrepancies and inadequate details;

d. on-location assessment means for determining business and financial practices at the contractor’s operations, said assessment means comprising asking questions to each of said candidates selected through said mapping means and observing examples of the contractor’s business practices and financial procedures, said assessment means further comprising visiting several active job sites at which said contractor is involved;

e. comparison means for assessing business and financial practices by way of software evaluation of results obtained from steps a-d, and electronically ranking the contractor in comparison with industry standards; and

f. reporting means for providing a grade indicative of said contractor’s rank, said reporting means further comprising computer generation of a comparative report that provides a listing of key risk factors and highlights said business and financial practices and risk factors of said contractor in comparison of said risk factors, said risk factors comprising said operational structure, marketing of new projects, current projects, details of project execution, safety procedures, statutory compliance, project administration, mediation / arbitration procedures and past litigation.

Ex Parte Alverson, No. 2010-008459 (B.P.A.I. Feb. 15, 2012) at 2–3.

Claim rejected.  The invention “claims coverage of a human as an element of the system/apparatus per se.”  Id. at 9.  “Since the broadest reasonable interpretation of the claimed invention as a whole encompasses a human being, the claimed invention is directed to nonstatutory subject matter.”  Id. at 9–10.  For example, Claim 1 “effectively covers an abstract idea because it incorporates human thought and processing to effect claim functions . . . and the recited computer based solution activity is of insufficient cause to avoid preempting an abstraction under 35 U.S.C. § 101.”  Id. at 10.

Tip: Focus claims on reciting specific steps that use a computer or other apparatus, rather than human activity.



Ex Parte D. (Appl. #10/620,044, Tech Center #: 2400)
Example Claim:
20. An article of manufacture comprising a computer-readable storage medium encoded with one or more data structures comprising information characterizing one or more traffic flows associated with at least one traffic generator, represented as a string which includes a global header followed by one or more frames each having an associated frame header, wherein the global header comprises a clock speed field indicating a clock speed of an associated output interface.
U.S. Patent Application No. 10/620,044 (filed July 15, 2003) (as amended Apr. 9, 2008).

Claims rejected.  The BPAI was not persuaded by the argument that “the claimed data structure defines a ‘physical or logical relationship among data elements’ and as such, the claims are drawn to statutory subject matter.” Ex Parte D., No. 2009-013829 (B.P.A.I. Feb. 15, 2012) at 4 (quoting the Appellant’s Brief).  It instead noted that “the claims merely recite non-functional descriptive material.”  Id.

Tip: Make sure that the encoded data claimed in a Beauregard claim correlate to an aspect of a computer or data transfer process.



Ex Parte Sawyer (Appl. #11/264,619, Tech Center #: 2100)
Example Claim:
1. A computer readable medium having embodied thereon a program, the program being executable by a computing device for performing a method for providing an allowed input range in a user interface window, the method comprising:

receiving a document transferred between a server and a user interface, wherein the document comprises a set of data objects and at least one rule for the allowed input range; and

creating the user interface window to correspond to a selected one of the set of data objects and the at least one rule for the allowed input range;

wherein the user interface window provides the allowed input range for the selected one of the data objects,

wherein the allowed input range is determined by the selected one of the data objects received from the document and the at least one rule received from the document.

Ex Parte Sawyer, No. 2009-012254 (B.P.A.I. Feb. 12, 2012) at 2.

Claims rejected.  “Claim 1 given its broadest reasonable interpretation, does not preclude the ‘computer readable medium’ from being transitory. Accordingly, we construe claim 1 as embracing a transitory propagating signal, and, therefore, directed to nonstatutory subject matter.”  Id. at 5.

Tip: Avoid claiming transitory signals by, for example, expressly claiming either a non-transitory computer readable medium or a computer readable storage medium.



Ex Parte Keohane (Appl. #10/777,646, Tech Center #: 2400)
Example Claim:
11. A computer program product for providing electronic message filing recommendations comprising:

a recording medium;

means, recorded on said recording medium, for filtering an electronic message to determine at least one suggested folder for filing said electronic message from among a plurality of filing folders in a messaging filing directory; and

means, recorded on said recording medium, for distinguishing said at least one suggested folder from a remainder of said plurality of filing folders, such that a recommendation of relevant folders for filing said electronic message is provided.

U.S. Patent Publication No. 2005/0198153 A1 (Sep. 8, 2005)

Claim rejected under 35 U.S.C. § 101 as a new ground of rejection.  “[A] computer program product included on a recording medium may take the form of transmission media, such as acoustic or light waves generated during radio frequency or infrared data communications.”  Ex Parte Keohane, No. 2009-014258 (B.P.A.I. Feb. 12, 2012) at 8.  It further explained that a “‘computer program product . . . comprising: a recording medium . . .’ can be broadly, but reasonably construed to encompass no more than a transitory, propagating signal.”  Id.

Tip: Avoid claiming transitory signals by, for example, expressly claiming either a non-transitory computer readable medium or a computer readable storage medium.



Ex Parte Gonzales-Tuchmann (Appl. #10/700,152, Tech Center #: 2100)
Example Claim:
14. A computer-readable medium having a dataflow development system comprising:

a library of components, some of the components being scalar and comprising a data transformation, some of the components being composite, and comprising a hierarchy of other components representing data transformations;

a compiler to develop and assemble components into an executable dataflow application linking components subject to schema and properties constraints;

an executor which executes the dataflow application in parallel; and

tools for accessing the functionality of the compiler, executor and component library.

U.S. Patent Publication No. 2008/0052687 A1 (Feb. 28, 2008)

Claim rejected.  The claim does not “clearly and unambiguously recite the necessary functional and structural interrelationship between the software elements and the remaining elements of a computer.”  Ex Parte Gonzales-Tuchmann, No. 2009-013551 (B.P.A.I. Feb. 9, 2012) at 4.  Further, “‘having’ a particular environment does not necessarily imply storage of an executable program capable of causing a computer to carry out the described functionality.”  Id. In addition, “the claims are not limited to an article of manufacture or any other category of statutory subject matter, because they do not preclude a computer-readable medium that is medium, such as a propagation medium, bearing a transitory signal.”  Id. at 5.

Tip: Tie the various software and data elements of the claim together in a functional relationship that is achieved by execution of the software on a computer, as opposed to listing a collection of vaguely interrelated software components.  And avoid claiming transitory signals by, for example, expressly claiming either a non-transitory computer readable medium or a computer readable storage medium.

[Brian Wallenfelt contributed to this posting.]

Principal & Chief Innovation Officer

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