What an illuminating decision! Today's Board of Patent Appeals and Interferences (BPAI) decision in Ex parte Harrison read like a veritable anatomy of a 35 U.S.C. § 101 non statutory subject matter rejection under In re Bilski. The highly educational decision in In re Harrison touches on many important issues surrounding § 101 non statutory subject matter rejection. It's not often that the BPAI issues a decision about a § 101 non statutory subject matter rejection, so two in one week is a real treat (see my posting from two days ago) for a practicing Florida patent attorney.
This case involved Intel claims reciting steps performed by a processor during a calculation. Since the claims did not recite any machine, the first prong of the machine-or-transformation test was not satisfied.
With regard to the second prong of the machine-or-transformation test, the BPAI explained that transformation of data is sufficient to render a process patent-eligible if the data represents physical and tangible objects, i.e., transformation of such raw data into a particular visual depiction of a physical object on a display. See In re Bilski. Also, transformation of data is insufficient to render a process patent-eligible if the data does not specify any particular type or nature of data and does not specify how or where the data was obtained or what the data represented. In re Abele, 684 F.2d 902, 909 (CCPA 1982) (process claim of graphically displaying variances of data from average values is not patent-eligible) and In re Meyer, 688 F.2d 789, 792-93 (CCPA 1982) (process claim involving undefined "complex system" and indeterminate "factors" drawn from unspecified "testing" is not patent-eligible). The BPAI concluded, "since Appellants' claimed 'result" is merely a number (i.e., a mathematical abstraction), we conclude that claim 1 fails to meet the transformation prong of Bilski."
With regard to another group of claims that recited a machine, the BPAI recited the BPAI Ex parte Gutta decision: "[W]e conclude that [the] claim ... fails to recite any tangible practical application in which the mathematical algorithm is applied that results in a real-world use." Ex parte Gutta. The BPAI found that that the mathematical algorithms recited in claims 11 and 18 are abstract ideas having no "real-world use" in accordance with the teachings of Ex Parte Gutta. Apparently, number calculation alone (i.e., absent any application of the number in a useful manner) has no claimed "real-world" value. Further, Appellants' addition of recited structure (i.e., the claimed "storage medium," "processor," and "dynamic random access memory" of claims 11 and 18) to the underlying method of calculating a "result" was merely a pro forma claims drafting technique. The BPAI stated these recitations do not affect the "result" in any way. To the extent (if any) these recitations represent structural elements, they are merely "insignificant extra-solution activity" or "field-of-use limitations" as described in the Bilski decision. Bilski, 545 F.3d at 957. In other words, claim 11 and claim 18 are simply method claims dressed in the format of an article and a system, respectively.
As an aside, I liked the BPAI's mention that "the [Bilski] court declined to decide under the machine implementation branch of the inquiry whether or when recitation of a computer suffices to tie a process claim to a particular machine." This confirms that it's still undecided whether reciting a computer or a computer readable medium satisfies the first prong of the machine-or-transformation test.