Florida Patent Lawyer Blog

In an interesting and somewhat comical opinion today, the Board of Patent Appeals and Interferences (BPAI) rejected an Appellant's argument that a 35 U.S.C. §101 rejection violated the Appellant's rights under the equal protection clause of the 14th Amendment of the U.S. Constitution. As a Florida Patent Attorney with an active patent prosecution docket, this is the first time I've ever seen the 14th Amendment brought up before the BPAI. See the decision in Ex Parte Haines HERE.

The Appellant, Hewlett Packard, was appealing a 35 U.S.C. §101 non-statutory subject matter rejection of a claim that recited propagated signals. HP argued the USPTO has issued patents to others that contain "propagated signal claims" and therefore the current rejection violated HP's rights under the equal protection clause of the Fourteenth Amendment to the U.S. Constitution.

The BPAI responded: "Appellant has not cited any authority in support of the novel legal argument. The U.S. Patent and Trademark Office is not part of a state (or local) government, but an agency of the U.S. Department of Commerce. Cf. U.S. Const. amend. XIV, § 1 ("No State shall . . . deny to any person within its jurisdiction the equal protection of the laws."). We are not persuaded that the USPTO has violated Appellant's rights to equal protection of the laws under the Constitution." The footnote reads "absent showing that the agency acted pursuant to some impermissible or arbitrary standard, an argument based on the equal protection component of the Due Process Clause of the Fifth Amendment would also fail. See In re Boulevard Entertainment, Inc., 334 F.3d 1336, 1343 (Fed. Cir. 2003).

Frankly, I'm surprised the HP attorney would even advance the 14th Amendment argument. I am careful to avoid flimsy or meritless arguments when practicing before the BPAI, as any document with your name on it affects your professional reputation. I aim to have a reputation as an advocate that only presents solid arguments. Readers will take you more seriously and are more willing to consider your line of reasoning when you have an established history of sound argument-making.

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.

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.

In one of its last decisions of today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. §101 non-statutory subject matter rejection of a key Invatron Systems invention. As a Miami Patent Attorney, this case was interesting because I haven't seen any BPAI decisions regarding 35 U.S.C. §101, much less a decision that invokes Bilski, in a while.

At issue was an Invatron Systems claim pertaining to a scale for weighing items, wherein the scale included a computer that performed a series of steps, such as providing a coupon. The Examiner found the claims recite a method of purely mental steps, not tied to another statutory class. The Appellants contended the claimed method recites steps including providing a coupon to the customer and that these steps cannot be performed purely mentally since there is no way to provide a coupon without the coupon being physically inputted into the weigh station display.

The court explained the Bilski machine-or-transformation test as follows: "A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing." The court explained that "the use of a specific machine or transformation of an article must impose meaningful limits on the claim's scope to impart patent-eligibility" and "the involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity." In re Bilski, 545 F.3d 17 943 (Fed. Cir. 2008) (en banc), petition for cert. granted, 77 USLW 3442 (U.S. Jan. 28, 2009) (No. 08-964).

The BPAI agreed with the Appellants. See the BPAI decision here. The BPAI stated claim 17 recited a method for providing information to a weigh station, where customer specific information is provided to the weigh station display. That is, claim 17 recited a manner of entering data to a weigh station and displaying the inputted information. As such, claim 17 required a specific structure that captures, stores, and displays specific data. This specific structure ties the recited method to a particular machine, in that the method recites how to operate a weigh station with a weigh station display. Since there is a particular machine required, claim 17 satisfies the machine prong of the machine-or-transformation test and the transformation prong need not be evaluated. As a result, the BPAI reversed the Examiner's 35 U.S.C. §101 non-statutory subject matter rejection under Bilski.

The lesson learned in this case is that although a claim may not explicitly and positively recite a structural element, the claim may require a specific structure to perform the steps of the claim. If that structure satisfies the machine prong of the machine-or-transformation test, an Examiner's 35 U.S.C. §101 non-statutory subject matter rejection may be reversed under Bilski.

In its first decision of today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner's 35 U.S.C. sec. 103(a) obviousness rejection of a key Hewlett-Packard software invention, but came up with a new rejection of its own - a 35 U.S.C. sec. 101 non-statutory subject matter rejection. As a Miami Patent Attorney that deals with Patent Office rejections related to software patents and software inventions almost daily, this case is instructive because it illustrates the case law on non-statutory subject matter and the process of dealing with the BPAI.

The HP invention involved a software process for credentialed authorization requests. HP appealed an Examiner's 35 U.S.C. sec. 103(a) obviousness rejection, which the BPAI reversed. But in an interesting move, the BPAI decision sua sponte noted the nature of the software claims and instituted a 35 U.S.C. sec. 101 non-statutory subject matter rejection.The BPAI started off by reciting case law: a "signal" cannot be patentable subject matter because it is not within any of the four categories. In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) and a claim that recites no more than software, logic or a data structure (i.e., an abstraction) does not fall within any statutory category. In re Warmerdan, 33 F.3d 1354 (Fed. Cir. 1994).

With regard to the Applicant's claims, the BPAI stated: "The services of the claims on appeal are logical constructs or software abstractions. System claims, independent claims 21 and 26, are directed to software-based systems per se. Additionally, the computer readable mediums recited in the preamble of independent claims 12 and 14 on appeal are directed toward signal-based embodiments when construed in light of the Specification as filed. The earlier-noted case law prohibits patent protection for these claimed features." Therefore, because the Applicant's claims recited pure logical steps with no explicit tie to a machine, and because the specification stated that a computer readable medium could be a signal, the Applicant's claims were non-statutory subject matter under 35 U.S.C. sec. 101. (It is interesting that the BPAI did not cite the Bilski case. Perhaps because the decision may be overturned by the Supreme Court this year?)

The first important practice pointer illustrated here is the importance of writing software patent claims that comprise statutory subject matter under 35 U.S.C. sec. 101. Fellow blogger Karen Hazzah writes an excellent patent prosecution blog that recently highlighted a USPTO memo directed towards helping patent practitioners write computer readable medium claims that survive 35 U.S.C. sec. 101 scrutiny. All patent attorneys that write software patent claims should read that memo.

The second practice pointer illustrated here is the ability of the BPAI to sua sponte come up with new grounds of rejection. It is not true that just because the Examiner missed a rejection, it can no longer be asserted against you (as in federal litigation). The BPAI has the power to bring up any rejection that the Examiner may have missed, even if it is the first time it's being used against you. The BPAI has always had this power, but in the last couple of years, I typically only see them do this for 35 U.S.C. sec. 101 non-statutory subject matter rejection. Thus, when dealing with an appeal to the BPAI, especially one involving software patent claims, the smart patent attorney will double check his claims to make sure there is no chance of such a sua sponte rejection. If the possibility exists, you may want to file an RCE to clean up the claims before going to appeal.

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