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Sanity From the 1st Post-Bilski Decision from BPAI: In Re Proudler
Tuesday, July 13 2010 @ 05:30 PM EDT

Look at this, will you? The first decision from the Board of Patents Appeals and Interferences post-Bilski to reference that US Supreme Court decision, in In Re Proudler [PDF], a ruling rejecting HP's application for a software patent, setting forth a rule stating, as I read it, as saying software is not patentable because it's an abstraction:
Laws of nature, abstract ideas, and natural phenomena are excluded from patent protection. Diamond v. Diehr, 450 U.S. at 185. 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 Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). Significantly, "Abstract software code is an idea without physical embodiment." Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007). The unpatentability of abstract ideas was confirmed by the U.S. Supreme Court in Bilski v. Kappos, No. 08-964, 2010 WL 2555192 (June 28, 2010).
This is not the last word, I'm sure, as HP can certainly try to reword. But don't you find this encouraging? I do. And that's why I wanted it in our permanent record of the Bilski case and its aftermath.

I told you I didn't think Bilski was *that* bad, that I saw hope in the abstraction argument. Some are already trying to figure out how applicants can get around this, of course, and I read this analysis as coming from a basic confusion as to what software is:
My two cents: I have two comments about Proudler. First, the BPAI did not use the Machine-or Transformation test in it's § 101 analysis, and instead used "abstract ideas." Yet the Board's stated reason for finding that the computer apparatus claim was directed to an abstract idea was "no true hardware structure was required." How is this any different than applying the Machine-or-Transformation test? Is "abstract idea" just another way of stating "not tied to a particular machine"?

My second comment about Proudler: this case shows the danger of being vague about what you mean by "software." Examiners, the BPAI, and the courts seem to think that the term "software" implies "not tied to hardware." If your claim sounds like "software" – even if the claim doesn't contain that term – the BPAI will redesignate them as "software per se." By which they seem to mean "software in the abstract," or as I call it, "software floating in the ether."

Speaking as a former POSITA, that's not what the term "software" means to me. I say "software" means "instructions executing on a processor." That is, software is tied to hardware, and as such, is not "abstract."

I suppose you can try making this argument in an expert declaration. But I think a better approach to avoid/overcome a § 101 rejection for "software per se" is a specification that explains what is meant by the terms "software" and "hardware," and explains the relationship between the two.

My two cents: software is abstract. It can't be anything but that. So while a process might be patented, one which uses software in the process, the software part of the process can not be patented any more than you can patent 1+1=2 even if you do that math as part of your method or process. It wouldn't matter if your hardware made the calculation. That wouldn't make 1+1=2 patentable. We'll be watching this one. Like I say, there's a need for educating lawyers on the tech. Software is math. Algorithms. That's it. Here is an article Groklaw published that we hope will help lawyers to understand what software is and why it should not be patentable, An Explanation of Computation Theory for Lawyers. I hope you enjoy it, and if you have questions, please post them and we'll try to answer any questions or objections you may wish to express.

Here's the entire ruling:








Appeal 2009-006599

Application 10/643,306

Technology Center 2400


Before JAMES D. THOMAS, THU A. DANG, and CAROLYN D. THOMAS, Administrative Patent Judges.

J. THOMAS, Administrative Patent Judge.



This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1-43, and 50. We have jurisdiction under 35 U.S.C. § 6(b). We vacate the rejection before us under 35 U.S.C. § 103 and institute a new ground of rejection within the provisions of 37 C.F.R. § 41.50(b).


A method of controlling the processing of data is provided comprising defining security controls for a plurality of data items, and applying individualised security rules to each of the data items based on a measurement of integrity of a computing entity to which the data items are to be made available.
(Abstract, Fig. 3).

Representative Claim

33. A method of controlling processing of data, wherein the data comprises a plurality of rules associated with a plurality of data items comprising a set of logically related data items, each data item in the set having a rule associated therewith, said rules acting to individually define usage and/or security to be observed when processing each of the data items in the set of data items, and in which forwarding of the set of data items is performed in accordance with mask means provided in association with the rules.


Prior Art and the Examiner’s Rejections

The Examiner relies on the following references as evidence of unpatentability:
Ishizaki - US 2002/0019934 A1 - Feb. 14, 2002
Raley - US 2003/0196119 A1 - Oct. 16, 2003
(effective filing date of Jan. 16, 2002)
Claims 1-43, and 50 stand rejected under 35 U.S.C. § 103. As evidence of obviousness, the Examiner relies upon Raley in view of Ishizaki.


We vacate the prior art rejection encompassing all claims on appeal because we conclude that all claims on appeal, claims 1-43, and 50, are “barred at the threshold by § 101.” In re Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009) (citing Diamond v. Diehr, 450 U.S. 175, 188 (1981)). Therefore, the following new ground of rejection is set forth in this Opinion within the provisions of 37 C.F.R. § 41.50(b).


Statutory Subject Matter

The subject matter of claims permitted within 35 U.S.C. § 101 must be a machine, a manufacture, a process, or a composition of matter. Moreover, our reviewing court has stated that “[t]he four categories [of § 101] together describe the exclusive reach of patentable subject matter. If


the claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007); accord In re Ferguson, 558 F.3d 1359 (Fed. Cir. 2009). This latter case held that claims directed to a “paradigm” are nonstatutory under 35 U.S.C. § 101 as representing an abstract idea. Thus, a “signal” cannot be patentable subject matter because it is not within any of the four categories. In re Nuijten, 500 F.3d at 1357. Laws of nature, abstract ideas, and natural phenomena are excluded from patent protection. Diamond v. Diehr, 450 U.S. at 185. 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 Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). Significantly, "Abstract software code is an idea without physical embodiment." Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007). The unpatentability of abstract ideas was confirmed by the U.S. Supreme Court inBilski v. Kappos, No. 08-964, 2010 WL 2555192 (June 28, 2010).

With this background in mind, all claims on appeal, claims 1-43, and 50, are rejected under 35 U.S.C. § 101 as being directed to nonstatutory subject matter. Consistent with our earlier noted invention statement from Appellants’ disclosed abstract, the disclosed and claimed invention is directed to software per se, abstract ideas, abstract concepts, and the like, including data per se, data items, data structures, usage rules, and the abstract intellectual processes associating them within the claims on appeal.


This brief analysis is clearly seen from representative independent claim 33 on appeal. The manner in which the so-called “computer apparatus” of the preamble of independent claim 50 is recited in the body of this claim is characterized as directly reciting in its two clauses “programming for” achieving a certain abstract functionality. Thus, no true hardware structure is recited. The Specification at page 4, lines 19 and 20, also indicates that a “computing entity, either hardware or software, is often called a ‘node’ and this term will appear here and after.” In view of this assessment, the broadly recited “computer apparatus” in independent claim 50 is additionally recited in independent claim 1 on appeal and must be construed in like manner. Corresponding abstract functionalities are recited in all of these independent claims.

In like manner, independent claim 43 recites in its preamble a direct recitation to a computer program that is said to be stored on a computer readable “media”. Besides falling within our earlier analysis, the manner in which this claim is recited in its preamble encompasses signals per se based upon the correlation of this claim to the signals associated with the Internet at page 4 of the “Summary of the Invention” in the principal Brief on appeal as well as its reference to the teachings of the signaling embodiment associated with networks, including the Internet, at Specification page 11 beginning at line 19. Thus, this claim is directed to include communications media. As such, this claim is inclusive of transitory signaling embodiments, which are proscribed by the early-noted case law. The media of this claim include transitory embodiments, such as to comprise signals per se. Note


also the analysis provided by Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).


We have pro forma reversed the outstanding rejection over applied prior art of all claims on appeal, claims 1-43, and 50. We have instituted a new ground of rejection within 37 C.F.R. § 41.50(b). This new rejection of all claims on appeal is based upon 35 U.S.C. § 101 since these claims are directed to non-statutory subject matter.

A new ground of rejection is pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.”

37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner ....

(2) Request rehearing. Request that the proceeding be reheard under 37 C.F.R. § 41.52 by the Board upon the same record ....


No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

37 C.F.R. § 41.50(b)


1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision.

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