Post Bilski, only methods “tied to a particular machine or apparatus” or that “transform a particular article into a different state or thing” remain patent-eligible. One option to satisfy this “machine-or-transformation test” is to define a method so that it is tied to a device.
An efficient way to accomplish this is to tie a single operation of the claimed method to a device. And, according to the BPAI, in the case of a computerized method, this may be accomplished merely by reciting the output of a solution from the system. That’s right. In Ex Parte Dickerson, a final decision issued by the Board earlier this month, a § 101 rejection of the following claim was reversed:
23. A computerized method for identifying a solution to address exposed performance gaps of a company in a specific industry, comprising:
first identifying a plurality of operational metrics for the specific industry, wherein the operational metrics includes a factor used to measure health or viability of a generic company in the specific industry, wherein the specific industry is a grocery store industry, wherein the operational metrics include at least one of a rate of inventory turnover and a number of customers per day;
assembling a set of solutions for application by the specific industry, wherein the set includes one of a decision, an action, a product, and a service;
assessing impacts of application of the set of solutions on the operational metrics for the specific industry, wherein the assessing includes determining which of the set of solutions has a negative impact on an operational metric and determining which of the set of solutions has a positive impact on the operational metric;
after identifying, assembling, and assessing, then comparing a current operational performance of the company to an operational performance of another company within the specific industry to obtain at least one performance gap, wherein the operational performance includes a performance of a company based upon the operational metric for the specific industry;
identifying a solution based upon the impacts to address the exposed performance gaps, wherein the solution is at least one of a decision, an action, a product, and a service that impacts a problem in a positive manner; and
outputting the solution from the computer system.
The Board’s rationale:
“We find that claims 23, 29 and 30 a computerized method which includes a step of outputting information from a computer (FF 7 and 9-10) and therefore, are tied to a particular machine or apparatus.”
My question to you, the readers of this blog, is could satisfying § 101 be this simple? And, if not, what other strategies have you found effective? Please leave a comment if you have a successful strategy to share in a follow up post.
© 2009, Michael E. Kondoudis
The Law Office of Michael E. Kondoudis
DC Patent Attorney