Post Bilski Prosecution Strategy – Can It Really Be This Simple?

July 27, 2009

in Prosecution Strategy

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.

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© 2009, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney

{ 10 comments… read them below or add one }

Richard Schafer July 28, 2009 at 12:31 am

I find the Board’s rationale particular interesting given the lack of antecedent basis for “the computer system.”

Robert J. Sayre July 28, 2009 at 2:34 pm

That sounds like “insignificant post-solution activity,” which the CAFC reiterated in Bilski is not enough–from the Bilski decision:

“The Diehr Court also reaffirmed a second corollary to the machine-or-transformation test by stating that ‘insignificant postsolution activity will not transform an unpatentable principle into a patentable process.’ Id. at 191-92; see also Flook, 437 U.S. at 590 (‘The notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance.’). . . . Therefore, even if a claim recites a specific machine or a particular transformation of a specific article, the recited machine or transformation must not constitute mere ‘insignificant postsolution activity.'”

joe o'malley July 28, 2009 at 6:21 pm

I agree with Robert J. Sayre. The PTO isn’t going to go along with that. I just pick one of the core steps and say it is done on a computer or using a processor.

mike July 28, 2009 at 7:35 pm

Joe, I too question whether this strategy should work.

Nonetheless, the USPTO did go along with this, since the Board reversed the Examiner. That alone begs the question – “just how little is enough to justify making this type of argument?” After all, it was successful in a reported case.

Joe Sixpack July 28, 2009 at 7:37 pm

As to the question of successful strategies… I found the following two suggestions helpful:

1) This language overcame a Bilski rejection at the appeals board.
Appeal 2009-1485
A computer-readable medium having stored thereon instructions that, when executed, direct a printer to…

2) This language was offered by an examiner in 11/423,538:

Suggested change: “A computer readable storage medium storing instructions which, when executed on a programmed processor…”

In practice I think you’re really limited by the type of specification you’ve inherited or created. I’ve seen a few Bilski rejections in software applications I’ve inherited. I’ve been able to overcome them using language similar to that found above. These rejections, however, were first office actions, not appeals. Bottom line is that you need some support in the specification to overcome these rejections. I’m giving myself more support now that Bilski was grated certiorari.

I’ve called a couple examiners on Bilski rejections and had some interesting conversations.

mike July 28, 2009 at 7:41 pm

Robert, thank you for commenting on THE problem with the Board’s decision. Still, this argument worked with the Board. Would an Examiner on remand second guess the Board?

Dr. Sinai Yarus July 29, 2009 at 2:35 am

Thanks for pointing out this great decision.

I generally try to satisfy both prongs of the Bilski test by describing the method in terms of modules within a machine.

A generic Example:
A method to satisfy the Bilski machine or transformation test, the method comprising:
A) Receiving a data input at a data reception module;
B) Transferring the data to a processing module;
C) Processing the data to produce transformed data.

Each of the three steps is linked to the machine.

C explicitly states there is a transformation.

Most Examiners are looking at 101 as an “easy way out”. Writing a good 101 rejection for a claim in this style is generally too much work and they don’t bother.

Les July 29, 2009 at 10:17 am

Regarding the 112 issue: The computer is inherent. It is a computer implemented method. Therefore, there is a computer.

There is also a transformation. exposed performance gaps are transformed from an unaddressed state to an addressed stated via the outputted solution.

Scott August 11, 2009 at 12:29 pm

Seems ok, but there’s no antecedent basis for “the computer system.” Les’ comment re inherency may hold water as a last ditch effort by a litigator, but it is poor drafting that leads to ambiguity later on during enforcement.

Aristo August 18, 2009 at 9:47 am

To answer the question presented by this post, personally, I do not believe that satisfying Bilski is as simple as adding an output from a computer alone. While I strongly believe that the Supreme Court is going to get rid of the machine-or-transformation test as the only test for determining patent-eligible subject matter, in the interim, we must deal with the application thereof. Accordingly, this article raises an interesting and pertinent question.

It appears that the Board, like the Examining corps in general, has struggled mightily in attempting to understand what to do in light of the Bilski decision. In many cases, including the present decision, the Board appears to apply pieces of the Bilski test without applying the entirety thereof. Given the large number of judges on the Board and the limited time they have to review each case, this is perhaps not surprising. I am in full agreement with Mr. Sayre about the computer performing insignificant post-solution activity in this case with respect to the final claim limitation, and as such, I believe that while the outcome was correct, the Board’s rationale is flawed.

Perhaps a stronger argument that the Board could have made in support of its decision is that since the method is a “computer implemented method”, and all of the claimed features are performed by a computer, the claim is explicitly tied to a particular machine or apparatus, as Les noted. Of course, this leads to the scarier issue that was left for later determination in Bilski of whether a general purpose computer qualifies as a “particular” machine or apparatus. If the Federal Circuit were to make such an unwise determination, software claims would essentially be dead.

Returning to the wild variability in applications of Bilski by staff at the USPTO, and the uncertainty as to how a general purpose computer may be treated by the Federal Circuit, a stronger strategy than arguing a tie to a particular machine alone may be to argue both prongs of the Bilski test, including an argument with respect to a transformation. In the case of software, memory (registers, cache, RAM, etc.) must naturally undergo physical transformations when a processor runs since the physical semiconductor material changes state. While the Federal Circuit discussed transformations of data in Bilski, the physical transformations to matter that occur when running software on a machine were not specifically addressed. Accordingly, bolstering 101 arguments with such language may be beneficial and in my practice has worked in a handful of cases on its own when clients would not agree to amend method claims to include structure.

In summary, I do not believe that relying on this Board decision would be prudent.

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