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.

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

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.

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.

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.

“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.’”