Another computer-implemented business method invalid under 101 (Ex parte Myr)

I haven't yet covered §101 issues in any BPAI cases because the BPAI Watchdog blog and the 12:01 Tuesday blog do a great job on this topic. However, this post will discuss Ex parte Myr because it provides an in-depth analysis (7 pages worth) as to why a "computer-implemented method for appraising real estate property" does not meet either prong of the Bilski test. Unfortunately, it's possible that the same reasoning will be used to reject many other computer-implemented but non-business methods.

Ex parte Myr
Decided September 18, 2009
(Appeal 2009-005949; Appl. No. 10/610,955; Tech. Center 3600)

 The claim at issue is:

1. A computer-implemented method for appraising a real estate property, the method comprising the steps of:
a) storing influence factors and a range of influence factor values for each of different types of appraisal approaches;
b) performing nonlinear programming with a predetermined nonlinear objective function that uses each of the different types of appraisal approaches according to the stored influence factors and the stored range of influence factor values; and
c) providing signals indicative of an optimal range of appraisal values for the real estate property from the performed nonlinear programming according to each of the different types of appraisal approaches, wherein each of the different types of appraisal approaches are a sales comparison approach, an income capitalization approach and a cost approach.

The Board spends most of the first half of the analysis reducing the 3 steps of the method to their essence, which it finds to be: "a series of 'computer-implemented' steps for gathering data, manipulating a mathematical formula, and communicating a result." (pp. 14-15.) Such a reduction leaves out all specifics of the data being manipulated by the steps, but the Board says that's just intended use. ("The field of use for the formula in the claimed process is real estate appraisal."; p. 15.)

Having reduced the steps to their essence, the Board then notes that the claim is nominally drawn to a process, and therefore turns to the Bilski test to determine whether the claim passes muster under § 101. (p. 15.) The Board finds that the phrase "computer-implemented" in the preamble is not enough to satisfy Bilski. (p. 16.) Therefore, the Board moves on to the body of the claim. Quoting a couple of passages from Bilski that deal with data-gathering and insignificant post-solution activity, the Board then finds that the first ("gathering data") and last ("communicating a result") steps "do not impose meaningful limits on the claim's scope." (p. 16.) The Board seems to have arrived at this conclusion because these steps are not "limited by structure or apparatus." (p. 12 and p. 14.)

Having quickly disposed of the first and last steps, the Board turns to the remaining step, which it earlier described as "manipulating a mathematical formula". Since the claim involves a formula, the Board then applies the "transformation" prong of the Bilski test, which specifically references the application of mathematical formulas. Under the transformation prong, § 101 is satisfied when a claim applies a formula in a process which transforms an article to a different state or thing. (pp. 16-17.) However, the Board finds that for this claim, the answer to the transformation question is No because while the property being appraised is physical, the appraisal doesn't transform the land, but rather transforms the rights in the land. (p. 18.)

The Board then moves on to the "particular machine" prong of the Bilski test. The Board finds that the "computer" referred to in the preamble is a general purpose computer, and "thus, the claim covers implementing a particular algorithm in a general purpose computer for the appraisal of a real estate property". (p. 17.) An algorithm is an abstract idea under State Street, and Diehr says an abstract idea is unpatentable under § 101. (p. 17.) Finally, the computer in the preamble does not satisfy the "particular machine" because it's merely a "token recitation", which fails to to qualify a method as a statutory process under Benson. (p. 18.)

It appears this reasoning could be used to reject many computer-implemented claims. Not the small percentage that result in a physical transformation of an article, such as controlling a rubber curing machine or fuel injection in an engine. And not those that are tied to a "particular machine" — I'm thinking of something like a DSL modem or an IP router.

But at some level, can't all computer-implemented claims be characterized as gathering data, performing an algorithm, and communicating a result? After all, that's basically what computers do, right? And if that's all the claim does — if it doesn't transform an article and isn't tied to a particular machine — then it seems the claim doesn't pass § 101 under this reasoning.

Maybe the area to fight about is "performing an algorithm." The claim in Myr seems particular vulnerable because it was tied to a formula, and formulas remind us of "mathematics" and "abstract," which § 101 prohibits.

But what about the following sets of verbs/verb phrases? I think these verbs definitely take the claim out of the realm of "formula." But is a claim using each of these sets of these terms still an "algorithm"?

1. selecting; identifying; determining; comparing
2. applying weighting factors; generating results
3. assembling a data set; assessing an impact 

I think that #1 sounds more like an algorithm than #2, which sounds more like an algorithm than #3. That is, I think people have a certain perception of what an algorithm is, and some words trigger this more than others. So maybe the trick is to choose words that don't sound like an algorithm.

BPAI finds intermediate step is still "responsive to" (Ex parte Goodwin: )

Ex parte Goodwin
Decided February 10, 2009
(Appeal 2009-0786; Appl. No. 09/727,290; Tech. Center 2600)

This is another BPAI decision involving the interpretation of "in response to." (See this post for a discussion of another BPAI decision also involving "in response to.")

The claim in this case read:
a) sensing a person within a predetermined distance of the kiosk by a proximity sensor of the kiosk;
b) displaying first information in response to said sensing step by a display of the kiosk to attract attention of the person to the first information of the display...;

The prior art taught a kiosk with a proximity sensor. When a person was detected, the prior art then determined whether or not the screen had been touched. If the screen was touched, the kiosk interacted with the user based on the particular area that was touched. If the screen was not touched, the kiosk provided an attention getting display.

Thus, the prior art disclosed "displaying first information" (the attention getting display) in response to two conditions being met: a person was sensed; and the screen was not touched. The claim included a single condition – person was sensed – for the display step.

Since the claim used the open-ended transitional phrase "comprising," the Board found that

[T]he claim does not preclude intermediary steps occurring between sensing a person and displaying the first information...Thus even though Cragun shows the step of determining whether the touch screen has been touched (step 112) occurs immediately prior to displaying the first information at 114, Cragun still discloses displaying "first information" (step 114) in response to sensing a person within a predetermined distance of kiosk 10 (FF3).
(Decision, pp. 5-6.)

I disagree with the analysis here. I can't argue with the black letter law about the meaning of "comprising," and my problem is not with the presence of the intermediate step (testing for a touch to the screen) per se. My problem is that the attention-getting display in Cragun is conditional on sensing and touching, where I read the claim as having a single condition (sensing).

Here's another way to think about the issue: should the default interpretation of  "action X responsive to condition Y" be

• if condition Y is met, action X always occurs; or
• if condition Y is met, action X may occur, but some other conditions may be required also.

I feel strongly that the first interpretation is right: that "responsive to" implies "always". But is there a better way to draft the claim to more clearly express the intention? Maybe "action X responsive only to condition Y"?

BPAI says "in response to" means "after" (Ex parte Golovinsky)

Ex parte Golovinsky 
Decided September 1, 2009
(Appeal 2009-00908, Appl. No. 10/152,947, Tech. Center 2400)

At issue in this case was the meaning of the phrase "in response to." The claim used the form "action X in response to action Y." The Board interpreted "in response to" to mean "after" or "following." The Board basically adopted the reasoning explained in the Examiner's Answer:

When the CIMOM server (70) receives a request for dynamic information it "determines which object provider or providers to contact . . . [by] locating the appropriate provider or providers which can satisfy the request" and "combines the dynamic information with the static information now in the form of CIMOM classes to produce some desired instance output"...Thus, it is clear that the CIMOM server (70) cannot process the requests unless the information has already been read. As such, it seems perfectly reasonable (and consistent with the specification) to say that the CIMOM server (70) processes requests and locates the dynamic information "in response to" reading the MIB definition.
(Examiner's Answer, p. 5, emphasis added.)

The Appellant made the same argument that I would have: the plain meaning of "X in response to Y" requires that action Y in some way causes action X. The Board claimed to be applying the "broadest reasonable construction" standard – but surely ignoring the implied causal relationship crosses the line into unreasonableness!

I find this decision very disturbing, as I use the "in response to" construction in many of my claims.

"Antecedent basis" spec objection vs. 112 First claim rejection

When you make a claim amendment that the Examiner believes is not "supported" by the specification, the typical result is a rejection under §112 ¶1. However, every once in a while the Examiner will handle this situation with an objection to the specification under 1.75(d)(1), which requires the claims to have antecedent basis in the specification. Sometimes the Examiner will combine this with a §112 ¶1 rejection.

Though I've only encountered this type of objection to the specification a few times, my arguments are basically the same no matter whether the Examiner applies a claim rejection or a spec objection. However, there is a big difference in how you proceed if the Examiner isn't persuaded by your arguments:

• a rejection is appealable;
• an objection alone is petitionable; and
• an objection in combination with a §112 ¶1 rejection becomes appealable.
  (See MPEP 2163.06.II.) 

Therefore, if you're dealing with both, and you end up appealing, seems like you might as well ask the Board to decide the objection also. That means listing the objection to the specification as a grounds for appeal in your Brief, and providing arguments why the spec does provide antecedent basis.

If you have an objection without a §112 ¶1 rejection, and you're appealing on other grounds, I see several options.

• You can petition the objection concurrently with the appeal. 
• You can petition the objection after the decision on appeal.
• You can wait for the decision on appeal, and hope the objection simply goes away!
  I found several cases in PAIR where the Applicant won an appeal on prior art rejections, and the Examiner issued a Notice of Allowance without explicitly withdrawing the spec objection. (See, e.g., Serial Nos. 10/329,617; 10/010,337; 09/325,944.) Perhaps when a spec objection is the only thing standing between the Examiner and a count for Notice of Allowance, the Examiner had second thoughts about the objection.

What if you don't provide support for claim amendments? (Part III)

Earlier I posted about why I don't think Applicants are required to identify support in the specification when making claim amendments (here) and then about why I sometimes choose to do so anyway (here).

What can happen if you don't provide support for claim amendments?

You're definitely risking a rejection under §112 ¶1. (Either enablement or written description; Examiners seem to use them interchangeably.) If that happens, I bite the bullet and write a response to the rejection, in which I point to support in the specification. In this scenario, where I took a risk and lost, I don't see this as a high price to pay. It probably takes me about the same amount of time to respond to the rejection as it would to preemptively provide the information at the time of amendment. [For another blog post on the subject of responding to §112 enablement rejections, I recommend this Patentably Defined post here.]

You should also be aware of the possibility that something worse could happen. I've heard a few horror stories where the Examiner deemed a response to be "non-responsive" for not pointing to support for claim amendments. In such case, the MPEP gives the Examiner wide latitude on much trouble he/she can cause. (See MPEP 714.03.) Depending on now "serious" the Examiner finds your omission, and whether or not the Examiner finds your response to be "bona fide" or not, the Examiner may:

• note the deficiency and send out the Office Action again; 
• notify you of non-responsiveness and keep the clock running on the original statutory time period; or
• notify you of non-responsiveness and give you a new 1-month time period.

Identifying support in the specification for amendments (Part II)

In a previous post (here), I explained why I don't think Applicants are required to identify support in the specification when making claim amendments. Personally, I don't generally identify support for claim amendments until challenged by the Examiner, because I believe that fewer statements in prosecution history are better than more. (All things being equal.)

Nonetheless, sometimes I do point to a portion of the specification when making a claim amendment. I use a sliding scale: with amendments that I suspect may trigger a §112 rejection, I am more likely to preemptively point to support in the specification. I point to as many areas of the specification (and drawings, if relevant) as possible, and use "wiggle language" stating that these aren't the only relevant portions.

This strategy don't-say-anything-until-forced-to strategy seems to work for me: I'd say far less than 10% of my amendments receive a §112 rejection. As with all things in patent prosecution, your mileage may vary.

Must you identify support for claim amendments? (Part I)

Here's a basic patent prosecution question: are you required to identify support in the specification when making claim amendments?

My answer to this question is: No, Applicants are not required to do so. One portion of the MPEP does baldly state that Applicants should identify support in the spec. [I'll get to that in a minute.] However, "should" is not "must", and that's why I say Applicants are not required to do so.

I'll go further and say that I don't think the MPEP, when read as a whole, even says that Applicants "should" do so. But I've talked to a number of practitioners who take the opposite position, so I in this post I'll explore reasons why I think this is a commonly held belief. In future posts, I'll discuss a) reasons for and against providing support for claim amendments even if not required, and b) what actions an Examiner is and is not entitled to take if you don't.

I think one reason might be confusion about the term "new matter." Technically, new matter refers to material added to the "disclosure" (specification, drawings, and abstract), not to the claims. So while MPEP § 2163.06 does state that "Applicant should therefore specifically point out the support for any amendments made to the disclosure," that doesn't apply to the claims. This section also explains the distinction between a new matter objection to the specification and a written description rejection of a claim.

The most obvious reason for holding that Applicants should identify support in the spec is this bald statement in MPEP § 2163.II.A:

There is a strong presumption that an adequate written description of the claimed invention is present in the specification as filed, Wertheim, 541 F.2d at 262, 191 USPQ at 96; however, with respect to newly added or amended claims, applicant should show support in the original disclosure for the new or amended claims.
(Emphasis added.)

As support for this "should" statement, MPEP 2163.II.A goes on to cite to other sections of the MPEP – which do not support its position:

...See MPEP § 714.02 and § 2163.06 ("Applicant should * * * specifically point out the support for any amendments made to the disclosure.");
(Emphasis added.)

As noted above, § 2163.06 refers to the disclosure, not the claims. And although MPEP § 714.02 states (citing CFR § 1.111) that an Applicant is required to "point out the patentable novelty" and "how the amendments avoid such references or objections", it says nothing at all about pointing to support in the spec. Nor does the final cite in MPEP 2163.II.A support the position "should provide support for claim amendments" :

...and MPEP § 2163.04 ("If applicant amends the claims and points out where and/or how the originally filed disclosure supports the amendment(s), and the examiner finds that the disclosure does not reasonably convey that the inventor had possession of the subject matter of the amendment at the time of the filing of the application, the examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.
(Emphasis added.)

This cite to MPEP § 2163.04 is not on point because it describes what the Examiner is required to do if the Applicant does point out support, not what the Applicant should or must do so.

Thus, I think the MPEP is inconsistent on this basic issue, and when read as a whole, does not even clearly say that Applicants "should" provide support for claim amendments.

Another reminder to address the combination

Recently I posted here about the need to actually address the combination of references when that's what the Examiner has relied on. The Board made this point again in a mechanical case, Ex parte Albert. (Appeal 2009-0001486; Application 10/616,018; Technology Center 3600.)

One claim was directed to "a plastic control plate of a hydraulic gearbox control device", the plate comprising "at least one channel running through the plastic control plate". The Applicant agreed that the pin-grid-array (the alleged "control plate") in the primary reference Chia was made of plastic. (Brief, p. 6.) But the Applicant argued that adding the secondary reference Lindberg to Chia did not result in a plastic plate with a channel because Lindberg taught that plate was metal rather than plastic. (Brief, p. 7.)

The Board chastised the Applicant for arguing that Lindberg did not teach a plastic plate:

However, the Examiner does not rely on Lindberg to describe a plastic control plate. See Ans. 3. Lindberg was used to describe a channel (Ans. 4), not a plastic plate. Appellants' argument is directed to Lindberg in isolation, rather than in combination with Chia, and thus is not persuasive. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
(Decision, pp. 10-11.)