Tuesday, July 27, 2010

Another post-Bilski 101 decision at the BPAI (Ex parte Bigler)

Takeaway: A month after Bilski v. Kappos, and we now have Ex parte Bigler, the second decision from the BPAI addressing § 101 in the post-Bilski world. The Board upheld the Examiner's § 101 rejection, finding that all claims were "directed to software per se." The rejected claims included methods, computer-readable media, and systems. The Board found that the processor recited in the system claim was not hardware.

Details: The method claim recited two steps of sending messages:
A method for communicating between two endpoints connected to a network, the method comprising
having a first endpoint use a global address of a second endpoint to communicate with the second endpoint, wherein:
the global address specifies a protocol, a network identifier, and an address meaningful for the combination of the protocol and a network identified by the network identifier,
an application sends messages directed to the second endpoint through an identity-based communication layer that is situated between a network layer and an application layer, the messages being independent of the protocol, and
the identity-based communication layer transmits the messages to the
second endpoint using the protocol, the network, and the address specified
by the global address.

The Board described the method claims as "directed to software per se, abstract ideas, abstract concepts, and the like, including data per se, data items, messages, addresses, identities, data structures, software layers, software applications, software protocols, and the abstract intellectual processes associated with them."

The Board applied the same "software per se" analysis to the computer-readable media claims,. The Board also held the media claims to be unpatentable under In re Nuijten because they included "transitory signaling embodiments."

With regard to the system claims, the Board found that these claims recited the same subject matter as the method claims. The system claim included "a processor connected to a storage device and one or more input/output devices." However, neither processor nor device ensured statutory subject matter:
Based on the manner in which claim 52, for example, recites the claimed processor, it is not necessarily hardware or a computer itself, and no computer is directly claimed either in the preamble of this claim or the body of the claim.
[T]he expansive scope of the term “device” is intended to encompass data objects themselves, such as objects of data associated with or within a software environment, or software objects as well. Thus, a “device” is a nonce word of substantially broad scope having an optional meaning intended to be attributed to it as disclosed and, in fact, amounts to an abstraction in its own sense. A “device” in this application is not necessarily a physical device.

My two cents: Once again the Board jumps from "software" to "software per se." Yes, the components recited in the claims do sound like software components. But how did we get from "software" to "software per se"? The Applicant never said "per se." We need a case where the Applicant puts some evidence in the record on what these terms mean to a POSITA. If we have evidence on the record that "software" is understood as instructions executing on a processor, then maybe the Board would have to do some real analysis as to whether that is patentable subject matter. Until then, it appears that the Board will merely chant the magic incantation "software per se."
The Board's finding that "a 'device' in this application is not necessarily a physical device" is ridiculous. The spec consistently uses device to refer to computing hardware, and uses device application to refer to the software executing on the device. Note that the Board doesn't cite to any portions of the spec when making this conclusory statement.

The Board's finding that a processor isn't necessarily hardware is almost as ridiculous. The spec does use the term "flow processor" in a way that suggests a "flow processor" is software, but I say that the generic term "processor" is understood differently.

Related Posts: The first post-Bilski decision is Ex parte Proudler, which I blogged about here. Proudler has generated a fair amount of discussion in the blogosophere. If you want some other viewpoints, including some from non-patent attorneys, check out these posts:
Visae Patentes
Software Freedom Law Center


  1. This whole "a device is not a device" position had really been bothering me, so I tried to figure out how they could possibly support this position.

    The Board refers to Page 11, line 10 of the spec, which says that the system includes "devices of all kinds." It then says that "[d]evices may include, for example, objects and equipment that are involved in the operation of a business such as appliances, electronic equipment . . . " and so on.

    What I take from this is that the Board is going to frown on things if you define them too broadly in the spec. That is, "devices of all kinds" is seen as non-limiting, even with examples of devices given later.

    I think that if this decision is to be taken seriously (which I'm not sure it needs to... I still don't think that "a device is not a device" fits into the broadest reasonable interpretation of the claim language), you could try to avoid the worst impact of it by stating a concrete example as a fallback position. That is, if this applicant had stated something like, "One example of a device is a physical computer having a processor and a memory," perhaps there would have been a stronger argument that there was patent eligible subject matter here.

    Another point: it seems like a lot of these really scary BPAI Section 101 rejections are being raised sua sponte. In other words, we're seeing the BPAI's position without having to consider an argument from the applicant/appellant and without the applicant having a chance to address the rejection.


  2. >Board is going to frown on things if you
    >define them too broadly in the spec. That is,
    >devices of all kinds" is seen as non-limiting,
    >even with examples of devices given later.

    David, thanks for the analysis. You've convinced me that the Board was thinking too broad = non-limiting.

    I don't, however, see what legal support they have for that position.

    "Device" may be a "nonce word" that triggers 112P6 because it doesn't provide enough structure. It maybe be a *broad* term that encompasses lots of prior art. But the term nonetheless refers to something physical. The Board's statement that "A 'device' in this application is not necessarily a physical device" just isn't supported by the evidence.

    >try to avoid the worst impact of it by stating
    >a concrete example as a fallback position.

    Good point. Thinking broad without a fallback can be fatal.

    >really scary BPAI Section 101 rejections are
    >being raised sua sponte.

    They've been doing that for months. I think Applicants may start to see more favorable 101 treatment during examination because of the guidelines. But I'm not as hopeful about the results at the Board.

    >without the applicant having a chance to
    >address the rejection.

    Oh, that's not even the worst case scenario. Worst case is that the BPAI raises a 101 and refuses to rule on the prior art rejections :-)