Ex parte Proudler
Appeal 2009-006599, Serial No. 10/643,306, Tech. Center 2400
Decided July 7, 2010
This application involves secure computing, and the claims are directed to applying individualized security rules to data items. On appeal were four independent claims: two method claims, a computer readable medium claim, and a computer apparatus claim. The Board vacated the prior art rejections, raised a new rejection under § 101, and remanded to the Examiner.
The Board found that:
[The] claimed invention is directed to software per se, abstract ideas, abstract concepts, and the like, including data per se, data items, data structures, usage rules, and the abstract intellectual processes associating them within the claims on appeal.The Board said that the language of the computer apparatus claim clearly showed that the claim was directed to an abstract idea:
The manner in which the so-called 'computer apparatus' of the preamble of independent claim 50 is recited in the body of this claim is characterized as directly reciting in its two clauses 'programming for' achieving a certain abstract functionality. Thus, no true hardware structure is recited."In making this determination, the Board seemed to rely on two statements in the specification. One was the Abstract, which restated the method claim and mentioned a "computing entity." Another statement in the specification said that "A computing entity, either hardware or software, is often called a 'node' and this term will appear hereinafter."
The Board used the same reasoning to find that the method claim was directed to an abstract idea, since it recited "computing entity" in the body. The Board used different reasoning to reject the computer readable medium claim: that claim encompassed signals per se, which are unpatentable under In re Nuijten.
My two cents: I have two comments about Proudler. First, the BPAI did not use the Machine-or Transformation test in it's § 101 analysis, and instead used "abstract ideas." Yet the Board's stated reason for finding that the computer apparatus claim was directed to an abstract idea was "no true hardware structure was required." How is this any different than applying the Machine-or-Transformation test? Is "abstract idea" just another way of stating "not tied to a particular machine" ?
My second comment about Proudler: this case shows the danger of being vague about what you mean by "software." Examiners, the BPAI, and the courts seem to think that the term "software" implies "not tied to hardware." If your claim sounds like "software" – even if the claim doesn't contain that term – the BPAI will redesignate them as "software per se." By which they seem to mean "software in the abstract," or as I call it, "software floating in the ether."
Speaking as a former POSITA, that's not what the term "software" means to me. I say "software" means "instructions executing on a processor." That is, software is tied to hardware, and as such, is not "abstract."
I suppose you can try making this argument in an expert declaration. But I think a better approach to avoid/overcome a § 101 rejection for "software per se" is a specification that explains what is meant by the terms "software" and "hardware," and explains the relationship between the two.
Other Posts on Ex parte Proudler: This decision 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:
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