Tuesday, August 3, 2010

Does squishing an eyeball qualify as "transforming an article"?

I recently discovered the Patently-unOBVIOUS blog. One of the older posts covers the BPAI decision Ex parte Roberts, which contained an interesting 101 rejection. The decision predates Bilski v. Kappos, but it's still relevant today.

The application was about obtaining eye measurements for laser surgery. One of the method claims included steps for obtaining the measurements and correlating the data. The BPAI affirmed the 101 rejection: no transformation and no machine.

Patently-unOBVIOUS makes the interesting point that the claim should be interpreted as inherently applying pressure to the eyeball, and that this should qualify as a transformation of an article. 

My take on this is that the Board did not think as carefully about the claim as Patently-unOBVIOUS did, and would not have affirmed the 101 if they realized that the claim required movement of the eyeball. I say that because another claim explicitly recited "perturbing the cornea," and the Board did not apply a new 101 rejection for that claim.

Check out the full post at Patently-unOBVIOUS, which has the catchy title The Punched Drunk Eye of Schrodinger's Cat.

As a postscript, the Applicant in Ex parte Roberts reopened prosecution after the adverse appeal decision. In addition to amending in an attempt to overcome the affirmed prior art rejections, the Applicant has also tried several different tacks to overcome the 101 rejections. None of them have worked: the Examiner twice rejected different varieties of a computer-readable medium claim, then rejected a method claim which explicitly recites a computer system in the body.


  1. >My take on this is that the Board [...] would not have affirmed the 101 if they realized that the claim required movement of the eyeball.

    I disagree. The application of pressure to the eyeball does not "transform" the article in the 101 test sense (convert into something different, permanently, although possibly reversibly). The application of pressure deforms the eye but it is still an eye and at the end of the "process" is the same eye as it started out. The application of pressure is not transformative; rather it is a means of making a measurement, just as running a current through a resistor allows you to measure resistance and temporarily transforms the resistor (it gets hotter, the electrons move around, etc).

    The PTO and the courts (and I) are skeptical of processes that are essentially the simple drawing of a conclusion based on a collected data set.

    That was the thrust of the "machine or transformation" test. Either you needed to tie your process to a >specialized< machine in a meaningful way (i.e., the machine must be necessary, not just sufficient) or, you should be able to put your process inside a black box, dump something into the input side, and get something different out the output side. If you dump an eyeball into a tonometer you get data out with the same eyeball, not some different bodily organ.

    I believe that people who think claiming a CD-ROM with software on it somehow makes it not a process patent or will let it fly past the "machine or transformation" test are mistaken

    I feel similarly about, say, medical diagnostics. I don't think you should get a patent for recognizing the correlation between some measurement made on the body and some pathology. A Nobel Prize in Medicine, perhaps, but a patent, no.

  2. >transform article in the 101 test sense (convert
    >into something different, permanently, although
    >possibly reversibly).

    Sure, I'll agree that deforming the eye doesn't permanently transform.

    At this point, reasonable minds can differ on what sort of "transformation" is required by the case law. And reasonable minds can always differ on what sort *should be* required.

    >it is a means of making a measurement, just as
    >running a current through a resistor allows
    >you to measure resistance

    Agreed that in the claimed invention, that's what the deformation was used for. Not sure why that matters from a 101 standpoint.

    What if the object being deformed in order to make a measurement was not just temporarily deformed, but permanently transformed into a new shape? If would have the same "bad" purpose -- only making a measurement. But since the article was truly transformed, you'd probably agree that it's acceptable under 101. [Or not? Still too abstract?]

    So, I see the purpose of the deformation as being irrelevant.

    >If you dump an eyeball into a tonometer
    >you get data out with the same eyeball, not
    >some different bodily organ.

    Agreed the eyeball is the "same" eyeball. Such that if a permanent transformation is required, this fails.

    >I feel similarly about, say, medical diagnostics

    I give you high marks for being consistent in your reasoning :-)

  3. Gee. I wonder who posts those Patently-Unobv posts (heh heh)?