Patent Board extends software per se, printed matter doctrines to reject computer-readable media (CRM) claims

Takeaway: Bucking decades of settled precedent and USPTO guidance, the Patent Board rejected claims reciting computer-readable media (CRM) as subject-matter ineligible software per se and printed matter, even as it reversed Alice rejections of the same claims.

Note: This is the second of two posts covering the same PTAB decision.  For the other, see "IBM wins reversal of Alice rejections for targeted ad delivery at airports".

Details:

Ex parte Musial
Appeal No. 2017-001164; Application No. 13/396,177; Tech. Center 3600
Decided: Apr. 30, 2018

Inventors for IBM filed an application relating to "a computer implemented method, data processing
system, and computer program product for . . . distributing advertisements to receptive audiences", and more specifically captive audiences sitting in airport terminals waiting to board their flights, or aboard airplanes waiting to take off or deboard.  The Board reproduced rejected independent claim 14 as representative:

14.     A computer program product for selecting an advertisement, the computer program product comprising:
         a computer readable non-transitory medium having computer readable program code stored thereon, the computer readable program code comprising:
                  program instructions to receive a first check-in corresponding to at least one person, wherein the first check-in is a indication of presence relative to an airport gate servicing a flight and the first check-in is received from a kiosk;
                  program instructions to receive a second check-in to form an aggregation of people, wherein the second check-in is a indication of presence relative to the airport gate servicing the flight;
                  program instructions to characterize the aggregation based on cumulative characteristics selected of at least one vital statistic of each person checking-in to form an aggregated population characteristic;
                  program instructions to receive flight details concerning the flight, wherein the flight details comprise a flight destination, and the advertisement concerns a service provider at the flight destination;
                  program instructions to select at least one advertisement based on the aggregated population characteristic and the flight details, in response to the second check-in;
                  program instructions to receive a check-out of at least one person, wherein the check-out comprises reading an identifier of an at least one person who departs;
                  program instructions to select at least one advertisement based on the aggregated population characteristic;
                  program instructions to second characterize the aggregation based on the cumulative characteristics to form a second cumulative characteristic based on the aggregation without at least one vital statistic corresponding to the at least one person who departs, wherein the program instructions to select at least one advertisement based on the aggregated population characteristic perform to select the at least one advertisement is based on the second cumulative characteristic;
                  program instructions to select at least one advertisement based on the second cumulative characteristic, and a destination of the flight details, wherein the destination is stated within the at least one advertisement;
                  program instructions to dispatch the at least one advertisement; and
                  program instructions to detect presence of a service vehicle associated with a flight near and outside an aircraft associated with the flight, wherein the detecting presence relies on at least one global positioning satellite (GPS) signal received at the service vehicle and reported as location data to the hardware processor, wherein program instructions to dispatch comprises instructions to dispatch the at least one advertisement to the service vehicle for rendering and such dispatching is responsive to detecting presence of the service vehicle.

(Emphasis added.)  The examiner rejected the claims as subject-matter ineligible under the Alice framework and its judicially-made exceptions to 35 U.S.C. § 101, but the Board reversed those rejections, and entered new grounds of rejection, finding the claims to be subject-matter ineligible as "directed to software per se and, thus, are not within one of the four classes of statutory subject matter", and also as "a mere arrangement of 'printed matter' and merely claiming the content of 'printed' information."

My two cents:

There are a couple of ways to read this surprising decision, but either interpretation leads to the conclusion of egregious Board error.  In the first and more generous interpretation of what happened in Musial's new grounds, the Board got distracted by the description in the specification and overlooked the limitations of the claims.  This would explain why the Board devotes ink to two long footnotes (notes 4 and 5) quoting portions of the specification allegedly supportive of a software per se interpretation, including, among other selections, language providing that "one or more embodiments may take the form of . . . an entirely software embodiment."  Although specification language may be used to construe or define claim terms, it would be an obvious misapplication of the law if the Board looked to the specification to override and effectively delete limiting language in the claims, in this case, the language specifying that the computer program product comprised a computer readable non-transitory medium having computer readable program code stored thereon.  Recitation of computer-readable media (specified as non-transitory in compliance with the prohibition of claiming transitory signals per se, as discussed in In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007)) suffices to avoid a software per se rejection, as discussed below.  The applicants' casting of the claims in CRM form must be seen as an express disclaimer of any broader scope inclusive of software per se, even if such may be described in the specification.

The theory that the Board simply got distracted by spec language is also difficult to reconcile with the Board's express finding that "the 'computer readable non-transitory medium' as claimed . . . also does not exclude it being software [per se]."  Except that it does; see, e.g., MPEP § 2111.05(III); Ex parte Kouznetsov, No. 2007-003470 (B.P.A.I. June 30, 2008) (“When functional descriptive material is recorded on some computer-readable medium, it becomes structurally and functionally interrelated to the medium and will be statutory in most cases since use of technology permits the function of the descriptive material to be realized.”).  The Board makes this conclusory declaration without any reasoning or citation to established law.  Indeed, the Board's decision goes against established law, the MPEP, and published USPTO guidance.  Thus, the second reading of the Board's decision is that it was made in ignorance.

The Board's new grounds of rejection cannot be reconciled with the ultimate outcome of the trilogy of mid-'90s Federal Circuit cases of In re Warmerdam, 33 F.3d 1354 (Fed. Cir. 1994), In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994), and In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995), of which discussion can be found in the journal article by Vincent Chiappetta, Patentability of Computer Software Instruction as an 'Article of Manufacture": Software as Such as The Right Stuff, 17 J. Marshall J. Computer & Info. L. 89 (1998).  These cases culminated in the February 1996 USPTO Examination Guidelines for Computer-Related Inventions.  These guidelines state, with regard to functional descriptive material:

   [C]omputer programs claimed as computer listings per se, i.e., the descriptions or expressions of the programs, are not physical "things," nor are they statutory processes, as they are not "acts" being performed.  Such claimed computer programs do not define any structural and functional interrelationships between the computer program and other claimed aspects of the invention which permit the computer program's functionality to be realized.  In contrast, a claimed computer-readable medium encoded with a computer program defines structural and functional interrelationships between the computer program and the medium which permit the computer program's functionality to be realized, and is thus statutory.  Accordingly, it is important to distinguish claims that define descriptive material per se from claims that define statutory inventions.
   Computer programs are often recited as part of a claim.  Office personnel should determine whether the computer program is being claimed as part of an otherwise statutory manufacture or machine.  In such a case, the claim remains statutory irrespective of the fact that a computer program is included in the claim.  The same result occurs when a computer program is used in a computerized process where the computer executes the instructions set forth in the computer program.  Only when the claimed invention taken as a whole is directed to a mere program listing, i.e., to only its description or expression, is it descriptive material per se and hence non-statutory.

(Emphases added.)  These guidelines were published after Beauregard, wherein the USPTO finally ceded the issue and recognized that claims reciting software embodied on a tangible medium constituted patent-eligible subject matter.  The '90s trilogy led to the evolution of the distinction between functional and non-functional descriptive material; even as late as Beauregard, software, despite being functional, was being rejected under the printed matter doctrine.  As the Federal Circuit found earlier in Lowry, "the printed matter cases have no factual relevance where 'the invention as defined by the claims  requires that the information be processed not by the mind but by a machine, the computer.'"  32 F.3d at 1583 (citing In re Bernhart, 417 F.2d 1395, 1399 (C.C.P.A. 1969), having an identical holding) (emphasis in original).  Lowry's claim 1 read as follows:

1.      A memory for storing data for access by an application program being executed on a data processing system, comprising:
         a data structure stored in said memory, said data structure including information resident in a database used by said application program and including:
                  a plurality of attribute data objects stored in said memory, each of said  attribute data objects containing different information from said database;
                  a single holder attribute data object for each of said attribute data objects, each of said holder attribute data objects being one of said plurality of attribute data objects, a being-held relationship existing between each attribute data object and its holder attribute data object, and each of said attribute data objects having a being-held relationship with only a single other attribute data object, thereby establishing a hierarchy of said plurality of attribute data objects;
                  a referent attribute data object for at least one of said attribute data objects, said referent attribute data object being nonhierarchically related to a holder attribute data object for the same at least one of said attribute data objects and also being one of said plurality of attribute data objects, attribute data objects for which there exist only holder attribute data objects being called element data objects, and attribute data objects for which there also exist referent attribute data objects being called relation data objects; and
                  an apex data object stored in said memory and having no being-held relationship with any of said attribute data objects, however, at least one of said attribute data objects having a being-held relationship with said apex data object.

(Emphasis added.)  With regard to this broadest claim, the Federal Circuit concluded:

More than mere abstractions, the [claimed] data structures are specific electrical or magnetic structural elements in memory. . . . [They] provide tangible benefits: data stored in accordance with the claimed data structures are more easily accessed, stored and erased. . . . [They] are physical entities that provide increased efficiency in computer operation.  They are not printed matter.  The Board is not at liberty to ignore such limitations.

Id. at 1583-84.  In other words, Lowry's claims related to the physical organization imparted to the data in the memory, and not data in the abstract.  Id. at 1583.

In Beauregard, the solicitor didn't even bother to defend the Board's affirmance of the examiner's rejection of computer program product claims as printed matter.  The solicitor averred before the Federal Circuit "that computer programs embodied in a tangible medium, such as floppy diskettes, are patentable subject matter under 35 U.S.C. § 101".  The CAFC appeal was withdrawn without a fight, and the February 1996 Guidelines were issued a few months later.  The USPTO position as to functional descriptive material was repeated in the November 2005 Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility ("When functional descriptive material is recorded on some computer-readable medium it becomes structurally and functionally interrelated to the medium and will be statutory in most cases since use of technology permits the function of the descriptive material to be realized.").  CRM claims came to be known as "Beauregard claims".  Although § 101 law as a whole has evolved considerably since the time of the February 1996 and November 2005 Guidelines, particularly with the Supreme Court's judicial-exception decisions in Bilski, Mayo, and Alice, that evolution is not pertinent in the present consideration rejecting Beauregard claims as software per se, since the Board found the claims not to be ineligible under the framework that evolved from the abstract-idea cases.

It's also notable that the Board made the software per se new grounds of rejection despite the claims being amended, immediately prior to appeal, specifically to recite the "computer readable non-transitory medium" by examiner request and with examiner assurance, in an interview, that such language constitutes the preferred phrasing.

As alluded to above, the Board's rejection of the claims under the "printed matter" doctrine (or what is modernly and more accurately termed "nonfunctional descriptive material" doctrine) is as flawed as the rejection of the claims as software per se.  As explained in the "informative" Board decision of Ex parte Mathias, No. 2005-1851, 84 USPQ2d 1276, 1278-79 (B.P.A.I. Aug. 10, 2005),

[c]ommon situations involving nonfunctional descriptive material are:
- a computer-readable storage medium that differs from the prior art solely with respect to nonfunctional descriptive material, such as music or a literary work, encoded on the medium,
- a computer that differs from the prior art solely with respect to nonfunctional descriptive material that cannot alter how the machine functions (i.e., the descriptive material does not reconfigure the computer), or
- a process that differs from the prior art only with respect to nonfunctional descriptive material that cannot alter how the process steps are to be performed to achieve the utility of the invention

None of these scenarios are applicable here in Musial.  The Board in the present case cites to In re DiStefano, 808 F.3d 845 (Fed. Cir. 2015), in support of its finding that the claimed CRM computer program product constitutes printed matter, but DiStefano does not support the Board's conclusion; on the contrary, the CAFC in DiStefano vacated a Board finding that web assets amounted to printed matter.  "The common thread amongst all" printed matter cases, the reviewing court explained, "is that printed matter must be matter claimed for what it communicates", and the content of the information was not being claimed in DiStefano.  In re Miller, 418 F.2d 1392 (C.C.P.A. 1969), also cited by the Board in the present case, likewise was a court reversal of a Board decision of unpatentability, and fails to support the Board's contention that the CRM claims are printed matter.

It is, of course, not correct to say that the nonfunctional descriptive material doctrine never applies to software claims.  When the doctrine is properly applied, an isolated feature at the point of novelty is shown to be descriptive rather than functional.  Mathias presents the classic case, wherein, in a claim directed to an "on-screen icon", the recited sporting event icon was "non-functional descriptive material [that] cannot lend patentability to an invention that would have otherwise been anticipated by the prior art."  As a sampling of representative cases, one can point to, e.g., Ex parte Curry, No. 2005-0509, 84 USPQ2d 1272 (B.P.A.I. June 30, 2005); Ex parte Nehls, No. 2007-1823, 88 USPQ2d 1883, 1887-89 (B.P.A.I. Jan. 28, 2008) (precedential); Ex parte Kerr, No. 2009-013183 (P.T.A.B. Dec. 26, 2012); Ex parte Okamoto, No. 2012-000836 (P.T.A.B. Jan. 23, 2013); Ex parte Gooch, No. 2010-008687 (P.T.A.B. July 26, 2013); Ex parte Sen, No. 2011-006544 (P.T.A.B. Dec. 23, 2013); Ex parte Sharma, No. 2010-011909 (PT.A.B. June 7, 2013).  However, the Board in Musial fails to explain how any of these cases are relevant or how the point-of-novelty feature (if any single one can be pointed to) amounts to matter that is purely nonfunctional and descriptive.  Consequently, the rejection of the claims as printed matter is misplaced.

Generally, when the Board suspects a new reason for unpatentability but would prefer not to do the heavy lifting of demonstrating it with reasoned explanation in its opinion, the Board notes the potential new grounds, as in a footnote, by way of suggestion to the examiner to inquire into such grounds upon return of the application to the examiner's jurisdiction.  The Board did not do that in this case, and instead made rejections inconsistent with the law in this area.  The panel overlooked the significance of the physical media recitation or misapprehended the meaning of "software per se".