BPAI: Method Relating to Character of Data Information Elements Not Patentable Subject Matter

Thanks again to Professor Hal Wegner for wading through the recent decisions of the U.S. Board of Patent Appeals and Interference on Westlaw to find three new decisions where the Board has relied upon Comiskey to suggest patent-ineligibility under 35 USC § 101:

• Ex parte Yang-Huffman, 2007 WL 2899992 (Bd.Pat.App. & Interf. 2007);
• Ex parte Gosby, 2007 WL 2843739 (PTO Bd. App. & Int. 2007);
• Ex parte Tieu, 2007 WL 2823746, n.2 (PTO Bd. App. & Int. 2007),

In the only on of these decisions that is posted on the USPTO website as of today, the representative claim in Yang-Huffman recited:

1. A dynamic configuration method, comprising:

receiving collection criteria categorizing a relevant node on a network;

receiving collection instructions indicating usage information to collect from the relevant node based on the collection criteria; and

providing configuration update information for the relevant node to collect the indicated usage information based on the collection criteria and the collection instructions.

According to the non-binding precedent of Administrative Patent Judge Thomas,

Turning first to the rejection of claims 11 through 19 and 31 through 33 as being directed to non-statutory subject matter, we agree with the Examiner’s views expressed in the Answer as to this issue. The Examiner has made a direct
point that the claimed policy manager, logic, collection criteria and collection instructions, based on the Specification as filed as well as their own recitation in the respective claims on appeal, directly relate to software elements per se. Appellant has not indicated among the claims rejected what structural relationships are actually stated in the claims on appeal despite his general argument to that affect. Moreover, we do not agree with Appellant’s view that MPEP § 2106 clearly indicates that software is not per se non-statutory. We do not view the claims as being consistent with any permissive language contained within this section of the MPEP. Nevertheless, there is no authority that we know of which permits software per se to be considered statutory within 35 U.S.C. § 101. Appellant’s arguments in the Brief and Reply Brief do not contest the Examiner’s view that the noted features in the claims are actually software elements per se.

At this point in our opinion, we observe in passing that, should there be any future prosecution of this application, it appears to us that all present pending claims on appeal may be subject to rejections under 35 U.S.C. § 101. The major argued features of collection criteria, collection instructions, usage information, update information etc., relate to mere information elements per se and to no structural element for which any change in methodology is actually recited. To be sure, the mere receipt and providing features of representative independent claim 1 on appeal are not characterized as being unique methodologies per se, but only the nature of the information related to or the characterization of the information element is argued to be operatively unique. These considerations are prompted by the recent decision by our reviewing court in In re Comiskey, Slip Op. at 21 (Fed. Cir. Sep. 20, 2007).

The Good Professor was also kind enough to pass along these somewhat less-tantalizing tidbits from the latter two "pay-per-view" decisions:

Ex parte Gosby, 2007 WL 2843739:

1. A method for document analysis and retrieval, comprising the steps of:

receiving a document having text therein from a host of a first computing system;

generating document keys associated with said text from analysis of said text, each said document key selected from the group consisting of a keyword of said text and a keyphrase of said text;

providing a document taxonomy having categories, each category having category keys, each said category key selected from the group consisting of a keyword of said category and a keyphrase of said category;

comparing the category keys of each category with said document keys to make a determination of a distance between the document and each category as a measure of how close the document is to each category; and

returning a subset of said categories to said host, wherein said subset of said categories reflects said determination.

"In performing the method steps of claim 1, there is no requirement that a computer be used. The only recitation of ‘computer’ or ‘host’ relates to the source or destination of data transmission. For example, a document is received from a host and a subset of said categories is returned to the host. The claim is merely drawn to
‘disembodied abstract ideas,’ which do not have any ‘real world effect’ until they are implemented. The absence of any transformation of physical subject matter according to the definition of a process under 35 U.S.C. § 101, places this claim on the other side of the line defining statutory subject matter. A case involving this issue is presently on appeal to the Federal Circuit: In re Bilski, No. 2007-1130 (to be argued Oct. 1, 2007). Additionally, in performing the method steps of claim 1, there is no
requirement that a computer be used. Therefore, the claimed subject matter
may be performed using only human intelligence, which has recently been held
to be non- statutory. In re Comiskey , No. 2006-1286, Slip Op. at 21 (Fed. Cir. Sep.
20, 2007)."


Ex parte Tieu, 2007 WL 2823746, n.2 (PTO Bd. App. & Int. 2007):

1. A method comprising:

developing a model of a motor based on a response of a winding of the motor to an application of a non-rotational inducing current across the winding for a predetermined time period; and

determining a substantially accurate position of a rotor of the motor within a first commutation state of an electrical revolution of the motor in which the rotor resides based on the model.

9. An apparatus adapted to determine a first commutation state of a motor that a rotor of the motor resides and determine a substantially accurate position of the rotor within the first commutation state.


"We observe that claims 1 and 9 recite method steps and functions to be performed by an apparatus, describing mainly a concept without indicating how the steps are
implemented. These claims are merely drawn to ‘disembodied abstract ideas,’
which do not have any ‘real world effect’ until they are implemented. The absence of any transformation of physical subject matter according to the definition of a process under 35 U.S.C. § 101, places these claims on the other side of the line defining statutory subject matter. A case involving this issue is presently on appeal to the
Federal Circuit: In re Bilski, No. 2007-1130 (to be argued Oct. 1, 2007). Additionally, in performing the method steps of claim 1, there is no requirement that a computer be used. Therefore, the claimed subject matter may be performed using only human
intelligence, which has recently been held to be non-statutory. In re Comiskey, No. 2006-1286, Slip Op. at 21 (Fed. Cir. Sep. 20, 2007). We do not need to reach the issue of whether claims 1 and 9 encompass non-statutory subject matter since we affirm the Examiner's decision rejecting these claims. However, we encourage the Examiner to consider patentability of the allowed claims 7 and 20, which are dependent upon claims 1 and 9, under Section 101 in the event the prosecution of these claims is reopened."