Post-Bilski Computer-Readable Medium Claim Patentable

Post-Bilski Computer-Readable Medium Claim Patentable

 

In what appears to be the first USPTO administrative decision following Bilski, in Ex parte Bo Li, Appeal 2008-1213 (USPTO BPAI 2008, November 6, 2008) the Board of Patent Appeals and Interferences held that a method and system for generating a report using software modules adapted for easy modification and updating was directed to statutory subject matter:

In the analysis of In re Nuijten, 500 F.3d 1346 (Fed. Cir., 2007), the Federal Circuit considers the four statutory classes for a signal, and bases the determination of statutory subject matter on that basis. It has been the practice for a number of years that a "Beauregard Claim" of this nature be considered statutory at the USPTO as a product claim. (MPEP 2105.01, I). Though not finally adjudicated, this practice is not inconsistent with In re Nuijten. (Ibid.). Further, the instant claim presents a number of software components, such as the claimed logic processing module, configuration file processing module, data organization module, and data display organization module, that are embodied upon a computer readable medium. This combination has been found statutory under the teachings of In re Lowry, 32 F.3d 1579 (Fed. Cir., 1994). In view of the totality of these precedents, we decline to support the [nonstatutory subject matter] rejection under 35 U.S.C. § 101.

The claim at issue from Application No. 10/463,287 is copied below:  

42. A computer program product, comprising a computer usable medium having a computer readable program code embodied therein, said computer readable program code adapted to be executed to implement a method for generating a report, said method comprising:

providing a system, wherein the system comprises distinct software modules, and wherein the distinct software modules comprise a logic processing module, a configuration file processing module, a data organization module, and a data display organization module;

parsing a configuration file into definition data that specifies: a data organization of the report, a display organization of the report, and at least one data source comprising report data to be used for generating the report, and wherein said parsing is performed by the configuration file processing module in response to being called by the logic processing module;

extracting the report data from the at least one data source, wherein said extracting is performed by the data organization module in response to being called by the logic processing module;

receiving, by the logic processing module, the definition data from the configuration file processing module and the extracted report data from the data organization module; and

organizing, by the data display organization module in response to being called by the logic processing module, a data display organization of the report, wherein said organizing comprises utilizing the definition data received by the logic processing module and the extracted report data received by the logic processing module.

No Graham Analysis for U.S. Obviousness-Type Double Patenting

Graham Analysis Not Necessary for Obviousness-Type Double Patenting Rejection

 

In In Re Basell Poliolefine Italia S.P.A. (November 13, 2008), the Federal Circuit reiterated that a full Graham analysis is not required for an obviousness-type double patenting rejection: 

We are also unpersuaded by Basell's assertion that the double patenting rejection should be reversed because the Board failed to expressly conduct a full Graham analysis in determining that the '687 patent claims were an obvious variant of claim 1 of the '987 patent. Indeed, "this court has endorsed an obviousness determination similar to, but not necessarily the same as, that undertaken under 35 U.S.C. § 103 in determining the propriety of a rejection for double patenting." In re Braat, 937 F.2d 589, 592-93 (Fed. Cir. 1991). Hence, we find no basis for reversing the Board's decision merely because the Board failed to expressly set forth each of the Graham factors in its analysis. The Board carefully considered claim 1 of the '987 patent and the claims of the '687 patent and determined that a person of ordinary skill in the art would have found the '687 patent claims to have been obvious. We find no error in the Board's analysis.

. . . We agree with the Board's conclusion that the claims of the '687 patent are not patentably distinct from claim 1 of the '987 patent. Claim 1 of the '687 patent covers polymerizing 1) an alpha-olefin of C4 or higher, 2) with ethylene, 3) using a titanium halide aluminum alkyl catalyst. As the Director and the Board correctly noted, the claim encompassing those limitations is an obvious variant of claim 1 of the '987 patent. Specifically, with regard to the alpha olefin of C4 or higher, claim 1 of the '987 patent provides that one of the monomeric materials may include "unsaturated hydrocarbons of the formula CH2�CHR in which R is selected from the group consisting of saturated aliphatic radicals containing 1 to 4 carbon atoms." Thus, both claims of the '987 patent and the '687 patent cover alpha olefins of C4 to C6. In addition, with regard to ethylene, claim 1 of the '987 patent recites "another olefinic monomer," and thus covers a genus that includes ethylene. Similarly, with regard to the titanium halide aluminum alkyl catalyst, claim 1 of the '987 patent covers a genus that the parties do not dispute includes titanium halide, as well as a genus that includes aluminum alkyl. Claim 1 of the '687 patent is thus not patentably distinct from claim 1 of the '987 patent.

 

Patent Ratings and Policy Matrix Terminology

"Pioneering" - creates a new, exclusive market
"Expanding" - creates a new, exclusive market segment
"Distinguishing" - may prevent copying, but does not prevent entry (most patents)
"Obsolete" - dubious legal or market merit
"Vanity" - probably void ab initio, nearly worthless

from "Patent Portfolio Triage: Proven Methods for Bottom-Line Results" by Tom Clare on November 17, 2008 via the APLF

US-FTC Schedules Hearings on IP

On November 6, 2008, the U.S. Federal Trade Commission announced a series of hearings on "Evolving Intellectual Property Marketplace."  The hearings will be held beginning on December 5, 2008, in Washington, DC. The FTC will examine changes in IP law, patent-related business models, and new learning about the operation of the IP marketplace since the issuance in October 2003 of the Commission report To Promote Innovation: The Proper Balance of Competition and Patent Law and Policy. An agenda for the hearing is available here. 

Additional information about the December 5 and subsequent hearings will be available on the website for the hearings, which can be accessed from http://www.ftc.gov/ftc/workshops.shtm.

European Software Patentability Update

European Software Patentability Update

 

The UK-IPO issued a press release on November 7, 2008 regarding the patentability of computer programs following the recent UK decision in Symbian Ltd v Comptroller General of Patents in which the UKIPO's approach relating to patentability of computer programs was overturned:

The President of the EPO has now referred a series of questions on the patentability of computer programs to the Enlarged Board. This body has the ability to make a definitive statement of EPO practice and as such also carries significant weight in terms of the practice adopted by the UK-IPO and other national Patent Offices within Europe. In the light of this development, the UK-IPO will not seek to appeal the Symbian judgment further.

 

. . . The Enlarged Board of Appeal is a body made up of EPO Appeal Board members and international experts. Its decisions are binding on the EPO (although not the UK courts). The EPO President has referred questions on the computer program exclusion to the Enlarged Board because she is concerned that decisions of EPO Appeal Boards have not been consistent. Referral under Article 112(1)(b) EPC [October 22, 2008] 

 

. . . As with all UK court decisions the Symbian judgment is binding on the UK-IPO.

The questions being referred to the EPO Enlarged Board of Appeal are as follows:

1. Can a computer program only be excluded as a computer program as such if it is explicitly claimed as a computer program?

2.(a) Can a claim in the area of computer programs avoid exclusion under Art. 52(2)(c) and (3) merely by explicitly mentioning the use of a computer or a computer-readable data storage medium?

2.(b) If question 2(a) is answered in the negative, is a further technical effect necessary to avoid exclusion, said effect going beyond those effects inherent in the use of a computer or data storage medium to respectively execute or store a computer program?

3.(a) Must a claimed feature cause a technical effect on a physical entity in the real world in order to contribute to the technical character of the claim?

3.(b) If question 3(a) is answered in the positive, is it sufficient that the physical entity be an unspecified computer?

3.(c) If question 3(a) is answered in the negative, can features contribute to the technical character of the claim if the only effects to which they contribute are independent of any particular hardware that may be used?

4.(a) Does the activity of programming a computer necessarily involve technical considerations?

4.(b) If question 4(a) is answered in the positive, do all features resulting from programming thus contribute to the technical character of a claim?

4.(c) If question 4(a) is answered in the negative, can features resulting from programming contribute to the technical character of a claim only when they contribute to a further technical effect when the program is executed?

A Reference Guide to the Australian Patent System

by Bill Bennett, of Pizzeys Patent & Trademark Attorneys, is available at http://www.pizzeys.com.au/Articles/Australian%20Patent%20System%20Guide.pdf

TGIF for U.S. Patent Application Serial No. 11/741,429!

You too might get an end-of-the-week chuckle over U.S. Patent Application Serial No. 11/741,429 on "Patent Acquisition and Assertion by a (Non-Inventor) First Party Against a Second Party" by U.S. Patent Attorney Clive D. Menezes of Halliburton Energy Services Inc.:

Thank Goodness It's Friday,

--Bill

p.s. - Get more IP news from the IP Think Tank Global Week in Review, General Edition - Friday, 7 November 2008

East Asian Patent Database Searching

According to "Tips & tricks for searching East Asian patent databases" by Irene Schellner, European Patent Office, 27 October 2008:

• more than 50% of the patent applications published worldwide are written in Japanese, Chinese or Korean
• KIPO receives 4th highest number of IP applications in the world (after US, JP and CN)
• every year more than 350 000 patent applications are filed in Japan
• between 1997 and 2007, domestic filings in China increased twelve fold and domestic filings in Korea doubled

Her presentation goes on to discuss

1. Challenges when searching East Asian data
2. Data sources & providers
3. Overview of free databases
4. Tips & tricks for searching
5. Bridging the time gap
6. Going beyond English abstracts
7. Overcoming language barriers
8. How the EPO can help

Get more East Asian Patent Information from the European Patent Office, and other such patent intelligence insights from the Intellectual Property Intelligence Blog.