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Bilski Fallout

By just_n_examiner

I'll tell you what, I wish I could write 101 rejections with as little supporting analysis as the Supreme Court did in the Bilski decision. A little discussion of precedential caselaw (Benson, Flook and Diehr), some hand-waving, and the conclusion that the claims at issue are drawn to an abstract idea.

Actually, it didn't even seem like a conclusion, it very much seemed as if the decision that the claims were drawn to an abstract idea was the starting point of the Court's deliberations. What that means, unfortunately, is that there was no analysis of how they reached that conclusion, and I really would like to have seen that type of analysis.

Apparently they were using the 'I Know It When I See It' test (hmmm, that sounds familiar...), which is certainly an excellent test to use if you're a Justice on the Supreme Court, but one which is unfortunately not very likely to be well received when applied by the examining corps.

The Court was able to tell us that although the Federal Circuit's Machine-or-Transformation test is a good one, it is not the only one. Of course, that is as far as they were willing to delve into the matter, but they did encourage the CAFC to feel free to take another crack at it. Gee, thanks for clearing that up for us.

I guess this type of a limited decision shouldn't have come as much of a surprise, but I was really hoping that we'd get something a little more definitive on where to draw the line between statutory and non-statutory processes.

I even went back to Judge Radar's dissent in the Federal Circuit's decision, since it turns out that he was apparently the only one that got it right. His input: "Look to the statute." Well, that's fine, but we're trying to figure out how to draw the line between the abstract idea and the application of that abstract idea. Not extremely helpful advice.

So, what does this decision mean for examination of patents? For the time being, nothing, according to a memo to the examining corps (which, for whatever reason, still has yet to be promulgated corps-wide, despite it's being dated 2 days ago). [and thank you to the commenter who brought it to my attention.] Examiners are to continue to use the Machine-or-Transformation test unless there is a "clear indication" that the test is wrong.

After working under the Office's guidelines regarding the implementation of the M-O-T test for a couple of years, I'd really like to see an example of what exactly would constitute a "clear indication" that the test is wrong.

In the long term, it will be interesting to see if there are significant changes to examining practice for 101 as a result of this decision. The Court did say that the M-O-T test was "an important and useful clue". Since they neglected to give any further guidance on the subject, I'd almost be inclined to just stick with the M-O-T test and have the courts let us know when they find an exception to it.

And when they find that exception, it would also be really nice if they could tell us what it is, and better yet, why.

Full post as published by Just a Patent Examiner on June 30, 2010 (boomark / email).