Patent Law

Ex Parte Simpson, Appeal 2008-0569 (BPAI 2008)

HP's patent application focused on software used to discover networked devices. Claim 32 was rejected for lack of statutory subject matter.

32. A device discovery service stored on a computer-readable medium, the service comprising:

logic configured to discover devices directly connected to a network that are not directly connected to a computer; and

logic configured to provide a user home service accessible with a network browser with a list of at least one discovered device that is available for use on the network.

This claim is interesting because like Wasynczuk, it involves a system claim that is not patentable subject matter.

'These claims are directed to a "service" stored on a computer-readable medium, the service comprising logic "configured" to perform functions. Logic, read with reasonable breadth, includes descriptive material indicating the algorithm or reasoning behind an operational computer program, not the program itself. As such the claims are addressed to nonfunctional descriptive material, which is non-statutory. "When nonfunctional descriptive material is recorded on some computer-readable medium, in a computer or on an electromagnetic carrier signal, it is not statutory since no requisite functionality is present to satisfy the practical application requirement." MPEP § 2106.01.'

Similarly in Ex parte Godwin (BPAI 2008), the Board found that IBM's "server system" claims non-statutory subject matter. In that case, the server was recited in the claim preamble and thus non-limiting.