Patent Law

Process Flavor de Jure

By Gary Odom and Jordan Kuhn

The techno-Neanderthal CAFC having roiled process claims with its bilious Bilski ruling, the question remains how to best draft software method claims. The economical "computer-implemented method" preamble may not fly now. Another charade exists. Post-Bilski, the BPAI still let Beauregard software claims pass §101 muster.

IBM's Korea-spawned 10/463,287 went down on obviousness, but Ex parte Bo Li wrung an acceptance by the patent board that Beauregard computer program product claims were still copasetic.

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)... In view of the totality of these precedents [Bilski, Nuijten, Lowry], we decline to support the rejection under 35 U.S.C. § 101.

Computer program product method claim 42 was exemplary of a 101-acceptable Beauregard claim.

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 respone 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.

The board's §101case law recitation, with the foregoing quote in context.

"Therefore we also conclude that the "useful, concrete and tangible result" inquiry is inadequate and reaffirm that the machine-or-transformation test outlines by the Supreme Court is the proper test to apply." [Footnote: "As a result, those portions of our opinions in State Street and AT&T relying solely on a "useful, concrete and tangible result" analysis should no longer be relied on." In re Bilski, Case 2007-1130, page 20, (Fed. Cir, Oct 30, 2008).

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 rejection under 35 U.S.C. § 101.

Given CAFC vagueness in Bilski, guidance from the USPTO is sorely needed as to what it considers acceptable process claim form. Internal guidelines are rumored to exist.

A hat tip of thanks to Professor Crouch at Patently-O.

Full post as published by The Patent Prospector on November 15, 2008 (boomark / email).