Patent Law

Ex parte Atkins (BPAI 2009)

The BPAI has again raised the issue of Post-Bilski patentable subject matter sua sponte. Like most claims challenged under Section101, Atkins claims also have serious nonobvousness and indefiniteness problems.

Atkins claims a method of "converting a unidirectional domain name to a bidirectional domain name." In reviewing the claim under Bilski, the BPAI noted that the claims do not "recite any machine or apparatus or call for transforming an article into a different state or thing. A domain name is simply a series of characters representing the address of a resource, such as a server, on the World Wide Web. All of the steps are data manipulation steps."

Atkins also claims a parallel "system" for converting the domain name. The BPAI rejected the system claims under Bilski since "those claims encompass any and all structures for performing the recited functions. As a result, [the system claims] are at least as broad as method claims ... which we have determined recite patent ineligible subject matter under Bilski."

• Ex parte Atkin.pdf