Patent Law

Funked Koo Kung Fu

By Gary Odom and Jordan Kuhn

IBM inventors Fred Koo and Ting Leung got their database query modification patent application sua sponte kicked in its Bilski on BPAI appeal. The decision shows how moronically the CAFC In re Bilski ruling is being applied. Not that something better could have been expected.

Ex parte Fred Koo and Ting Y. Leung (BPAI 2008-1344)

An independent claim 101ed a la Bilski:

1. A method for optimizing a query in a relational database management system, the method comprising:
    evaluating the query to determine whether a sub-expression of the query is being joined to itself and whether a predicate of the query comprises an equality test between a same column of the sub-expression;
    determining whether a first row set producible from a first set of references of the query to the sub-expression is subsumed by a second row set producible from a second set of references of the query to the subexpression; and
    reforming the query to eliminate the joining of the sub-expression to itself based on evaluation of the query and determination of whether the first row set is subsumed by the second row set.

Relational databases execute in a machine known as a computer. The above claim goes to changing a search/query of the database. Analogous to the physical world, a database is an organized set of records, and a query is, well, a query - an instruction to a searcher to find records in the database. The claim therefore goes to stating the search properly, so that the right records may be found.

Rumor once was that the patent office knew a thing or two about technology. That's no longer so apparent.

Claim 1 is rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. We note that claim 1, given its broadest reasonable interpretation, does not require computer or machine implementation. Claim 1 is not directed to a machine, manufacture, or composition of matter. Accordingly, the issue is whether this claim, which covers a method for optimizing a query in a relational database management system, involves a new and useful "process," and thus, recite patentable subject matter under 35 U.S.C. § 101. Giving the claim limitations their broadest reasonable interpretation, we conclude that claim 1 is unpatentable under section 101 because it seeks to patent an abstract idea.

Nothing abstract about proper wording. Are spelling checkers an abstract idea? And, suddenly, computers are not machines.

In view of In re Bilski, 2007-1130, slip op. (Fed. Cir. Oct. 30, 2008) we must consider the statutory sufficiency of the recited claims under 35 U.S.C. § 101. Under Bilski, "the machine-or-transformation test is the only applicable test and must be applied, in light of the guidance provided by the Supreme Court and this court, when evaluating the patent-eligibility of process claims." (Id., slip op. at 29).

Claim 1 does not recite any steps that necessarily involve machine implementation. While the preamble of claim 1 recites a "system," the "system" of claim 1 is not recited in terms of hardware or tangible structural elements. Rather, the "system" could be a software system, where the elements of claim 1 are implemented solely in software or algorithms. Thus, the nominal recitation of a "system" in the preamble does not transform claim 1 into patentable subject matter under § 101.

Computer software necessarily runs on computer hardware. Computer hardware makes for a machine. Computers nowadays are ubiquitous machines. Cell phones, TV cable boxes, and microwave ovens are all forms of computers, as well as the laptops and desktop workstations more often thought of as "computers." There is no such thing as "a software system." Software necessarily implies operational residence in a computer. Software is incapable of independently worming its way into the earth or crawling under the sofa. Only someone completely computer-ignorant could write something like that.

Each of these steps does not call for any transformation of an article to a different state or thing, nor does it require any transformation of data or signals.

A query is a set of instruction data, a search specification. "Reforming the query" means changing the search instruction. Change = transform.

Hard to believe this is the 21st century, and not the 14th. The courts and USPTO seem awfully busy getting stupid about software.

Full post as published by The Patent Prospector on December 22, 2008 (boomark / email).