Background: the Supreme Court’s opinions in Bilski reaffirmed that laws of nature, physical phenomenon, and abstract ideas are not patent-eligible subject matter under § 101. The Court, however, seemingly broadened subject matter eligibility by clarifying that meeting the machine-or-transformation test was not the only way process claims could satisfy § 101. The Court gave little specific guidance as to what other tests or analyses should be used in assessing method claims for abstractness, beyond that Bilski’s claimed method of hedging market risk was an abstract idea ineligible for patent protection.
A subsequent case from the Federal Circuit in Research Corporation v. Microsoft, 627 F.3d 859 (Fed. Cir. 2010) suggested that, post-Bilski, rejecting claims under § 101 as abstract ideas might be fairly difficult. The Research Corporation panel held that a claimed method of digital halftoning was patentable because the specification showed that the method had “functional and palpable applications in the field of computer technology.” The opinion suggested that any method step reciting an algorithm would be patent eligible when the algorithm’s abstractness did not “exhibit itself so manifestly to override” statutory subject matter.
Many, including myself, suspected the approach in Research Corporation might cut down on § 101 rejections to claims that could be broadly interpreted as exclusively software-implemented or mental steps. Indeed, Research Corporation appeared to trace a path back toward the “useful, concrete, and tangible” test of the AT&T and State Street era, which was often satisfied by a showing that the overall effect of the claimed method or medium in which the claim operated had real-world applicability and usefulness.
Whatever the potential import of Research Corporation, the USPTO’s BPAI has given the case little attention. In the 6 months since Research Corporation was decided, the BPAI has cited it once, in Ex parte Jack, for a § 101 determination. In the same timeframe, the USPTO has cited Bilski at least 45 times in cases dealing with § 101, including applications with method claims rejected under § 101 as abstract ideas. Moreover, in Jack, the BPAI appeared to give Research Corporation weight only because the technology – digital image processing – was shared by the method claims of Jack and Research Corporation.
In other appeals presenting method claims that were found to recite an abstract idea, such as Ex parte Pintsov and Ex parte Hartman, no searching of the specification for “functional and palpable applications in the field of computer technology” or consideration of whether the abstract aspect of the claims “exhibit[s] itself so manifestly to override” any statutory categories was conducted. Instead, the BPAI seems to prefer either labeling the claims as non-functional software structures (e.g., Hartman) or abstract ideas failing the machine-or-transformation test (e.g., Pintsov).
My take-away is this: unless you’re dealing with a claim focused on digital image processing, the best bet for avoiding an affirmance of a § 101 on appeal (and hopefully avoiding a § 101 rejection altogether during examination) is to continue to tie your method claims to tangible machines, recite a definite physical transformation, and/or include actual functionality of a recited data structure in the claim.
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