Monday, November 19, 2012

The Board contemplates 35 USC 101

The Board tackles 35 USC 101 in Ex parte NGUYEN :

The Supreme Court has made clear that a patent claim’s failure to satisfy the machine-or-transformation test is not dispositive of the § 101 inquiry. See Bilski, 130 S. Ct. at 3227. However we conclude that, absent other factors weighing either toward or against patent eligibility, the two machine-or-transformation factors both weighing against patent eligibility are alone sufficient to establish a prima facie case of patent-ineligibility. See Bilski, 130 S. Ct. at 3227 (the machine-or-transformation test is “a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101.”)

We conclude that the Examiner correctly determined that claims 1-20 fail to recite patent-eligible subject matter. Appellant has not pointed to any convincing factors that weigh towards patent eligibility, and we are unable to find any such factors. Therefore, we will sustain the Examiner’s rejection of claims 1-20 under 35 U.S.C. § 101.

As to software:

Giving claim 21 the broadest reasonable interpretation in light of the Specification, the claim would appear to encompass software per se. Because a computer program per se is not patent-eligible subject matter, claim 21 is directed to subject matter that is non-statutory under § 101. See In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). Therefore, we will sustain the Examiner’s rejection of claims 21-40 under 35 U.S.C. § 101.


We agree with Appellant that independent claim 41 is written in a format commonly referred to as a “Beauregard claim” (App. Br. 16), which is statutory subject matter. See In re Beauregard, 53 F.3d 1583-84 (Fed. Cir. 1995). Therefore, we will not sustain the Examiner’s rejection of claims 41-60 under 35 U.S.C. § 101.


In our view, modifying Meyer to allow the transfer of the discount amount to a financial entity, as taught by Von Kohorn, would have been no more than the combination of known elements according to their known function, and yields a predictable result; therefore, it would have been obvious at the time Appellant’s invention was made. See KSR Int’l Co. v. Teleflex, Inc., 550 U. S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”).


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