Tuesday, November 11, 2008

Bilski ramblings

An article in BusinessWeek titled Patent Office Stifles Innovation assails the Bilski decision:

Notably, during Apple's recent quarterly report, Jobs commented about the iPhone: "The traditional game in the phone market has been to produce a voice phone in 100 different varieties.… [W]e approach it as a software platform company, which is pretty different from most of our competitors."

Now, it appears the USPTO is hell-bent on destroying such intellectual property rights. The most recent evidence came from an Oct. 30 ruling by an appeals court that could narrow what's patentable and make it much more costly to obtain patents, particularly for newer companies. Some fear the decision also leaves many innovative software technologies in limbo.

The court handed down its decision on Oct. 30, issuing a ruling that established a new test. For a software process to be patentable, it must either be bound to a particular machine or transformational. The court elaborated only on the "transformation" aspect of the test, noting that there must be a "transformation…central to the purpose of the claimed process." But the court punted on the machine portion of the test.

From patenthawk:

Non-final office action, received post-Bilski, directed to claims with the preamble: "A computer-implemented method comprising:", followed by steps of computer file selection, storage, and network transfer/copy. Examiner rejection as follows:

The claims lack the necessary physical articles or objects to constitute a machine or a manufacture within the meaning of 35 USC 101.They are clearly not a series of steps or acts to be a process nor are they a combination of chemical compounds to be a composition of matter. As such, they fail to fall within a statutory category. They are, at best, functional descriptive material per se.

One comment:

We have been told that merely the recitation in the preamble is insufficient. This is a managerial decree not caselaw. They want structure or system elements in the body of the claims...such to tie the performance of the method to a machine or system.

I am unsure why the Examiner states "They are clearly not a series of steps or acts to be a process" because they are obviously method steps. The big thing that has been told to us is that the claimed method has to be tied to (1)another statutory class or (2)to a particular machine or system for performance of the claimed method. Maybe the Examiner mangled the new official interpretation of 101.

As noted earlier, Patently-O applied Bilski to Metabolite:

Bilski offers two avenues for showing that a claimed process is patentable. First, the process will be patentable if it is tied to a particular machine or apparatus. Alternatively, the process will be patentable if it "transforms a particular article into a different state or thing."

Assuming that "assaying a body fluid for an elevated level of total homocysteine" cannot be done in the mind, we must then ask whether the claim requires a transformation of a particular physical object or substance or at least transformation of a particular article that is "representative of physical objects or substances." Perhaps the best physically related transformation involves transforming the "body fluid" into an indication of elevated homocysteine level and then into an indication of vitamin deficiency. Under Abele, both homocysteine level and vitamin deficiency do represent physical substances – consequently their 'creation' may be "sufficient to render that … process patent-eligible." [Of course, this analysis may apply a loose definition of 'transformation.']


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