Friday, August 09, 2013

PTAB discusses Bilski, 35 USC 101 in Ex parte Macauley; examiner affirmed

Both the Examiner, and PTAB, concluded that the claims of the application did not satisfy "the machine prong" of the machine-or-transformation test for patent eligibility under 35 USC 101.

The interesting part of the decision was that "absent other factors" the failure of the machine or transformation test disposed of the 101 inquiry:

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 v. Kappos, 130 S. Ct. 3218, 3227 (2010). 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 id. (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 claim 1 fails to recite patent-eligible subject matter.

In sustaining the obviousness rejection, PTAB cited In re Geisler, 116 F.3d 1465, for the proposition that attorney argument cannot take the place of evidence.

In re Lovin, 652 F.3d 1349 , was cited as to "more substantive arguments." Merely saying an element of a claim is missing in the prior art, without more detail, is insufficient to negate a rejection.

application 11/997,187.

Arguably, claim 1 is a "business method" claim, directed to a method of controlling repair and maintenance:

A method of controlling a repair and maintenance process for equipment comprising:

maintaining a database of source data based on original equipment manufacturer information;
generating a maintenance plan based at least in part on the source data, the maintenance plan designating a workscope;
generating a maintenance instruction based at least in part on the workscope;
communicating a logical order with a maintenance center for inspection of the equipment, the logical order being based at least in part on the maintenance instruction;
communicating a repair instruction to a repair unit, the repair instruction being based at least in part on the inspection; and
performing a repair task based at least in part on the repair instruction.

link for case


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