Monday, November 17, 2008
101 case law for OA
Claim found to be not patent eligible (Ex parte Halligan (BPAI 2008) (recitation of a programmed computer is insufficient to tie process claim to a specific machine).
Opinion is here
8. Use Abele: Per Bilski approval of result in In re Abele, 684 F.2d 902 (CCPA 1982), require that transformed data represent physical, tangible objects and require visual display of that transformed data.
9. Use Lowry: In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994) (allowing “a memory for storing data for access by an application program being executed on a data processing system, comprising: a data structure stored in said memory, ….”).
10. Use Alappat: In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) (a general purpose computer “in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.”)
11. Use WMS Gaming: WMS Gaming, Inc. v. International Game Technology, 184 F.3d 1339 (Fed. Cir. 1999) (in a means-plus-function claim “in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.”)
12. Maybe Even Comiskey: In re Comiskey, 499 F.3d 1365 (Fed. Cir. 2007) (dependent claims survived Sec. 101 scrutiny by reciting “wherein access to the mandatory arbitration is established through the Internet, intranet, World Wide Web, software applications, telephone, television, cable, video [or radio], magnetic, electronic communications, or other communication means.”)
13. Target Most Particular Points of Infringing Technology’s Life Cycle: Consider how infringing technology will move from conception to stored information to physical testing to commercial processing to products of that processing, etc., and target the most “particular” domestic points along the path. E.g., consider these types of claims—and add supporting disclosure to the specification:
a. Computer-Readable Media Storing Instructions for Performing Particular, Limiting Hardware/Transformative Process: If process could not be performed in one’s head (hence “hardware/transformative process”) and requires particular and limiting hardware or transformation, it may survive § 101 scrutiny.
b. Processing Device/System in State of Execution: Claim a processor, computer, or combination of multiple processors or computers in state of execution of recited information. Even if counterpart method-of-execution claim could be rejected as mental process, Lowry + Alappat + WMS Gaming may protect this claim from being sacked by Bilski, at least.
c. Thread or Process of Execution: Claim to thread of execution including a data structure in memory or other processing device/system state of execution with currently useful dynamic information.
d. “Product” by Process: Similarly, claim the processor, computer, or combination of multiple processors or computers (or perhaps, memory or other media) in state created by executing recited information. But do not draft IPXL-invalid hybrid machine-method claim.
e. Signals in a Particular Physical Medium or Form: Claim signals having specified physical form or medium. (Signal claims in In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) did not do this.)