Bilski Transformation, claims that didn't make it

Claim 16 and Claim 18 were the focus of the Appeal and stated, respectively:

16. An additional information embedding method, for adding additional information to digital content to determine whether said digital content has been processed, comprising the steps of:

generating multiple sets of additional information that are correlated with each other and that correspond to the data form of predetermined digital content; and

synthesizing said additional information and content data for said digital content; and

wherein the additional information are correlated with each other by a mapping relationship defined by a predetermined function, said predetermined function dependent on a data string, the data string forming a predetermined message.

18. An additional content detection method, for detecting additional information added to a digital content in order to determine whether said digital content has been processed, comprising the steps of:

detecting, from content data for digital content, multiple sets of additional information that are correlated with each other, but that in robustness differ from each other;

evaluating relationships dependent on a data string, the data string forming a predetermined message, existing between said multiple sets of additional information; and

determining, based on said detected additional information and the evaluation of said relationships, whether said content data has been processed, and determining the type of processing performed when said content data has been processed.
In explaining their Bilski analysis, the BPAI said that the method steps of claims 16 and 18 can reasonably be interpreted to encompass a human being performing these steps. Thus, the claims fail the "particular machine requirement."

The BPAI's discussion of the "transformation requirement" is more interesting. They said that:

[h]ere we do not have a transformation of subject matter but merely an abstract expression that is created from synthesizing two types of digital content. However, such synthesizing does not require any tangible output into the real world. These steps describe nothing more than the manipulation of basic mathematical constructs, the paradigmatic "abstract idea." See In re Warmerdam, 33 F.3d 1354, 1360 (Fed. Cir. 1994). As a whole, the claim involves no more than the manipulation of abstract ideas. See id.

The BPAI went on to say in other words that the claims were directed to merely looking at transforming one digital representation into another digital representation. As such, they are not within the scope of 101.

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