Patent Law

Getting Physical

By Gary Odom and Jordan Kuhn

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.

Possible reply:

Each rejected claim comprises a traditional series of process steps. Rejection that said claims "are clearly not a series of steps or acts to be a process" is hence respectfully traversed.

The "physical article or object" to which each claim is directed comprises a set of files stored on electromagnetic or optical medium. Each file itself constitutes a physical article. Electromagnetic and optical storage is well known to those of ordinary skill in the art of computerized digital storage. Such storage is inherent within any claim of a "file" as an article.

Claimed files may comprise, for example, music or video files. Each commercial music CD or movie DVD sold in the United States carries a warning from the FBI, promising "severe civil and criminal penalties for the unauthorized reproduction, distribution and digital transmission of copyrighted recordings." Even the FBI, not known to be skilled in any art, recognize electromagnetic and optical file storage as comprising a crime-worthy article. As abstract thought is not yet a crime in the United States, the FBI warning must be referring to statutory articles stored on computer media.

Each possible claimed file corresponds to a representation of a physical article, an object which may at the least be visually depicted, either on-screen or in printed form. The Court of Appeals, Federal Circuit, recently affirmed the patentability of such claimed subject matter.

We further note for clarity that the electronic transformation of the data itself into a visual depiction in Abele was sufficient; the claim was not required to involve any transformation of the underlying physical object that the data represented. We believe this is faithful to the concern the Supreme Court articulated as the basis for the machine-or-transformation test, namely the prevention of pre-emption of fundamental principles. So long as the claimed process is limited to a practical application of a fundamental principle to transform specific data, and the claim is limited to a visual depiction that represents specific physical objects or substances, there is no danger that the scope of the claim would wholly pre-empt all uses of the principle. See In re Bilski __F.3d__ (CAFC 2008-1130) (en banc) at 26, referring to Abele, 684 F.2d at 908-09.

As the claims are directed to a practical application, comprising electronic transformation of data renderable as a visual depiction, they are statutory under 35 USC §101. Rejection respectfully traversed.

Comment solicited.

Full post as published by The Patent Prospector on November 09, 2008 (boomark / email).