Patent Law

Inscrutable Inconsistency

By Gary Odom and Jordan Kuhn

Amphire Solutions tried to get a patent (2003/0188264) on normalizing XML into a relational database, reducing redundancy using linked lists. On appeal before the patent board (BPAI), the application was Bilskied, then stomped by Obzilla. While the Board found computerized methods abstract, and hence unpatentable, a computer performing a function is not abstract, and hence patentable.

Ex parte Sandeep Nawathe and Vaishali Angal (BPAI 2007-3360)

Decided February 9, 2009.

Appellants invented a method and system for representing a normalized eXtensible Markup Language (XML) data structure as fixed sets of tables in a relational database (RDB).

Bonked by Bilski.

Appellants argue that claims 1, 16, and 25 are directed to statutory subject matter under the machine-or-transformation test, as well as the useful, concrete and tangible result test provided in AT&T Corp. v. Excel Communications, Inc. (App. Br. 30-34.) In response, the Examiner submits that the cited claims are directed to an abstract idea. Therefore, she finds them not to be directed to statutory subject matter under the cited tests.

Current USPTO § 101 case law boilerplate, ignoring the patentability caveats of Abele and rehashed Comisky.

The Court of Appeals for the Federal Circuit has recently clarified the law regarding patent eligible subject matter for process claims. In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc). The en banc court in Bilski held that "the machine-or-transformation test, properly applied, is the governing test for determining patent eligibility of a process under § 101." Id. at 956. The court in Bilski further held that "the 'useful, concrete and tangible result' inquiry is inadequate [to determine whether a claim is patent-eligible under § 101.]" Id. at 960. The court explained the machine-or-transformation test as follows:

The machine-or-transformation test is a two-branched inquiry; an applicant may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim transforms an article. See [Gottschalk v.]Benson, 409 U.S. [63] at 70, 93 S. Ct. 253 [(1972)]. Certain considerations are applicable to analysis under either branch. First, as illustrated by Benson and discussed below, the use of a specific machine or transformation of an article must impose meaningful limits on the claim's scope to impart patent-eligibility. See Benson, 409 U.S. at 71- 72, 93 S. Ct. 253. Second, the involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity. See [Parker v.]Flook, 437 U.S. [584] at 590, 98 S. Ct. 2522 [(1978)].

Id. at 961-62.

The elephant in the room Bilski ignored was whether computers were a sufficiently "particular machine." This was subsequently addressed in the updating of Comisky, which the rather anti-patent BPAI ignores. Note how Abele is twisted to the negative.

The court declined to decide under the machine implementation branch of the inquiry whether or when recitation of a computer suffices to tie a process claim to a particular machine. As to the transformation branch of the inquiry, however, the court explained that transformation of a particular article into a different state or thing "must be central to the purpose of the claimed process." Id. at 962. As to the meaning of "article," the court explained that chemical or physical transformation of physical objects or substances is patent-eligible under § 101. Id. The court also explained that transformation of data is sufficient to render a process patent-eligible if the data represents physical and tangible objects, i.e., transformation of such raw data into a particular visual depiction of a physical object on a display. Id. at 963. The court further noted that transformation of data is insufficient to render a process patent-eligible if the data does not specify any particular type or nature of data and does not specify how or where the data was obtained or what the data represented. Id. at 962 (citing In re Abele, 684 F.2d 902, 909 (CCPA 1982) (process claim of graphically displaying variances of data from average values is not patent-eligible) and In re Meyer, 688 F.2d 789, 792-93 (CCPA 1982) (process claim involving undefined "complex system" and indeterminate "factors" drawn from unspecified "testing" is not patent- eligible)).

So the computer method claims were damned because the BPAI does not consider computers sufficiently particular.

We note that the recited method, while being computerized, is not tied to a particular machine for executing the claimed steps. We find that the computerized recitation purports to a general purpose processor (Fig. 2.), as opposed to a particular computer specifically programmed for executing the steps of the claimed method.

But, with inscrutable inconsistency, means-plus-function using a computer apparatus is patentable.

[S]ince the claim recites a physical apparatus with physical modules for transforming a data structure into a fixed set of tables, it is not a directed to an abstract idea... Thus, we will not sustain this rejection.

Ignoring Abele's upholding in Bilski, where data representing physical articles are patentable, the BPAI found documents an unpatentable abstraction.

Next, while it can be argued that the creating step transforms the input XML documents into represented data (i.e. a different state), we find that the documents are not an article (i.e. physical entities). Rather, they are mere data that represent such entities.

The Board's KSR capsule reads like a formula for hindsight reasoning.

Section 103 forbids issuance of a patent when "the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007).

In KSR, the Supreme Court emphasized "the need for caution in granting a patent based on the combination of elements found in the prior art," and discussed circumstances in which a patent might be determined to be obvious. KSR, 127 S. Ct. at 1739 (citing Graham v. John Deere Co., 383 U.S. 1, 12 (1966)). The Court reaffirmed principles based on its precedent that "[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." Id. The operative question in this "functional approach" is thus "whether the improvement is more than the predictable use of prior art elements according to their established functions." Id. at 1740.

The CAFC Leapfrog precedent is aptly named for imaginatively leaping into obviousness without evidence. The presumption of validity is perverted: an applicant must prove a negative, that one skilled in the art wouldn't have thought of the claimed invention.

The Federal Circuit recently recognized that "[a]n obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of a case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) (citing KSR, 127 S. Ct. at 1739). The Federal Circuit relied in part on the fact that Leapfrog had presented no evidence that the inclusion of a reader in the combined device was "uniquely challenging or difficult for one of ordinary skill in the art" or "represented an unobvious step over the prior art." Id. at 1162 (citing KSR, 127 S. Ct. at 1741).

Showing how individual references fall short is insufficient. One must make some argument of counter-synergism, as the force of combinatorial obviousness is strong. BPAI Judge Darth Vadar: "You don't know the power of the dark side." Note the malicious use of case law citation, by conclusory dénouement without quotation.

One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).

The test for obviousness is what the combined teachings of the references would have suggested to one of ordinary skill in the art. See In re Kahn, 441 F.3d at 987-88; In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991); and In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, in evaluating such references it is proper to take into account not only the specific teachings of the references but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968).

All fall down.

Full post as published by The Patent Prospector on February 13, 2009 (boomark / email).