Written by Mark Terry   

In its first decision of today, the Board of Patent Appeals and Interferences (BPAI) reversed a Patent Examiner’s 35 U.S.C. sec. 103(a) obviousness rejection of a key Hewlett-Packard software invention, but came up with a new rejection of its own – a 35 U.S.C. sec. 101 non-statutory subject matter rejection. As a Miami Patent Attorney that deals with Patent Office rejections related to software patents and software inventions almost daily, this case is instructive because it illustrates the case law on non-statutory subject matter and the process of dealing with the BPAI.

The HP invention involved a software process for credentialed authorization requests. HP appealed an Examiner’s 35 U.S.C. sec. 103(a) obviousness rejection, which the BPAI reversed. But in an interesting move, the BPAI decision sua sponte noted the nature of the software claims and instituted a 35 U.S.C. sec. 101 non-statutory subject matter rejection.The BPAI started off by reciting case law: a “signal” cannot be patentable subject matter because it is not within any of the four categories. In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) and a claim that recites no more than software, logic or a data structure (i.e., an abstraction) does not fall within any statutory category. In re Warmerdan, 33 F.3d 1354 (Fed. Cir. 1994).

With regard to the Applicant’s claims, the BPAI stated: “The services of the claims on appeal are logical constructs or software abstractions. System claims, independent claims 21 and 26, are directed to software-based systems per se. Additionally, the computer readable mediums recited in the preamble of independent claims 12 and 14 on appeal are directed toward signal-based embodiments when construed in light of the Specification as filed. The earlier-noted case law prohibits patent protection for these claimed features.” Therefore, because the Applicant’s claims recited pure logical steps with no explicit tie to a machine, and because the specification stated that a computer readable medium could be a signal, the Applicant’s claims were non-statutory subject matter under 35 U.S.C. sec. 101. (It is interesting that the BPAI did not cite the Bilski case. Perhaps because the decision may be overturned by the Supreme Court this year?)

The first important practice pointer illustrated here is the importance of writing software patent claims that comprise statutory subject matter under 35 U.S.C. sec. 101. Fellow blogger Karen Hazzah writes an excellent patent prosecution blog that recently highlighted a USPTO memo directed towards helping patent practitioners write computer readable medium claims that survive 35 U.S.C. sec. 101 scrutiny. All patent attorneys that write software patent claims should read that memo.

The second practice pointer illustrated here is the ability of the BPAI to sua sponte come up with new grounds of rejection. It is not true that just because the Examiner missed a rejection, it can no longer be asserted against you (as in federal litigation). The BPAI has the power to bring up any rejection that the Examiner may have missed, even if it is the first time it’s being used against you. The BPAI has always had this power, but in the last couple of years, I typically only see them do this for 35 U.S.C. sec. 101 non-statutory subject matter rejection. Thus, when dealing with an appeal to the BPAI, especially one involving software patent claims, the smart patent attorney will double check his claims to make sure there is no chance of such a sua sponte rejection. If the possibility exists, you may want to file an RCE to clean up the claims before going to appeal.