以下是美國兩件美國訴願委員會BPAI處理的案子
可以看出
即使是訴願委員會的專利審查標準都不一致了
更何況是一般的審查委員
這兩件都和Bilski方法項的審查有關
牽涉到"tied to a particular machine"
第一件把general purpose computer or processor視為非particular machine
這標準從CAFC, district court到USPTO倒是頗為一致
但是第二件把master device視為particular machine就實在是太誇張
master device是一個比processor更籠統的名詞
但是BPAI竟然不去考慮particular machine的問題
只能說
申請專利
請多燒香拜佛
Claims That Are Tied to "Any and Every Possible Digital
Computer" Run Afoul of 101
Ex parte John Synder
Decided: May 12, 2009
This
panel appears to apply Bilski's machine-or-transform test to systems claims.
Also, the reasoning on why the systems claims are not tied to a particular
machine is quite interesting to me.
Synder's claims were
directed to systems and method that provide a text to XML converter. Claims 1
and 19 arguably are "system" claims. Claim 14 is a process claim.
They are pretty short, so they are reproduced here:
Claim 1. A text to XML transformer, comprising:
a transformer program having a plurality of compound statement [sic,
statements]; and
a processor for executing the transformer program and converting an input text
document into an XML document wherein the XML document does not contain every
element that was in the input text.
Claim 14. A process for converting text to XML,
comprising the steps of:
a) defining a transformer program having a plurality of compound statements,
wherein one of the plurality
of compound statements contains a command that matches a regular expression and
takes an action;
b) receiving a text stream;
c) executing the transformer program to convert the text stream into an XML
stream.
Claim 19. A text to XML transformer, comprising:
a wizard for creating a transformer document;
the transformer document having a plurality of compound statements formed by a
text to XML computer language; and
a processor for executing the transformer document and converting an input text
document into an XML document.
The Examiner rejected each of these claims under
101. The Examiner reasoned that “[t]he claimed invention is directed to a
transformer program (independent claims 1 and 14) or a transformer document
(independent claim 19) that is executed by a processor.
The applicant argued, what I
think many of us have thought, that “[s]oftware is just a way of temporarily
wiring an electric circuit (computer) to perform a specific task. Electrical
circuits are machines."
The Board's analysis with
respect to claim 14 was their standard "no machine" and "no
transform" of an article reasoning.
The more interesting Board
analysis comes with respect to claims 1 and 19. The Board framed the issues as
"whether the 'processor', alone or in combination with the program, is
such that the claim as a whole defines a patent-eligible 'machine' under § 101."
This panel focused on the
processor description in the specification. I think the decision is worth
quoting here:
There does not appear to be anything special about
the processor:
The XML transformer 10 has a
processor 12 that executes a transformer program 14 that has a plurality of
executable statements or script 15.
Spec. 5:4-6. The
Specification does not disclose a new hardware design. The processor is not in
means-plus-function format, but even if it was, the only structure shown is a
block diagram of a processor that would include any and every possible
processor for performing the functions.
In the end, the Board reasoned that because claims 1
and 19 cover any and every possible digital computer for executing the
transformer program these claims fall outside the scope of 101.
Board Reverses 101 Rejection Using Machine Prong
Ex parte Andreas Myka and Christina Lindholm
Decided: May 13, 2009
In
this decision, the Appellants were able to overcome a 101 rejection by
"communicating" information between a master device and a slave
device.
The claims at issue relate
to bonding 'slave' devices, such as media capture devices, and instructing the
devices to communicate captured media files with a specified set of metadata included.
Claim 14 recites:
A method for wireless bonding of devices and
communicating media file transfer parameters, the method comprising:
monitoring, at a master
device, an area of interest for the presence of potential bondable devices;
receiving, at the master
device, a presence signal from a potential bondable device;
determining bond capability
of the potential bondable device;
approving the potential bondable device as a bonded device; and
communicating, from the
master device to the bonded device, media file transfer parameters, including
definition of the media file metadata that is to be included with a captured media file.
Claim 24 recites:
A method for communicating media files and
associated media file metadata from a bonded device to a master device, the method
comprising:
bonding one or more slave
devices to a master device according to predetermined media file transfer parameters
communicated to the slave device from the master device; and
communicating a plurality of
media files from the one or more bonded devices to the master device, the
plurality of media files having metadata information as defined by the predetermined media file
transfer parameters.
The Examiner originally rejected the claims under
101 using the "useful, concrete, and tangible result" test. The Board
applied Bilski. Its entire analysis was:
The steps of claims 14 and 24 are performed by a
master device or a bondable/bonded slave device. As argued by the Appellants, for example, the
independent claims include 'communicating information between the master device
and the bonded device.' Therefore, the methods recited in independent claims 14
and 24 are each tied to a particular machine or apparatus.
Result: 101 rejection reversed.
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