Overcoming Business Method Claim Rejections, after Bilski

The United States Patent and Trademark Office (USPTO) has issued interim guidelines for USPTO Examiners to use in determining whether patent claims describe the kinds of things that can be patented, i.e., whether the claims describe “statutory subject matter.”  The guidelines are “interim” because the U.S. Supreme Court has indicated that it will review the In re Bilksi decision of the U.S. Court of Appeals for the Federal Circuit that posited a “machine-or- transformation” test (M-or-T test) for statutory subject matter.  The Court announced that a claimed process is patentable subject matter if “(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or a thing.” The Court further stated that a machine or transformation must impose “meaningful limits on the claim’s scope” and must not be “insignificant extra-solution activity” (i.e., it must be “central to the purpose of the claimed process”).

This article suggests an approach to responding to an Office action that rejects patent claims to a business method under 35 U.S.C. 101 that guides the Examiner, step by step, through the interim guidelines.

First, I recommend that the response state that the applicant believes his claims describe statutory subject matter.  In support of that assertion, analyze the claims in accordance with the Interim Examination Instructions for Evaluating Subject Matter Eligibility under 35 U.S.C. § 101, dated August, 2009.

 1.  Determine the meaning of the claim:

Indicate which claims are defined by structural limitations or process step limitations, and suggest that the Examiner refer to the Manual of Patent Examination Procedure (MPEP 2111) for instructions on how to determine the meaning of these types of claims.

Indicate which claims are “means plus function” claims and suggest that the Examiner refer to MPEP 2182 for instructions on how to determine the meaning of this type of claims.

Indicate which claims are “step plus function” claims and suggest that the Examiner refer to MPEP 2182 for instructions on how to determine the meaning of this type of claims.   

If the Examiner has indicated in his Office action that he does not know what a “step plus function” claim is, you might state that the “step plus function” claims are written in the usual manner, with each step beginning with the phrase “a step for” (as required by MPEP 2181).  You might also remind the Examiner that, when such language is used, 35 U.S.C. 112 requires that “an element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”  Note that the applicant’s claimed structures and acts are supported throughout the specification and drawings as filed [although, if you want to be prepared for an appeal at this point, you can also point out where in the application (by page and line number and by figure and reference numeral number) each limitation is supported].

2.  Determine if the claim as a whole falls within one of the four categories of invention, that is, the claim is directed to one of the four patent-eligible subject matter categories:  process, machine, manufacture, or composition of matter.

Give the numbers of the claims that are directed to a process.

Give the numbers of the claims that are directed to a machine (product).

Give the numbers of the claims that are directed to a manufacture (product). 

If the manufacture claims are Beauregard claims, remind the Examiner that the Board of Patent Appeals and Interferences (BPAI) held in Ex Parte Bo Li, Appeal 2008-1213 (BPAI 2008) that Beauregard claims are considered statutory as “product” claims under 35 U.S.C. 101 and therefore constitute patent-eligible subject matter.  Point out any claims that contain a Beauregard limitation.  Refer the Examiner to MPEP 2106.01, I, which states:  “When a computer program is recited in conjunction with a physical structure, such as a computer memory, USPTO personnel should treat the claim as a product claim” because that concept has not been superseded.  Point out that the specification as filed makes it clear that the “computer readable medium” structures recited in the claims are not carrier waves, but rather they are non-transitory, tangible and readable by “a portable storage medium drive” and give the page and line number and the figure and reference numeral number where each limitation is supported.

3.  Determine if the claim as a whole is directed to a particular application of a judicial exception (abstract idea, law of nature or natural phenomenon) or is directed to a judicial exception in its entirety:

(a) For Products:  Point out that there is no judicially excepted subject matter present in product claims (give their numbers) and point out that the claims satisfy the previous steps of this analysis.  Note that none of the claims recite a disembodied mathematical algorithm or formula.  Assert that the product claims recite a computer programmed with executable instructions, and conclude, therefore, that the subject matter of the product claims is statutory. 

(b) For Processes:  If any of your claims meet the “particular machine’ prong of the M-or-T test, point out that a particular machine is recited in those process claims (give their numbers).  Remind the Examiner that, for this reason, those process claims are tied to a particular machine and are limited to a particular practical application.  Use the independent claims as examples, by pointing out, for example, that claim 1 requires “an apparatus that has been programmed with software to perform” the recited process and that other process claims contain similar descriptions of particular machines. 

Remind the Examiner that the guidelines provide that “To qualify as a particular machine under the test, the claim must clearly convey that the computer is programmed to perform the steps of the method because such programming, in effect, creates a special purpose computer limited to the use of the particularly claimed combination of elements (i.e., the programmed instructions) performing the particularly claimed combination of functions.”  Point out that all of the applicant’s method claims are tied to a particular machine or apparatus as required by In re Bilski, 2007-110, Maj. Slip op. (Fed. Cir. 2008).  

If any of your claims describe a “transformation of a particular article to another state or thing” point that out, and note where in the application as filed the transformation is disclosed.  The “particular article” may be a “physical object or substance” or “representative of physical objects or substances.”  For example, transformation of an “electronic signal that is representative of any physical object or substance” meets this prong of the M-or-T test.  “Purported transformations or manipulations of public or private legal obligations or relationships, business risks or other such abstractions” do not meet this prong of the M-or-T test.  Conclude that the subject matter of those process claims is statutory.

 4.  Now that the subject matter eligibility analysis is concluded, the applicant looks forward to continued full examination on the merits of claims.           

As usual, state that the applicant respectfully requests that a timely Notice of Allowance be issued in this case.  Indicate that the Office action is respectfully submitted, sign and date it and you’re done.


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