17 July 2010

"Software per se" as New post-Bilski Ground of Rejection under 35 U.S.C §101

On 7 July 2010 the US Board of Patent Appeals and Interferences (BPAI) has decided its first decision after the Supreme Court's opinion on Bilski v. Kappos (see earlier posting here or here). In the the case ex parte Proudler (Hewlett Packard) the BPAI rejected all of the pending claims under 35 U.S.C. §101 as a new Bilski-related ground of rejection and remanded the case to the Examiner.

The application relates to secure computing and the claims (two methods, computer readable medium, computer apparatus) teach applying individualized security rules to data items. Claim 1 reads:
A method of controlling processing of data in a computer apparatus, wherein the data comprises a plurality of usage rules for a plurality of data items stored by said computer apparatus, and comprising:
- applying individualised usage rules to each of the data items based on a measurement of integrity of a computing entity to which the data items are to be made available, said data items being logically grouped together as a set of data items, and
- instantiating the set of data items at the computing entity depending upon the integrity of the computing entity and the usage rule applicable to each data item in said set.
The Board of Appeals found that
the claimed invention is directed to software per se, abstract ideas, abstract concepts, and the like, including data per se, data items, data structures, usage rules, and the abstract intellectual processes associating them within the claims on appeal. [...] The manner in which the so-called 'computer apparatus' of the preamble of independent claim 50 is recited in the body of this claim is characterized as directly reciting in its two clauses 'programming for' achieving a certain abstract functionality. Thus, no true hardware structure is recited.
This new rejection based on Bilski's abstract idea notion may be seen as a "software per se" rejection that will certainly remind European patent practitioners of Art. 52 (3) EPC, which defines that programs for computers "as such" are excluded from patentability.

Atlanta patent attorney Karen G Hazzah explained on her All Things Pros blog that the Board seemed to rely on two statements in the specification. One was the abstract, which restated the method claim and mentioned a "computing entity". Another statement in the specification said that "a computing entity, either hardware or software, is often called a 'node' and this term will appear hereinafter". As to claim 1, the Board used that reasoning to find that it was directed to an abstract idea, since it recited "computing entity" in the body.
Ms Hazzah had two interesting comments on ex parte Proudler:
  • Firstly, the Board did not use the machine-or-transformation test but exclusively relied on the notion of "abstract ideas", since "no true hardware structure was required", which immediately poses the question on the difference between an "abstract idea" and the machine-or-transformation test, according to which processes that are not "tied to a particular machine" are considered non-eligible. 
  • Secondly, US Examiners, the BPAI, and US courts seem to think that the term "software" implies "not tied to hardware". If a claim sounds like "software" – even without explicit mention of that term – the BPAI might redesignate it as a claim directed to "software per se", i.e. "software in the abstract" or "abstract idea", whereas, technically, the term "software" means "instructions executing on a processor", i.e. software is tied to hardware, and, as such, is not "abstract" at all.
Quite naturally, FOSS-advocate Pamela Jones of Groklaw finds ex parte Proudler encouraging, since the "abstract idea" argument utilised therein is itself so abstract that anything can be subsumed under a "software per se" rejection. In reply to Ms Hazzah's analysis, Ms Jones emphasised that software is maths and algorithms - and that's abstract and can't be anything but that.

As a reason for the diverging interpretation of the nature of software between software developers (i.e. technical experts) and lawyers (i.e. technical laypersons), Ms Jones identified that "there's a need for educating lawyers on the tech" and, quite coherently, recommends a (quite "abstract") Groklaw article on computational theory (!) that "we hope will help lawyers to understand what software is and why it should not be patentable".

One may add, that the nature of software and the impact on patent-eligibility is such a high-level intellectual problem, that it might not help to only identify a "need for education" on the other side. By the way, other than general software developers or lawyers (attorneys at law), patent attorneys are both technical and patent-judical experts.

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