Ex Parte Gutta, Appeal 2008-4366, Application 10/014,192, BPAI 2009-08 (made precedential in Dec 2009) NEW BPAI 101 Two Prong Test for a machine (or article of manufacture) that involves a mathematical algorithm
The BPAI created a new 2 prong test which conforms with the CAFC's Bilski test, for patentable subject matter under 35 USC 101 for a machine (or article of manufacture) that involves a mathematical algorithm. The Opinion issued in August 2009, but was made precedential in December 2009.To be patentable subject matter, the claim must meet both tests:
The Board applied this test to Gutta's claims and rejected them.
(1) Is the claim limited to a tangible practical application, in which the mathematical algorithm is applied, that results in a real-world use (e.g., “not a mere field-of-use label having no significance”)? and
(2) Is the claim limited so as to not encompass substantially all practical applications of the mathematical algorithm either “in all fields” of use of the algorithm or even in “only one field?”
Gutta's Invention:
Appellants invented a method, system, and article of manufacture for identifying a mean item from a group of items. The method and system separate the items into clusters, computes the variance of the cluster, and selects a mean item. The article of manufacture’s code embodied on computer readable medium also performs these steps.Independent claims 1, 14, 19, and 20 are reproduced below:
| 1. A method for identifying one or more mean items for a plurality of items, J, each of the items having a symbolic value of a symbolic attribute, the method comprising: computing a variance of the symbolic values of the plurality of items relative to the symbolic value of each of the items; and selecting at least one mean item that has the symbolic value that minimizes the variance. 14. A system for identifying one or more mean items for a plurality of items, J, each of the items having at least one symbolic attribute having a symbolic value, the system comprising:
a computer readable medium having computer readable [program] code embodied thereon, the computer readable program code comprising:
means for computing a variance of the symbolic values of the plurality of items relative to the symbolic value of each of the items; and means for selecting at least one item that has the symbolic value that minimizes the variance. |
Method Claims -not patentable Subject matter - Bilski test
35 U.S.C. § 101 (2002).Applying the 1st prong - Machine Prong, the board found the method claim is not tied to any machine and therefore fails the 1st prong. Applying the 2nd prong - transformation, the board found that " the claims variance and mean are derived from abstract ideas (i.e., symbolic values), neither the variance nor the mean are physical objects or represent physical objects." Op. p. 11.
“[A]n 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” into a different state or thing. Bilski, 545 F.3d at 961; see also Benson, 409 U.S. at 70.
System claims - not patentable subject matter - New Gutta BPAI test -
The board applied the New 2 prong test :(1) Is the claim limited to a tangible practical application, in which the mathematical algorithm is applied, that results in a real-world use (e.g., “not a mere field-of-use label having no significance”)?Applying the 1st prong - real world use -, the board found that "claim 14 fails to recite any tangible practical application in which the mathematical algorithm is applied that result in a real-world use. " Op. p. 20
(2) Is the claim limited so as to not encompass substantially all practical applications of the mathematical algorithm either “in all fields” of use of the algorithm or even in “only one field?”
Applying the 2nd prong - limited use- , the board found the calculations of the variance and selection o f the mean are abstract ideas. Therefore the claim preempts all practical applications and fails the second prong. OP. p. 21.
Article of Manufacture claim involving an algorithm - not patentable subject matter under the New BPAI test
The Board stated:Since the steps recited in claim 19 are identical to the functions found in claim 14, we refer to our previous discussion of claim 14 and conclude that claim 19 similarly fails to recite the application of a mathematical algorithm to a tangible practical application that results in a real-world use.
Second, using the same rationale applied to claim 14, claim 19 encompasses substantially all practical applications of the mathematical algorithm (e.g., computer applications) in substantially all fields of use. Therefore, our statutory subject matter analysis of combination claim 14 is equally applicable to sub-combination claim 19. We therefore conclude that the article of manufacture or machine recited in claim 19 is not patent-eligible under § 101.
| Note: that Gutta appears to have added the New Gutta test for article of manufacture claims involving mathematical algorithms. |
| See Ex parte MORRISON, Appeal 2009-001476, ( BPAI 2009-01-07) Op. p. 10 (footnote 2) that applies the 1st Prong of the Gutta test to computer based algorithms when claimed as system claims. |
Claim 20 system claim with Mean-Plus-Function indefinite
The board applied 112P6, 112P2 and several Fed. Cases Including Aristocrat v. ITG 521 F.3d 1328 (Fed. Cir 2008), to Claim 20 system claim with Mean-Plus-Function elements. The board found the claim indefinite because no structure was disclosed to program a computer to perform the function.Conclusions:
New BPAI 2 prong test which conforms with the CAFC's Bilski test, for patentable subject matter under 35 USC 101 for a machine (or article of manufacture) that involves a mathematical algorithm.To be valid, the claim must meet both tests:
(1) Is the claim limited to a tangible practical application, in which the mathematical algorithm is applied, that results in a real-world use (e.g., “not a mere field-of-use label having no significance”)?
(2) Is the claim limited so as to not encompass substantially all practical applications of the mathematical algorithm either “in all fields” of use of the algorithm or even in “only one field?”
