Gutta - BPAI 2009-08 - 101 Test for a machine involving a mathematical algorithm

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:

(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?”

The Board applied this test to Gutta's claims and rejected them.

BPAI - precedential - Means plus function limitation indefinite where specification fails to disclose algorithm for programming general purpose computer to perform specified function – Ex Parte Catlin BPAI 2009-02

§ Ex parte Catlin, Appeal No. 2007-3072 (BPAI February 3, 2009)
Rule of Law: Means plus function limitation is indefinite where specification fails to disclose algorithm for programming general purpose computer to perform specified function.  35 USC 112P6, 35 USC 112P2, Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game
Tech., 521 F.3d 1328 (Fed. Cir. 2008).
The second precedential opinion in 2009 involving software related Means-Plus-Function claims with insufficient algorithm/structure (112P6). See Ex Parte Rodriguez.  The case cites the following Fed. Cir. cases involving 112P6:  Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008),  Finisar Corp. v. DirecTVGroup, Inc., 523 F.3d 1323, 1340-41 (Fed. Cir. 2008) and Net Moneyin, Inc. v. Verisign, Inc., 545 F.3d 1359 (Fed. Cir. 2008).

Ex Parte Rodiguez (Precedential) BPAI – Case portends higher level of scrutiny for required algorithm for Means-Plus-Function software apparatus claims

In the precedential opinion Ex parte Rodriguez, Appeal No. 2008-000693 (BPAI October 1, 2009), the USPTO’s BPIA found claims invalid under 35 USC 112P2 indefiniteness by applying the following noteworthy  rules:

• Under 35 USC 112P6 and 112P2, Means-Plus-Function (MPF) software apparatus claims require an Algorithm (to program the computer to perform the function claimed) and
• Apparatus claims for a computer programmed to perform a function, that do not contain sufficient algorithm/structure, are interpreted and analyzed as Means-Plus Function (MPF) claims under 35 USC 112P6.

 

Patent application Spec and Figs

USPTO will change its calculation of Patent term extensions in view of Wyeth v. Kappos

The USPTO posted the announcement below

Wyeth v. Kappos

On January 7, 2010, the Federal Circuit issued a decision in Wyeth v. Kappos, No. 2009-1120, regarding the calculation of patent term adjustments under 35 U.S.C. 154(b). The Federal Circuit’s decision rejects the USPTO’s interpretation of the “overlap” limitation in Section 154(b)(2)(A).

• The Solicitor General will determine whether to seek further review of this decision.
• Pending that determination, the USPTO is in the process of changing the manner it will calculate patent term adjustments under Section 154(b) to conform with the Federal Circuit’s decision.
• Applicants and Patent Owners dissatisfied with a patent term adjustment determination by the agency are reminded of the requirement to seek review of that determination within 180 days of patent issuance and the time periods set in the implementing regulations. See 35 USC 154(b)(4) and 37 CFR 1.705.

emphasis added
http://www.uspto.gov/patents/announce/wyeth_v_kappos.jsp
Note that the Justice department will determine whether to appeal. 
*** Also, the USPTO reminded Patent owners that you have 180 days after issue to seek a review to see if you are entitled to additional PTE.
Today, about 50% of US patent granted are eligible for patent term extension (PTE).  However, most patent applications expire before their 20 year life for non-payment of maintenance fees.  In certain industries, such as pharmaceutical, patents are very valuable at the end of their life and days can mean millions of dollars of revenue.
Link to Wyeth decision.
www.cafc.uscourts.gov/opinions/09-1120.pdf

Ex parte TANAKA – BPAI – Can’t Reissue Patent only to add narrower dependent claim

In Ex parte TANAKA, a BPAI Precedential Case  (Dec. 9 2009), the board found that under 35 U.S.C. § 251 Applicant can’t reissue a patent only to add narrower dependent claims simply as a hedge against invalidity of the original claims.
For this reissue appeal, the issue was whether the reissue declaration can satisfy the error required under 35 U.S.C. § 251 when the
Appellant is only adding a narrower dependent claim by reissue to the existing patented claims simply as a hedge against possible invalidity of the original claims.

Section 251 of the Patent Act states, in pertinent part:
Whenever any patent is, through error without any
deceptive intention, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.

The reissue statute 35 U.S.C. § 251 requires that for a patent to be eligible for reissue, a patent must (1) be wholly or partly inoperative or invalid, (2) by reason of an existing error, (3) without any deceptive intention.
37 C.F.R. § 1.175(a)(1) implements the requirement of 35 U.S.C. § 251, and requires that an applicant for a reissue
patent must state:

1. That the applicant believes the original patent to be wholly
or partly inoperative or invalid, and
2. At least one such error that is being corrected at the time of
filing the reissue oath or declaration.

The court found that the applicant’s adding a dependent claim does not under 35 U.S.C. § 251 show the patent is “partly inoperative or invalid, .. by reason of the patentee claiming more or less than he had a right to claim in the patent”.   The applicant did not allege the patent claims were invalid. The applicant parent claim was open ended (comprising) and therefore covered the subject matter of the new dependent claim.
http://www.uspto.gov/ip/boards/bpai/decisions/prec/fd09000234.pdf
tag:BPIA, reissue