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IP, Patent

USPTO Interprets Fed Circuit’s Bilski Interpretation – Everything Is Patentable (Again)

First the CAFC refused to invalidate RCT’s patent on halftoning greyscale images.  Next, they broadly applied Bilski to uphold a medical diagnostic patent.  While the rest of us wait to see if the Supreme Court will revisit the Bilski issue in 2011 (and while I’m apparently accused of “cheering” the earlier diagnostic opinion), it’s business as usual at the PTO’s Board of Appeals. (Quick review: the Machine or Transformation (“MoT”) test–allowing a claim that is tied to a particular machine or apparatus, or transforms an article into a different state or thing–is a useful “clue” but not the sole test).

It seems that, despite the Court’s decision in Bilski, and a few board opinions striking down claims involving only generic hardware, a return to the previous “everything is patentable” standard may be imminent.  Reversing an Examiner’s decision to strike down this IBM patent application, the board relied on relatively generic hardware descriptions to save a claim the Examiner considered to be too abstract to be patentable.

You be the judge.  The full text of one the claims considered by the board read as follows:

1. For a client/server system having at least a client including a graphical user interface to display a content of virtual hosted stores to a user, the virtual stores being stored in databases managed by a database management system in a resource manager, the graphical user interface being operatively connected to an application server having a business logic module to select the content to be displayed, a method of managing the content of the hosted virtual stores comprising the steps of:
creating a profile store which servers as a template and upon which the hosted stores are formatted;
designating one or more e-marketing spot in the hosted stores;
setting up a marketing campaign for the hosted stores; and
creating one or more campaign initiatives in the profile store for the content to be displayed in the hosted stores.

Reversing the rejection of the IBM patent application, the Board explained that the recitation of “hosted stores” was sufficient to conclude that that this patent application is not too abstract.

In that regard, the both claims 1 and 22 recite “hosted stores,” which reasonably construed seems to implicitly require a host, which would require a particular apparatus.

We may be nearing the end of a journey that began in 2008, when the CAFC punted away, saying:

We leave to future cases the elaboration of the precise contours of machine implementation, as well as the answers to particular questions, such as whether or when recitation of a computer suffices to tie a process claim to a particular machine.

For now, it seems that IBM has its answer.  The rest of us, however, will have to wait and see whether this policy develops into a consistent rule.  After all, if an “implicit” requirement of a “host” sufficiently ties a patent claim to a “particular apparatus,” then meeting the “tied to a machine” prong of the MoT test presents no real barrier whatsoever.  But this decision does not represent an adopted rule at the PTO. Rather, it only serves to allow IBM’s application to pass for the time being.  Only time will tell if other board members, and the CAFC, adopt this rationale.

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