Claribel Chan finds a one-eyed lens

Ex Parte Chan et al, No. 2009-010908 (BPAI Jan 30, 2012) involved computer systems, software and methodologies for business solution management. US Patent Application 10/624,860, owned by SAP AG, was the subject of fairly extensive analysis by the Board of Patent Appeals and Interferences. The Board in my view developed quite an innovative lens through which to view the claims.

During examination, the Examiner objected to claims 1-3 and 5-31 for non-statutory subject matter. Three representative claims are claims 1, 25 and 29.

Claim 1 read as follows:

1. A business solution management system comprising: 

software comprising instructions stored in a computer readable medium, the software:

allowing a user to design a business solution with user parameters, instantiated user-selectable, pre-defined business objects, and instantiated user-selectable, pre-defined technology objects;

allowing a user to maintain and modify the business solution designed by the user subsequent to implementation of the business solution, the implementation based, at least in part, on a current state of the business objects and the technology objects; and

persisting the modified business solution for subsequent presentation through a graphical user interface;

a first data repository comprising the instantiated user-selectable, pre-defined business objects; and

a second data repository comprising the instantiated user-selectable, pre-defined technology objects.

Claim 25 read:

25. A computer-implemented method comprising:

providing at least a first software application and a second software application, the first software application allowing a user to design a business solution with user parameters, instantiated user-selectable, pre-defined business process objects, and instantiated user-selectable, pre-defined technology objects, and the second software application allowing the user to maintain and modify the business solution subsequent to implementation of the business solution, the implementation based, at least in part, on a current state of the business process objects and the technology objects, at least one of the first or second software applications persisting the modified business solution for subsequent presentation through a graphical user interface;

providing the instantiated user-selectable, pre-defined business process objects to a first data repository; and

providing the instantiated user-selectable, pre-defined technology objects to a second data repository.

Claim 29 read as follows:

29. An article comprising a machine-readable medium storing instructions operable to cause one or more machines to perform operations comprising:

prompting a user to select at least one instantiated business process object and one instantiated technology object;

receiving user parameters;

designing a business solution using the selected business process object, technology object, and user parameters;

maintaining and modifying the business solution subsequent to implementation of the business solution, the implementation based, at least in part, on a current state of the business object and the technology object; and

persisting the modified business solution for subsequent presentation through a graphical user interface.

Transitory signals

The Board first looked at claim 25. They noted that the claim:

'merely sets forth the steps of "providing..." which are broad enough to read on the disclosed "machine-readable signal" which is any signal used to provide machine instructions and/or data to a programmable processor.'

Claim 25 was therefore held to be directed to non-statutory transitory signals. The Board upheld the Examiner's decision to reject the claim as covering non-statutory subject matter.

Claim 25, according to the Board, also failed both steps of the machine or transformation test.

The mere preamble language of 'computer-implemented method' was not sufficient to tie the claim to a particular or specific machine/computer.

On the transformation angle, the Appellants asserted that the data being transformed represented underlying physical objects. However the Appellants did not identify any specific definition for what the Board described as 'these sweeping generalities.' Arguing that there were 'transformative aspects' in the claim didn't work either.

An abstract idea

The Board had quite a lot to say about system claim 1 and article claim 29. They said both claims represented an unpatentable mental process. They also determined that the claims failed both steps of the machine or transformation test.

As a starting point, the Board stated it would address the process which underlies the broad/generic system preamble. Citing CyberSource Corp. v. Retail Decisions, Inc. (Case No. 2009-1358) (see my blog post), they felt able to 'look to the underlying invention for patent-eligibility purposes'.

The Board determined the underlying invention of both claim 1 and claim 29 as a process.

The underlying method, said the Board, could be performed by a human writing on a piece of paper. A method that can be performed by human thought alone is merely an abstract idea and not patent eligible.

The scope of the method steps of claim 1 cover functions that can be performed in the human mind, or by a human using a pen and paper. Accordingly, these unpatentable mental processes fall within the subject matter of claim 1.

As if that wasn't enough, the Board went on to conclude that the claimed underlying process failed both steps of the machine or transformation test. First, the abstract process steps of the software in combination with the two repository elements did not recite a specific machine. Secondly, the process did not set forth a transformation of an article and the data was not limited to a specific type of data so as to impart patent eligible subject matter.

Further steps

The Board affirmed the Examiner's rejections of claims 1-3 and 5-31 as directed to non-statutory subject matter.

Photo courtesy of author dcosand under Creative Commons licence.