IP Bulletin

Bilski at the BPAI

 

After the Supreme Court decision in Bilski v. Kappos was handed down, the USPTO issued a memo to the examining corp regarding application of the Bilski decision. The instructions in the memo follow the Bilski decision in directing the examining corp that the Machine or Transformation test is not the sole test for determining wether a claim is directed to an abstract idea. In particular, a list of factors are set forth in the memo. As indicated by the memo, no factor is conclusive by itself and the applicable factors will vary by case. The memo also suggests that there may be patent-eligible claims that do not pass the Machine or Transformation test as well as patent-ineligible claims that do pass the Machine or Transformation test. However, no examples of such claims are provided in the memo.

 

Although the memo and some decisions rendered by the Board of Patent Appeals and Interferences discuss other factors, the Machine or Transformation factors were still predominantly used. Indeed, none of the Board decisions studied found that a method claim was not directed at an abstract idea without finding that the method claim met at least one of the prongs of the Machine or Transformation test. Furthermore, none of the Board decisions found a claim that at least implicitly met one of the prongs of the Machine or Transformation test to be directed to an abstract idea. Thus, in applying Bilski at the Board, it appears that the Machine or Transformation test remains the primary tool for analyzing whether a method claim is directed at an abstract idea.

 

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Fogg & Powers IP Bulletin: Examining Corps and BPAI at Odds Over Means-Plus-Function Claims.

The Board of Patent Appeals and Interferences (BPAI) and the Patent Examining Corps apply different standards to identify meansplus-function claims under 35 U.S.C. 112, 6th paragraph. In particular, the most recent memorandum1 to the Patent Examining Corps regarding means-plus-function language was issued in September 2008 by the Deputy Commissioner for Patent Examination Policy.  The memorandum addressed both when claims invoke 35 U.S.C. 112, 6th paragraph as means-plus-function claims as well as analysis of such means-plus-function claims under 35 U.S.C. 112, 2nd paragraph.With respect to invoking 35 U.S.C. 112, 6th paragraph, the memorandum reiterated the 3-prong test set forth in MPEP 2181 which requires the use of “means for” or “step for” language to invoke 35 U.S.C. 112, 6th paragraph. Although the Patent Examining Corps has been given direction regarding when to interpret a limitation as a mean-plus-function limitation, the BPAI is under no obligation to adhere to the instructions in the memorandum. Indeed, our review of recent decisions of the BPAI revealed that the BPAI continues to take a broader view of when to invoke 35 U.S.C. 112, 6th paragraph. For example, the list provided to the left summarizes some general terms which the BPAI has deemed invoke 35 U.S.C. 112, 6th paragraph without the use of ‘means for’ or “step for’ language. In determining whether to appeal a rejection to the BPAI, it may be beneficial to analyze rejected claims for such claim terms even if the examiner has not invoked 35 U.S.C. 112, 6th paragraph.

1 Memorandum to Patent Examining Corps, Rejections under 35 U.S.C. 112, second paragraph, when examining means (or step) plus function claim limitations under 35 U.S.C. 112, sixth paragraph, September 2, 2008.

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Fogg & Powers IP Bulletin: Bilski at the United States Patent and Trademark Office.

The United States Supreme Court handed down the much anticipated decision in Bilksi v. Kappos1on June 28, 2010. The Bilski decision concluded that the “Machine or Transformation” test is not the only test for patent eligibility. The question now facing a patent applicant is what other tests is the USPTO going to apply? The first substantive answer to that question was provided by the USPTO on July 27, 2010 in a memo to the examining corp2. The memo provides a list of factors to consider in determining patent eligibility. The factors can be grouped into two tests: the Bilski “Machine or Transformation” test and a modified version of the “Useful, Concrete and Tangible” test3. We will continue to monitor Board decisions to gain further insight into how the USPTO is applying the Bilski decision. Our findings will be published in the near future.

 

1 Bilski v. Kappos, No. 08-964, slip op. (U.S. June 28, 2010)

2 Memo to Patent Examining Corps, Interim Guidance for Determining Subject Matter Eligibility for Process Claims in view of Bilski v. Kappos, July 27, 2010.

3 See MPEP §2106(IV)(C)(2)

 

 

Fogg & Powers IP Bulletin: PTO KSR Guidelines Provide Formula for Overcoming 103 Rejections

 

Most decisions by the Board of Patent Appeals and Interferences (the Board) are non-precedential. However, these decisions are a window into the examining corps’ understanding of the legal issues at the heart of the patent process. We have studied a random sampling of post-KSR decisions from the Board. In the cases reviewed, we have found that the basis for the Board’s reversal of a 103 rejection can be mapped to an argument that the Examiner has failed to make one of the required findings identified in the PTO’s KSR Guidelines for the rationale used by the Examiner.

 

Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 in View of the Supreme Court Decision in KSR International Co. v. Teleflex Inc. (Federal Register, Vol. 72, No. 195, pages 57526-57535) published Oct. 10, 2007.