There's been lots of buzzing in the IP blog-world about the Federal Circuit's recent Bilski case and how it's outcome "may" impact method claims. I'm a little confused by all this "buzz" and confusion. I've been making rejections under 35 USC 101 against claims that fail to recite a practical application of any recited "abstract idea" for the past two years. Although my primary examiner hasn't always agreed with my positions, the TQAS (read, "training quality assurance specialists") in my technology center have continued to agree with me and support me. [You can bet that I felt pretty smug last week after the Fed. Circuit's heard the oral arguments ... my primary has already asked me for some of my custom form paragraphs regarding judicial exceptions of "abstract ideas"].
In my opinion, with regards to any method claim, a decision in favor of the USPTO will not change anything (see MPEP 2106.IV.C-2106.IVC). Based on Supreme Court precedent, a claimed method must either 1) be tied to another statutory class or 2) transform underlying subject matter. If the claimed method is determined to be a statutory subject matter eligible process by meeting either 1) or 2), but the claim(s) include the recitation of an "abstract idea", then the claim(s) need to additionally recite a practical application of that idea in order to avoid rejection under 35 USC 101. For example, you can't claim "comparing A to B" if the claim doesn't recite that some sort of device performs that comparison or if the claim doesn't recite some use of that comparison to actually do something or transform something. I can compare "A to B" in my head, therefore it's an abstract idea and not patentable.
Example medical diagnostic method claim:
A method of diagnosing a patient as suffering from heart failure comprising:
a) acquiring a cardiac signal of the patient using at least one electrode adapted to be placed on a torso of the patient;
b) determining a measure of cardiac output from the cardiac signal;
c) comparing the measure of cardiac output to a threshold level of cardiac output; and
d) indicating that the patient is suffering from heart failure based on the comparison.
This is just an example claim (but trust me, I do see claims this broad!). Upon inspection, it quickly becomes evident that recited steps "b" - "d" are not tied to another statutory class of invention (such as an apparatus) nor does that step transform any underlying subject matter. This may be fixed by something similar to the following:
A method of diagnosing a patient as suffering from heart failure comprising:
a) acquiring a cardiac signal of the patient using at least one electrode adapted to be placed on a chest of the patient;
b) determining a measure of cardiac output from the cardiac signal;
c) comparing the measure of cardiac output to a threshold level of cardiac output; wherein a processor of a monitoring device receives the cardiac signal from the at least one electrode and is configured to execute said determining and said comparing; and
d) indicating on a display of the device that the patient is suffering from heart failure based on the comparison, wherein the processor is further configured to provide a visual indication to the display.
Now the steps are tied to an apparatus and practical applications of the abstract ideas (i.e. comparing, indicating) are included in the recited claim language. Simple fix, right?
So, what's all the confusion about?
Edit (6/23): I've clarified this posting and am coupling the adding the following article (http://hiphper.etricities.com/2008/06/23/case-in-re-bilski-federal-circuit-oral-argument/). My reason for making the post relates to my belief that the Federal Circuit will support the USPTO in deciding Bilski.
Showing posts with label subject matter elibibility. Show all posts
Showing posts with label subject matter elibibility. Show all posts
Monday, May 26, 2008
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