Appeals to BPAI In View of Bilski
I just finished reviewing 18 BPAI decisions in software cases. Most of the decisions rejected at least some claims under 35 USC 101 in view of Bilski.
- Of these decisions, almost all raised 101 issues sua sponte.
- Three decisions remanded 101 issues to the examiner whereas the rest just held that claims are unpatentable.
- In almost all of the decisions, merely reciting a processor or computer in the preamble was insufficient.
- In some cases, even system claims were rejected as merely corresponding to software components.
- Many decisions also stated that merely executing a method on a general purpose computer is not sufficient to overcome the "machine" requirement of Bilski's machine-or-transformation test.
The board appears to be looking for recitations of a special purpose machine or device and thereby appears to ignore prior case law. If you are appealing a software case to the BPAI, you may want to review these decisions to see if your claims will withstand a sua sponte patentability rejection if you are not prepared to further appeal beyond the BPAI.
