Appeals to BPAI In View of Bilski

Posted on February 12, 2009 by Rajiv Sarathy

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.
 

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