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In addition to the requisite "useful, concrete and tangible
result," having "clear world value," method claims in the U.S. that
are not "tied to a technological art or environment" may be subject
to a §101 non-statutory subject matter rejection based on the U.S.
Patent and Trademark Office's current interpretation of Ex
parte Bowman, 61 U.S.P.Q. 1669 (BPAI 2001). This latest
direction in U.S. patent examination policy appears to parallel the
"technical character" approach of the European, U.K., and Japanese Patent Offices.
In this unpublished and non-precedential opinion, the appealed
claims were directed to a method of evaluating an intangible asset
of interest:
A method of evaluating an intangible asset of
interest, comprising the steps of:
establishing first and second variables related to
the value of said intangible asset of interest;
establishing a series of performance criteria statements
probative of the value of said first and second variables;
scoring each of the said performance criteria
statements;
summing scores to generate first and second
total scores based upon the extent to which individual
statements accurately describe said intangible asset of
interest;
transforming physical media into a chart
having a first axis relating to said first variable and a second
axis relating to said second variable;
physically
plotting a point on said chart, said point being located at
coordinates corresponding to said first and second total scores
respectively, and,
using said chart in making at least
one decision regarding the value of said intangible asset of
interest.
The Examiner asserted that the claimed invention did not fall
within the technological arts because no form of technology was
disclosed or claimed. The Appellant argued that, under the USPTO's
Examination Guidelines for Computer-Related
Inventions creating a chart and plotting a point is "physical
and has clear real world value." In particular, the claimed process
resulted in a physical transformation outside of a computer for
which a practical application in the technological arts is either
disclosed in the specification or would have been known to a skilled
artisan.
In an opinion written by Administrative Patent Judge Smith, the
Board agreed with the Examiner, noting that "Appellant has carefully
avoided tying the disclosed and claimed invention to any
technological art or environment." The Board reasoned that the
invention was directed merely to a human making mental computation
and manually plotting results on paper and thus is nothing more than
an abstract idea which is not tied to any technological art or
environment. According to the Board, an abstract idea does not
become a technological art merely by the recitation of "transforming
physical media into a chart" and "physically plotting a point on
said chart."
In fact, Appellant cited the discussion in State Street Bank & Trust Co. v. Signature
Fin. Group, Inc., 149 F.3d 1368, 47 USPQ2d 1596 (Fed. Cir.
1998)(holding that asset allocation algorithms provide a "useful,
concrete, and tangible result") relying on In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994)
and Arrhythmia Research Tech. Inc. v. Corazonix
Corp., 958 F.2d 1053 (Fed. Cir. 1992)(holding that
transformation of heartbeat signals corresponds to a useful,
concrete or tangible thing). However, in a concurring opinion citing
In re Warmerdam, 33 F.3d 1354, (Fed. Cir.
1994)(data structure representing object merely a manipulation of
abstract ideas), Administrative Patent Judge Dixon distinguished
those cases and AT&T Corp. v. Excel Communications
Inc., 172 F.3d 1352 (Fed. Cir. 1999)(adding billing data to
telephone record is useful, non-abstract result) as each disclosing
an invention well-grounded in an area of the technological arts.
Judge Dixon noted that the specification was silent as to any media
beyond a graphical representation, which could be "as broad as a
stick in the sand." Judge Dixon further stated that the claimed
invention did not involve the traditional sciences and hence there
can be no advancement of the "useful arts" consistent with
Congressional power under the Constitution.
For a copy of the decision and/or more information on USPTO
examination policies for business method patents, contact the author
of this issue of "APLF Patent Law Updates," Tim
Wall (WallT@tkhr.com), at Thomas, Kayden, Horstemeyer
& Risley LLP in Atlanta, Georgia USA.
The information contained in this email is
provided for informational purposes only and does not represent
legal advice. Neither the APLF nor the author intends to create an
attorney client relationship by providing this information to you
through this message.
APLF · PO Box 7418 · Washington, DC ·
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