The Board of Patent Appeals and Interferences (BPAI) at the PTO recently issued a decision applying Bilski. In Ex Parte Halligan, the application included a method claim that recited a “programmed computer method” for identifying trade secrets. At first glance, this seems like a situation similar to the method of requiring and conducting arbitration from Bilski. There, the court said that methods of transforming abstract things like legal rights are not patentable. The twist in Halligan is that the method steps are performed by a “programmed computer.” This would seem to meet the “machine” portion of the machine or transformation test, right? The Bilski court specifically declined to decide this issue, so it is up to the BPAI.
The Board was not impressed with the recitation of the method steps being performed by a “programmed computer”.
This recitation fails to impose any meaningful limits on the claim’s scope as it adds nothing more than a general purpose computer that has been programmed in an unspecified manner to implement the functional steps recited in the claims.
The BPAI held that to permit an unpatentable method to become patentable by the mere addition to the method steps that they be performed by a programmed computer, this “would allow pre-emption of the fundamental principle present in the non-machine implemented method by the addition of the mere recitation of a ‘programmed computer.’”
It did not help the applicants that they also had claims to a programmed computer that were similar to the method claims, but instead included “means within the programmed computer for” performing the steps of the method. The Board noted that the only structure recited within the application to perform these steps was a general purpose computer having an arithmetic processor. The application did not include any specific algorithm for performing these steps. Thus, the programmed computer claims were also unpatentable as they were indefinite.
The bottom line seems to be that applicants should include more details in the description of how these types of methods would be implemented by a computer, such as a specific algorithm or even code. The mere recitation of a general purpose computer without anything more specific will probably not be enough for patentability.
