What’s going on with 101 rejections?

by Brian Fletcher on March 9, 2009

While researching a response for a 101 rejection, I found a relatively new blog – BPAI Watchdog –  focusing on recent BPAI 101 decisions.  It’s available at http://bpaiwatchdog.blogspot.com/ . 


I’ll let you come to your own conclusions about the quality of the science and law underpinning these decisions.  Using the Bilski “machine-or-transformation” test, one panel emphasized that “the use of a general ‘processor’ and ‘memory’ is insufficient to render an otherwise ineligible claim patent eligible (not enough ‘machine’ I guess – this was the prong that the CAFC punted on in Bilski).  Ex parte Mitchell.  Feb. 23, 2009.


Nuijten has been used by several panels to attack Beauregard claims if there’s the slightest hint that a signal could be included as a medium.  Some of the language the Board used:


The broadly claimed “medium” in the preambles of all independent claims on appeal is not necessarily required to be embodied in a tangible computer-readable medium. Indeed, the subject matter is so broadly disclosed that there is no discussion of what the claimed “medium” is supposed to be or otherwise be comprised of in the Specification as filed. As such, the medium appears to be a broadly definable wireless network that encompasses signals per se proscribed by Nuijten …  Ex parte Isaacson.  Feb. 26, 2009.



However, another recent panel determined that a “computer usable medium,” when not defined in the spec, was limited to only tangible manufactures.  Ex parte Mazzara.  Feb. 5, 2009.

Should be an interesting couple of years arguing 101 rejections.  Bilski’s cert petition is now with the Supreme Court.

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