BPAI Upholds Process Claim under Bilski by Looking at Entire Claim

The Florida Patent Lawyer Blog pointed out a BPAI decision released today, upholding a claim directed to a method for displaying customer information and coupons at a weigh station.  Here’s the claim at issue:

17. A method for providing customer-specific information for a customer to a weigh station, the method comprising:

a) obtaining customer identification information for identifying a customer to be served at the weigh station;

b) storing a plurality of customer profiles for a plurality of customers  wherein each customer in the plurality of customers has an associated customer profile; and,

c) when the customer is in the plurality of customers, retrieving the associated customer profile for the customer using the customer identification information and providing associated customer-specific information based on the associated customer profile to a weigh station display, wherein the associated customer profile comprises, for each customer in the plurality of customers, a unique associated customer identifier, the customer-specific information comprises associated reward information, and the associated reward information specifies at least one of an associated coupon and an associated discount to be provided to the customer.

This claim was upheld under the “machine-or-transformation” test from Bilski.  Mark pointed out a basic takeaway from this case:

The lesson learned in this case is that although a claim may not explicitly and positively recite a structural element, the claim may require a specific structure to perform the steps of the claim. If that structure satisfies the machine prong of the machine-or-transformation test, an Examiner’s 35 U.S.C. §101 non-statutory subject matter rejection may be reversed under Bilski.

I’d like to dive a little deeper into a subtle point, here.  When analyzing a claim for patent-eligible subject matter, it seems that examiners will sometimes review each element separately, decide whether that element alone would pass the “machine-or-transformation” test, and move on to subsequent elements.  If none of the elements alone would pass the test, the examiner would reject the claim.  Here, couldn’t that have happened?

The “weigh station” in the preamble would not likely be given patentable weight, because it is in the preamble.  Step (a) recites “obtaining information,” which is often considered insignificant pre- or post-solution activity.  Step (b) recites “storing” information, which can also be considered pre- or post-solution activity.  Neither of these steps are tied to the weigh station, since the weigh station does not perform either of the steps.  Step (c) recites “retrieving” information and “providing” the information to a weigh station display.   Since the weigh station is merely provided the information, no display is actually occuring in the claim, and the “weigh station display” is not required to perform any actions by the claim.

Given the current trend of disallowing claims that explicitly recite generic hardware performing steps of the claim as nevertheless not being directed to a “particular” machine, what makes this claim different?

Well, the board explains that, as a whole, the claim is tied to a weigh station:

Independent claim 17 recites a method for providing information to a weigh station. Claim 17 further requires that the weigh station include a weigh scale and a weigh station display, where customer specific information is provided to the weigh station display. That is, claim 17 recites a manner of entering data to a weigh station and displaying the inputted information. As such, claim 17 requires a specific structure that captures, stores, and displays specific data. This specific structure ties the recited method to a particular machine, in that the method recites how to operate a weigh station with a weigh station display. . . . This is one of those cases where looking at the claim as a whole may lead to a different conclusion than analysis of the parts.

While I’m not sure why the claim language quoted above requires a “weigh scale,” the board’s point about taking the claim as a whole is instructive.  Even though each part of the claim might not itself look tied to a particular machine, as a whole, the argument that the claim is at least somehow related to something more particular than a general purpose computer and any generic data is more convincing.

So, something for the argument toolbox: when dealing with a Section 101 rejection of a method claim, try to argue that the claims as a whole are tied to a particular machine, even if it’s difficult to make the argument for individual recitations.

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One Response

  1. I think this “claim as a whole” analysis idea is intriguing. But I really wish the Board had explained why *in this particular case* the result reached by analyzing the claim as a whole is different than when the constituent parts are analyzed.

    The Board seemed to accept at face value the fact that several steps were “tied” to a scale simply because they recited a scale. Yet as your post notes, in a typical analysis of the individual steps, the tie to the weigh scale might well be ignored as “insignificant activity”.

    So why did the Board not take this tack?

    Did it have something to do with the fact that although individual steps weren’t strongly tied to a scale (because the activity was insignificant), the weak tie occurred in multiple steps — such that the claim as a whole meets some tied-enough-to-a-machine threshold?

    Other than this “lots of weak ties” idea, I am stumped as to why the Board would describe this claim to be tied to the scale “as a whole”. After all, several of it’s parts *are* tied to the scale.

    This is just pure speculation on my part, as the Board gave us nothing to work with.

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