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.


Facebook awarded patent with “News Feed” and “Social Network” in title. EVERYBODY PANIC!

The blogosphere is buzzing with reports about a patent issued to Facebook this week, entitled “Dynamically providing a news feed about a user of a social network.”  As usual, everybody promptly went off the deep end.

Here’s an illustrative example:

While we’re going to take some time to really dig into this patent, is basics are simple enough. The patent awards Facebook protection for technology “dynamically providing a news feed about a user of a social network.”

Apparently, the title is what defines the scope of a patent.  No, wait! Maybe it’s the abstract!

Here is the abstract in its full form:

“A method for displaying a news feed in a social network environment is described. The method includes generating news items regarding activities associated with a user of a social network environment and attaching an informational link associated with at least one of the activities, to at least one of the news items, as well as limiting access to the news items to a predetermined set of viewers and assigning an order to the news items. The method further may further include displaying the news items in the assigned order to at least one viewing user of the predetermined set of viewers and dynamically limiting the number of news items displayed.”

As we see it, this patent is focused on the technology that displays the news feed, rather than the delivery of status updates that often compose them.

The abstract and the title describe something really broad, so the patent must be assertable against the entire Internet!  Run for the hills!

OK, back to reality: please remember that, for the most part, the enforceable scope of a patent is defined by the claims.  There are some details that change this based on the path the patent took through the Patent Office, but to a first approximation, it is safe to say that the language of the claims defines the scope of protection.

Here’s an example:  I’ve worked on applications with such titles as “VIDEO ENDOSCOPE,” “DISK DEVICE,” or, my favorite, “VEHICLE” (the Examiner made us make that one more descriptive, for some reason).  Does this mean that my clients managed to patent the general idea of a video endoscope, or a disk device?  Of course not.  My clients patented whatever is described in the claims.

For the record, here’s a representative independent claim from the Facebook patent:

1. A method for displaying a news feed in a social network environment, the method comprising:

monitoring a plurality of activities in a social network environment;

storing the plurality of activities in a database;

generating a plurality of news items regarding one or more of the activities, wherein one or more of the news items is for presentation to one or more viewing users and relates to an activity that was performed by another user;

attaching a link associated with at least one of the activities of another user to at least one of the plurality of news items where the link enables a viewing user to participate in the same activity as the another user;

limiting access to the plurality of news items to a set of viewing users; and

displaying a news feed comprising two or more of the plurality of news items to at least one viewing user of the predetermined set of viewing users.

I won’t comment on the scope of these claims, but just keep in mind that, in order for Facebook to get you for infringement of this patent, they’re going to have to show that you are doing all of these things (again, a first approximation, but basically true).

So, no, the social networking sky is not falling.  There’s always Bilski to worry about, too.