First, let me give you a little background so that you can at least understand, and maybe share, my frustration. We had a patent application that had been pending for 6 1/2 years with the USPTO. Various things happened along the way that contributed to this lengthy, if perhaps all too common, pendency period. For example, at one point the examiner to whom the application had been assigned was “on vacation.” It was a really long vacation. So long in fact, that when we started asking when the application was going to be acted upon, the case was reassigned to another examiner. The new examiner, presumably having his own backlog, then didn’t touch the application for years. The USPTO didn’t even reply to written requests to update us on the status of the application.
Finally, when the application was acted upon, the first office action was to deny all claims, with prior art citations that made it apparent that the examiner didn’t really “get it.” Now, lest that sound too critical, I fully sympathize with the impossible job examiners have. With the amount of time they have per case, I’m sure I wouldn’t really “get it” in plenty of cases either. So, we replied, explaining the differences between the prior art and the present invention, pointing out that despite superficial similarity, the methods of the prior art were quite different and literally could not be used in conjunction with the present invention. Of course, you know what the second office action was: Deny all claims.
So, we appealed to the Board. Years later (seemingly in egregious violation of MPEP 1207.02), and after several phone calls during which the examiner really didn’t seem to know what was going on and furnished us with misleading information, we got the Board’s decision. This was just the other day. I don’t need to tell you what their decision was, do I? Deny all claims.
Now, you haven’t read the application, or the office actions. I would completely understand if you are thinking “Maybe they were correct to deny all the claims.” Maybe they were. I don’t think so, but maybe they were. But, that’s not what this is about. All that boring background material was just frustrated complaining on my part. The real point here is not how long this took, or what the Board said, but rather how they justified it.
I quote from the Board’s decision:
"The instant claims [are directed to a] software system, which is per-se non-statutory. For a system claim to be found statutory, it has to have a physical device or processor."
Sure, there was more in their reply than that, but on this topic that was largely it. No case law cited. Bilski wasn’t even mentioned, nor is the “machine-or-transformation” test. So, forget about whether the invention satisfied the requirements put forth in Bilski. I would argue that it did, but that doesn’t seem to be the issue. Rather, the issue here seems to be that we have three examiners, considering something on appeal, who find it legally correct and sufficiently explanatory to simply state that “software… is per-se non-statutory.”
What?? Did the Supreme Court render a new decision that I missed? We all know the gist of what Bilski says, but let me quote directly from the decision to make my point absolutely clear:
“…although invited to do so by several amici, we decline to adopt a broad exclusion over software…”
“…the proper inquiry under § 101 is not whether the process claim recites sufficient "physical steps," but rather whether the claim meets the machine-or-transformation test.”
In other words, software is not non-statutory, and the proper test does not necessarily hinge upon the recitation of physical embodiments. It seems to me that either the Board is wrong or the Supreme Court (and CAFC, whose decision was upheld by the Supreme Court) is wrong. Of course, one could argue that the wording is simply unclear, and that, for instance, by reading an awful lot into the Board's use of "per se" one can reconcile the Board's statements with the decision in Bilski. That's a stretch, especially from a Board who attempts to devine exactly meaning from language on a daily basis. Of course, it seems equally ludicrous that three examiners are all ignorant of Bilski and the machine-or-transformation test.
I don't know how to interpret this. I'd love to hear other thoughts on the matter. I do know that this has been a huge waste of time, highlighting some of the glaring problems with the patent prosecution process. This confusing, seemingly incorrect, response from the Board (after 6 1/2 years no less) should have been impossible. With the right tools available to the examiners, it would have been. But, that's a topic for another blog.