BPAI Finds Claims Indefinite and Not Directed to Patentable Subject Matter Under Bilski

Ex parte Hemmat (BPAI Oct. 13, 2009)

The Board of Patent Appeals and Interferences ("BPAI"), in an opinion by Administrative Patent Judge Horner, affirmed a rejection of claims relating to a method for defining and selecting networking approaches for addressing a business need.  At issue on appeal were rejections relating to ineligible subject matter, indefiniteness, and obviousness.  For context, it may be useful to the reader to examine claim 1 of the patent application, which can be found in the BPAI decision itself (link above).

Citing the "machine-or-transformation" test of In re Bilski, the BPAI determined that "the [claimed] method steps are not tied to a particular machine and do not result in a transformation of an article to a different state or thing … [instead] the claim is directed to a method for selecting an approach to address a business need, in which the business need and other information is outlined in a concept document that is provided to various stakeholders, meetings are held to discuss proposed approaches, further information is added to the concept document, and then a final selection of an approach is made."  The BPAI found the claim failed the machine-or-transformation test and was therefore not directed to patentable subject matter.

The BPAI went on to discuss the indefiniteness rejection.  The indefiniteness issue concerned a method step providing "selecting a final selection from the at least one proposed approach with a view of the long-range plans and overall direction of an enterprise rather than to a specific problem."  Citing a dictionary, the BPAI defined "select" as "to take as a choice from among several; pick out."  The BPAI found that when there was only one "proposed approach" in the claim, "it is not possible to select that proposed approach from among several (or at least two) possible approaches."

The BPAI went on to explain how the claim is still indefinite even if a PHOSITA were to understand that if there is only one proposed approach, you could only "select" that one proposed approach.  The needs addressed by the "final selection" step were defined in the claim a "the long-range plans and overall direction of an enterprise rather than to a specific problem" whereas the needs addressed by other steps in the method were to address specific problems.  The BPAI posited that "[i]f the proposed approach was initially proposed to address a specific problem, and if it is the sole approach from which the final selection can be made, then this approach is necessarily selected with a view to that specific problem.  As such, it is unclear how the claim can be met when only a single approach is proposed."

Ultimately, the BPAI found the claims both indefinite and not directed to patentable subject matter.

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