It's no Goud (sorry -- weak pun)

Goud and Zimmer invented a system abstraction layer for a basic input/output system (BIOS) program which enables selection from among at least 2 different processor abstraction layer (PAL) components.

Claims 1 is illustrative:

1. A method comprising:

providing at least two selectable processor abstraction layer B components within one basic input/output system program

The Examiner rejected this claim as being directed to non-statutory subject matter. The Board explained the basics:

Under § 101, there are four categories of subject matter that are eligible for patent protection: (1) processes; (2) machines; (3) manufactures; and (4) compositions of matter. 35 U.S.C. § 101. While the scope of patentable subject matter encompassed by § 101 is “extremely broad” and intended to “‘include anything under the sun that is made by man,’” it is by no means unlimited. In re Comiskey, 554 F.3d 967, 977 (Fed. Cir. 2009) (quoting Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980)). For example, laws of nature, abstract ideas, and natural phenomena are excluded from

patent protection. Diamond v. Diehr, 450 U.S. 175, 185 (1981).

It is the second exclusion noted above—abstract ideas—that is relevant to the appeal before us. Thus, even if the claimed invention nominally recites subject matter that falls within the enumerated categories under § 101, the claimed invention would still not recite patentable subject matter if the claim as a whole is nonetheless directed to an abstract idea. As the U.S. Supreme Court has noted, “‘[a]n idea of itself is not patentable[]’….‘A principle, in the abstract, is a fundamental truth; an original cause; a motive; these cannot be patented, as no one can claim in either of them an exclusive right.’” Id. at 185 (citations omitted).

In determining whether a claim as a whole is directed to an abstract idea, the Court has drawn a key distinction between (1) claims that seek to wholly pre-empt the use of a fundamental principle, and (2) claims that are merely limited to foreclosing others from using a particular application of that fundamental principle. See In re Bilski, 545 F.3d 943, 957 (Fed. Cir. 2008) (en banc), cert. granted, 77 U.S.L.W. 3442, 3653, 3656 (U.S. June 1, 2009) (No. 08-964).

Machine or Transformation? -- It's "rife with physical materials"

Applicants argued that claim 1 is "rife with physical materials" because it calls for processor abstraction layer B components and a BIOS program. Thus, according to Applicants, "the claim is statutory because it recites at (1) program, and (2) a concrete and tangible result, namely a BIOS program 'with certain characteristics never before seen in the prior art.'" The Board did not agree.

Claim 1 is not tied to a particular machine

[E]ven assuming, without deciding, that a machine were required to implement the recited method, such a machine would not be a particular machine as Bilski requires. See Bilski, 545 F.3d at 961-62. At best, such a nominal structural recitation would be a tantamount to a general purpose computer and would not tie the process to a particular machine or apparatus.⁵ Indeed, such a nominal recitation of physical structure tantamount to a general purpose computer is analogous to the recitation of storing binary coded decimal signals in a shift register that the U.S. Supreme Court found to be unpatentable in Benson. See Benson, 409 U.S. at 73 (listing claim 8 which calls for, in pertinent part, “storing the binary coded decimal signals in a reentrant shift register”) (emphasis added). In any event, “[n]ominal recitations of structure in an otherwise ineligible method fail to make the method a statutory process.” Ex parte Langemyr, App. No. 2008-1495, slip op., at 20 (BPAI May 28, 2008) (Informative) (citing Benson, 409 U.S. at 71-72), available at http://www.uspto.gov/web/offices/dcom/bpai/informative_opinions.html (last visited Mar. 15, 2009).

Claim 1 also does not transform a particular article into a different state or thing

We also find that claim 1 does not transform a particular article into a different state or thing. Merely providing selectable components within a program, in effect, provides a particular program with those components. Merely providing a program with particular components, however, falls well short of transforming a particular article into a different state or thing as Bilski requires.

^5. In Gottschalk v. Benson, 409 U.S. 63 (1972), the Court held that claims directed to a method for converting binary-coded-decimal (BCD) numerals into pure binary numerals for use with a general-purpose digital computer were nonstatutory under § 101.

Rejections affirmed.

Ex parte Goud, No. 2008-003121 (July 20, 2009)