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Disclaimer - The information provided on this page does not constitue legal advice from Kasha Law LLC and you are advised to seek appropriate legal counsel for any questions you may have or before you take any legal actions.

Take John Kasha's CLE course on Method Claim Drafting After Bilski

This webpage was created to provide information related to the decision made by the U.S. Court of Appeals for the Federal Circuit in the case of In re Bilski and regarding patent-eligible subject matter under 35 U.S.C. § 101.

In re Bilski Flowchart - This flowchart was developed to graphically depict the process for determining patent-eligible subject matter under 35 U.S.C. § 101 according to the In re Bilski decision.  The flowchart includes examples for many of the cases cited in In re Bilski.

Method Claim Construction After Bilski - These slides were developed for a seminar on method claim construction after the Bilski decision.  The slides include a discussion of the Bilski decision and the machine-or-transformation test, three approaches to drafting method claims after Bilski, and the application of these three approaches to claims previously rejected based on Bilski.   

Important Cases

Supreme Court

Gottschalk v. Benson - On November 20, 1972 the Supreme Court found a method for converting numerical information from binary-coded decimal numbers into pure binary numbers to be unpatentable even though this method recited a reentrant shift register.

Parker v. Flook- On June 22, 1978 the Supreme Court found a method for updating alarm limits during catalytic conversion processes to be unpatentable under 35 U.S.C. § 101. 

Diamond v. Diehr - On March 3, 1981 the Supreme Court found a process for molding raw, uncured synthetic rubber into cured precision products to be patentable subject matter under 35 U.S.C. § 101.  The Federal Curcuit in Bilski said, "[t]he process claimed in Diehr, for example, clearly met both criteria [machine and transformation]. The process operated on a computerized rubber curing apparatus and transformed raw, uncured rubber into molded, cured rubber products."

Federal Circuit

In re Abele - On August 5, 1982 the Federal Circuit's predecessor court found that claims directed to displaying data were unpatentable, while dependent claims specifiying X-ray data were patentable.

In re Schrader - On April 13, 1994 the Federal Circuit found that a method for competitively bidding on a plurality of related items, such as contiguous tracts of land or the like was patentable under 35 U.S.C. § 101.

State Street v. Signature Financial - On July 23, 1998 the Federal Circuit found that a system claim involving managing a financial services portfolio was patentable under 35 U.S.C. § 101. 5,193,056

In re Bilski - On October 30, 2008 the Federal Circuit found a method for managing the consumption risk costs of a commodity unpatentable under 35 U.S.C. § 101.  This case also overruled all tests for patentability other than the machine-or-transformation test. In re Bilski blog entry

Classen Immunotherapies v. Biogen IDEC - On December 12, 2008 the Federal Circuit found a method of determining whether an immunization schedule affects the incidence or severity of a disorder.  Claim 1 of U.S. Patent 5,723,283

In re Comiskey - On January 13, 2009 the Federal Circuit found claims directed to "the mental process of resolving a legal dispute between two parties by the decision of a human arbitrator" to be unpatentable under 35 U.S.C. § 101

BPAI

Ex parte Bo Li - This November 6, 2008 decision was the first decision from the Board of Patent Appeals and Interferences to address a computer readable medium claim after the ruling in In re Bilski.  The Board found that the claim should no longer be rejected under the In re Bilski test.  Ex parte Bo Li blog entry

Ex parte Cornea-Hasegan -  On January 13, 2009 the Board of Patent Appeals and Interferences found that "the recitation of a 'processor' fails to impose any meaningful limits on the claim's scope" and, therefore, "is insufficient to establish patent-eligibility under 35 U.S.C. § 101," according to the In re Bilski decision. Ex parte Cornea-Hasegan Flowchart

Ex Parte Gutta - On January 15, 2009 the Board of Patent Appeals and Interferences found that "the recitation in the preamble of '[a] computerized method performed by a data processor' adds nothing more than a general purpose computer that is associated with the steps of the process in an unspecified manner."  They also found that step of "displaying" the result to a target user in claim 1 is a post-solution activity insufficient to impart patentability.

Ex parte Barnes - On January 22, 2009 the Board of Patent Appeals and Interferences found that the claims "call for the gathering, analyzing and displaying of data without any details as to how the data is gathered, analyzed or displayed."  This case is interesting because a § 101 rejection was not before the Board, but they entered it as new grounds for rejection. U.S. Publication No. 20060133206

Ex parte Becker - On January 26, 2009 the Board of Patent Appeals and Interferences found that "Appellants’ claimed 'method for creating a hierarchically structured automation object and embedding said automation object into an engineering system' (see preamble, claim 7) does not require a particular machine or apparatus, nor do these claims transform any article into a different state or thing."  In this case also a § 101 rejection was not before the Board, but they entered it as new grounds for rejection.  This case is interesting because claim 7 included modules, but was still rejected.  U.S. Publication No. 20020072819

Ex parte Atkin - On January 30, 2009 the Board of Patent Appeals and Interferences found that a method and system for converting a unidirectional domain name to a bidirectional domain name were unpatentable under 35 U.S.C. § 101.  The Board found that a "domain name is simply a series of characters representing the address of a resource, such as a server, on the World Wide Web." The Board reasoned that the ruling in Bilski was also applicable to a system claim, because the "term 'system' in the preamble is broad enough to read on a method and thus does not imply the presence of any apparatus."

Ex Parte Motoyama - On February 27, 2009 the Board of Patent Appeals and Interferences found that a method for a monitoring device to obtain an identifier of a monitored device was unpatentable under 35 U.S.C. § 101.  The Board found that while "the preamble of claim 1 recites a method 'for a monitoring device,' the method of claim 1 is not recited in terms of hardware or tangible structural elements. In this case as in Barnes and Becker, a § 101 rejection was not before the Board, but they entered it as new grounds for rejection. 

Other Links:

Another flow chart of In re Bilski by Smith & Hopen, PA

Another good resource for a summary of cases citing In re Bilski:  www.patentsbyfrip.com