[Discuss] FYI - a purely software embodiment is not patent eligible

[dcrookston at gmail.com (Daniel C.)]

Can you give us an English translation of this, please?  Specifically,
on what grounds did they decide that software is nonstatutory (I'm
guessing this means you can't patent it?) but a web-based system
(which is also software...) is?

On Tue, Dec 6, 2011 at 9:35 AM, Hsuan-Yeh Chang <hsuanyeh at gmail.com> wrote:
> 1. ?In a recent administrative decision, the US patent office held that a
> "purely software embodiment" is not patent eligible.
>
> Quote:
> "The clear import of this discussion is that the invention can exist solely
> as software. ?Reciting descriptive material per se (e.g., computer
> programs) is nonstatutory. See In re Warmerdam, 33 F.3d 1354, 1360-61 (Fed.
> Cir. 1994). Therefore, we agree with the Examiner (Ans. 4, 17) that claim 1
> encompasses a purely software embodiment and find that claim 1, as a whole,
> is directed to non-statutory subject matter under ? 101." ?Ex Parte Cohen,
> 2011 WL 6012432 (BPAI November 29, 2011) at 5.
>
> 2. ?On the flip side, a "web based system" is patent eligible.
>
> Quote:
> "We are persuaded by Appellants' argument, for much the same reasons as to
> the web-based system, set forth at claim 1. ?In the context of these two
> method claims, we find that by providing a web-based system or providing,
> on a web-based system, the methods are tied to a particular machine of the
> specially-programmed computer. ?As such, we further find that the computer
> is recited in the claim so inextricably connected to a discussion board and
> the associated functions which occur by claim recitation on it so as not to
> be an abstraction. ?See Bilski v. Kappos, 130 S.Ct. 3218, 3227 (June 2010).
> ?We therefore find that claims 6 and 11 recite eligible subject matter, and
> reverse the rejection of these claims under
> Section 101." ?Ex Parte Vogel, 2011 WL 6012447 (BPAI November 21, 2011) at
> 7 and 8.
>
> 3.
> http://www.patentlyo.com/patent/2011/12/recent-patentable-subject-matter-decisions-at-the-bpai.html