In In re Bilski, the Court of Appeals for the Federal Circuit ushered in a new era for patentability of process claims. Under Bilski, a process claim must be “tied to a particular machine or apparatus”or must “transform[] a particular article into a different state or thing.” (Bilski, 545 F.3d at 954.) If a process claim doesn’t satisfy one of the machine, apparatus, or transformation prongs of the new test, it fails for a want of patentable subject matter.
The Patent Office has properly started citing the Bilski decision to support rejections of process claims for failure to define patentable subject matter. This LA Times article notes example Bilski-based rejections of claims for processes ranging from seismic data analyses to methods for converting an internet domain names to read both left to right, for languages like English, and in the opposite direction, for languages like Arabic and Hebrew.
Such rejections are expected, of course – the Patent Office is simply applying the current law, as it should. But a recent patent granted to Chase Card Services, the credit card division of JP Morgan Chase, has to make you wonder how strenuously the Office is applying the new test.
United States Patent No. 7,480,631 is directed to fraud detection processes and was granted on January 20, 2009. Claim 1 is reproduced below:
1. A method for detecting and processing fraud and credit abuse, the method comprising: receiving a telephone call from a caller concerning a credit account; identifying one or more potential fraud-related problems by searching the credit account data for conditions that match one or more predetermined qualifiers and quantifiers; presenting the caller with a series of questions and soliciting, from the caller, responses to the series of questions, wherein each question in the series is generated based on the one or more potential fraud-related problems and further based on the caller’s responses to earlier questions in the series; and determining a fraud status associated with the credit account based on a computerized analysis of the solicited responses.
Where’s the Bilski-required machine, apparatus, or transformation in that claim? Is it the ‘computerized analysis’? If so, is the term “computerized” sufficient to tie this claim to a particular computing machine? Beyond that, I can only wonder, tongue only partially in cheek, whether the ‘telephone’ provides the machine or apparatus.
It’s interesting to compare the Patent Office application of Bilski, which produced the claim above, to the approach taken by the Federal Circuit. Comparing this claim to the claim summarily rejected by the Federal Circuit in its post-Bilski decision in Classen Immunotherapies v. Biogen IDEC, which included a step of “immunizing mammals,” suggests that the new ‘machine, apparatus, or transformation’ test is not being applied consistently between the Office and the court. On one hand, the Office appears willing to find a required connection to a particular machine or apparatus either in a vague term like ‘computerized’ or through the use of a known apparatus like ‘telephone.’ On the other hand, the court appears completely unwilling to recognize a step that recites a physical act that is well-known to trigger a physiological change as a required transformation.
The claim of the ‘631 patent is, of course, anecdotal in nature. It represents only a single post-Bilski patent issued by the Office and surely there are numerous examples of applications in which examiners took a strict approach to applying Bilski. But the existence of even one issued claim like the one above is troublesome because it reveals the difficulty associated with applying the vague test against which all process claims now must be evaluated.
UPDATE: A quick glance at the prosecution history for the ‘631 patent shows that the examiner mailed the Notice of Allowance on October 17, 2008 – 13 days before the court announced the Bilski decision. The timing, of course, doesn’t change the impact of the decision on the claim or render it subject to a different test for patentable subject matter. It may, though, explain the absence of a clear tie to a machine, apparatus or transformation – while the patent didn’t issue until January, the administrative gears of the issue process had already been set into motion and, apparently, could not be stopped.
In my mind, this actually raises more questions than it answers. Should the Office be required to evaluate all allowed claims that have yet to issue as patents when an intervening major change in patentability law is announced? What about a minor change? These are, of course, administrative headaches and would be time-consuming and expensive to implement. Should the patent attorney be responsible? Should prosecuting attorneys be required to amend claims or present additional arguments when such an intervening change is implicated? How about when such an intervening change might be implicated?
I wonder if this explains why Chase waited nearly 5 weeks to announce the granting of this patent.
