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Ex Parte Arnoldy,Appeal 2009-01008 (BPAI 2011). Judge Fetting.

Posted Tuesday, January 11, 2011 by Jim Ruttler

The Board affirmed the non-statutory subject matter rejections of the claims, which was the only issue on appeal. The independent claim included method steps directed toward a method for providing ancestory information. There was no language toward a computer readable medium or processor; however, the preamble did include the word ‘system’.

In sustaining the rejections under Section 101, the Board stated

“The claims neither refer to a specific machine by reciting structural limitations to any apparatus, nor do they recite any specific operations that would cause a machine to be the mechanism to identify, associate, or distribute information. Indeed to simply identify any information requires no machine, only the conscious thought of the one controlling the operation. Absent any specific structural limitations on how one acts to perform these steps, these claims recite no more than the abstract concept of identifying information and distributing findings as a result. As in Bilski, a patent including these claims would allow the Appellant to pre-empt the use of this approach in all fields, and would effectively grant a monopoly over an abstract idea.”

This statement is interesting because the Supreme Court in Bilski held that the machine or transformation test is not the test for patentability. Here the Board appears to be indicating that the machine or transformation test remains the test for patentability.

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