Patent Office Rejects Key HP Invention on Appeal

MARK TERRY, ESQ.

In a decision involving a Hewlett-Packard software invention, the Board of Patent Appeals and Interferences reversed the examiner’s 35 U.S.C. § 103(a) obviousness rejection but entered a new rejection under 35 U.S.C. § 101.

The application concerned software for credentialed authorization requests. Although HP succeeded on obviousness, the Board concluded that several claims were directed to software abstractions, logical constructs, or signal-based computer-readable media rather than statutory subject matter.

The Board relied on precedent holding that a signal is not one of the statutory categories of patentable subject matter and that claims reciting only software, logic, or data structures may be nonstatutory abstractions.

The decision provides two important practice points. First, software claims should be drafted to clearly recite statutory subject matter and a concrete tie to a machine or other qualifying structure. Second, the Board may enter a new ground of rejection even when the examiner did not previously raise it.

Before taking software claims to appeal, applicants should therefore review the claims and specification for any unresolved eligibility issue that could trigger a new Section 101 rejection.