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Limitations of field-of-use limitation

In Ex Parte Gutta (Appeal 2008-3000, decided January 15, 2009), the BPAI found that claims 1 and 3-13 failed the machine-or-transformation test.

Recall that the machine-or-transformation test has two prongs.  The first prong involves checking whether the process claim involves use of a specific machine and whether the use of the machine imposes meaningful limits on the scope of the claims.

In claim 1 of the application on appeal, the BPAI found that the only features that allude to use of a machine are:

  • "a computerized method performed by a data processor" in the preamble of the claim
  • "displaying the recommendation score to the target user" in the final step of the claim

The BPAI found that the first feature does not impose meaningful limits on the scope of the claims.  The BPAI dismisses it as a field-of-use limitation that "adds nothing more than a general purpose computer associated with the steps of the process in an unspecified manner."

The BPAI found that the second feature is a post-solution activity that is insufficient to impart patentability to the claim.  The BPAI notes that the step of "displaying" is not restricted to any particular structure.  This, of course, begs the question: if "displaying" is restricted to a particular structure, would this constitute a significant post-solution activity that would render the claim patent-eligible under 35 USC 101?  On further thoughts, can the particular structure be any general-purpose display?

The second prong of the machine-or-transformation test involves checking whether the process claim transforms an article to a different state or thing and whether the transformation imposes meaningful limits on the scope of the claim.

The BPAI also found that claim 1 failed the second prong of the test.  The BPAI noted that the data in claim 1 (i.e., information about user selection histories) does not represent physical and tangible objects.