Is “Software Per Se” Not Patent-Eligible?

A recent decision by the Patent Trial and Appeal Board (PTAB) has sustained an Examiner’s rejection under 35 U.S.C. § 101 with the sole explanation that the rejected claim was “drawn to software per se.In re Piepienbrink et al., Appeal 2013-000045, Application 11/963,923 (Sept. 15, 2015).  The independent claims at issue were “directed to communications networks and a unified storefront.”

Here is the extent of the PTAB’s analysis:

The Examiner has rejected claims 1–12 under 35 U.S.C. § 101 as being directed to software per se (Ans. 5). In contrast, the Appellants have argued that this rejection is improper (Appeal Br. 10, Reply Br. 2).

We agree with the Examiner. Here, the elements of claim 1 for example, are drawn to an “asset database,” “search engine,” “recommendation engine,” and “advertisement module.” Here, the cited database, engines, and modules in the claim can be drawn to software per se. The rejection of claim 1–12 is sustained.

I have seen examiners reject claims based on the allegation that they were drawn to “software per se.”  I have never known what this meant, and I have never gotten so far with such a rejection as to appeal it.  Certainly, no court has ever adopted a rule that “software per se,” whatever falls within that category, is not patent-eligible.  In Bilski and Alice the U.S. Supreme court twice refused to institute a rule that business methods we per se not patent-eligible — a position that a minority of the Court would have taken.

Interestingly, the PTAB in this case refused to sustain the Section 101 rejection of another set of claims because the examiner had “applied essentially only the machine or transformation test to these claims.”  The Supreme Court in Bilski, the PTAB explained, made clear “that a patent claim’s failure to satisfy the machine-or transformation test is not dispositive of the § 101 inquiry.”  Because “there has been insufficient analysis of the claim language to establish a prima facie case,” the rejection could not be sustained.

One might have thought that the examiner had likewise not stated a prima facie rejection by alleging no more than that claims were drawn to “software per se.”  I can read this opinion only as standing for the proposition that patent-eligibility law remains unpredictable, and highly dependent on individual adjudicators (e.g., particular PTAB panels).

Incidentally, the PTAB did sustain the rejection of all claims on prior art grounds.  Thus, perhaps one explanation for this case is that the panel was not inclined to give much thought or consideration to the Section 101 rejections — a shame, given the confusion that this opinion sows.