[Discuss] FYI - a purely software embodiment is not patent eligible

[Hsuan-Yeh Chang]

1.  In a recent administrative decision, the US patent office held that a
"purely software embodiment" is not patent eligible.

Quote:
"The clear import of this discussion is that the invention can exist solely
as software.  Reciting descriptive material per se (e.g., computer
programs) is nonstatutory. See In re Warmerdam, 33 F.3d 1354, 1360-61 (Fed.
Cir. 1994). Therefore, we agree with the Examiner (Ans. 4, 17) that claim 1
encompasses a purely software embodiment and find that claim 1, as a whole,
is directed to non-statutory subject matter under § 101."  Ex Parte Cohen,
2011 WL 6012432 (BPAI November 29, 2011) at 5.

2.  On the flip side, a "web based system" is patent eligible.

Quote:
"We are persuaded by Appellants' argument, for much the same reasons as to
the web-based system, set forth at claim 1.  In the context of these two
method claims, we find that by providing a web-based system or providing,
on a web-based system, the methods are tied to a particular machine of the
specially-programmed computer.  As such, we further find that the computer
is recited in the claim so inextricably connected to a discussion board and
the associated functions which occur by claim recitation on it so as not to
be an abstraction.  See Bilski v. Kappos, 130 S.Ct. 3218, 3227 (June 2010).
 We therefore find that claims 6 and 11 recite eligible subject matter, and
reverse the rejection of these claims under
Section 101."  Ex Parte Vogel, 2011 WL 6012447 (BPAI November 21, 2011) at
7 and 8.

3.
http://www.patentlyo.com/patent/2011/12/recent-patentable-subject-matter-decisions-at-the-bpai.html