"Software per se" as New post-Bilski Ground of Rejection under 35 U.S.C §101

On 7 July 2010 the US Board of Patent Appeals and Interferences (BPAI) has decided its first decision after the Supreme Court's opinion on Bilski v. Kappos (see earlier posting here or here). In the the case ex parte Proudler (Hewlett Packard) the BPAI rejected all of the pending claims under 35 U.S.C. §101 as a new Bilski-related ground of rejection and remanded the case to the Examiner. The application relates to secure computing and the claims (two methods, computer readable medium, computer apparatus) teach applying individualized security rules to data items. Claim 1 reads: A method of controlling processing of data in a computer apparatus, wherein the data comprises a plurality of usage rules for a plurality of data items stored by said computer apparatus, and comprising: - applying individualised usage rules to each of the data items based on a measurement of integrity of a computing entity to which the data items are to be made available, said data items being logically grouped together as a set of data items, and - instantiating the set of data items at the computing entity depending upon the integrity of the computing entity and the usage rule applicable to each data item in said set. The Board of Appeals found that the claimed invention is directed to software per se, abstract ideas, abstract concepts, and the like, including data per se, data items, data structures, usage rules, and the abstract intellectual processes associating them within the claims on appeal. [...] The manner in which the so-called 'computer apparatus' of the preamble of independent claim 50 is recited in the body of this claim is characterized as directly reciting in its two clauses 'programming for' achieving a certain abstract functionality. Thus, no true hardware structure is recited. This new rejection based on Bilski's abstract idea notion may be seen as a "software per se" rejection that will cetainly remind European patent practitioners of Art. 52 (3) EPC, which defines that programs for computers "as such" are excluded from patentability. Atlanta patent attorney Karen G Hazzah explained on her All Things Pros blog that the Board seemed to rely on two statements in the specification. One was the abstract, which restated the method claim and mentioned a "computing entity". Another statement in the specification said that "A computing entity, either hardware or software, is often called a 'node' and this term will appear hereinafter". As to claim 1, the Board used that reasoning to find that it was directed to an abstract idea, since it recited "computing entity" in the body. Ms Hazzah had two interesting comments on ex parte Proudler: Firstly, the Board did not use the machine-or-transformation test but exclusively relied on the notion of "abstract ideas", since "no true hardware structure was required", whic…