Interim Guidelines on Examining Statutory Subject Matter

The USPTO has issued a set of interim examination guidelines for determining whether a claim is properly directed to patentable subject matter under 35 U.S.C. ? 101, relevant Supreme Court precedent, and Bilski. The instructions begin with a realization that the area is in flux and that more permanent guidelines will be established once the Supreme Court rules on Bilski v. Kappos. In addition, these are guidelines rather than rules or laws. Thus, an examiner's failure to follow the guidelines is "neither appealable nor petitionable."

Download 101 Memo to Directors | Download 101 Examiner Instructions 8 24 09 | Download FLOWCHARTMORT 8 24 09 | Download FLOWCHARTPROD 8 24 09

The guidelines appear to do a good job of synthesizing the highly confusing area of law into a straightforward algorithm. The problem is that next spring the Supreme Court is almost sure to reject the Federal Circuit's Machine-or-Transformation test. At that point, all of the examiner time and applicant money focusing on this "threshold issue" will have been wasted. I understand that the business of the PTO must continue even in the face of potential policy shifts. However, I would have suggested that examination of Section 101 eligibility be put on a back-burner - especially in light of the fact that most questionable subject matter cases will also fail the tests of obviousness, enablement, and indefiniteness.

The guidelines bear the signature of Drew Hirshfeld, Acting Deputy Commissioner for Patent Examination Policy. The PTO recently posted a notice looking to permanently fill this extremely important position.

70 thoughts on “Interim Guidelines on Examining Statutory Subject Matter

  1. “Blimply…blah…blah…hike the Appalachian Trail…humiliation…blah…blah…trained to”

    Sorry you got the wrong guy.

    But maybe, just maybe, you are giving us all a glimpse of some of the significant parts of what you like to do out in the Eastern woods in your spare time.

    The only thing I can’t figure out is the “trained to” part. Maybe it involves lubricious glass objects.

    Reply
  2. Please correct me if I am wrong, but I have scoured the case law for 101 and no where do I find any controlling legal precedent for the following guideline:

    “The machine should implement the process, and not merely be an object upon which the process operates. ”

    Such a narrow application would effectively eliminate processes for using machines that require a “human operator”.

    I am not even sure Diehr would have received his patent using this guideline.

    These interim guidelines are going to do nothing but cause a litany of litigation, complaints and appeals as no self respecting, “Actual Inventor” I know would ever let the PTO so vagrantly violate the law and deny ones patent rights.

    Reply
  3. MM Wrote:
    ” “If the claim is ancient bullcrap, it would be rejected under 102 or 103, which is irrelevant to patent eligibility.”

    Yes, that is where the Sunners want everything to go, right?”

    Wrong. It is the intent of the United States congress as evidenced from the 1952 Patent Act, to have a wide and open gate for 101, and for 102 and 103 to function for weeding out of inventions that are not new ( novel) and obvious.

    MM Wrote: “And then they’ll complain about how unfair and incompetent and ridiculous the Examiner is for finding the claim obvious or anticipated. ”

    If you are so sure the 102 and 103 mechanism will work to prevent non deserving inventions from receiving patents, what are you whining about?

    MM Wrote: “Take this “example” claim. Why should any claim in that format be eligible for patent protection? ”

    Malcolm, first of all no claim, in and of itself is eligible for patent protection. Actual inventions on the other hand are when represented by an enabling disclosure, written description, drawings, and claims that meet 101, 102, 103, and 112.

    Second and most important, you are not an “Actual Inventor” so don’t insult the profession by pretending to be one.

    Reply
  4. “How sick is our patent system if we are discussing the eligibility of useless garbage like this in 2009?”

    Perhaps you can offer some examples that the Office could use for training purposes, to be used across all arts?

    Reply
  5. “…what difference does it make how the patent is tanked?”

    evidencing the lack of legal training or understanding of one Malcolm Mooney.

    “Something like 42% of allthe apps that are filed!?”

    Malcolm, if you are referring to the 42% Allowance Rate, you are ignorantly grabbing the wrong side of the data set and basing your rather weak argument on a global percentage that simply does not support your position.

    As you are want to say:

    “Same as it ever was.”

    Reply
  6. “If the claim is ancient bullcrap, it would be rejected under 102 or 103, which is irrelevant to patent eligibility.”

    Yes, that is where the Sunners want everything to go, right? And then they’ll complain about how unfair and incompetent and ridiculous the Examiner is for finding the claim obvious or anticipated. Again I ask: other than the fact that a decent 101 test makes crappy patents harder to obtain for certain business people who thrive on such crap, what difference does it make how the patent is tanked?

    Take this “example” claim. Why should any claim in that format be eligible for patent protection? The format being: “A method of evaluating comprising (doing ancient bullcrap) and comparing, using a microprocessor, … to evaluate the success of the search.”

    Do you see it? It’s a method of “evaluating search results” (what?) by doing a bunch of ancient bullcrap and then (finally) “using a computer” to “compare …results …” (wait for it) “to evaluate the success.” The only non-ancient thing in the claim (being generous here) is a processor (still very old) that (surprise!) accomplishes what the preamble promises by (surprise!) carrying out another ancient step and magically “evaluating”. Gee, thanks. Where is the beef?

    “Did you consider that perhaps the example claim was for illustrative purposes?”

    Excactly this sort of garbage is cranked out and filed a hundred times every day. A lot of it issues. Something like 42% of allthe apps that are filed!? And some people think that number is insanely low. It’s not. Not at all.

    Reply
  7. Because there is no “ancient bullcrap” prong in the current test. If the claim is ancient bullcrap, it would be rejected under 102 or 103, which is irrelevant to patent eligibility. Did you consider that perhaps the example claim was for illustrative purposes?

    Reply
  8. “A method of evaluating comprising (doing ancient bullcrap) and comparing, using a microprocessor, … to evaluate the success of the search.”

    How sick is our patent system if we are discussing the eligibility of useless garbage like this in 2009?

    Reply
  9. “Well, if nothing else, I can submit the examiner instructions when I respond today to bogus 101/112 rejections of some software claims.”

    The guidelines are not law. Or even rules. The examiner is free to ignore them at his/her leisure.

    Sorry.

    Reply
  10. Well, if nothing else, I can submit the examiner instructions when I respond today to bogus 101/112 rejections of some software claims.

    Thanks.

    Reply
  11. Quick excerpt from the guidelines for public comment.

    Claim 5. A method of evaluating search results, comprising:
    – sorting the results into groups based on a first characteristic;
    – ranking the results based on a second characteristic; and
    – comparing, using a microprocessor, the ranked results to a predetermined list of desired results to evaluate the success of the search.

    • Is there a particular machine? (M2)
    – YES – under the BRI, the step of comparing requires a particularly programmed microprocessor.

    The claim is eligible (M4).

    Yikes.

    Reply
  12. Someone needs to call in or write in or whatever. The guidelines get a lot right, but it gets some wrong.

    “Particular machine” apparently = “machine” to the guideline writers. This of course missed the small detail that here on planet earth adjectives modify nouns.

    And there was one other minor quibble I had with them but I forgot it on the way back.

    However, the most interesting thing I noticed in the guidelines was the following note:

    Functional/nonfunctional descriptive material (FDM/NFDM) is evaluated for patentable distinction over the prior art.

    LOLOLOLOLOL who’s been saying that for the past half a year?

    Reply
  13. and perhaps there is another reason.

    Located at link to uspto.gov

    In part, “and is requesting public comment on them. The USPTO is issuing the Interim Eligibility Instructions and has begun the process of training examiners on these instructions to reduce the delay in delivering these instructions to examiners, but the USPTO desires the benefit of public comment on the instructions and will revise the guidelines as appropriate based on comments received. To be ensured of consideration, written comments must be received on or before September 28, 2009. Comments should be sent by electronic mail message over the Internet addressed to AB98.Comments@uspto.gov. Comments may also be submitted by facsimile to (571) 273-0125, marked to the attention of Caroline D. Dennison. Although comments may be submitted by mail or facsimile, the USPTO prefers to receive comments via the Internet. Because comments will be made available for public inspection, information that is not desired to be made public, such as an address or phone number, should not be included in the comments.”

    a publice service brought to you by…

    Reply
  14. Maybe my comments above were a bit too rash. Initially, I was shocked. I guess I have come around to see the beneficial light. The interim guidelines may help the Supreme Court understand the process and mentality the PTO is currently going through. As the guidelines are fairly clear, in my opinion, it was not a waste of time.

    Reply
  15. “Dennis/Malcom, where in my claim did I say “capable of?”

    Blimply, you used the term “configured to”. If you think that term is somehow “special” and makes your joke claim distinguishable from mine, then you are even more desperate than I thought. Perhaps you need to take a vacation and hike the Appalachian trail? To satisfy your craving for additional humiliation, assume the specification in my hypothetical defines “capable of” as “trained to.”

    Reply
  16. “My point is, that you are a jacas, and you’re acting like one too.”

    Right. Because boasting on the internet about all the really cool and trail blazing test cases you’re gonna send up to the Federal Circuit, with your oh-so-knowledgeable-SPE’s-backing, is how the truly hip and cool, like you, roll.

    “And you will be burned.”

    Keep googling that case law, 6. The day you actually find some that I can’t shoot down completely with about 5 seconds of analysis is the day I’ll readily admit to being burned. But I’m pretty sure that day will never come. You’re pretty sure of it too. But you keep trying. That’s what I like about you.

    Reply
  17. Steph: I didn’t mean to say that there’s anything less controversial about the EPO’s current “inventive technical problem/soluton” approach when it comes to business methods. That approach subsumes the exclusions into inventive step and therefore inherits the controversial nature of the exclusions.

    What I meant was that ordinary inventive step attacks based simply on whether something would be obvious given the state of the art would often be sufficient to dispose of many of these applications.

    Sorry for the confusion.

    I’d also mention that I think G3/08 may well get rid of (or at least modify) this aspect of current practice since I think it’s based on flawed logic. Specifically, it takes the generally accepted premise that “technicality” is necessary to avoid exclusion and then assumes that “technicality” is also sufficient to avoid exclusion.

    I think it also promotes lazy examination since an examiner just has to say “this feature isn’t technical” and he doesn’t have to worry about showing that it would be obvious. I’ve had several oral proceedings where I’ve finally persuaded the examiner to admit that he was confusing “non-technical” with “well-known” and was therefore avoiding the actual issues. In that respect, I agree that the current practice can often be inequitable.

    Reply
  18. “that performs no steps of the claim”

    Btw, that’s just your assumption, it very well could perform them. In fact, it could be performing them as we speak, but we’ll never know because the applicant didn’t tell us the structure that goes along with his “steps” functional language nonsense.

    Reply
  19. “that performs no steps of the claim,”

    Oh, so now, your claim has steps in it does it? That’s all the admission I needed. You better stick with your “functional language” crp.

    But go ahead, admit for me that your claim fails.

    Now, I’m not going to say one way or another as to whether or not the rejection is proper. All I can tell you is the avenues I would explore were I, hypothetically speaking, the examiner.

    Reply
  20. “Not sure what your point is. ”

    My point is, that you are a jacas, and you’re acting like one too. And you will be burned.

    Reply
  21. Gerontius, can I ask what is less controversial about the introduction of a (inventive but unskilled) ‘notional business person’ in the EPC appraisal of inventive step, where borderline cases are concerned?

    You are eminently correct, in that the issue of excluded or patent-eligible subject matter is still a very difficult area in Europe.

    However, I remain unconvinced that the current EPO approach, particularly where inventive step is concerned, is anything other than an expeditive and inequitable way of conveniently disposing of the glut of (mostly ex-US PCT) ‘software/business method’ applications clogging DG2′s tubes.

    Reply
  22. “A room for cooking comprising:
    a housing;
    a countertop, stove, and utensils inside said housing; and
    a human cooperating with said utensils, wherein said human is capable of
    performing step a,
    performing step b,
    and performing step c.”

    Dennis/Malcom, where in my claim did I say “capable of?”

    Reply
  23. Re the final sentence in the original post: I wish the UK IPO and the European Patent Office (at least at the business method end of the spectrum) could see the patently obvious as well as Patently-O.

    Whether or not you believe the issue of excluded or patent-eligible subject matter is settled in Europe (I personally think G3/08 is unlikely to change anything practically), it is still a very difficult area. Huge amounts of time is spent and numerous dubious decisions are made based on the exclusions when the better understood and less controversial objections of novelty and inventive step could more easily be used to knock a patent stone dead.

    Perhaps the problem is that it is the issue-du-jour and patent offices need to appear to be addressing it.

    Reply
  24. Lulz at 6.

    6, do you really think a rejection of a software claim over a reference showing a general purpose processor, that performs no steps of the claim, would get any further than an appeals conference? You are deluded. Your rejection would be slapped down.

    Reply
  25. “I’ve made it clear, time and again on this very same blog that I cite to the passage containing a rational, not the decision itself. If you refuse to catch on, I can’t make you.”

    BWWWWWAAAAAAHHHHHHHAAAAAAAHHHHHHAAAAAAA!!!!!

    What?

    Like I said, you have absolutely no idea what you’re doing with precedent. It’s like a loaded gun in the hands of a 3 year old. Fortunately, you’ve managed to shoot yourself with it every single time.

    “The person footing the bill for the appeal/conference? That’s who I should think.”

    Oooohhhhhhh!!!!!! We’re all so scared. Some examiner’s googled some inapposite case law and is gonna make a test case out of it. And his SPE’s got his back too!!! We might as well throw in the towel right now.

    BWWWAAAAAAAHHHHHHAAAAAHHHHHAAAAAA!!!!!!!

    “You should consult with your friend that handled IPXL.”

    I worked at the guy’s firm when that decision was handed down. Hey, it wasn’t my claim. Not sure what your point is. Then again, I don’t think you have a point.

    “My background in semiconductors is extremely weak”

    But not as weak as your background in law.

    Reply
  26. “You are claiming a “human” as an element in an apparatus claim, Malcolm?”

    Is there a law against that?

    Of course, said human could be substituted with a robot.

    Reply
  27. As a further addendum to 2 above, does the PO not need to know at least one of the infinite species of these configurations is so that they can search it?

    Reply
  28. “Just because you cannot ‘see’ it, doesn’t mean that the configuration has changed.”

    Is that so? Hmmm, so does the specification describe what these changes are making up this “configuration” or “configuration change” or am I just supposed to take it on faith that some changes occured in their device and that I (and poshita) should know what those changes are so that I (and poshita) can look for them in the prior art and so that I (and phoshita) would know when our configuration has passed into that forbidden realm if the case issues and me and poshita go into the business of making these comps? Is there a strong presumption that some changes took place?

    My background in semiconductors is extremely weak, perhaps you could run me through some of the material science involved in a “configuration change”. Just briefly you know. I would be very much obliged, I can’t find any literature on the subject in google off hand. Perhaps you know of an article, book, or something?

    If I can’t see the changes in configuration, what proof is there that it ever happened? Do we read about it in braille in a darkened room? Is that how you found out about them?

    All trolling you aside,

    1. does a de minimus change in “configuration”, which is actually unintentional, and (usually) completely unknown to the “inventors” (aka hacks), really even count as a change in the “configuration”?

    2. More importantly, does the public not need to know what this configuration is so that they can steer clear of inadvertantly making it? As an addendum to this, does the PO not need to know what this configuration is so that they can search it?

    Reply
  29. “I have never noticed any change in the ‘configuration’ of the structure of the device when a general purpose processor is used to execute some code that it always could execute from the beginning of its existence.”

    Not a strong background in semiconductors?

    Just because you cannot ‘see’ it, doesn’t mean that the configuration has changed.

    The configuration has changed just as surely as when you heat treat a block of inconel to a temperature below melting and quench it. You may not see the changes afterwards — but there are changes.

    Reply
  30. You are claiming a “human” as an element in an apparatus claim, Malcolm?

    Reply
  31. “You think all there is to it is arguing just the opposite of what your opponent is arguing. No matter how silly you sound.”

    Lol wut?

    “Your cite of Ex parte Lyell was simply off base.”

    I’ve made it clear, time and again on this very same blog that I cite to the passage containing a rational, not the decision itself. If you refuse to catch on, I can’t make you.

    “Who cares that your SPE is behind you?”

    The person footing the bill for the appeal/conference? That’s who I should think.

    Other than that, whatev homeslice, I know you need a decision that SPELLS THIS SAME CONCEPT OUT FOR YOU IN UNMISTAKEABLE TERMS AND PERHAPS CAPITAL LETTERS before you’ll decide to get down to business and understand it. Your colleagues aren’t quite as obstinate all the time. They know if they want to make the laughable assertion you’re making it’ll cost their client real $ and decide to do something else.

    You should consult with your friend that handled IPXL. Bwahahahaah…waha..wa….w….. kinda winds down on that token doesn’t it? Oh oh, but that’s not funny is it? Lol@U.

    “6, how about “… and cooperative with a display” ??”

    Seems fine to me. Might still be looking at a 102 though as mentioned previously.

    Reply
  32. “Strange how where the bread and butter lies dictates what is persuasive to different groups of attorneys. Isn’t it JD?”

    IDK. Most of the attorneys I’ve practiced with know how to pick their battles. They don’t waste time arguing points that are clearly unpersuasive, or just plain wrong.

    That’s what you still don’t understand. You have the same simple minded notion of what “being an attorney” means as most of the folks over there. You think all there is to it is arguing just the opposite of what your opponent is arguing. No matter how silly you sound.

    Your cite of Ex parte Lyell was simply off base. Instead of acknowledging that, you go on with your silly, boastful, “Nuh uh, JD, I’m right, and I’ll get a test case and patiently wait for the Federal Circuit to prove me right.”

    You keep kidding yourself that you’re engaging in a debate on equal terms with those more educated and practiced than you. Keep kidding yourself that word searching legal websites and cutting and pasting quotes from the cases that pop up at the top of the search list is the same as studying and practing the law.

    I’ll keep laughing.

    BWWWWWWWWWWAAAAAAAAAAAAAHHHHHHHHHHHHHHHHAAAAAAAAAAAAAAHHHHHHHHHHHHHHHAAAAAAAAAAAAAAAA!!!!!!!!!!!!!!!!!!!

    Reply
  33. “”causing a processor carried by a housing and cooperating with a display ”

    6, how about “… and cooperative with a display” ???

    Reply
  34. “JD argues: ‘but but, they could have claimed something different than what they claimed!’”

    I don’t recall arguing this. Can you point to a specific post of mine?

    “Even though my spe is behind me.”

    I always laugh when you talk about your SPE backin’ you and whatnot and all.

    Too funny.

    Who cares that your SPE is behind you? Is your SPE an attorney? Does your SPE know anything about applying precedent, other than the usual nonsense the PTO “trains” its people?

    “I don’t cite it as being controlling, I cite it as being persuasive.”

    BWWWWAAAAHHHHHHAAAAAAAHHHHHHAAAAAHHHHHHAAAAAAHHHHHAAAAA!!!!!!!!!!!!!

    You’re hilarious.

    “If the applicant isn’t persuaded, by all means, let’s go to the CAFC and create some real controlling law.”

    Your delusions of grandeur are the stuff of legend.

    Your rejection ain’t getting past an appeal conference, let alone to the Federal Circuit.

    “I wouldn’t be rejecting it under 112 2nd. I simply said that it was office policy that it could be done.”

    It’s PTO policy? Really?

    BWWWWAAAAAHHHHHHHHAAAAAAAAAHHHHHHHAAAAAAAA!!!!!!!!!!!!!!!!

    “Don’t believe me? Consult with a court.

    Guys look, I don’t care one bit if you don’t agree with me. I’m telling you how it will end up in court when we get a test case go up. If you don’t beleive me, I’m sufficiently patient to just wait and be shown to be correct.”

    Don’t be so patient, 6. Tell Solicitor Chen that you want to argue your test case personally to J. Rader.

    BWWWWWWAAAAAAAAAAHHHHHHHHHHHHAAAAAAAAAAAAAAAAAHHHHHHHHHHHAAAAAAAAAAAAAAA!!!!!!!!!!!!!!!!!!!!!!!!!!!!

    “This being since I don’t generally think about contributory infringment in my analysis.”

    Hey 6, there’s an idea. Why don’t you reject a claim under 112, 2nd because somebody couldn’t tell if they were contributorily infringing it? I’m sure your SPE would be behind you.

    BWWWWWWWWAAAAAAAAAAAAAAHHHHHHHHHHHHHHHHHHHHHHHAAAAAAAAAAAAAAAAAAAAAAAAHHHHHHHHHHHHHHHHHHHHHHHHHHHHHHHAAAAAAAAAAAAAAAAAAAAAAAAAAAAAAAAAAHHHHHHHHHHHHHHHHHHHHHHHHHHHHHHHHHHHHHHAAAAAAAAAAAAAAAAAAAAAAAAAAAAAAAAAAAAHHHHHHHHHHHHHHHHHHHHHHHHHHHHAAAAAAAAAAAAAAAAAAAAAAAAAAAAAAAAA!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!

    Reply
  35. A room for cooking comprising:
    a housing;
    a countertop, stove, and utensils inside said housing; and
    a human cooperating with said utensils, wherein said human is capable of
    performing step a,
    performing step b,
    and performing step c.

    Reply
  36. “As such, by definition, in order to use the second condition you must have “two types” — the method steps and the particular machine to which the steps apply.”

    I have discussed this in detail and it has nothing to do with the current situation.

    “Claim 2 of Lyell was rejected because the preamble recited “An automatic transmission tool in the form of a workstand and method for using same” — it is clearly attempting to claim both the workstand (i.e., a device) and the method (i.e., using the transmission toold).”

    I agree. That is why I’m not “applying” Lyell. I’m citing a rational in Lyell. If the applicant doesn’t agree that the rational holds true, then we can go to the board.

    “The claim being discussed should have been written:”

    Glad you agree with me. I’m not sure why you kept on bsing about stuff before agreeing with me.

    They should also do away with the “cooperating” it will still kill the claim. Jebus, just say “connected to” or something. It isn’t rocket science to get rid of method steps. But that is neither here nor there. The real issue is, as you surmise, putting in the “configuration”.

    As an aside, if he claimed the device “properly” according to your proposed amendment, I wonder what happens if I get the applicant to admit for the record that his method steps can be performed on a general purpose processor such as the one in my ref. 102 102 102?

    You know, I’ve built processors from scratch, so I have a pretty decent understanding of what is going on inside of one. And in my years of working with them, I have never noticed any change in the “configuration” of the structure of the device when a general purpose processor is used to execute some code that it always could execute from the beginning of its existence.

    I’m not saying that there isn’t one, but I’ve never noticed it.

    I notice your “base” claim lacks the word lacks the word at issue “cooperating”. Put that in, and I’ll take issue with your base claim too.

    Reply
  37. “There is nothing ‘wrong’ with it. It simply makes a method step. What is ‘wrong’ is that the claim mixes claim types. That’s a no no. End of story.”

    Not terribly bright, are you 6?

    Under Bilski, you need a transformation and or being tied to a particular apparatus. As such, by definition, in order to use the second condition you must have “two types” — the method steps and the particular machine to which the steps apply.

    Claim 2 of Lyell was rejected because the preamble recited “An automatic transmission tool in the form of a workstand and method for using same” — it is clearly attempting to claim both the workstand (i.e., a device) and the method (i.e., using the transmission toold).

    Find a fact pattern like that and you can fall all over yourself and apply Lyell. However, absent that particular fact pattern, good f’ing luck.

    The claim being discussed should have been written:
    “An electronic device comprising:
    a housing;
    a display carried by said housing; and
    a processor carried by said housing and cooperating with said display, said processor configured to:
    perform software step a,
    perform software step b, and
    perform software step c.”

    As such, the processor doesn’t need to be actually performing the steps to infringe the claim.

    Consider the following claim:
    a base,
    a pivot connected to the base,
    a lever connected to and pivotable about the pivot,
    a biasing member [e.g., a spring] connected to the base and the lever and configured to pivot the lever from a first position to a second position.

    The biasing member doesn’t actually have to be pivoting the lever … it only has to be configured to do so.

    Reply
  38. “The meets and bounds of the claim are understood”

    I never said they were not, and it doesn’t matter. I wouldn’t be rejecting it under 112 2nd. I simply said that it was office policy that it could be done.

    IPXL wasn’t indefinite by any stretch of the imagination, yet 112 2nd applied there according to the court. Look at claim 1. It is obviously a apparatus claim and the dep is too.

    101 for me, or 102/103 as above. Take your pick.

    “And there is nothing wrong with the term “cooperating”. ”

    There is nothing “wrong” with it. It simply makes a method step. What is “wrong” is that the claim mixes claim types. That’s a no no. End of story.

    Don’t believe me? Consult with a court.

    Guys look, I don’t care one bit if you don’t agree with me. I’m telling you how it will end up in court when we get a test case go up. If you don’t beleive me, I’m sufficiently patient to just wait and be shown to be correct.

    CooperatING is a method step any way you slice it. And no court is going to ignore that just so that your alleged “functional” bs which comes far after the step of cooperating, carries the day. It just isn’t going to happen.

    Just as an aside. Let’s do a little thought experiment.

    You are manufacturer A who makes parts for User A.

    You sell User A:
    “An electronic device comprising:
    a housing;
    a display carried by said housing; and
    a processor carried by said housing”.

    The User A then goes home and performs a method comprising:
    “causing a processor carried by a housing and cooperating with a display to
    software step a,
    software step b, and
    software step c.”

    Then what happens? I’ll tell you what happens. In the words of the court in IPXL: as a result of the combination of two separate statutory classes of invention, a manufacturer or seller of the claimed apparatus would not know from the claim whether it might also be liable for contributory infringement because a buyer or user of the apparatus later performs the claimed method of using the apparatus. Thus, such a claim “is not sufficiently precise to provide competitors with an accurate determination of the ‘metes and bounds’ of protection involved””

    Under that grounds, perhaps 112 2nd would be appropriate, however I still don’t prefer that method. This being since I don’t generally think about contributory infringment in my analysis.

    Reply
  39. 6, Your assessment that the claim would be “101′ed AND 112 2nd’ed. Mixed claim type for the lose.” is wrong (again). JD (bog help me :) is correct.

    There is nothing wrong with the claim along the lines that you are arguing. Definitely NOT a 101! Nor is it a 112, second issue. The meets and bounds of the claim are understood. The only question may be how much weight the software steps would be given with respect to the prior art. Probably given full weight, but that looks to be the only thing that needs to be determined with a closer look.

    And there is nothing wrong with the term “cooperating”. It may well be a broad term, but breadth is not a 101 or a 112 issue. It just makes applying prior art a little easier.

    MVS

    Reply
  40. JD argues: “but but, they could have claimed something different than what they claimed!”

    That’s fine JD, but so far as I know, they did not recite that two structures cooperate to perform a particular function. They recited cooperatING, and no function, but simply some method steps following the cooperating.

    However, even if they had made a claim like you suppose they could, we’d have to see about this newly claimed subject matter. Reciting that two structures cooperate is probably just as much a method step as cooperating. But, I will reserve my judgment for now.

    And btw, I know perfectly well what you’re saying about Lyell, and the claim therein. And I understand your point about the case. That doesn’t change how method claims, product claims, and etc. are to distinguish themselves from the prior art, and Lyell is merely indicative of that. I don’t cite it as being controlling, I cite it as being persuasive. If the applicant isn’t persuaded, by all means, let’s go to the CAFC and create some real controlling law.

    I look forward to it. In fact, I would like nothing better than to get an interesting appeal, it would make my day. He ck, that would make my month.

    Funny thing is though, about 5 attorneys which I have personally discussed this very issue with were all persuaded. This being a given anecdotal fact, all indications are that I will never get the chance to make this precedent :( Even though my spe is behind me. Same thing with my Beauregard claim, that case went abandoned not long ago :( Truth of the matter is, my art is so boring with respect to the really interesting points of the law. We have attorneys who have their heads firmly attached to their shoulders rather than these airheads constantly railing against the system, and they are very persuadable with respect to these matters.

    But then again, their bread and butter doesn’t rely on bs like that, so one would expect such to be the case wouldn’t one?

    And now don’t get me wrong, they’ll still bs on forever about a 103 or something of that sort.

    Funny enough, their bread and butter does rely on that.

    Strange how where the bread and butter lies dictates what is persuasive to different groups of attorneys. Isn’t it JD?

    “If you cited Ex parte Lyell against that claim you posted, you’d be shot down by every first year associate on up.”

    I haven’t been in cases which are analogous to the instant example case so far …

    Reply
  41. “Unless you can correct me, it is my belief that ‘cooperating’ and what comes after it is a method step.”

    Reciting, in an apparatus claim, that two structures “cooperate” to perform a particular function is not the recitation of a method in an appartus claim, as was the case in Ex parte Lyell.

    This is so elemental as not to require citation of authorities.

    Reply
  42. Here’s the claim at issue in Ex parte Lyell:

    2. An automatic transmission tool in the form of a workstand and method for using same comprising:

    a support means,

    and [sic] internally splined sleeve affixed upright to said support means,

    a threaded adjustment bolt threadably engaged through a hole in the bottom of said support means and projecting upward through said support frame into said sleeve,

    and further comprising the steps of

    1. positioning the output end of an automatic transmission onto said upright sleeve,

    2. removing the internal components of said automatic transmission from the casing of said transmission,

    3. repairing and replacing said internal components back into said casing, and

    4. adjusting said internal components for fit and interference by means of adjusting said upwardly projecting adjustment bolt.

    Not even close to the example claim you provided above.

    I’ve explained to you before that citing case law is a little more involved than typing a few words into altlaw.org or whatever site you like to visit, cutting and pasting some dicta, and declaring that the case is dispositive.

    If you cited Ex parte Lyell against that claim you posted, you’d be shot down by every first year associate on up.

    You cite precedent just like everybody else over there at the PTO.

    Very badly.

    And without a clue as to what you’re doing.

    You do continue to amuse though.

    At least you got that going for you.

    Reply
  43. link to patenthawk.com

    Unless you can correct me, it is my belief that “cooperating” and what comes after it is a method step. This is a product claim. Method steps do not belong in a product claim unless it is a product by process claim.

    Personally I prefer using 101, or sometimes 102/103 in conjunction with:

    “A method or process … is an act or a series of acts and from the standpoint of patentability must distinguish over the prior art in terms of steps, whereas a claim drawn to apparatus (or product) must distinguish in terms of structure. This is so elemental as not to require citation of authorities.”

    from Ex parte Lyell (link to ipmall.info) to effectively not allow them to utilize the limitations in question to distinguish over a piece of prior art showing:

    An electronic device comprising:
    a housing;
    a display carried by said housing; and
    a processor carried by said housing.

    But the official take on the issue from the PTO is that 101 or 112 2nd can be used. Personally I only use 112 2nd if I genuinely cannot tell which stat category is intended and that has only happened once.

    Reply
  44. 6, what’s wrong with “cooperating?” And what’s the basis for your 112 2nd?

    The above is a fairly typical way to draft a software claim.

    Reply
  45. “A method comprising:
    software step a, using a processor;
    software step b, using the processor; and
    displaying, on a display, a result of step b”

    I might let that one go under Bilski (though I doubt it), but who are you going to sue with this claim? The buyer? The manufacturer of a CD? The programmer?

    Reply
  46. “An electronic device comprising:
    a housing;
    a display carried by said housing; and
    a processor carried by said housing and cooperating with said display for
    software step a,
    software step b, and
    software step c.”

    101′ed AND 112 2nd’ed. Mixed claim type for the lose. Cooperating will be the death of you.

    Reply
  47. Bill, for the benefit of at least 6 people, the controlling decision is Allapat.

    Reply
  48. Bill Skeeh

    I think a computer programmed to carry out a particular task is a “particular” computer. At least that’s what page 6, lines 8-11 suggest, and that’s consistent with WMS Gaming.

    Reply
  49. I wonder about: “Since Guidelines are not rules or laws, an examiner’s failure to follow the Guidelines is neither appealable nor petitionable.” – because is it not pretty fundamental that federal agencies are required to follow their own rules? Not enforceable by administratve law judges and federal courts? Supreme Court cases on the point:

    Arizona Grocery Co. v. Atchison, Topeka & Sante Fe Ry., 284 U.S. 370, 52 S.Ct. 183, 76 L.Ed. 348 (1932)

    United States v. Nixon, 418 U.S. 683, 94 S.Ct. 3090, 41 L.Ed.2d 1039 (1974)

    Is it not pretty doubtful that the PTO will get some kind of king’s-X against following its own guidelines – just by SAYING that they are not rules?

    Reply
  50. Bill Skeeh,

    I’m speaking from my experience in the trenches with a bunch of software apps. I have received many 101′s. Every single one has been overcome by amending the claims as above, including method claims. Pontificate about the law all you want; I’m just telling the pro se guy how to overcome that 101 rejection.
    :)

    Reply
  51. Windy City, at 3pm yesterday. That Examiner, the one who phoned you to offer “computer-implemented” to overcome the 101 point, I suspect has been peeping into the EPO file wrapper (or the EPO’s MPEP). At the EPO, “computer-implemented” would give the claimed method enough “technical character” to get over Art 52, and move on to novelty, obviousness and enablement issues. Why not also in the USPTO? Why is Bilski at SCOTUS? Because the obviousness test at the USPTO isn’t (yet) the brutal filter that it is at the EPO.

    Reply
  52. “If you have a software claim, amend it to read something like:

    An electronic device comprising:”

    It would probably make more sense to change it to a computer-readable medium storing executable code for performing those steps.

    I’m not so sure about “using a processor” being sufficient to tie the method claim to a particular machine since it seems like the jury is still out on whether a general purpose computer is a particular machine, but if it is sufficient, then you only have to tie one of those steps, not all of them.

    Reply
  53. Malcolm:”I don’t see how issuing patents on methods of “defining” abstract concepts by measuring a property and sticking the number into an algorithm promotes the progress of the useful arts.”

    I don’t either.

    Reply
  54. Calistus, despite what MM and the other stooges around here will tell you, all you really need to do to get past 90% of examiners is to recite a processor.

    If you have a software claim, amend it to read something like:

    An electronic device comprising:
    a housing;
    a display carried by said housing; and
    a processor carried by said housing and cooperating with said display for
    software step a,
    software step b, and
    software step c.

    If you have a method claim, just insert processor and display at the appropriate places. For example…

    A method comprising:
    software step a, using a processor;
    software step b, using the processor; and
    displaying, on a display, a result of step b.

    Seriously. Despite all the hoopla on this blog, that’s, for the most part, all it takes.

    Reply
  55. I had an Examiner call me the other day, and he offered an Examiner’s Amendment for an application. He stated that the Examiner’s Amendment would make the method claims of the application allowable by overcoming the 101 rejection he was going to issue. He merely amended the preamble from “the method comprising the steps of:” to “the method comprising the computer-implemented steps of:”

    I found it somewhat strange. Wow, that was easy. Of course, I don’t think many Examiners would find such a phrase sufficient by itself to overcome 101.

    Reply
  56. “The dude …. came up with a flow-chart for determining statutory subject matter after Bilski.”

    The dude should have filed for a patent.

    Would the PTO’s method for invalidating claims qualify as patentable subject matter?

    Reply
  57. Mark: “I don’t see how the machine or transformation test does anything to promote the progress of the useful arts.”

    I don’t see how issuing patents on methods of “defining” abstract concepts by measuring a property and sticking the number into an algorithm promotes the progress of the useful arts.

    Veeva lah diff rents.

    Reply
  58. Calistus — file a continuation, pay your publication fee, file a petition to suspend examination, and sit on it for 2 years while this whole bubble of putrid air works its way through the judicial gastrointestinal system.

    If you file an RCE, you’ll just have to file another one to stay alive.

    Bilski will be sent back to CAFC. We won’t have an answer for years.

    Reply
  59. ” It seems to me there may be quite a number of these. Is there a procedure in place to handle this.”

    Yes, it is called RCE. Or you can appeal. If you’re pro se and you don’t think you know what you are doing, and if this is the last remaining rejection, then I recommend the RCE. If you think you know what you are doing, and if you truly believe the claim is statutory, then appeal.

    Reply
  60. Calistus – I would recommend that you hire a patent attorney to advise you. During the interim. If you believe that the Supreme Court decision will help your cause, you will need to make sure that the patent is not abandoned before that decision is handed down (likely May 2010). This may require that you file an RCE or appeal.

    Once the decision is handed down, you will need to file an additional response explaining how your claims are patentable under the new decision.

    Reply
  61. I’m an inventor and have a final Bilski rejection against a one of my software patents. If I do nothing and then the SC changes Bilski such that the grounds for the rejection no longer exist, what happens to the rejected patent? It seems to me there may be quite a number of these. Is there a procedure in place to handle this.

    Reply
  62. Ambitious Prosecutor: For programs claimed per se, you would follow the “no” path from the very first block. This is explained in the “memo to examiners” on page 2.

    Reply
  63. I can’t help but be super-critical about this. Is the guy that wrote the guidelines leaving? Is that’s why they’ve posted the notice to fill the position? Dennis, why is this position extremely important? I don’t think the article mentioned this, but all examiners are getting trained on this. That’s a ton of billable time that can be better used elsewhere. It’s like the training for the claims and continuation rules, which ended up being a waste. What is the purpose of all this?

    Reply
  64. The tragedy here is the enormous amount of wasted effort that is going to go into patent drafting and prosecution. I don’t see how the machine or transformation test does anything to promote the progress of the useful arts.

    Reply
  65. Waste of time. They wait how long to put this stuff out, when the Supreme Court decision is only how long away?

    Reply
  66. Doesn’t the first graph need like a whole other prong for software/nonfunctional descriptive material before pronouncing the claim statutory?

    Otherwise, I might try to throw this at the CRM people.

    Reply
  67. Not, moving the boxes around doesn’t make that big of a difference.

    I like the office’s little box show.

    Reply
  68. The dude trying to patent storyline patents came up with a flow-chart for determining statutory subject matter after Bilski. It’s at page 101 of the appeal brief in 10/722,473.

    It looks nothing like these.

    Reply

Leave a Reply

Your email address will not be published. Required fields are marked *

You may use these HTML tags and attributes: <a href="" title=""> <abbr title=""> <acronym title=""> <b> <blockquote cite=""> <cite> <code> <del datetime=""> <em> <i> <q cite=""> <strike> <strong>