In re Comiskey (Fed. Cir. 2007); and
In re Nuijten (Fed. Cir. 2007)
- Comiskey’s patent application claims a method of arbitrating that does not necessarily require the use of any ‘technology.’
- Nuijten’s patent application claims a signal containing a ‘watermark’ without being tied to a specific type of signal or any technology.
Both applications have been denied by the Federal Circuit under 35 U.S.C. Section 101 for their failure to claim patentable subject matter.
The scope of patentable subject matter is defined by Section 101 as any “new and useful process, machine, manufacture, or composition of matter.” Any patent claim must fall within at least one of these categories. Further limiting these categories is our precedential history that not every new and useful process constitutes patentable subject matter. See, for example, Flook & Benson. In particular, the Supreme Court has noted that a process claim reciting an algorithm must either be (1) tied to a machine or (2) transformative of some composition of matter or device. Flook & Diehr.
Under these precedents, a claim that includes a mental process may be patentable — so long as it is otherwise tied to ‘reality.’
Comiskey: The Comiskey method of claim 1 admittedly does not require a machine, but it does require interaction with a ‘document.’ The reference to a document, however, was not enough to allow the “mental process” claim to be treated as legitimate.
“Thus, like the claims that the Supreme Court found unpatentable in Benson and Flook and the claims found unpatentable in our own cases, Comiskey’s independent claims 1 and 32 seek to patent the use of human intelligence in and of itself. Like the efforts to patent “a novel way of conducting auctions” which Schrader found to be directed to an abstract idea itself rather than a statutory category, Comiskey’s independent claims 1 and 32 describe an allegedly novel way of requiring and conducting arbitration and are unpatentable.”
Some of Comiskey’s claims arguably require a computer to operate through “modules.” That claim construction transforms those claims to be patentable subject matter. This means that software remains patentable subject matter if a computer limitation is a proper part of the claim.
Section 101 is Safe: Comiskey appear to reinstate something akin to the USPTO’s ‘technological arts’ requirement that had been eliminated by the Lundgren decision. For Comiskey, recitation of a microprocessor as a limitation of the claims was sufficient to overcome the patentable subject matter issue. Notably, this is a rule of formality that, in most instances, can be followed without substantively reducing claim scope. Under Comiskey, there is no requirement that the technical link be something novel or non-obvious.
Section 103 is Lost: Although the question of patentable subject matter does not require a determination of nonobviousness, the reverse is not true. Nonobviousness may now require an input from the patentable subject matter stage. The most interesting lines of Comiskey are as follows:
“The routine addition of modern electronics to an otherwise unpatentable invention typically creates a prima facie case of obviousness. Moreover, there is no pertinent evidence of secondary considerations because the only evidence offered is of long-felt need for the unpatentable mental process itself, not long-felt need for the combination of the mental process and a modern communication device or computer.”
The implicit holdings here: (1) evidence of secondary considerations do not apply to portions of an invention that are not considered “patentable subject matter;” and (2) during nonobviousness analysis, any portion of an invention that constitutes nonstatutory subject matter will be considered de facto obvious.
Nuijten: The Nuijten court bit off a bit more — finding that a signal is not patentable even if tied to a transitory form (such as a radio broadcast or light pulses in a fiber optic cable). The problem – the court could not fit a ‘signal’ into any of the four categories:
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Process: Process is defined in Section 100 as a “Process, Art, or Method.” The ‘art’ term appears on its face different than a typically process — especially based on the constitutional statement of “useful arts.” However, the CAFC refused to expand the meaning of process to include items that do not require an action. Thus, a signal is not a process.
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Machine: The Supreme Court has defined a machine as “a concrete thing, consisting of parts, or of certain devices and combination of devices.” Burr (1863). Under this definition, a signal is not a machine.
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Manufacture: The court limited a manufacture to an “article” produced by man. According to the court, an ‘article’ is not transient and cannot exist in a vacuum — both qualities of a signal. Thus, a signal is not a manufacture.
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Composition of Matter: A transient electric signal is not a “chemical union, nor a gas, fluid, powder, or solid.” Therefore, a signal is not a composition of matter.
Failing to fit within a predefined category, the only conclusion is that a signal is not a patentable subject matter.
Rules of Practice:
- Gangrene Treatment: In the political world of the courts, this case might be seen as the CAFC’s gangrene treatment — where the Supreme Court is the disease and patent law jurisprudence is the patient. Several toes have already been lost, and the CAFC is cutting off a foot to prevent the disease from spreading any further.
- Morse Code: One important statutory subject matter case is that of O’Reilly v. Morse (1853) – invoving the patenting of Morse code. In that case, the Supreme Court invalidated some claims as overbroad, but found that Morse’s claim to a “system of signals” to be patentable as an ‘art.’ The CAFC, of course, does not overrule Morse, nor does it adequately explain how Morse’s patent would fit within our modern conception of the four categories.
Mark, that’s official policy at the PTO, at least until Bilski comes out. See the memo to this effect at link to uspto.gov .
I’ve received numerous new rejections on this ground. In most cases I’ve felt that it was relatively harmless to amend around this.
I thought I’d give a short Comiskey update.
The examiners in 705 as well as the BPAI seem to have taken Comiskey to heart. I found about 20 appeals where the board added a new 101 rejection because a method claim was not “tied to a particular machine”. I found only one case where the board cited Comiskey to illustrate what it meant by “particular machine”. That was Ex parte Wasynczuk /media/docs/2008/07/fd081496.pdf The board held that because the claim recited one portion of a calculation being done on one computer and another portion of a calculation being done on another computer, that that was a “particular” machine.
If anyone come come up with other examples, it would be appreciated.
AgentG:
I do believe there is novelty in software, but finding the novelty can be difficult. Unfortunately, the examples you cite are ones that I am quite familiar with. We were doing 3D earth modelling in the early 1980’s, in Fortran. Was that patentable? Not in and of itself, because 3D earth models have existed for centuries. Yes, they were hardware models. The increased power of computer hardware has enabled 3D modelling to extend to the entire planet, but the fundamental process has changed little.
As for networking, people have theorized regarding networks for at least decades. One of the earliest versions of networking I can cite that does not involve a computer, but can readily be adapted to a computer, is the Ghost-to-Ghost network described in “The Three Investigators” mystery series. When you read about how the Ghost-to-Ghost network works, you suddenly realize that it describes the basis for the internet. Scary and prescient.
Last comment and I am out. Power in and of itself is not patentable. If I have a model T, and upscale that to an F-350 without changing basic technology, the F-350 is not patentable. THIS APPLIES TO COMPUTERS. Increases in power are not patentable if you are using the same base technology to increase power. Give me a new technique or new hardware and I will give you a patent.
Lonnie
Agent G,
To those who are scientifically illiterate and technologically uncurious, everything is “obvious”. You walk into a store and behold: there it is. Inventors don’t provide. The market provides.
[/sarcasm]
Lonnie,
Thanks for your answer. However, you appear to be stuck in the hardware paradigm for technology, which many are.
My point was that with software and networking 1+1=3.5, so its not just automating or increasing efficiency, but introducing an entire new set of internetworked results. That is what software often does. I am not saying every piece of software does this, but there are applications that simply cannot be compared to anything prior, by virtue of speed and connectivity, for example.
In another dimension, storage capacity, we will start seeing applications that will move the goalposts once again for what is novel and obvious. For example, maps have been known for some time. Thus, you could argue that electronic maps on the Internet are an obvious extension. But you could not argue that modeling the entire surface of the earth in 3D and making that rendering accessible to anyone should not be patentable, per se. Another example is providing weather radar in real-time along with the map. I mean, these are applications that are simply not trivial and not obvious.
Agent G:
Sorry I did not post an answer sooner, but here is the answer to the question you asked back on the 21st, I think.
You asked why computer automation of the process that Ann is doing by is not patentable, or whether it was, and support my answer.
Okay, let’s say for the sake of argument that Ann has always made cuneiform writing in clay tablets to document her customer information. Now she adopts pencils, which have been invented and used in other applications, and paper, also known, to do the same thing. She is now faster and more efficient. Is the new “method” patentable?
Now Ann adopts a pen, which is being used elsewhere, and applies that to paper. Is that patentable?
We now have typewriters, which have been used for creating various documents, but not documenting customer information. Ann is the first to recognize the efficiency of adapting the typewriter to document customer information. Is this patentable?
I could carry this example on ad infinitum. In each case, Ann did not invent the underlying technology, all she did was recognize the OBVIOUS extension of that technology to her situation. Why would Ann’s leap to computer technology, which is widely known and practiced, be novel. It is not.
When Ann develops a software that does something that no one has ever done before, it should be patentable. But to do something faster without technological advancement is an obvious extension of known technology.
Malcolm wrote:
>Stevens statements in Diehr don’t phase me. There are a >number of arguments that software per se should be >unpatentable and they are good arguments, IMHO.
Well, I think if you took the time to try and make those “good arguments” you would realize, well, they really aren’t so good. And, I think if you took the time to examine some of the findings of fact those arguments make you would realize–well, they really aren’t very good findings of fact.
A bit like the Supreme Court in KSR proclaiming what size of advancement should be eligible for a patent, which if you think about it was a finding of fact based on —no facts.
Malcom admit it . . . you are a content provider’s dream. Well buddy let me let you in on a little secret. Copyright law will yield to technological change. Technology has always won in society. Monopolies by fiat are only short lived. The Copyright monopoly by fiat has already ended.
Peanut I must say the exscrement you spew is revolting. The business class abhors change. Christ almighty is all people started walking with a limp in the U.S. you would watch stock market tank. I mean if the day looks funny, the mark reacts. The market cannot stand uncertainty and that is exactly why patents are inimical to business.
Let’s look at some great technological milestones. 640K memory. I think it was the foresight of the CEO of IBM who stated that 640K of memory is enough for any computer. Who could ever desire more than 10 times our 64K of memory currently provided.
Here is another great for ya. Want to know who invented GUIs, e.g., Windows . . . times up . . . XEROX. They abandoned it. Couldn’t see any use for it. Another Xerox winner was SDL, Inc. Some worthless semiconductor laser division of the Xerox company, so they thought. Xerox spun them off only to beg for their return 20 years later . . . they were purchased by JDS Uniphase. Oh how about Ma Bell. They would decide who would have what type of equipment. Don’t even think you would have a cellular telephone had the telephone monopoly not been destroyed.
No peanut gallery . . . companies abhor technological change . . . it hurts their profits.
“Justice Stevens in a vigorous dissent in Deihr (1981), which was written three years after Flook (1978) expanded Benson (1972), and advocated expanding Benson further so that algorithm would mean any computer program.”
But that’s quite different from what you originally wrote: “[Stevens] still advocates removing patent protection from ***anything computer related***.”
It was the emphasized clause (my emphasis) that raised my eyebrows.
Stevens statements in Diehr don’t phase me. There are a number of arguments that software per se should be unpatentable and they are good arguments, IMHO.
Talk about product-by-process claims from hell. How would anyone know if they are infringing that claim?
If I find a patented composition on the street and I take it home and use it, do I infringe the composition claim? Of course not. So I find one of those unpatentable signals and use it. What can you do? Nothing.
Now, if I make the signal then you’ll say I’m infringing. But method claims already exist that can protect that process so composition claims that are totally unnecessary.
In light of the obvious problems I raised about patenting “signals,” then, why the fixation on this garbage? Let it go. The Federal Circuit didn’t sweat it and you shouldn’t either.
The only “losers” here are the folks who stupidly pursued only pure signal claims. They thought they had patents but, in fact, they don’t. The American public thanks them for their contribution.
MM: I gave you a bad reference. I meant Stevens’s dissent in Deihr. Here is a snippet from a paper:
Justice Stevens in a vigorous dissent in Deihr (1981), which was written three years after Flook (1978) expanded Benson (1972), and advocated expanding Benson further so that algorithm would mean any computer program. Justice Stevens’s dissent should give everyone in patent law pause when it is considered that Benson has never been over-turned by the Supreme Court and there is a narrow reading of Deihr (holding that a combination that includes a mathematical algorithm is not necessarily excluded from patent projection) that would enable a court today to hold as Justice Stevens advocated in the dissent of Deihr and yet be consistent with the majority opinion of Deihr.
“a novel, useful, nonobvious ultrasound pattern that helps doctors see more detail inside the human body than ever before would qualify. A novel, useful, nonobvious laser pattern that helps inforamtion travel further than ever before along an optical fiber would qualify ”
What about a novel guitar riff that entertains and soothes the listener? You keep leaving out the obvious troublesome things in favor of weird esoteric stuff that is already protectable (and promoted) simply by issuing patents to the machines themselves and methods of using them.
“If these things are manufactured by a machine then they are manfactures.”
For example only:
“23. A digital signal transmitted as MPEG-2 transport stream (TS) packets over the Serial Data Transport Interface (SDTI), the digital signal comprising: data blocks, each data block including a header containing data relating to the block and at least one slot; each slot having a slot header relating to the slot and a data packet of a plurality of data packets; the plurality of data packets containing successive parts of information from a source; a first slot which contains a first packet containing a first part of the said information from the source also containing a reference time; and each subsequent slot containing a subsequent packet of the information from the said source also containing timing information defining the timing of that packet relative to the reference time, wherein each part of said information provides timing information of each data packet relative to other data packets in said plurality of data packets and wherein a slot coarse count and a slot sub count in said plurality of slots transmitted over the MPEG-2 TS are used to generate the reference time.”
“1. A hierarchical quadrature frequency multiplex signal format including:
multiple layers of hierarchical information data that have been modulated using a plurality of hierarchically graded modulation forms that require C/N ratios that are different from each other, wherein:
the multiple layers of hierarchical information data are formed into a frame,
each layer of the multiple layers of hierarchical information data includes a plurality of symbols of the hierarchical information data,
the symbols within the layers of the multiple layers of hierarchical information data that have been obtained by using a selected one of the plurality of hierarchically graded modulation forms are interleaved in both a time axis and a frequency axis, and
each of the plurality of hierarchically graded modulation forms are associated with a corresponding predetermined carrier. ”
MM:
No retreat.
Novel, useful and nonobvious.
If these things are manufactured by a machine then they are manfactures.
So yes, a novel, useful, nonobvious ultrasound pattern that helps doctors see more detail inside the human body than ever before would qualify. A novel, useful, nonobvious laser pattern that helps inforamtion travel further than ever before along an optical fiber would qualify –as well it should because it is something physical and it was made under the sun by man through the sparks and fires of genius.
“Hence an electronic signal is an example of an anything that is made by machine”
But if we accept your premise, then novel sound waves and novel light waves (e.g., an image created by light from the machine, or even reflected from an object created by the machine) could also be patentable under 101. Why do you suddenly retreat to “electronic” signals? There’s no difference.
MM (9/27 at 1:53pm) writes:
“Yes, every literate thinking person knows that reflected light and sound waves are “articles of manufacture,” just like [ha ha]”
Mooney, suggest you re-read 35 USC 101. It does not say ‘article of manufacture’. It says “ANY … manufacture … or improvement thereof”.
Also suggest you read up on the etymology of the word “manufacture”. Originally it meant (literally) made by hand. Over time the meaning evolved to mean anything made by hand or machine. Over time the meaning of “machine” evolved to include electronic circuits including those that generate signals. Hence an electronic signal is an example of an anything that is made by machine. You can of course make signals with your hand –sign language. Please don’t relate to me your glee at making a signal with one of your middle digits. I’m not impressed that easily. -cheers
“Read Stevens’ opinion in LabCorp. He still advocates removing patent protection from anything computer related.”
I missed that part of the opinion. Where did Stevens advocate that?
“We are going to rule by applying a set of laws that any literate thinking person knows is wrong.”
Yes, every literate thinking person knows that reflected light and sound waves are “articles of manufacture,” just like new new coronary stents are “articles of manufacture.” It’s all so plain if you just take the time to learn some basic physics. Right.
Keep on believing that if you makes you happy.
Patent Attorney (9/27 4:12am) writes:
“Consider that over 50% of our economy will be information processing based by 2020 and will continue to grow in importance.”
I respectfully submit that it may be premature and overly optimistically exuberant to predict that something called “our economy” will exist in the year 2020 or that something resembling your notion of “information processing” will exist.
For one thing, where will you/we get the clean green energy to power this 2020 IT economy? OK, I know; you’ve gazed into the crystal ball and have seen the “technological singularity” (google it) approaching –just in time to save the exponentially growing human population from over running its petri dish. I wish I could be as optimistic you, especially in view of the rapid decline of IQ being exhibited by our judicial, executive and legislative branches of government. The arrows of history seem to be pointing toward civilizational collapse rather than towards that shining city on the hill. It’s 1929 all over again. Happy days are here to stay.
In debating the fine points of Nutijen and Comiskey, we are merely rearranging the deck chairs on the Titanic. Still; it does keep one’s mind sharp –if you are into that sort of thing. Sudoko and crossword puzzles are also good fun for the literate thinking person’s mind.
>Right. If only everyone understood “information >processing” like you do, we would all agree that thoughts, >light and sound waves should be patentable.
>Guess what: you’re wrong. Please try harder to consider >the points made above about the practical considerations >which underly the creation and application of laws.
Ahh, this illustrates the arrogance that has caused the problems we have with information processing patents. (and probably admin. law, anti-trust law, etc.) The judges/justices need to understand the technology better to make good law. Trying to apply law from our physical understanding of the world we gain from kindergarten does not suit the information processing world well. Maybe too, there is a relationship between this kindergarten thinking of the Supreme Court and the fact that Americans don’t feel the need to learn science.
But, this is medieval thinking. We are going to rule by applying a set of laws that any literate thinking person knows is wrong. I should add that any thinking person should be afraid of the Supreme Court taking any more 101 cases. Read Stevens’ opinion in LabCorp. He still advocates removing patent protection from anything computer related. I am not sure why some of the law professors who want to make a name for themselves by bringing cases to the supreme court to make any law–any law with their stamp on it just so they can say they did– haven’t figured that out yet.
(Maybe, by the way, the monster was created by the kindergarten thinking. If we were to really apply information theory to patent law–maybe the current problems we have would go away.)
(But, there is another point about thinking about physical acts being patented, and that is that the court figured out at some point that it was not threatening to allow physical acts that we could perform to be patented, because the phyical acts that were tied to machines were acts that we (humans) would not perform without a machine. In Deener for example, no one would sit in a field and blow with their mouths to process wheat. And this same thing occurs with information processing methods. So, you see these same issues that are here today for information processing–patenting methods that we might perform–have been sorted out for physical processes, and yet for some reason the Supreme Court and Fed. Circuit don’t get the analogy.)
That may be why we should blame the PTO and Solicitor’s office for our current situation more than the Supreme Court. The PTO and the Solicitor’s office have people that should and do know better, but for policy reasons advocate these kindergarten positions. For information processing it is well-known that the position taken by the PTO and the Solicitor’s office was because the PTO said they could not or did not know how to examine software patents.
Consider that over 50% of our economy will be information processing based by 2020 and will continue to grow in importance. I think a bit beyond kindergarten is called for given the stakes.
There doesn’t appear to be much hope. We have gone from Judge Rich to the likes of Judge Moore and Chief Justice Roberts. It is like going from the editor of the New York Times to the editor of Mein Kompf.
But, Malcolm feels good, he can’t quite say why, but he is feeling good, so we must be ok.
Malcom you are a copyright attorney aren’t you. I mean it is clear you don’t know squate about EM or physics:) Yes, EM waves bounce all over the place. That is why anyone can perceive practically any content they desire and without violating the Copyright act. All they have to do is capture the signal, filter it from the white noise and run it through an amplifier and a couple of transducers. Presto, free content.
Even though the method does require the use of a machine and technology, and such machines are described in the specification, I did not describe a specific machine in any of my claims. So based on Comiskey, are stand alone business methods now non statutory, and therefore unpattenable? <<< You can amend your claims to recite the use of the machine, can't you?
“I think you simply want attention at the expensive of the quality of the discussion that can be carried out here.”
I’ll make a deal. I promise not to interfere with the ongoing discussion of which celebrity most resembles Hal Wegner.
” recently filed a patten and based on Lundgren made it a pure stand alone business method. ”
That was extremely short-sighted. Who advised you to do that? I hope you didn’t pay too much.
“The entire line of cases that address information processing is medieval.”
Right. If only everyone understood “information processing” like you do, we would all agree that thoughts, light and sound waves should be patentable.
Guess what: you’re wrong. Please try harder to consider the points made above about the practical considerations which underly the creation and application of laws.
I recently filed a patten and based on Lundgren made it a pure stand alone business method. Even though the method does require the use of a machine and technology, and such machines are described in the specification, I did not describe a specific machine in any of my claims. So based on Comiskey, are stand alone business methods now non statutory, and therefore unpattenable? Also, How does this case effect the Lundgren descision? For example, does the CAFC Comiskey decesion invalidate the interim guidleines by the PTO, instructing PE’s not to use a technological arts test?
>>”What is the big difference? What has been recognized forever? Do you have >>a case cite for that? When has the Supreme Court ever addressed the issue?”
>There obviously is a big difference between acts you commit with your brain >and acts you commit with your body. Think criminal law.
There is obviously a big difference–that was of course the point I was making. Our machines have gone from our physical acts to our mental acts. The Supreme Court has not dealt with this under a modern framework of thinking about mental acts or information processing. Consider, that the Supreme Court considers physical laws when evaluating the validity of a patent, but has never used information theory to my knowlege to evaluate the validity of a patent (and yet information theory is what is needed). The Supreme Court has come up with this notion of a mathematical algorithm (whatever that is) and has misapplied the doctrine of a new use for an old machine. The entire line of cases that address information processing is medieval.
“What is the big difference? What has been recognized forever? Do you have a case cite for that? When has the Supreme Court ever addressed the issue?”
There obviously is a big difference between acts you commit with your brain and acts you commit with your body. Think criminal law.
Apart from that, I find it interesting that many seem to think that the law should fully take into account the laws of nature as we currently think they are.
At an elementary level particles are waves, sure, but for the law this is hardly important. In practical real world, a judge can perfectly well decide that a car can be stolen and an electromagnetic wave cannot, even though it’s all waves for physicists.
Law is about making practical distinctions between real world situations. In Nuijten it could have gone either way, but what the current state of physics tells us about the nature of matter and waves hardly plays a role in it.
I wrote:
>>”if we say it is invalid to claim something a person could do in their head >>then we should say it is invalid to claim a physical process that a person >>could perform using their body”
Malcolm wrote:
>You want a case cite for the proposition that proving a >mental act (e.g. intent) is more difficult than proving >that a physical action occurred or than an object exists? >I think it would be a good exercise for you to simply >prove this fundamental concept to yourself.
Malcolm once again you are non-responsive, and frankly offensive. I think you simply want attention at the expensive of the quality of the discussion that can be carried out here.
“Anticommons where we find ourselves” ???
For a review of the “myth” of the anticommons see link to bio.org
Malcolm, I would say that you have been hanging out with the Marxists in Berkeley too much and perhaps dabbling a bit too much in the “medicinal substances” that you are fond of prescribing.
I would also say to you that patent law is no place to quote Dylan and try be tragically hip or trendy, as you seem to blow with whatever insignificant breeze crosses your Gollywobbler.
Malcolm, for god’s sake, please get a dog, or a friend – no, a dog. How about just a hobby, other than blogging.
However:
“Conversion of a provisional application to a nonprovisional application under this paragraph will result in the term of any patent to issue from the application being measured from at least the filing date of the provisional application for which conversion is requested.” 37 CFR 1.53(c)(3).
Dennis is right. I was wrong.
I blame today’s weak coffee. 😉
Patent term is 20 years from the filing date of the earliest non-provisional application. (Assuming you pay your maintenance fees, etc.).
The claiming priority to a provisional application has no effect on the term of a patent. 35 USC 154(a)(3).
“If an inventor files a provisional patent application and a year later files a utility application and everything is successful, does he get 20 years protection from the date of the provisional filing?”
Yes, assuming you claim priority to the provisional filing.
Please pardon my interruption for an ordinary and unrelated question:
If an inventor files a provisional patent application and a year later files a utility application and everything is successful, does he get 20 years protection from the date of the provisional filing?, or from the date of the utility filing?
“What has been recognized forever? Do you have a case cite for that? ”
You want a case cite for the proposition that proving a mental act (e.g. intent) is more difficult than proving that a physical action occurred or than an object exists? I think it would be a good exercise for you to simply prove this fundamental concept to yourself.
>>”if we say it is invalid to claim something a person could do in their head >>then we should say it is invalid to claim a physical process that a person >>could perform using their body”
>Uh, there’s sort of a big difference between the two, from an evidentiary >perspective. The importance of that difference has been recognized in the >legal context for … well, forever.
What is the big difference? What has been recognized forever? Do you have a case cite for that? When has the Supreme Court ever addressed the issue? Please think for at least 30 seconds before banging your keys.
I’m sure we’ve all seen the radio transmitters with their towers located in a vacuum.
Transmitting signals that travel into outer space?
“Electromagnetic signals pass through vacuums inherently.”
Malcolm, stop digging. I’m sure we’ve all seen the radio transmitters with their towers located in a vacuum.
By my reading, the CAFC never made such a “properly stated” statement as you have alleged.
“Headed for destruction just 4 years after the EU implemented its system of Community Designs? They are just so behind the times!”
I’m talking about US design patents.
“vehicles designed for space travel”
They don’t inherently pass through vacuums. The folks at NASA sure wish they would. But no. They have to launch them into space.
Electromagnetic signals pass through vacuums inherently. Put a signal in a vacuum and it will necessarily pass right on through, at the speed of light.
Not so with “ships designed for space travel.”
“I think, properly stated, the ‘vacuum test’ for patentability holds that if the claimed subject matter inherently passes through a vacuum it can’t be patentable.”
That’s good, Malcolm. Thanks for the proper wording. Alright, folks, time to stop patenting vehicles designed for space travel. And actually, a vacuum can’t stop anything from passing through it, so for Malcolm it might be a good test (because then nothing would be patentable).
“It’s a design patent — also headed for destruction. As soon as design patents become economically significant and people hire real lawyers to tear them down, kiss them goodbye.”
Malcolm, you’re two for two – on a roll, eh? Headed for destruction just 4 years after the EU implemented its system of Community Designs? They are just so behind the times!
link to oami.europa.eu
And seeing as your specialty isn’t patents, perhaps you’ve never have had to concern yourself with 35 USC 289.
I’ve written this before on this blog before, but it bears repeating, there are three main types of software-related claims: (i) method claims; (ii) product claims (i.e., computer-readable medium); and (iii) system/device claims (i.e., a computer(s)
yes, and it’s the middle type that is going to go the way of the dodo because there is no distinction between “software on a computer-readable medium” and a recipe written on a piece of paper.
In fact, software can be printed on paper. Paper is a “computer readable medium.”
<<<<<<<<< Some random points: 1) The computer-readable means (aka Bearegard) claims have machine-readable instructions encoded in a storage medium. Instructions written on paper cannot be read by computer, despite what you state. 2) It is possible for a human to "read" machine instructions encoded onto a storage medium with the proper instrumentation. 3)It is possible to construct a computer capable of reading instructions encoded on physical objects, e.g. a square peg signifies an "Add" instruction, a round peg a "Move" instruction, etc.
…to celebrate an recent provisional patnet application filing.
Please wish me luck. No matter how hard you work, you still need luck.
I’m at a loss!, what is going on here? On second thought, I’m outta’ here for a late super.
I, for one, am grateful the CAFC has finally answered two questions that have bothered me for a long time.
Re “mental processes”, if they can be practiced by putting pen to paper, then that is not OK. However, if it would take far too long and might strain existing reserves of ink and paper, then perhaps that is OK.
Re “signals”, I like the court’s consistency of thought using “time” as a yardstick. If the signal is “transitory”, then that is not OK. However, if it is not quite so “transitory” then perhaps that is OK.
Now all I need is a stopwatch…..
“An article can’t exist in a vacuum? ”
I think, properly stated, the “vacuum test” for patentability holds that if the claimed subject matter inherently passes through a vacuum it can’t be patentable.
Note that this test would not capture all possible signals, e.g., sound waves. Of course, sound waves are not patentable and never will be.
An article can’t exist in a vacuum?
The Astronauts currently living in the international space station might be interested to learn that the article of manufacture they are living in can’t exist.
Idiots
An article can’t exist in a vacuum?
The Astronauts currently living in the international space station might be interested to learn that the article of manufacture they are living in can’t exist.
Idiots
“it seems to me that advocating the demise of those types of claims is a waste of time.”
I’m not “advocating” for their devise. I’m just telling you what’s going to happen to them and why. Lowry will be obsolete, just like the strict TSM test is obsolete now. It’s about improving the law.
“Yes, the USPTO clearly allows patents on fonts”
It’s a design patent — also headed for destruction. As soon as design patents become economically significant and people hire real lawyers to tear them down, kiss them goodbye.
*mwah*
Thank you, JAOI. Yes, the USPTO clearly allows patents on fonts. And (until now) the CAFC has never signaled that such patents may be invalid/non-statutory.
Here’s a comparison between the statute and a typical design patent claim, for emphasis as to what the USPTO has been signaling through its patents:
35 U.S.C. 171 Patents for designs.
Whoever invents any new, original, and ornamental design for an ARTICLE OF MANUFACTURE may obtain a patent therefor, subject to the conditions and requirements of this title.
U.S. Patent D545,886:
The ornamental design for a TYPE FONT, as shown and described.
Seems like the USPTO has categorized the TYPE FONT as an ARTICLE OF MANUFACTURE for some years now, and MPEP 1504.01(a) has warned Examiner’s not to reject based on any [improper] conclusion that it is not.
So, signals in the form of type fonts are articles of manufacture or a useful improvement thereof (seems like the CAFC may have forgotten to address the improvement category).
*********
yes, and it’s the middle type that is going to go the way of the dodo because there is no distinction between “software on a computer-readable medium” and a recipe written on a piece of paper.
In fact, software can be printed on paper. Paper is a “computer readable medium.”
Words on a piece of paper are unpatentable subject matter.
We’ve been through this before about 500 times and it’s at this point when the chirping of crickets becomes audible because those who claim that “software on a compouter readable medium” should be patentable do not have a compelling rebuttal argument.
**********
This is what MPEP 2106.01 says on the matter (not that I endorse much of what is written in the MPEP):
“In contrast, a claimed computer-readable medium encoded with a computer program is a computer element which defines structural and functional interrelationships between the computer program and the rest of the computer which permit the computer program’s functionality to be realized, and is thus statutory. See Lowry, 32 F.3d at 1583-84, 32 USPQ2d at 1035.”
As a general matter, I don’t see computer-readable medium claims as having much use. Typically, they are written identically to the method claims except with a different preamble. Moreover, given how distributed computing can be these days, it is very likely that the method steps are not performed by a single computer but by several computers under the control of different actors. As such, it would be harder to prove direct infringement.
IMHO: just eliminating those types of claims (i.e., computer-readable medium claims) will do very little to prevent software-related technology from being patented. As such, it seems to me that advocating the demise of those types of claims is a waste of time.
Dear real anonymous,
Maybe the answer is that a font, or a part of a font, such as a single character of a font, is taboo utility patent subject matter.
This link links to physical things, like calendars, ballots, maps, etc.
link to uspto.gov
I don’t know what bearing this may have (I haven’t really been following this thread, but I know something about fonts):
1504.01(a) Computer-Generated Icons [R-5] – 1500 Design Patents
To be directed to statutory subject matter, design applications for computer-generated icons must comply with the “article of manufacture” requirement of 35 U.S.C. 171
II. EFFECT OF THE GUIDELINES ON PENDING DESIGN APPLICATIONS DRAWN TO COMPUTER-GENERATED ICONS
USPTO personnel shall follow the procedures set forth above when examining design patent applications for computer-generated icons pending in the USPTO as of April 19, 1996.
III. TREATMENT OF TYPE FONTS
Traditionally, type fonts have been generated by solid blocks from which each letter or symbol was produced. Consequently, the USPTO has historically granted design patents drawn to type fonts. USPTO personnel should not reject claims for type fonts under 35 U.S.C. 171 for failure to comply with the “article of manufacture” requirement on the basis that more modern methods of typesetting, including computer-generation, do not require solid printing blocks.
****
PDS said, “Could some “software per se” claims have slipped through in the past? probably … considering that the USPTO has allowed claims to swinging on a swing.”
Why would the swinging on a swing claim be nonstatutory? It isn’t a mental process and it operates on a machine or composition of matter (the swing). Of course it is obvious, but that is a different issue.
****
My point wasn’t directed to why the USPTO issued a bad patent. My point was directed to the observation that since the USPTO has issued bad patents before (for whatever reason), then it is likely that the USPTO has issued bad patents for different reasons (e.g., claims directed to software per se).
“if we say it is invalid to claim something a person could do in their head then we should say it is invalid to claim a physical process that a person could perform using their body”
Uh, there’s sort of a big difference between the two, from an evidentiary perspective. The importance of that difference has been recognized in the legal context for … well, forever.
“The fact is that this is nothing more than a claim to a method for a machine. Something that is statutory.”
No, an instruction written on a piece of paper is not a “claim to a method for a machine.” A claim to an instruction written on a piece of paper is a claim to a written expression of an idea. That’s what copyrights are for.
A patent to a mental process? What does that mean? I will tell you what it means—that the claims are ill defined in the specification so that when they are construed the judge is mapping the claims to his thinking process and not the information process that should be claimed in the specification. If the judge can’t tell what is meant by claims, then it is 112–not 101.
If the claims are well defined, the judge may say, well a person could do that. Well, yes, a person might be able to do that, but then a person could phsically do many of the physical processes that are claimed now, includnig the physical process for processing grain that is claimed in Deener. So, if we say it is invalid to claim something a person could do in their head then we should say it is invalid to claim a physical process that a person could perform using their body. This in fact leads to the whole line of thinking whether or not a computer is necessary to perform the steps that could be done in someone’s head but are too complicated.
The point of the mental step was to prevent claims that were indefinate. So, you couldn’t claim something like adjust the pant leg, or adjust the machine, when everyone knew there was a lot of intelligence in those adjustments.
>We’ve been through this before about 500 times and it’s at this point when >the chirping of crickets becomes audible because those who claim >that “software on a compouter readable medium” should be patentable do not >have a compelling rebuttal argument.
The fact is that this is nothing more than a claim to a method for a machine. Something that is statutory. (Deener).
What is it about a process that operates on represented informationn that makes it so hard for people to understand? Why do we continually hear abstract ideas when there is absolutely nothing abstract regarding a computer algorithm?
It really is magical thinking. What is mathematics? what is a mathematical algorithm and what is the relationship with a computer algorithm? You are an information processor. What is an abstraction? Is that something that you the information processor uses as a heuristic to your information processing thinking and you are imputing it onto the computer.
I don’t think anyone that has studied computer algorithms would say there is anything abstract about them. In fact, insuring that an algorithm that is published can be translated and executed on a computer is part of the standard to get an algorithm published in a jornal.
It is like speaking with people from the medieval church. 112 is all that is needed to police claims to “arbitration.” Not 101. Throw the computer into the river and if it floats it is not statutory, and if it doesn’t we don’t have to worry about it as it is at the bottom of the river.
After thinking about it, I’m not so sure that Beauregard claims are invalid now. The CAFC never ruled on whether these claims were valid or not. If a claim to a software process is patentable over Comiskey (isn’t purely a mental process added to a computer), then I would assume that a corresponding beauregard claim would be patentable as well. Of course, Comiskey may be saying more than that, but it is unclear until the next decision.
No, JAOI, printed matter isn’t really taboo (they’ve got a whole class of it):
link to uspto.gov
P.S. you were right about patented typefaces. U.S. Patent D000001 covers a script typeface. Seems like the CAFC may have jettisoned more precedent with this decision than they did with Markman.
I don’t know what this might add, but I tried to utility patent a new punctuation character and was rejected. As I recall, “printed matter” is taboo utility patent subject matter.
Thank you, JAOI.
So, what are fonts if not non-physical signals?
35 U.S.C. 171 Patents for designs.
Whoever invents any new, original, and ornamental design for an *article of manufacture* may obtain a patent therefor, subject to the conditions and requirements of this title.
The provisions of this title relating to patents for inventions shall apply to patents for designs, except as otherwise provided.
D550,277 Aldi sued type face font
D549,273 Type font
D548,773 Type font
D547,365 Type font
D547,364 Font of arabic language characters
D546,379 Type font
D546,378 Type font
D545,889 Font of musical notation symbols
D545,888 Type font
D545,887 Type font
D545,886 Type font
D544,524 Type font
D540,850 Type font
D540,849 Type font
D539,838 Type font
D539,837 Type font
D539,334 Type font
D538,843 Type font
D538,842 Type font
D537,470 Type font
D537,107 Arabic numeral type font
D537,106 Type font
D536,727 Type font
D533,896 Font of symbols
D532,036 Type font
D532,035 Type font
D532,034 Type font
D531,658 Type font
D529,537 Type font
D528,589 Type font
D528,588 Type font
D527,411 Type font
D527,040 Type font
D526,006 Type font
D523,064 Type font
D522,043 Type font
D522,042 Type font
D521,055 Type font
D521,054 Alphanumeric font
D521,053 Type font
D520,555 Type font
D520,554 Type font
D520,050 Type font
D520,049 Type font
D519,546 Type font
D519,545 Type font
D518,848 Type font
D518,508 Type font
D518,507 Type font
D517,116 Type font
Dear real anonymous,
“If I remember correctly, Times (New Roman) was the first patented typeface.”
For what it may be worth, as I recall, “Times Roman”, the original name being a trademark of Mergenthaler Linotype Company, predates “Times New Roman” by about 100 years.
About 30 to 40 years ago, the “New” in “Times New Roman” was added to the name to avoid a possible trademark infringement.
There have been about 1000 design patents on typeface designs. I believe hundreds of typeface design patents preceded Times Roman.
“If 35 USC section 101 is interpreted, as intended, the business class can become subjugated to the academic class (those who create ideas).”
Ridiculous. The business class IS the class that creates ideas, and then creates products and/or services based on those ideas.
The Academic class (to the extent that this is a “class”) creates theories about what the business class is doing.
First paragraph in preceding post should be in quotes. ARG.
Oh, how I would love to be able to format using italics, bold, etc. …
I’ve written this before on this blog before, but it bears repeating, there are three main types of software-related claims: (i) method claims; (ii) product claims (i.e., computer-readable medium); and (iii) system/device claims (i.e., a computer(s)
yes, and it’s the middle type that is going to go the way of the dodo because there is no distinction between “software on a computer-readable medium” and a recipe written on a piece of paper.
In fact, software can be printed on paper. Paper is a “computer readable medium.”
Words on a piece of paper are unpatentable subject matter.
We’ve been through this before about 500 times and it’s at this point when the chirping of crickets becomes audible because those who claim that “software on a compouter readable medium” should be patentable do not have a compelling rebuttal argument.
Question:
Are all of the issued “computer-readable medium” claims (a.k.a. Beuregard claims) that cover both storage media (e.g. CD-ROMS, memory) and transmission media (e.g. signals) invalid?
Do the owners of patents with those claims have to hope they get a kind judge that will “interpret” the claims as only covering the storage media?
Any cause of action or consideration for “detrimental reliance” based on the PTO’s Examiners’ Guidelines of many years ago that stated carrier waves were patentable subject matter?
So, what is a typeface if not a mere non-physical signal? It doesn’t include a medium, or ink. It can exist in a vacuum, and with laser holography I can make a message in a patented typeface without matter in any conventional sense.
If I remember correctly, Times (New Roman) was the first patented typeface.
D373,374 Lucida casual typeface
D373,373 Lucida casual italic typeface
D341,848 Typeface
D340,943 Typeface
D340,738 Typeface
D306,313 Typeface
D292,988 Typeface
D289,773 Typeface design
D289,422 Typeface
D289,421 Typeface design
D289,420 Typeface
D282,750 Typeface
D266,006 Typeface
D262,377 Typeface for photocomposition
D262,039 Typeface for photocomposition
D262,038 Typeface for photocomposition
D261,900 Typeface for photocomposition
D261,899 Typeface for photocomposition
D261,898 Typeface for photocomposition
D246,936 Arabic typeface
PDS said, “Could some “software per se” claims have slipped through in the past? probably … considering that the USPTO has allowed claims to swinging on a swing.”
Why would the swinging on a swing claim be nonstatutory? It isn’t a mental process and it operates on a machine or composition of matter (the swing). Of course it is obvious, but that is a different issue.
I think the judges on this panel when asked how “arbitration” gets represented on a computer would say “it’s turles all the way down.”
Just a Patent Attorney (& EE) “ironicslip thinks US5757912 patents a signal. As an EE, I respectfully disagree. Claim 1 of that patent is for a method that uses physical structure to detect and act on a signal.” >> with due respect, my comments are in the context that >> … the method matches encryption (cryptographic algorithm) with quantum mechanics (how energy relates to matter) … (it’s turtles all the way down) …
>> that being said, again respectfull;y posed, if i possess quantum money does that qualify as a signal that can be patented or is the value solely in some “physical structure”?? and, if the *value* is in the signal, why does the physical structure matter?? how about if my bank uses quantum money to settle transactions?? are the transaction and/or photons then patentable (a’la state street — useful tangible result — i get paid, bank gets vig, velocity of money increases, etc.)
the issue i am observing is the inherent inconsistencies between patent protection and copyright protection … (KCB has additional comments)
my argument boils down to what people pay for to establish what the value of the invention is — people buy products and services, not patents.
if we knew what would be valuable (which goods and services corresponding to which patents, trade secrets, copyrights, etc.) we wouldn’t need middlemen or a market-based economy … we (who is “we” is the basic issue) could just pick winners and extend protections into the future without regard to the interests of society.
(besides money wont bring his game)
Debating MM is like pig wrestling. Although the pig enjoys a good romp in the mud, you end up dirty, tired, and asking yourself afterwards, “why did I ever do that?” Moreover, although I have publicly avowed to kick the pig wrestling habit, occasionally MM writes some that I cannot resist responding to.
Although I would not opine on biotechnology-related patent law (without extensive disclaimer) because I don’t have enough (any) experience in that field, it appears that others, similarly ill-equipped to address a particular field of technology, nevertheless feel the need to express their ill-conceived opinion.
MM writes:
“But software patents will become unpatentable soon. You can take that to the bank because software isn’t any different from a recipe written on a piece of paper.”
Although this area of technology wasn’t what I “cut my teeth on,” I have prosecuted a couple hundred software-related patent applications over the last couple of years. I’ve written this before on this blog before, but it bears repeating, there are three main types of software-related claims: (i) method claims; (ii) product claims (i.e., computer-readable medium); and (iii) system/device claims (i.e., a computer(s) performing a particular function or having modules performing particular functions). Based upon my experience, no competent attorney drafts claims directed to software per se anymore.
In fact, anybody who has prosecuted in the 2100/3600 art units knows that any claim an examiner could conceivably argue is software per se gets a 101 rejection. Again, based upon my experience 98%+, of those rejections are bogus (not because the claims are directed to software per se, as argued by the Examiner, but because the claims are directed to statutory subject matter). However, the rejections are made. For someone to talk about “software patents” being patentable is misusing the phrase “software patents” and/or has a very poor understanding of how software-related applications are claimed and how the USPTO treats those claims.
Could some “software per se” claims have slipped through in the past? probably … considering that the USPTO has allowed claims to swinging on a swing. However, to believe that patents to software per se are being issued today does not reflect my experience in this field.
kcb-
Interesting analysis. Is the law review article you wrote available online?
I believe Comiskey pretty much follows the long dissent in the In re Lundgren BPAI decision.
“I mean signals are constantly bouncing around in your world, all you have to do is capture them and you will probably be able to perceive what ever content you desire.”
My tinfoil hat is ringing right now!
With respect to a signal, I am simply depressed at the complete lack of competence in this area. Firstly a signal is NOT transitory. If anything, a signal is more than likely to most consistent phenomenon that can be the subject of a patent. A signal is pure energy, which, as this young high school student correct grasped CAN NEITHER BE CREATED NOR DESTROYED. link to van.physics.uiuc.edu. Therefore, it is not transitory. This is what makes me laugh about so-called copyright infringement. I mean signals are constantly bouncing around in your world, all you have to do is capture them and you will probably be able to perceive what ever content you desire. The fact is the content providers don’t want signals patented, because this will infringe upon their revenue from Copyright protection. I am waiting for the person to sue a radio station for trespass, i.e., having a signal propagate through their body.
Simple analysis here. Nothing earth shaking. This is getting to be as easy as constitutional law. In other words do not look for legal logic in some of these opinions, because they are deeply rooted in class struggle. Quite simply, the business class struggled for centuries to end the power of the progeniture class. That was the beauty of the United States of America. It effectively ended the rule of the progeniture class by making the desires of business paramount. In the information age we find ourselves in the midst of another class stuggle of the same proportions. If 35 USC section 101 is interpreted, as intended, the business class can become subjugated to the academic class (those who create ideas). The business class has consistently pressured Congress and the Courts to mutate the patent system to not be about new ideas, but about new products. With the advent of new products, incorporating new ideas, you get patent rights. With this structure in mind, what we have experienced in the last five years seems to make sense. As for taking sides . . . I am still out on that. I must spend a few more years of analysis before I can have the requisite information to form an opinion. I did, however, write a law review article on this subject over a decade ago.
ironicslip thinks US5757912 patents a signal. As an EE, I respectfully disagree. Claim 1 of that patent is for a method that uses physical structure to detect and act on a signal.
Some people have misunderstood my comment regarding Nuijten. All I wanted to say was that no matter how scientifically inaccurate the decision is, it has only a minor effect on patent practice. This year, we have much bigger problems (e.g. Pfizer v Apotex).
As for Nuijten:
Should signals be patentable?
Yes. People should be encouraged to develop useful, novel, not obvious signals because these advance humanity. Imagine signals that confuse IEDs in Iraq, act as non-invasive anesthetics or pain killers, or allow you to increase the information you pass on a single physical line.
Did the CAFC have to rule that signals were not patentable according to the law?
No. The way the law is written, the CAFC could have ruled either way. The fact that the CAFC chose against patenting signals implies that a policy decision was made, a priori.
Will this effect patents?
Patents will become more expensive and sillier, patent attorneys will become richer. Instead of describing what was actually invented in a simple clear claim, patent attorneys will be forced to find convoluted ways of saying the same thing. Patent prosecution will be more tedious as the poor Examiners try to understand the convoluted claims and how they relate to equally convoluted prior art. When claims are issued, infringment won’t be clear so patent attorneys on both sides will make lots of money.
I personally have nothing against patent attorneys getting rich, but I feel bad for the Inventors who waste money and time overcoming unneeded legal hurdles instead of working.
PATENT ATTORNEY is correct, that software is itself already in copyable form, the ease of copying is great for those who have the channels (m$ft or the others for “patent fairness” – and copyright owners who control the copies).
So, it is cheap to eliminate the risk that an independent inventor contributed the improvement … it would simply be spent elsewhere (and certainly not on discounts to their “customers”). It is unfortunate to cop[yright holders and patent-hoilders that the cheapness of copying also helps those with lots of cheap or “free” bandwidth …
too many corporations give just enough to keep you employed and not enough to give you credit … we should encourage risk taking (even if money probably is probably a wage earner) as no other approach appears to work … it’s too bad that money and principle are typically at odds
>>”I bet you there are over 100k patents pertaining to light emission: lasers, UV, spectroscopy, astronomy, optics, etc”
Pertaining? Please don’t move the goalpost. Show me one patent claiming a ray of light itself as composition of matter. Just one. Or, for that matter, a sound wave itself (which, incidentally, can’t travel through a vacuum).
Just one.<< alright, money ... what is quantum cryptography without a composition of matter solely dependent on light -- which incidentally can travel through a vacuum -- (btw, so what if a sound cant travel through a vacuum, it cannot be heard without moving air and putting pressure on your psycho acoustic ability -- you can copyright it) -- and since it is not a "ray", perhaps you can shed **light** on why this type of invention should not be afforded the protections of a patent (see below)? how about important to data security? is cryptography lacking a useful tangible result by its use? what is key space anyway, money? national security (well, when we can do more than 4 qubits)? why is a copyrighted song (a signal) protected with DMCA based on signals that indicate tampering of a "protection device" 1201 (b)? hmmm protection for the signal without question but not the signal that triggers the indication of tampering? sounds very illogical? why don't you make a case that you understand? people buys goods and services, NOT PATENTS ... why? how do you discount unknown cash flows attributed to yet to be introduced products and services based on inventions that were put into patent applications? you must have eaten too many chinese-made toys... US5757912: System and method for quantum cryptography In a method of communication using quantum cryptography an encryption alphabet is used for coding signals for transmission on a quantum channel. The encryption alphabet comprises pairs of operators applied successively to single-photon signals transmitted onto the quantum channel with a predetermined delay between them. When the signals are detected the different signals of each pair are split according to their encoded state and directed to different detectors via paths giving a differential delay. The delay is substantially complementary to the original pre-determined delay. Coincidence detection is employed at the detectors to eliminate spurious detection counts. 1. A method of communication using quantum cryptography comprising the steps of: coding signals for transmission on a quantum channel using an encryption alphabet said encryption alphabet comprising pairs of operators applied successively to single-photon signals transmitted onto said quantum channel with a predetermined delay between said single-photon signals; detecting the single-photon signals, wherein different signals of each pair are split according to their encoded state and directed to different detectors via paths providing a differential delay substantially complementary to the said predetermined delay; detecting coincidence to eliminate spurious counts.