Post-Bilski BPAI Approves of Beauregard Claims

Ex parte Bo Li, Appeal 2008-1213 (BPAI 2008)

Li’s patent application claims a computer program product stored on a computer readable memory adapted be executed to implement a report generation method. The computer program product is a typical Beauregard claim. In what appears to be the first decision to cite the new Bilski machine-or-transformation test of patentable subject matter, the BPAI overturned the examiner’s Section 101 rejection – finding that the product claim includes statutory subject matter.

Here, the examiner argued that the claimed computer program product could not be patentable because it did not produce “a useful, concrete and tangible result.” On appeal, the BPAI held that Bilski expressly rejected that statement from State Street. However, because Li’s claim was for a product, the BPAI did not apply the Bilski machine-or-transformation test to determine patentability. Rather, the court merely relied on the notion of that claimed products – even when written as Beauregard claims – are patentable.

“It has been the practice for a number of years that a “Beauregard Claim” of this nature be considered statutory at the USPTO as a product claim. (MPEP 2105.01, I). Though not finally adjudicated, this practice is not inconsistent with In re Nuijten. Further, the instant claim presents a number of software components, such as the claimed logic processing module, configuration file processing module, data organization module, and data display organization module, that are embodied upon a computer readable medium. This combination has been found statutory under the teachings of In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994). In view of the totality of these precedents, we decline to support the rejection under 35 U.S.C. § 101.”

Li won the Section 101 battle, but still lost the war – the BPAI affirmed the examiner’s contention that the claim was also unpatentable as obvious.

Notes:

  • Thanks to Amber Rovney of Weil’s Austin office for first noting the opinion.  
  • Assignee is IBM, but originally filed as a Korean Application.
  • The approved-of claim is drafted as follows:

42. A computer program product, comprising a computer usable medium having a computer readable program code embodied therein, said computer readable program code adapted to be executed to implement a method for generating a report, said method comprising:

  • providing a system, wherein the system comprises distinct software modules, and wherein the distinct software modules comprise a logic processing module, a configuration file processing module, a data organization module, and a data display organization module;
  • parsing a configuration file into definition data that specifies: a data organization of the report, a display organization of the report, and at least one data source comprising report data to be used for generating the report, and wherein said parsing is performed by the configuration file processing module in response to being called by the logic processing module;
  • extracting the report data from the at least one data source, wherein said extracting is performed by the data organization module in response to being called by the logic processing module;
  • receiving, by the logic processing module, the definition data from the configuration file processing module and the extracted report data from the data organization module; and
  • organizing, by the data display organization module in respone to being called by the logic processing module, a data display organization of the report, wherein said organizing comprises utilizing the definition data received by the logic processing module and the extracted report data received by the logic processing module.

75 thoughts on “Post-Bilski BPAI Approves of Beauregard Claims

  1. anonymous said “basically, thinking they are entitled to the status quo” after listing stuff that is no longer part of the status quo???

  2. Ancient history now, but just in case…

    6000 writes:

    “No man, in the history of the world I believe, has ever given a hypothetical by using a female as the subject of the hypothetical instead of a man. Women, on the other hand, do this quite often.”

    Using women as the subject of hypotheticals is fairly common practice in both the software development and cryptographical fields…both of which are heavily dominated by males.

  3. “If you’ve gone to law school (which I very much doubt you have)”

    ad hominem? way to score points!

    “then you would have been well-versed in the concept of “stare decisis et quieta non movere” (commonly shorted to “stare decisis”).”

    tell me, how does stare decisis apply to beauregard claims? answer: it doesn’t because the federal circuit didn’t chime in

    also, tell me how much deference, under stare decisis, should the supreme court give the federal circuit decision even if they had chimed in? haven’t you learned anything from ebay, ksr, medimmune, etc.?

    in the context of beauregard claims, you deride associates for arguing about well settled law, when there is nothing settled about beauregard claims at the federal circuit level … hubris, pure hubris

  4. I have the same question for Europe. Why do American Applicants think it money well-spent to translate inordinately lengthy texts into the language of EPO countries south of the Alps and east of Germany, and then pay a maintenance fee in each such country, every year thereafter? Would they not get more from their F&P budget by asserting what they have, in those few countries that give patent owners quick and effective relief from infringement? Or do they naively suppose that the mere act of filing in bandit country intimidates acts of infringing manufacture out there?

  5. I’d still like to know why people bother to file run-of-the-mill applications (i.e., not drawn to a proven or likely blockbuster drug) in India, China, Brazil, etc. Or maybe put it another way: why would anyone PAY MONEY to file such apps? It seems there are better ways to spend one’s money, whether you are a CEO, an investor, an in-house attorney or whatever. So what is the argument for doing so?

  6. As to stare decisis, pds, that’s what we had in England for, what, 700 years. But it’s going away now, squeezed out by the world’s default legal system, civil law, which is inherently much cheaper than English common law, and doesn’t do stare decisis, putting more emphasis on “flexibility” than “legal certainty”. The status quo doesn’t last for ever. At appellate level, many American judges are aware of what’s going on in the rest of the world (that’s not just me, wishful thinking). Patent litigation is not confined to the USA. There is really quite a lot of it going on in parallel, in Europe and Asia. Things change, and never more quickly than right now. The Chinese curse “May you live in interesting times” comes to mind. The days when English common law patent attorneys could feel “comfortable” are gone.

  7. “BTW, one of the biggest problems I see with older prosecutors is that my crackpot ideas end up with them properly rejected time and time again over the same art/principle. At some point that has to be embarrassing.”

    Dude … you’ve been around only long enough that your RCE counts are only just kicking in.

    The fact that you can say … “Applicant’s arguments have been carefully considered and are considered non-persuasive” and then make the rejction final doesn’t mean jack.

    Talk to me after you’ve been to a couple dozen appeal conferences and had a handful of decisions come down from the BPAI. Then we’ll see how well your crackpot ideas fare.

    “I wouldn’t burden their worried minds with such trivial matters as reality anyway.”
    You are spending too much time playing WoW or EQ as you are confusing your virtual worlds with reality. The simple reality is that the law doesn’t bend to what you want the law to be.

    So as to kill two cockroaches with one stone …

    “basically, thinking they are entitled to the status quo”
    If you’ve gone to law school (which I very much doubt you have), then you would have been well-versed in the concept of “stare decisis et quieta non movere” (commonly shorted to “stare decisis”). This concept is why us attorneys are comfortable in relying upon the status quo.

  8. “One of the biggest problems I see with young associates is their failure to realize how little they know about the law.”

    one of the biggest problems I see with old partners is hubris …

    thinking that patentees are entitled to automatic injunctions

    thinking that applicants are entitled to a patent absent a teaching, suggestion, motiviation

    thinking that applicants are entitled to anything that is useful, concrete and tangible

    thinking that beauregard claims are well settled when, in fact, the federal circuit never said such a thing

    basically, thinking they are entitled to the status quo. Good luck with that, pds.

  9. “Please, pds, select your favorite passage from the well settled, black letter law from In re Beauregard Federal Circuit decision to enlighten us all.”

    Srsly

    “You, 6K, have shown ample evidence that you are unable and/or unwilling to learn. ”

    LOL, you mean you have nothing to come back with so now you don’t have time. Oh, and, I’m the one unwilling to learn. Righto. Let’s see, you’ve tried to “teach” me one thing relating to this matter, and that is that Beauregards are attempting to distinguish a structure in terms of functional language. I then learned that you are right, they are attempting this. I then pointed out how they fail at achieving this goal and you have yet to respond showing how they do. Maybe you just su ck as a teacher, but when I’m being the teacher of a subject I generally work through the areas that the student takes issue with.

    And btw, your “unwilling to learn” is roughly equivalent in this situation to “unwilling to go along with the accepted view”. Except, oh wait, I am willing to go along with the accepted view, but while there is ample opportunity for me to speak my mind against it here and at the office then I will. Partners may not have the time, and that’s understandable, I wouldn’t burden their worried minds with such trivial matters as reality anyway. They’re concerned with $, cents, and their next round of golf amirite?

    “6K — if you asked a reasonable question that isn’t already contaminated with incorrect assumptions of law and physics, perhaps I might answer it. However, you haven’t.”

    What part of physics is involved in any of my above statements or questions? None. The only assumption about law I made is that the issue has not been ruled on. Everything I have “assumed” is perfectly reasonable to assume, if assume is even the word to use. The words “observed, and then relied upon” would be better suited to be used in place of “assumed”.

    BTW, one of the biggest problems I see with older prosecutors is that my crackpot ideas end up with them properly rejected time and time again over the same art/principle. At some point that has to be embarrassing.

    In any event, I consider the conversation and the issue closed until you see fit to explain just how your position can possibly hold true after having considered the above.

  10. “Partners don’t have the time to spend arguing with associates over points of law that have been long-settled.”

    Please, pds, select your favorite passage from the well settled, black letter law from In re Beauregard Federal Circuit decision to enlighten us all.

  11. pds “Partners don’t have the time to spend arguing with associates over points of law that have been long-settled.”

    LOL. Unless the partner is looking for a case that goes against the long-settled law. Then they’ve got all the time in the world.

  12. “Leave this subject to the big boys ok? If PDS can’t come up with something then you’ve already lost. I’m assuming you just woke up and posted this so maybe it is understandable.”

    6K — if you asked a reasonable question that isn’t already contaminated with incorrect assumptions of law and physics, perhaps I might answer it. However, you haven’t.

    Regardless, in the end, Beauregard claims have been and will be patentable — notwithstanding your woefully incomplete knowledge of physics and the law.

    As for answering your questions — many people have tried. However, you aren’t here to learn, you are here to argue.

    One of the biggest problems I see with young associates is their failure to realize how little they know about the law. They come in with a big head and a big attitude, and unless they are able to learn, they usually don’t last long. Partners don’t have the time to spend arguing with associates over points of law that have been long-settled.

    You, 6K, have shown ample evidence that you are unable and/or unwilling to learn. My suggestion for you is to stay at the USPTO. You can share your ideas about 112, 2nd paragraph interpretation and 101 and any other crackpot ideas you have with your office mates.

  13. “The strings of 1′s and 0′s that are actually on a medium are not limited to the information they represent. While they may indeed by abstractions in your logical mind, the string has a very real and very physical arrangement of electrons. ”

    You are now back to talking about the information structure. That’s fine, I’ve already addressed the situation where they choose not to make the information indeed information, but rather choose to mean information structure. I don’t force the information to be abstract, I address both situations. That’s a big reason that my posts above are so fin long.

    What is a “tabula rasa general computer”, a general computer used in the game, or a computer with the game loaded into RAM with the CPU processing instructions relating to the information in RAM? If the later then sure, the computer is different from non tabula rasa loaded computers. No question about it. As soon as you realize this has no bearing on the situation I’ve outlined above the better.

    “Can you perform the software method claim on a machine that has not been programmed with the ability to perform the software method?”

    We’re talking about Beauregards, you’re thinking of a different type of claim, specifically you are talking about a computer method claim.

    Leave this subject to the big boys ok? If PDS can’t come up with something then you’ve already lost. I’m assuming you just woke up and posted this so maybe it is understandable.

  14. 6000,

    You are caught in your own abstractions, forcing a layer, yet not accepting what that layer tells you.

    The strings of 1′s and 0′s that are actually on a medium are not limited to the information they represent. While they may indeed by abstractions in your logical mind, the string has a very real and very physical arrangement of electrons. The abstractions may even represent mathimatical ideas (and according to our software brothers, all ideas are mathimatical), but nonetheless, they are a real physical structure and are necessarily distinct from a tabula rasa general computer (please leave the strawman words-recipes-cookbook analogy out of it – that’s old, tired and persuades no one).

    The electron arrangement not only has a particular effect beyond transforming a general purpose machine into a particular machine. Functionality, ask yourself the simple question. Can you perform the software method claim on a machine that has not been programmed with the ability to perform the software method? If the answer is no, you have a both a transformation and a tie to a particular machine. 101 analysis over.

    Now move on to the right tools and see if patentability is possible under 102, 103 and 112.

  15. “A hard drive doesn’t perform any other function except storing data. A floppy disk doesn’t perform any other function except storing data.” I “guess claims to those aren’t patentable subject matter based upon your analysis.”

    Claims to floppy disks or HD’s? Perhaps you haven’t been listening. What would be wrong with claiming a floppy in terms of the functionality specifically of the floppy storing data? Nothing. That is, nothing until 103 if your claim comes after 1970 or something.

    The only problem would arise when you attempt to distinguish the functionality of the floppy, i.e. to store information (1′s and 0′s, not magnetic blips on the floppy), in terms of the functionality of the information, because then you’re no longer distinguishing in terms of the functionality of the floppy (a structure), you are distinguishing in terms of the functionality of abstract information (a string of 1′s and 0′). Or, in the alternative, the problem arises when you attempt to distinguish the information structures (the blips on the floppy’s disk) in terms of the functionality of another machine (the computer). Head over to patent hawk for a great example of a much better way of drafting Beauregards. I like them better myself, easier to invalidate, they don’t f around with all this “I can’t make up my mind if I want information to be the information structure or the abstract information”.

  16. Thank you, both 6000 and pds. European 101 requires “technical character” which includes a CD but excludes a disembodied business method. Euro 103 requires a non-obvious solution to a problem that is “technical” so includes contributions to technology but not to accountancy. What “technical” means is evolving out of 3000 EPO decisions per year. The EPO gives patents in the US Constitution’s “useful arts” and TRIPs’s “all fields of technology”. But not for financial engineering. I think that should satisfy most everybody, including the free software movement.

  17. “can you point me to one example CD, or dips on a CD, that you are aware of which actually performs any other function other than storing data?”
    A hard drive doesn’t perform any other function except storing data. A floppy disk doesn’t perform any other function except storing data. A guess claims to those aren’t patentable subject matter based upon your analysis.

    “I was raised a southern christian boy, come on. In my view, women are different, not lesser, beings.” :-) — I’m not going to say anything.

  18. tap tap tap goes my foot. Third time no answer.

    “The solution to the objective technical problem “How to make better widgets” is represented by the pits on the disc, simply that, and not the PC and not the molding system”

    Actually, the solution to the objective technical problem is represented by an abstract process or algorithm, not the dips on the cd. But overlooking that crucial problem with your example, let’s assume there is an example that would support what you say, even though there probably isn’t.

    Under your technical problem solution mess in Europe I don’t see too much of a problem with software claims, even per se software claims. Although, I see a deeper problem with the entire system. But, that’s too much to get into and you guys get along just fine, so live and let live imo.

    Though, the way you write it there, and using your own “logic” then solutions to technical problems represented by words on a page should be eligable for an inventor to get a claim on. Oh, but correct me if I’m wrong, but you guys probably made a specific exception for that didn’t you? Probably should have made one for software while you were at it. Bottom line, software is a written work, we have protections for written works and there is no reason to artificially extend protections not meant for written works to them.

    Also, as to “harm” I direct you to “end software patents now”‘s site.

  19. This isn’t my field, and I can’t be faffed to read again through the entire thread, but here’s a simple question and maybe a reader (Malcolm Mooney?) can supply a simple answer.

    Long, long ago, in a far away place called England, a claim to a pentode thermionic valve came under attack. The claim was bad, the attacker asserted, because it failed to recite the electrical potentials that one had to impose on the electrodes before the pentode could be “useful”. Wrong said the court. The claim as it stands is good. Mullard v Philco.

    Fast forward to today’s world.

    Suppose an invention is made, that is implemented when a bog-standard PC (anywhere in the world) reads the pits on a disc, then runs a program conventionally and produces an output conventionally. The PC controls an injection molding system and so its output (anywhere in the world) is higher quality injection-molded widgets. The solution to the objective technical problem “How to make better widgets” is represented by the pits on the disc, simply that, and not the PC and not the molding system. As a matter of common sense, intuition, legal logic and business necessity, the inventor should be able to get to issue a claim to the disc with the pits, no? Where’s the harm in it?

  20. “One, you haven’t asked previously me for an example. Two, I’m not sure what you trying to prove. Three, I imagine you think CDs and DVDs are magical devices in which the CD/DVD is magically imbued with the “essence” or “aura” of a computer program.
    No wonder you are in the coating arts – with your stellar knowledge of computer storage devices and your offhand comment about electrons falling out of wire, the hiring people at the USPTO”

    The coating arts lol. Righto. Or, it could be that I work in computer storage devices and that could be why my knowledge of them is especially stellar. Or, I might work in bicycles, which might be why I use them as examples so often.

    Anyway, I’ve asked you three times now, and I’ve yet to hear from you an example. My question, for the record, since it was written a tad off this morning, is this: since you believe that a Beauregard computer product distinguishes in terms of the functionality of a structure (either the whole of a CD, or just the dips and raises thereon), then can you point me to one example CD, or dips on a CD, that you are aware of which actually performs any other function other than storing data? And perhaps functioning as a coaster, cd’s get used like that a lot.

    What I am trying to prove here is that Beauregard claims do not in fact claim the functionality of a computer readable medium structure. And further, after this is presumed true, I mean to suggest that they do in fact claim the functionality of the “information” (not information structures) and/or the computer and attempt to pass it off as the functionality of the computer readable medium or the information structures thereon. Finally, I submit that if you do not claim your product in terms of the structure, or the functionality of the structure itself then you are not properly distinguishing a product claim and the claim falls.

    As to point three, I’m quite sure there is nothing magical, or indeed special, about any, I repeat ANY dips and raises upon a CD. The information which can be gleaned therefrom may however be quite special indeed, yet certainly not magical.

    “you are a misogynist as well”

    I thought that was well established on these boards already? Though, to be clear, I don’t ha te women and I’m not particularly prejudiced against them, I believe we all have roles to play in life. I was raised a southern christian boy, come on. In my view, women are different, not lesser, beings.

    “I’m sure your “know-it-all” attitude and penchant for making loser arguments is a hit with the ladies — not!”

    I play it cool for the most part irl. This here is my fun time :)

  21. “Yes, but aren’t Beauregard claims distinguishable from the process by the structure, e.g., “computer software ‘product’” or “computer information ‘structure.’”"

    Your question makes no sense. You’re going to need to rephrase that in terms that make sense. How can a claim be distinguishable, or distinguished from portions of itself (i.e. the process in the form of the process steps)? Are you saying, “are Beauregard claims distinguishable from a process claim claiming only the method steps in a Beauregard?” The answer is yes, of course they are, the claim belongs in a different statutory category, that would be a major distinguishing feature. Then my question is, what is the point of this question? This has been presumed from the beginning of the analysis.

  22. “And you’ve yet to show me an example of dips on a cd that function to find x, find y, or compare x to y.”
    One, you haven’t asked previously me for an example. Two, I’m not sure what you trying to prove. Three, I imagine you think CDs and DVDs are magical devices in which the CD/DVD is magically imbued with the “essence” or “aura” of a computer program.
    No wonder you are in the coating arts – with your stellar knowledge of computer storage devices and your offhand comment about electrons falling out of wire, the hiring people at the USPTO tried to put you where you would do the least amount of damage.
    Suggestion – ask you question during every interview you have with any law firms – trust me, it is going to go over really well.

    “PDS, you are a woman aren’t you? Seriously, aren’t you? Is that you up on the topic at hand? I present the daming evidence.”

    Wow … not only are you an ignoramus, you are a misogynist as well.

    “No man, in the history of the world I believe, has ever given a hypothetical by using a female as the subject of the hypothetical instead of a man. Women, on the other hand, do this quite often.”

    As it turns out, when discussing a hypothetical, I use “you” or “one” and honestly, I get tired of using that phraseology. I was about to write he, and then I thought to myself, I know of many woman inventors so I decided to write she instead of he.

    Given the time frame that you wrote these post (around 5:00AM), I’m guess that you didn’t get up early on a Saturday morning, but came home very late on Friday night after striking out at the bar. Don’t take out your frustrations on the fairer sex. I’m sure your “know-it-all” attitude and penchant for making loser arguments is a hit with the ladies — not!!

  23. SF,

    “I am suggesting that, if a process does not meet the machine-transformation test, a generic computer-readable medium configured to be used to perform that process is probably not patentable. The caselaw isn’t there yet, but I could easily see it going there.”

    I agree.

  24. 6000,

    “Yes, and you distinguish your process in terms of steps, and your product in terms of structure. Don’t you? That’s right, you do!”

    Yes, but aren’t Beauregard claims distinguishable from the process by the structure, e.g., “computer software ‘product’” or “computer information ‘structure.’”

  25. “What’s wrong with this? ”

    Nothing is wrong with that West coast guy. Now, let’s make your claim fit the mold of a computer medium product claim.

    (2) An article for magnification, said article comprising:

    (a) inlet means for passing beams of light to a housing assembly;
    (b) magnification means configured for
    receiving beams of light,
    bending received beams of light,
    reflecting bent beams of light, and
    providing reflected beams of light to outlet for subsequent veiwer observation,
    (c) outlet means for providing beams of light to an eyepiece; and wherein provision of beams of light to and through an outlet causes a separate apparatus which receives the output light to sound an alarm when the light output is higher than a predetermined amount.

    What is wrong with this claim? Anything? What if the only limitation not in the prior art is the portion after “and wherein”?

    Perhaps you are seeing a trend here. If your position is true, the computer readable medium claims should just become computer readable information claims. Why not draft a claim like this:

    1. Computer information structures, which when read by a computer, cause a computer to execute a method comprising: find x, find y, compare x to y.

    Because then it is all too apparent that you are distinguishing the structure in terms of method steps, and, for that matter, method steps performed by ANOTHER STRUCTURE.

    BTW if Beauregard’s are acceptable, why not draft them as I did above? Leave out the computer readable product part and just claim the “information structures”. You routinely see claims directed to small structures on top of a substrate in semiconductors in the form of transistors, why not only claim the small structures on a computer readable medium? Oh, that’s right, because the chicanery of what you’re doing smacks you in the face.

    For that matter, JD, you do semiconductors iirc right? You should totally start claiming transistors in terms of the functionality of a server which is connected through the internet to the computer cpu in which your transistor resides. That way, anytime you claim a new server, you ALSO get a claim to every single transistor in every single computer connected to that type of server. Ingenious!

    Here’s a sample:

    1. A transistor in a CPU which is connected to a server which executes a method comprising: special server function 1 and special server function 2.

    Who cares if you distinguished a transistor by the functionality of something connected to it?

  26. PDS, you are a woman aren’t you? Seriously, aren’t you? Is that you up on the topic at hand?

    I present the daming evidence:

    “In case an inventor comes through the door with a great idea that took her only 5 minutes to conceive, I want to be able to point her to this section and tell her to hit the road.”

    No man, in the history of the world I believe, has ever given a hypothetical by using a female as the subject of the hypothetical instead of a man. Women, on the other hand, do this quite often.

  27. “If one wasn’t an ignoramous, the explanation to your question would be readily apparent and the need to ask such a question would be precluded. It was until 1981, after the Supreme Court decision of Diamond v. Diehr came out, when computer programs, when coupled with a machine, were recognized as patentable subject matter.

    The floppy disk was introduced during the 1970s. link to en.wikipedia.org

    By the time of the Diehr decision, it would be readily apparent to anyone skilled in the art that the capacity of a floppy disk was several orders of magnitude greater than that of a punch card. As such, by the time that software was clearly recognized as patentable subject matter, claim drafters would have eschewed the overly-restrictive term of “punch card” for something broader (e.g., computer readable medium).

    Similarly, one wouldn’t have expected to have “thousands of those patents” issued on genetically modified micro-organisms before the Supreme Court decision of Diamond v. Chakrabarty in 1980.”

    Speaking of ingnorant statements. That might be the most ignorant statement I’ve ever seen on here PDS. You’re aware that ALL computer readable medium claims are necessarily covering punch cards the same as floppy’s unless specified in the spec.

    “A screwdriver, comprising:
    a shaft having a tip, wherein
    the tip is configured to be received by all slots of a Phillips-head screw.”

    Nice example. And I still have the same issues with your example to which you refuse to respond because you know your example is misleading. First, you are not claiming the screwdriver in terms of a functional limitation of a completely different object’s function. Let’s turn your claim into a computer process claim right fast.

    “A screwdriver comprising
    a shaft having a tip, wherein
    the tip has information structures thereon which, when read by a computer, cause the computer to execute the method comprising: find x, find y, compare x to y”

    You’re still claiming a screwdriver in the example so that isn’t changed. What does change is that you are now describing the tip of the screwdriver’s information structures (i.e. the structure in the claim) in terms of the function of a computer (a completely different structure).

    To make an analogy in screwdriver land we have:

    A screwdriver, comprising:
    a shaft having a tip, wherein
    the tip is configured to be received by all slots of a Phillips-head screw and wherein when the tip is received by a Phillips-head screw the tip causes the screw move and the movement of the screw causes a house to fall down or a beam to support another beam.

    You see? You are now distinguishing the “functionality” of a structure, the tip of the screwdriver in terms, not of its own functionality, but of the functionality of a completely different structure. This is impermissible in functional language claiming. As you well know, a functional limitation is an attempt to describe a thing by what IT DOES, not what things around it do. And you’ve yet to show me an example of dips on a cd that function to find x, find y, or compare x to y.

    Second, well, second is written in another post and you still won’t respond to it either, so I’ll leave it be for now because it’s long and I don’t feel like it.

    I have you at every turn, admit defeat already. Resign old man, the time for the Beauregard charlatanism to end is at hand!

  28. “Can anyone explain why a piece of paper is not a computer readable medium? I can place a typed page into my scanner and it “reads” it. Is a scanner not a computer. Just asking”

    No they cannot, especially ivo of the neato new paper computer storage medium we had posted in the last thread. It was pretty cool, basically a computer just encodes different colors on a piece of paper and then another computer reads the different colors and decodes the info. Several gigs on a small sheet of paper iirc. Probably should have favorited that so I could relink it for all the “cite it, cite it” crowds. This time though they’re on their own finding it in the archives.

    “Am I not allowed to claim the process of magnification accomplished by the array? Am I not allowed to claim the product, article, or composition of a microscope which primarily employs the process?”

    Yes, and you distinguish your process in terms of steps, and your product in terms of structure. Don’t you? That’s right, you do!

    Read em en weep boys, you’re goin down.

  29. “Are you of the opinion that, if a process is unpatentable, a product containing the unpatentable process cannot be patentable?”

    I am suggesting that, if a process does not meet the machine-transformation test, a generic computer-readable medium configured to be used to perform that process is probably not patentable. The caselaw isn’t there yet, but I could easily see it going there.

  30. SF,

    Malcolm is claiming a piece of paper with ink and not the process thereon. The machine-transformation test applies to methods or processes and not products, correct? Are you of the opinion that, if a process is unpatentable, a product containing the unpatentable process cannot be patentable?

    Thanks.

  31. Malcolm,

    In response to your analogies regarding punch cards, the following modification of Claim 42 would (and should) be an allowable claim under 101:

    42. A computer program product, comprising a [plurality of sequentially numbered punch cards, each] having a computer readable program code, said computer readable program code adapted [from the plurality] to be executed to implement a method for generating a report, said method comprising. . . .

    The “product” is nothing more than a deck of cards that, as a whole, would be a new and useful thing or product which imparts a useful process when employed.

    The deck of cards is no different than a new and useful hand tool specially produced for a specific task. Where a mechanic carries a patented tool to accomplish a specific task, the IBM technician carries a patented deck to accomplish a specific task.

    Not so difficult to understand after all, right?

  32. “A piece of paper comprising ink, wherein …”

    Malcolm: I’m going to go out on a limb and say, it depends. Whether paper and ink or CD and pits, the issue is whether the function performed passes the machine-transformation test.

    That will torpedo lots of claims and 102, 103 will torpedo a lot of the rest.

  33. Malcolm,

    Because all of the “wherein”s trace back to “ink,” you are attempting to patent a piece of paper that includes ink. Because the claimed product is ink-to-paper, it would be unpatentable under 101 as a literary work. See MPEP 2106IV(B).

  34. West Coast “FYI…the Beauregard Claim 42 subject of this thread is limited to particular structures: the four identified modules.”

    Are you joking? You must be joking.

    Since you enjoy writing silly hypothetical claims, how about this one:

    A piece of paper comprising ink, wherein said ink embodies a picture, wherein said picture embodies text, wherein said text embodies software code, wherein said software code, when adapted for a computer, is executable to implement a method for generating a report, wherein said method comprising (1) providing a system, wherein said system comprising a display module, an input module, and an ouput module; and (2) accepting an input into an input module; and (3) outputting the sound of a dying koala bear’s fart from said output module, thereby providing entertainment to recipients of the output.

    Patentable?

  35. Malcolm,

    “Means-plus-fxn claims are limited to the particular structures disclosd in the spec and Beauregard claims aren’t (software specs often disclose nothing more substantial than a flowchart).”

    FYI…the Beauregard Claim 42 subject of this thread is limited to particular structures: the four identified modules. You wuuld have to agree that the process claim embodied in the product claim is patentable because it has been limited, right?

    If you have a beef, it must be the thousands of other software patents whose structures aren’t claimed (e.g., bathroom reservations system, supermarket checkout, etc…). For those, I generally agree with you that they don’t pass 101 muster. However, as for embodied process of the product claimed in Claim 42, it does because, in part, of its identified structure.

  36. Malcolm,

    The issue raised earlier and reworded slightly diffently is this:

    Given that a product may comprise or embody a process, may product comprising or embodying an unpatentable process nevertheless be patentable under 101?

    This question is valid, and I do agree with your eariler statement, Malcolm: “yes, we can all agree that a composition with a novel combination of dots or magnetized particles on it is [sic] meets 101.”

    It just may not meet 102, 103, and/or 112.

  37. Malcolm,

    “Products don’t “comprise” processes. You can claim a composition or an article of manufacture. And you can claim a method or process.”

    Contrary to your statement, I have demonstrated to you in my microscope example a product/article comprising (or including) a claimed process.

    When properly viewing product claim 42 (the subject of this thread) in the context of tools and not as pieces of paper, a floppy disk or CD is a tangible tool which houses an electronic method just as a microscope is a tangible tool which houses an optical method.

  38. “Here’s an example of a process and an article for magnification which includes the process.”

    Means-plus-fxn claims are limited to the particular structures disclosd in the spec and Beauregard claims aren’t (software specs often disclose nothing more substantial than a flowchart). That’s what’s wrong.

  39. Malcolm,

    Here’s an example of a process and an article for magnification which includes the process.

    (1) A process of magnification, said process comprising:
    (a) receiving beams of light;
    (b) bending received beams of light;
    (c) reflecting bent beams of light; and
    (d) providing reflected beams of light to outlet for subsequent veiwer observation.

    (2) An article for magnification, said article comprising:

    (a) inlet means for passing beams of light to a housing assembly;
    (b) magnification means configured for
    receiving beams of light,
    bending received beams of light,
    reflecting bent beams of light, and
    providing reflected beams of light to outlet for subsequent veiwer observation; and
    (c) outlet means for providing beams of light to an eyepiece.

    Assume specification provides the mirror and lens array structure for the 112p6 claim.

    What’s wrong with this?

  40. “And the ‘invention’ itself took all of five minutes, plus half a sandwich and a small bag of cheetos in ‘funding’ and ‘investment.’”

    The depth and scope of your analysis is astounding. You must have a copy of the secret version of 35 U.S.C. which spells out how long an invention needs to be researched (and how much money needs to be spent) to be patentable subject matter.

    When you get a chance, you’ll have to share your copy with the rest of us. In case an inventor comes through the door with a great idea that took her only 5 minutes to conceive, I want to be able to point her to this section and tell her to hit the road.

    Hitting the bottle a little early for West Coast time?

  41. “You’d think a regular reader of this blog would be a bit more circumspect about advocating for the low-rent backwater claiming strategies of yesteryear. Then again, if your in the business of throwing wet toilet paper against the wall to see what sticks, who cares? Try everything. It’s just money.”

    I know that you are a ground breaker who wants to do away with a large portion of currently-recognized statutory subject matter. However, I’ll just stick to advising my clients on the CURRENT state of the law as to statutory subject matter.

    Hmmm, you characterize Beauregard claims as “low-rent backwater claiming strategies of yesteryear.” I wonder how you would characterize Markush claiming strategies considering that Beauregard claims are only 13 years old whereas Markush claims are 83 years old. What’s next — are you also going after means plus function and Jepson claims as also being backwater claiming strategies of yesteryear?

  42. ” don’t think even a nominally skilled programmer, at the time of the invention (i.e., 1991) would have needed more than 2-3 days to put together a working version of claim 1 of US Patent No. 5,193,056″

    And the “invention” itself took all of five minutes, plus half a sandwich and a small bag of cheetos in “funding” and “investment.”

  43. “It is worth a close look at the actual patent in issue in State Street. Could you put the disclosure of that specification into the hands of a system development team, and have them translate the concepts straightforwardly into hardware and software. Probably not – you would simply be giving them the outline of a 2-3 year development programme, not a set of ideas and instructions that they could directly use. And there is the weakness in many patents in this field.”

    2-3 years? Seriously, you must be joking. I don’t think even a nominally skilled programmer, at the time of the invention (i.e., 1991) would have needed more than 2-3 days to put together a working version of claim 1 of US Patent No. 5,193,056.

  44. pds “For your clients’ sake and for the sake of your malpractice carrier, I hope you never advise your clients on mechanical applications.”

    Sure, because mechanical applications drafted in the fashion you described are never found invalid for enablement or written description problems, nor is there any trend towards requiring applicants to claim their compositions in unambiguously structural as opposed to pseudo-structural/functional claim language.

    You’d think a regular reader of this blog would be a bit more circumspect about advocating for the low-rent backwater claiming strategies of yesteryear. Then again, if your in the business of throwing wet toilet paper against the wall to see what sticks, who cares? Try everything. It’s just money.

  45. West Coast Guy: “Am I not allowed to claim the process of magnification accomplished by the array?”

    You could claim the process in a well-drafted process claim.

    “Am I not allowed to claim the product, article, or composition of a microscope which primarily employs the process?”

    There you again. You can claim the product, article or composition by describing its structural features and physical properties.

    But there is no such thing as a “composition-by-process employment” claim, except perhaps for these Beauregard claims in which case your “argument” is circular.

  46. “I’m still waiting for someone to show me a patent issued on a punchard that is identical to a previous punchcard *but for* the computer-implementable method represented by the punched holes. You’d think there would be thousands of those patents from back in the day before zip drives and compact discs and magnetic tape, when punchcards were teh awesomest technology ever.”

    If one wasn’t an ignoramous, the explanation to your question would be readily apparent and the need to ask such a question would be precluded. It was until 1981, after the Supreme Court decision of Diamond v. Diehr came out, when computer programs, when coupled with a machine, were recognized as patentable subject matter.

    The floppy disk was introduced during the 1970s. link to en.wikipedia.org

    By the time of the Diehr decision, it would be readily apparent to anyone skilled in the art that the capacity of a floppy disk was several orders of magnitude greater than that of a punch card. As such, by the time that software was clearly recognized as patentable subject matter, claim drafters would have eschewed the overly-restrictive term of “punch card” for something broader (e.g., computer readable medium).

    Similarly, one wouldn’t have expected to have “thousands of those patents” issued on genetically modified micro-organisms before the Supreme Court decision of Diamond v. Chakrabarty in 1980.

    “Seriously: who cares?”
    You seem to care since you shake the bars of your cage and throw your own doodoo anytime somebody mentions 101, software inventions, and/or Beauregard claims.

    “You couldn’t simply recite ‘A screwdriver, wherein such screwdrive can be implemented to do this that or the other thing.’”
    Says somebody who is not only ignorant about computer-implemented inventions but is also equally ignorant about mechanical inventions.

    Here is a claim for you.
    A screwdriver, comprising:
    a shaft having a tip, wherein
    the tip is configured to be received by all slots of a Phillips-head screw.

    This is a perfectly acceptable mechanical claim despite defining a structure in terms of functionality (i.e., how the screwdriver is implemented). For your clients’ sake and for the sake of your malpractice carrier, I hope you never advise your clients on mechanical applications.

  47. Malcolm,

    “Products don’t “comprise” processes.”

    Really? Why not? My inventor invents a new microscope (apparatus changed to the protect the innocent), and the inside the housing of the microscope contains a novel and non-obvious array of lens and mirrors.

    Am I not allowed to claim the process of magnification accomplished by the array? Am I not allowed to claim the product, article, or composition of a microscope which primarily employs the process?

  48. “Seriously: who cares? I mean, other than people who prosecute the claims.”

    Frankly, Malcolm, you seem to care more than most. Why is that?

    “I seem to recall that Congress passed this ridiculous and disturbing DMC Act a while for the sole benefit of quieting the whining crybabies who write software.”

    Now that’s an interesting charge. I seem to recall that the DMCA was for the benefit of so-called content providers, not so much for whining crybabies who write software.

  49. “Rather, the better analogy is that the product (disk or CD) is used as a tool like a ladder, screwdriver, or hammer. None of these in isolation have utility yet are used to impart utility. Moreover, just as the composition of materials (metallurgy) speaks to the utility of the traditional tools so does the composition of software instructions speaks to the utility of the software.”

    But if you invent a new metal, then you can claim the new metal. If it’s an old metal, you can’t claim it. If it’s a new screwdriver with the old metal you also can’t claim the screwdriver unless you get unexpected results. In that latter case, your claim would have to very specifically recite the new composition of the new metal by its structure. You couldn’t simply recite “A screwdriver, wherein such screwdrive can be implemented to do this that or the other thing.”

    But that’s what Beauregard claims allow software writers to get away with. They claim old compositions according to new uses without any recitation of the structures of the composition that afford those new uses. The “logic” is that if software writers were forced to patent their software in this way then BOO HOOO HOO HOO HOOO HOOOO!!! their claims wouldn’t be very valuable. BOO HOO HOOO HOO HOOOO!!!!

    Seriously: who cares? I mean, other than people who prosecute the claims. I seem to recall that Congress passed this ridiculous and disturbing DMC Act a while for the sole benefit of quieting the whining crybabies who write software. Not enough?

  50. “Can anyone explain why a piece of paper is not a computer readable medium? ”

    No, because paper is a computer readable medium. Remember punch cards?

    I’m still waiting for someone to show me a patent issued on a punchard that is identical to a previous punchcard *but for* the computer-implementable method represented by the punched holes. You’d think there would be thousands of those patents from back in the day before zip drives and compact discs and magnetic tape, when punchcards were teh awesomest technology ever.

    But nobody has ever been able to produce one of those patents. Why is that?

  51. From the body of the claim itself “the distinct ** software modules ** comprise a logic processing module,”

    This to me means that the logic processing module is software based, i.e., not tied to any particular hardware; most likely object oriented code.

    However, I agree its patentable subject matter; I was just highlighting apparent inconsistencies in the various computer decisions.

    PhilS

  52. “Whether a product primarily comprising an unpatentable process is patentable under 101?”

    The question is invalid. Products don’t “comprise” processes. You can claim a composition or an article of manufacture. And you can claim a method or process. You can’t distinguish an old composition by virtue of some new process that it can be used to “implement.” It needs to be described structurally.

    Beauregard claims are themselves a judicial “invention” to get around this problem, but sadly whatever case law the claims were grounded in has eroded completely to the point of worthlessness.

  53. If Beauregard claims satisfy the European equivalent of 101 (and they do), would that encourage judges in the USA to discover that they do actually satisfy 101? Can it be, that Europe has a definition of patent-eligibility wider than the USA?

  54. “MM: all software is obvious, and PHOSITA coder can make it. (paraphrased)”

    Actually the second clause was provided by a pro-software patent commenter here in response to a comment by me that was very similar to Paul Cole’s comment. In fact, both Paul and I can both be right because Paul’s comment is directed more toward business method claims and I know exactly what he is talking about. You can go back ten or twenty years in some instances and find laughably broad issued claims reciting an obvious research program in some “cutting edge” field (e.g., “alternative energy” where you “collect data” and “optimize results”). Then you can talk to any expert in the field or read any contemporary paper and learn that the goal of the proposed research plan has STILL never been successfully achieved, and not for want of trying.

  55. SF,

    Let me see if I understand that issue you present:

    Whether a product primarily comprising an unpatentable process is patentable under 101?

    Apparently, Malcolm appears to have answered in the affirmative:

    “[Y]es, we can all agree that a composition with a novel combination of dots or magnetized particles on it is [sic] meets 101.”

  56. How about reciting a computer-readable medium with computer-executable instructions to perform a process that would fail the machine-transformation test? Anyone here really think that the Federal Circuit would uphold that type of Beauregard claim?

  57. Malcolm,

    “When its read by a computer, it imparts some functionality to the computer, so I guess it has some utility.”

    First, it looks like you’re mixing apples and oranges. The “product” is not read by a computer. The product here can be a floppy disk or CD. A computer does not read a disk or CD.

    Second, the disk or CD does impart functionality in that it serves as a tool to store instructions within. It are these instructions from which the computer reads.

    I disagree with your analogy of paper. Rather, the better analogy is that the product (disk or CD) is used as a tool like a ladder, screwdriver, or hammer. None of these in isolation have utility yet are used to impart utility. Moreover, just as the composition of materials (metallurgy) speaks to the utility of the traditional tools so does the composition of software instructions speaks to the utility of the software.

  58. Can anyone explain why a piece of paper is not a computer readable medium? I can place a typed page into my scanner and it “reads” it. Is a scanner not a computer. Just asking.

  59. Re some of the above discussion, whether or not any skimpy specification would require “undue experimention” to generate enabling “make and use” software [for a claim requiring that] is a 112 enablement issue, not the 101 patentability issue of the en banc In re Bilski decision. The prior State Street panel decision had also only addressed the 101 issues.

  60. The cited Wikipedia definition of a Beauregard claim is: “Beauregard claims cover a computer-readable medium such as a storage device, e.g., a floppy disk or CD, or even a communication media, containing a set of instructions that causes a computer to perform a process.” I do no see how the claim copied here fits that definition, nor did the Board say it was such a claim. it looks more like a typical “software” operational method claim to me. I would also bet this Board decision was written before In re Bilski was decided, not that I think that would have made any difference here. In Re Alappat (Fed. Cir. 1994), also en banc, seems more relevant.

  61. “Paul and MM can’t both be right.”

    But they can both be wrong. Paul certainly is – no way does it take 2-3 years to code the basics of the State Street system. Sure, a real-world implementation might take that long by the time the the project goes through a requirements development phase and gets loaded up with a bunch of (sometimes inconsistent) bells and whistles, but that’s not a function of the complexity or lack of detail in the invention.

  62. MM: all software is obvious, and PHOSITA coder can make it. (paraphrased)

    Paul Cole: The specification is “the outline of a 2-3 development programme” and doesn’t “the skilled person how to do or make something useful in the real world on the basis of only routine skill.”

    OK, anti-software folks, which is it? Is all software just a shrug of a PHOSITA’s shoulders, or is it inventive but generally insufficiently disclosed?

    Paul and MM can’t both be right.

  63. phil s: no processor? what is a “logic processing module”?

    paul cole: “2-3 year development programme”?

    State Street :: “[T]ransformation of data, representing discrete dollar amounts, by a machine through a series of mathematical calculations into a final share price, constitutes a practical application of a mathematical algorithm, formula, or calculation, because it produces ‘a useful, concrete and tangible result’ — a final share price momentarily fixed for recording and reporting purposes and even accepted and relied upon by regulatory authorities and in subsequent trades.”

    MPEP § 2107.01I :

    Practical utility is a shorthand way of attributing “real-world” value to claimed subject matter. In other words, one skilled in the art can use a claimed discovery in a manner which provides some immediate benefit to the public.

    Nelson v. Bowler, 626 F.2d 853, 856, 206 USPQ 881, 883 (CCPA 1980).
    Practical considerations require the Office to rely on the inventor’s understanding of his or her invention in determining whether and in what regard an invention is believed to be “useful.” Because of this, Office personnel should focus on and be receptive to assertions made by the applicant that an invention is “useful” for a particular reason.

  64. The issues raised in Bilski cannot be avoided simply by tweaking claim language slightly. The specification has to disclose an invention, the invention has to be novel and not obvious, and it has to be properly described. Functional concepts have to be fleshed out with proper structure, otherwise there are issues under 35 USC 112(6). The specification has to teach the skilled person how to do or make something useful in the real world on the basis of only routine skill.

    Many alleged inventions in the business method field live in a floating world, detached from reality. Presumably they run on a computer network. How do they operate? What operating system does the preferred embodiment run on? What are the program modules used – are they generated in-house or are they versions of well known commercially available software, and if so which? How are they all made to work together, and are there any problems involved? Investigation of the details may reveal many good patentable inventions. But high-level arm-waving specifications do not teach anyone much.

    It is worth a close look at the actual patent in issue in State Street. Could you put the disclosure of that specification into the hands of a system development team, and have them translate the concepts straightforwardly into hardware and software. Probably not – you would simply be giving them the outline of a 2-3 year development programme, not a set of ideas and instructions that they could directly use. And there is the weakness in many patents in this field.

  65. The question of whether a computer implemented process embodied in a tangible form remained patentable post Bilski concerned many practitioners.. nice to see this common claiming format upheld, at least at the BPAI level. Note that no where in the above claim is a “processor” mentioned. It will be interesting to see if the Bilski decision causes a flood of reexams.

    PhilS

  66. Here’s the deal: yes, we can all agree that a composition with a novel combination of dots or magnetized particles on it is meets 101. It’s an article of manufacture, not a method. It’s not a law of nature or an abstract concept. When its read by a computer, it imparts some functionality to the computer, so I guess it has some utility.

    But the Examiner is right about the readable-medium not producing “any tangible result.” Of course it doesn’t. The tangible result is produced by a computer practicing a method, just as a chef produces a cake by practicing a recipe.

    Or a robot reading instructions on a piece of paper.

    Can you patent new instructions written on an old piece of paper? No.

    Can you tell my why not without contradicting the “law” respecting Beauregard claims?

    No.

  67. “the BPAI affirmed the examiner’s contention that the claim was also unpatentable as obvious.”

    Ya think?

  68. “Though not finally adjudicated, this practice is not inconsistent with In re Nuijten.”

    Wow, that’s some really strong affirmation there. BWAHAHAHHAHHHHAAHHAHAHHHAHAAH!!!!!!

  69. “where’s Malcolm. It is only 8:15 pm on the West Coast.”

    Check the local ER rooms — your best bet is to find someone who either OD’d or in a straight-jacket raving like a madman.

  70. It’s a shame that examiner didn’t get that rejection upheld he should have used my argument instead of 101 and taken care of Beauregards right then and there.

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