Software Method Claims: Bilski in light of Benson

In re Bilski and Gottschalk v. Benson

It is important to remember that the Supreme Court’s decision in Gottschalk v. Benson is still controlling law. In that 1972 decision, the Supreme Court held unpatentable a method of converting a signal from “binary coded decimal” into “binary.” The Benson method operates by using a “reentrant shift register” – a particular electronic memory circuit of the day. The rejected claim reads as follows:

8. The method of converting signals from binary coded decimal form into binary which comprises the steps of:

  • storing the binary coded decimal signals in a reentrant shift register,
  • shifting the signals to the right by at least three places, until there is a binary `1′ in the second position of said register,
  • masking out said binary `1′ in said second position of said register,
  • adding a binary `1′ to the first position of said register,
  • shifting the signals to the left by two positions,
  • adding a `1′ to said first position, and
  • shifting the signals to the right by at least three positions in preparation for a succeeding binary `1′ in the second position of said register.

In Bilski, the en banc court struggles with Benson because – on its face – the rejected Claim 8 from Benson satisfies the machine-or-transformation test of Bilski. The claimed BCD conversion method is tied to a particular machine. The Bilski majority admits as much: “the claimed process operated on a machine, a digital computer, but was still held to be ineligible subject matter.” According to the en banc panel however Benson’s claim still fails the machine-or-transformation test because the claimed physical limits were “not actually limiting.” In particular, since the only uses of the BCD converter would be on a computer, tying the claims to a computer offered no practical limitation to the otherwise preemptive claim of an algorithm.

“[I]n Benson, the limitations tying the process to a computer were not actually limiting because the fundamental principle at issue, a particular algorithm, had no utility other than operating on a digital computer.”

Thus under Bilski/Benson, tying a software algorithm to particular computer hardware may well be unpatentable subject matter if the patent would still preclude all practical uses of the otherwise unpatentable algorithm.

Notes:

  • Patently-Unobvious suggests that careful drafting could have avoided the whole problem for Benson: “If only the inventors had been less forthcoming, more obtuse, and called their claim a method for operating a shift register, who would have seen that the machine-implemented signal processing method surprisingly also happens to convert a binary coded decimal signal into a binary coded one?”

85 thoughts on “Software Method Claims: Bilski in light of Benson

  1. Wow, patent enforcement seems to be a hotly debated topic these days. I see the issues in trying to enforce a patent on a computer program or process. Don’t you think stronger patents would help to minimize patent infringement?

  2. Noise,
    This thread is not about the BPAI’s Halligan case you’re so concerned about. My above comments are directed to Dennis’ caption. Also, the BPAI did NOT leave out “meaningful limits” (please read the case), and “meaningful limits” is an issue in this thread. Finally, regardless of where you think this thread is directed, my comments are also indeed on point with the BPAI’s Halligan case.

    In a nutshell, the BPAI’s analysis is correct up to the point where they say something bass ackwards, which I will discuss later. But the BPAI’s analysis is correct (and consistent with Bilski and what I said above) in that the addition of a computer to an otherwise patent-ineligible method claim will not render the claim patent-eligible unless the computer “meaningfully” limits the scope of the claim. Here is the BPAI, which you conveniently left out of your quote above:

    BPAI: “Claims 119 and 120 recite a method performed on a programmed computer. This recitation fails to impose any meaningful limits on the claim’s scope as it adds nothing more than a general purpose computer that has been programmed in an unspecified manner to implement the functional steps recited in the claims. Were the recitation of a ‘programmed computer’ in combination with purely functional recitations of method steps, where the functions are implemented using an unspecified algorithm, sufficient to transform otherwise unpatentable method steps into a patent eligible process, this would exalt form over substance and would allow pre-emption of the fundamental principle present in the non-machine implemented method by the addition of the mere recitation of a ‘programmed computer.’”

    As I alluded to earlier in this thread, in my humble opinion, what Bilski really means by “meaningfully limit the scope of the claim” is that the addition of the computer must limit the PREEMPTION of the fundamental principle, notwithstanding any effects on the INVENTION. Speaking of which, the addition of the computer of course limits the invention; it is common sense that adding anything to a claim limits the claim. But Bilski in reconciling Benson and the BPAI in Halligan (albeit not as clear) are simply saying, “hey, if you tie the method steps to a computer, this tying-in better well limit how much your claim preempts others from using the fundamental principle recited in the method steps. We do not care that you tied-in the computer and limited the scope of your invention, as that is not enough. If the tying-in does not limit the preemption, well, we’re gonna reject your claim, simply put.” I see no problem with this approach in the machine-or-transformation test, and I think it seems reasonable in the context of addressing the preemption issue.

    Here’s the way I see it. If your method claim is to produce a semiconductor chip, and one step requires “conducting a Fast Fourier Transform of X to obtain Y,” then you are preempting use of the FFT algorithm. If you tie in a spectrum analyzer (whether analog or digital) to conduct the FFT algorithm, then in my opinion you really have not “meaningfully limited” the scope of preemption because there really is no other way to conduct an FFT algorithm. Contrary to what you proclaim, the “meaningful limit” IS the central issue discussed in Bilski in reconciling Benson, and also the concern the BPAI has in Halligan. Now, whether you agree with Bilski’s reconciliation of Benson’s claim 8 or the BPAI’s treatment of Halligan’s claims 119 and 120, well, that is up to you. But I see no problem with the analytical framework and the logic behind it.

    As I mentioned, the BPAI was humming along pretty good until they make this bass ackwards statement suggesting that adding a computer constitutes a “field-of-use” limitation:

    BPAI: “Such a field-of-use limitation is insufficient to render an otherwise ineligible process claim patent eligible. Bilski, slip. op. at 15, citing Diehr, 450 U.S. at 191-92 (noting that eligibility under § 101 “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.”).”

    This leaped out at me as a huge flaw in the BPAI’s analysis or write-up. To me, this shows the BPAI is confused as to what is a “field-of-use” limitation. I simply do not see how adding a computer constitutes a “field-of-use” limitation, as explained in my post above at Nov 26, 2008 at 12:40 AM. This is quite unsettling, considering this is the BPAI’s first real application of the machine-or-transformation test. For now, I am going to take the BPAI’s statement as merely a hiccup in their apprehension of the machine-or-transformation test. Hopefully the courts will not see “field-of-use” in the same way as the BPAI in Halligan. In Halligan, I would think a field-of-use limitation would be something like the use of the principle is limited to the field of trade secrets, or something like “the provided predetermined criteria, the received numerical score, and the calculated metric correspond to the Smith Standard in the field of trade secrets.” This would limit the use of the principle in the claim to only one field, trade secrets, and such “field-of-use” limitation would of course fall victim to the machine-or-transformation test.

    Finally, Noise, your argument that the courts clearly got Benson’s claim 8 wrong seems a misuse of the term clearly and a misunderstanding of the phrase “meaningfully limit.” The courts concluded, presumably based on reliable evidence of the day, and presumably from a practical standpoint, that the algorithm in Benson had no utility beyond use with a digital computer. Applying the machine-or-transformation test: the shift register does not meaningfully limit the preemptive footprint of the use of the algorithm in Benson’s claim 8, and therefore claim 8 is not patent-eligible. I do not see a problem with the analysis, and again, if you disagree with the conclusion, well, that is your choice.

  3. confused SCOTUS,

    Please explain “The Bilski decision is not concerned with whether the addition of the computer limits the INVENTION. The limit is on preemption.” as this seems circular at least, and not on point to the discussion thread. There was no computer in Bilski, so obviously, Bilski could not address the computer limitations. This discussion thread is hypothetically adding a coomputer implementation to the claims and positing that such a limitaiton would pass the subject matter test as stated in Bilski. As such, limitations to the invention (as defined in the claims) is most material. The discussion focal point is also not on the Federal Circuit, but on the BPAI.

    Further, the “meaningful limits” of the tie-in by the Federal Cicuit is also not an issue in this thread – the issue is the broadening being applied by the BPAI, who is taking Bilski and applying it to justify its anti-Software patent philosophy and the large scale wielding of 101 rejections sure to follow. The BPAI left out “meaningful limits” and used “field of use”. It is this irrational “field of use” that we are discussing. Indeed you are confused.

    Finally (and clearly in my humble opinion), the courts got Benson wrong. Not only did Benson tie to a computer, but Claim 8 tied to a particular device, the shift register. Also, the digital computer tie does not pre-empt the whole of the application of the algorithm. An analog computer could use the algorithm, especially in a convertor use when configured to interact across a multi-platform system involving both digital and analog computers.

  4. Noise:
    “The addition of a computer to implement steps would be an addition to LIMIT the invention. The invention, thus limited, theoretically would not pre-empt.”

    The Bilski decision is not concerned with whether the addition of the computer limits the INVENTION. The limit is on preemption. Moreover, the mere addition of a computer does not necessarily, much less theoretically, render the claim as non-preempting. This is the very issue the Federal Circuit grappled with in reconciling the machine-or-transformation test with the Supreme Court’s Benson decision. The method claim in Benson WAS TIED TO A COMPUTER to implement its steps. The Federal Circuit noted however that the tying-in of the computer in Benson DID NOT LIMIT THE PREEMPTIVE FOOTPRINT of the claim because all uses of the fundamental principle (i.e. converting bcd to pure binary format) were still covered by the claim. Ergo, Benson’s claim was not patent-eligible even though the method steps of the claim were tied to a computer. The reason was that the only possible use of the fundamental principle (i.e. converting bcd to pure binary format) was on a computer. Thus, in the Federal Circuit’s view of the Benson claim, tying the method steps to a computer had no “meaning”. And I think this is why the Federal Circuit threw in the caveat that the tying-in of a machine must “impose meaningful limits on the claim’s scope.” This additional “meaningful” consideration of the machine-or-transformation test ensures that the tying-in of the machine reduces the pre-emptive footprint of the otherwise patent-ineligible method claim.

  5. confused SCOTUS,

    Your question as to “field of use” should be directed to the BPAI, it is their use of the term that is questionable. If the BPAI is discussing preemption, then use preemption, do not use field of use. The quote used is directly from BPAI.

    The analogy to 103 fails and is more apt to confuse rather than clarify. However, I will try to address what I think you are getting at. The addition of a computer to implement steps would be an addition to LIMIT the invention. The invention, thus limited, theoretically would not pre-empt. There is a different question as to whether the computer limitation is “extra” solution or not, which the BPAI does not address in its tie to “field of use”.

    I believe the point Dennis is showing is that the BPAI is trying to use “field of use” to create a “global” programmed computer method exception, where no such exception exists in law and in fact, was definitively stated in Bilski as NOT being created.

  6. Noise above Law,

    How does the addition of a “programmed computer” result in a field-of-use limitation, or a “particular technological environment”? The field or technological environment of “computers”? I don’t think that is the “use” the Federal circuit is speaking of with respect to field-of-use limitations. The use their speaking of is the use of the fundamental principle, not the type of machine tied to that use. For example, a field-of-use limitation would be something like attempting to limit Bilski’s claim to only the field of commodities trading. If a method claim pre-empts all uses of a fundamental principle, and adding a token computer still results in substantial pre-emption, the method claim is still not patent eligible. Why? Well, arguably the computer does not “impose meaningful limits on the claim’s scope” if it does not affect the pre-emption outcome.

    Also, consider this analogy to 103: the Federal Circuit has held that adding electrical capabilities to well-known mechanical capabilities is obvious (Leapfrog). Does adding a “computer” to implement steps in an otherwise patent-ineligible method claim render the method claim patentable?

  7. An obvious problem with Bilski…

    The BPAI will take the law to be whatever they want it to be in absence (or not) of clear direction from the “real” courts.

    Especially love the following:
    “Process claims 119 and 120 recite “a programmed computer method” in which each of the process steps is performed by the programmed computer. The issue presented by these claims is whether recitation of a programmed computer suffices to tie the process claims to a particular
    machine. This is the exact issue that the court in Bilski declined to decide. …
    …Were the recitation of a “programmed computer” in combination with purely functional recitations of method steps, where the functions are implemented using an unspecified algorithm, sufficient to transform otherwise unpatentable method steps into a patent eligible process, this would exalt form over substance and would allow pre-emption of the fundamental principle present in the non-machine implemented method by the addition of the mere recitation of a “programmed computer.” Such a field-of-use limitation is insufficient to render an otherwise ineligible process claim patent eligible. Bilski, slip. op. at 15, citing Diehr, 450 U.S. at 191-92 (noting that eligibility under § 101 “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.”).”

    So,… the first prong “tied to a machine” is either attempting to limit to a particular technological environment or pre-empts the non-machine implemented method. It’s one thing to 112 this for lack of specified programming, but the BPAI is running hog wild with the 101 void.

    In passing the buck, the appeals circuit in Bilski exacerbates the problems instead of following their mandate and making the law clear.

  8. Bilski bytes again.

    Just noticed a new BPAI decision posted today based on Bilski and addressing the “particular machine” issue:

    09757206 – (D) 20081588 NONE 20020077941A1 06/20/2002 NONE NONE 11/24/2008 Ex Parte Halligan et al

    In essence the BPAI appears to be saying that a “general purpose computer” that is programmed, but not with a very specific algorithm, is not a “particular machine”.

  9. “My take is that Fed. Cir. is saying that Benson doesn’t make sense when you look at the claims, so we should all pretend that “the claims purported to cover any use of the claimed method in a general purpose digital computer of any type.”

    I can see where you come up with that, because it is indeed what it appears they said. However, just because they said that doesn’t mean that is in fact what actually happened back when. The truth is probably much more banal. If I had to guess what really went on, Benson probably made an argument in his brief that wasn’t limited to claim 13 where he stated that the claims are not tied to any particular machine and the court held him to it. Since the claim he actually wanted was 13 he probably didn’t bother to go against it.

    If only we had the complete prosecution history.

    You state that “tie” is up in the air, but I’m pretty sure that there is some settled principles in place for that, but I’ve forgotten where they come from.

    PDS, I showed you my background didn’t I? The skull and crossbones with “examination” above it. That’s right, we’re pirates. Robbing from the rich applicants to give to the poor public. Six is my name, and stealing subject matter is my game. Have you seen our treasure horde? Over 7 million rich! That’s OVER 9000!!!!!!!111

  10. 6,

    No bamboozling (at least I don’t think so). Bilski relies on Flook, Benson, Diehr, etc.

    Satisify either prong, it is 101 patentable — so “tie” it to a “particular” machine, and it’s 101. Now what “tie” and “particular” mean is up in the air as far as the law goes, but the BPAI has been busy….

    See FN9 in Bilski regarding Benson. My take is that Fed. Cir. is saying that Benson doesn’t make sense when you look at the claims, so we should all pretend that “the claims purported to cover any use of the claimed method in a general purpose digital computer of any type.” (Bilski, quoting Benson).

    BTW, the Love memo was pre-Bilski. It now recites the law, though, so it is effectively binding on all of us.

  11. Anon, did you just bamboozle me? They were quoting from Benson and then indirectly applying “an argument that could be made from Flook”:

    “A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing. See Benson, 409 U.S. at 70 (“Transformation and reduction of an article ‘to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines.”); Diehr, 450 U.S. at 192 (holding that use of mathematical formula in process “transforming or reducing an article to a different state or thing” constitutes patent-eligible subject matter); see also Flook, 437 U.S. at 589 n.9 (“An argument can be made [that the Supreme] Court has only recognized a process as within the statutory definition when it either was tied to a particular apparatus or operated to change materials to a ‘different state or thing'”);”

    Here is the citation from Flook, it’s in a footnote:

    link to caselaw.lp.findlaw.com

    “The statutory definition of “process” is broad. See n. 8, supra. An argument can be made, however, that this Court has only recognized a process as within the statutory definition when it either was tied to a particular apparatus or operated to change materials to a “different state or thing.” See Cochrane v. Deener, 94 U.S. 780, 787 -788. As in Benson, we assume that a valid process patent may issue even if it does not meet one of these qualifications of our earlier precedents.”

    So the rational apparently comes from Deener. In any event, whether or not that holding is true, we need to evaluate what the words therein are saying. That would be that the method must be tied to an apparatus.

    Tying a method claim to an apparatus, as I understand it, used to involve more than just reciting that you used the apparatus in the process. It had to pretty much be operably linked correct? It seems to me that it is likely that the key here is the operably linking part between the apparatus and the method which may be the determining factor. I’m going to have to stand by the assertion that it is not the apparatus limitations that determine if you get in as a process or not, tying the apparatus to the method however may very well get you in. In actual fact, this can be seen in one of my cases which I mentioned supra iirc. They rewrote the claim so that there are still apparatus limitations present, but they are operably linked to the method claim and that I have to find as acceptable.

    In any case, perhaps I am mistaken as to my reasoning but I do not think you have fully explained away my argument as to claim 8 not passing muster as being a process because its recitation of an apparatus is not limiting, and also that in similar cases apparatus limitations simply are not limiting. As Landis brings up, it is the tie between the apparatus and method which can be important and thus sometimes is required to be inserted.

    To see Benson:

    link to caselaw.lp.findlaw.com

    As to the thing from Love, they’re just trying to piece together the holding in Bilski it seems to me. As to it being binding or not, I will not say. It may bind me to needing to go convince Mr. Love or his staff of something I believe. Also, there are quite a few competent examiners who I’m quite sure never read that memo, and any number of other memos issued.

    Any examiner reading this that has verifiably read all memos please raise your hand. I’m going to need you to verify it before you get your +1 internet.

    I might delve a little deeper into this later but I’ve gtg for now.

  12. 6 wrote: “However, the patentability of the claim can never be predicated solely upon the appratus [sic] structural limitation. In other words, they serve, in practical effect, to limit your claim’s ability to capture infringers, but add all but nothing to the claim’s ability to be affirmed as valid.”

    Mouse wrote: “Isn’t that true only for 102/103 analysis and not 101?”

    6 wrote: “Where’s your basis for this detemination [sic]? Did you hear it in law school or something?”

    6, I understand that case law isn’t binding on examiners, so here’s a reference with which any competent examiner would be familiar: “Clarification of ‘Processes’ under 35 USC 101,” memorandum, May 15, 2008, to Technology Center Directors from John J. Love, available at link to uspto.gov (listing the Bilski two-prong test, albeit pre Bilski, and elaborating: “Thus, to qualify as a s101 statutory process, the claim should positively recited the other statutory class (the thing or product) to which it is tied…”).

    For further enlightenment, see Bilski, two pronged test, prong (1) (citing Flook): “A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus . . .”.

  13. Dear all,
    E=mc² is a statement of the equivalence of mass and energy. Energy resulting from mass annihilation is in the form of photons; it’s pointless arguing about the physicality of energy.

    Physicists would unanimously argue energy is a physical quantity; you won’t get a credible expert witness to argue otherwise. Mind you, there is some argument about the real nature of the universe, arising from quantization (of time, space, mass, and energy). That argument is still Physics, but the arguments are almost religious in nature.
    The thrust of the argument is that the only good reason for quantization of this type is that the universe is a simulation on a finite (but very large) state ‘machine’, run by a sort of god. “Sort of” because if we have a universe nested within another, the nesting might itself be infinite. Practising Physicists tend to make the observation and drop it as we don’t yet have evidence other than quantization for it.

    The importance for patent law is that in such a universe, everything is abstract and everything is some kind of code. What would then be the point of distinguishing between ideas and implementation for software?
    This takes me back to PHYS 311, thirty years ago. If people find it hard to grasp that energy is physical, I wonder what they would make of temperature?
    In statistical kinematics, working from first principles with quantum states, we find the temperature (T) of a system is proportional to the logarithm of the number of available states. How abstract is that? For systems with just a handful of particles, with a very low temperature you have a restricted number of states which can actually result in the log being negative, hence a negative temperature!
    Physics is strange, though not as strange as Mathematics. I used to find it hard to communicate to fellow-engineers just how strange they were, at the boundaries.

  14. “mass and energy are two forms of the same thing?” no escape for you from the corner you paint yourself into.”

    No, actually I was considering using your own quote against you and figured it might be a low blow. I do this all the time in dealing with lawyers and they always seem kinda sheepish afterwards so I’ve tuned it down lately. Sorry, I should have gone for the kill. In any event, I leave that one as an exercise for the reader since it is so easy I can barely stand it and I’m through arguing.

  15. 6,

    what is your point?

    “No, what is sad is that you believe “energy” is anything other than “a thermodynamic quantity equivalent to the capacity of a physical system to do work” which is most certainly not a physical thing.”

    “Ever hear of the fact that mathematical “equivalence” for the purposes of performing calculations does not make one thing another thing?”

    nice switch in argument from “physical thing” to “same thing”. “Same” was not the point – just because something can be in different states does not make one state “physical” and the other “not physical”. “Mathemmatical equivalance” is a nice smokescreen.

    You didn’t like the Wiki quote: “mass and energy are two forms of the same thing?” no escape for you from the corner you paint yourself into.

    I love how you call “gems” the points which destroy your inane statements.

    When all is lost, declare victory!

    “Btw, here is the ultimate explanation for you:

    This formula also gives the amount of mass lost from a body when energy is removed. So the E in the formula is the energy released or removed, corresponding to a mass m which is lost.”

    So we have a simple system with some mass. we take something away and have less mass. But the thing we took away cannot be “physical”. Hmm, so things like conservation of mass means ….what in your world? How about wave/particle duality? How about photons?

    how is the Ultimate? you agree that mass, something physical, has been lost. Where to? different states of things are still things. The physical universe has many things – matter is physical, energy is physical.Just step in front of my sharks with laser beams to prove “my” ultimate point.

    6, the world you live in must be a nice place, full of gems. Breadcrumbs would be lost on one who takes glee in being lost.

  16. A few thoughts, no particular order:

    1) Bilski only deals with 101 issues with respect to method claims (better referred to as process claims). Bilski doesn’t say anything regarding system claims or apparatus claims or Beuregard claims or means-plus-function claims (step-plus-function claims).

    2) The Fed Circuit did not overturn State Street (despite Prof. Crouch’s statement that “State Street is out”). It just noted what the holding of that case was, namely, that there is no recognizeable “business method exception”.

    3) Bilski introduces a 2-prong test for process claims. If a method is tied to a computer system, it probably will suffice. In contrast, the method recited in Bilski recited mere mental steps.

    4) The Fed Cir didn’t want to say that any method reciting a computer would pass muster under Sect 101. There could be cases in which most steps are mental steps but a few are done on a computer. These cases might not be valid under Sect. 101.

    5) Any computer that is programmed a certain way is a special purpose machine.

    6) Any process executed by a computer results in a change of machine state. Any method executed on a computer is really a method of changing a computer’s state from one to another. This should qualify under the 2nd prong as a transformation of matter but most likely the courts won’t buy this argument.

    7) The PTO is still issuing “business method” cases, software case, etc.

    8) There still is no adequate definition for the term “business method”.

    9) The main problem is still obviousness, second pair of eyes, massive delay, arbitrary examinations, etc.

    10) The Fed Cir would have been better to adopt an “In re Musgrave”-type test but it didn’t because it thought determination of what is withinin the techinological arts to be too thorny.

  17. Step back,

    Your points about laws of nature are true (i.e., that they were never announced or the final word or that they exist as only mere relationships between physical concepts [not even properly described as objects]), of course, but (you undoubtedly also know that) the world of law uses such terms as “laws of nature” and “abstract ideas” as short-cuts to expressing more complex concepts.

    Such short-cuts may not be precise in any arbitrary context, but they are useful when used in a context in which their precision is adequate for the circumstances (i.e., where everything that should be communicated is communicated, and where nothing important is overlooked or confused).

    Are “laws of nature” and “abstract ideas” imprecise in a sense patent law values? Reasonable people may differ, but their significance has a common root of non-inventiveness, whose meaning certainly matters to patent law.

    To the extent that one type of non-inventiveness, based on prior and naturally-occurring existence, is present, referring to that condition as a “law of nature” suits a functional purpose distinct from a genus categorization of all (metaphysically) abstract ideas.

    To the extent that another type of non-inventiveness, based on legitimately creative and original ideas that are not capable of reduction to physical form, is present, referring to that condition as an “abstract idea” for patent purposes is not problematic if everyone in the patent world understand the usage of that term-of-art. Our modern understanding of science suggests other/better meanings of the phrase, but that’s “spilled milk” at this point.

    I do agree with you that something important is going on when electrons change energy levels in a semiconductor, thereby changing temporary conditions in that chip. Saying that matter has necessarily been transformed, however, conflates energy with matter, Einstein’s equation notwithstanding. If our lives were lived at a level that Heisenburg’s Uncertainty Principle were meaningful to us, your point has very legitimate meaning. However, Article I Section 8 was written with (at most) a Newtonian-like understanding of the world. Those jurists that take an originalist view of interpretation would disallow signals for that reason, much like they would disallow patenting waves created on a lake, due to their temporal nature, and certainly known to the Founding Fathers.

    Finally, the fact that Benson recited physical steps is the beginning, not the end, of the patentability analysis. If you can say in good faith that you believe Benson’s steps were meaningfully creative and distinct from the underlying relationship between BCD and binary numbers, even in light of the long division example, then please help me to understand why. That would be more persuasive than the old saws of “they chose their answer and found a way to get to it” or “legislating from the bench.” One must assume the CAFC is very cognizant of how their conclusions will be further scrutinized, and they have acknowledged as much.

  18. “Not until the discovery of the first type of antimatter (the positron in 1932) was it found that all of the mass of pairs of resting particles could be converted to radiation.”

    There’s one amongst many gems that show my point.

    Oh, look, here’s another.

    “Mass–energy equivalence says that a “body” (i.e. a mass) has a certain energy, even when it isn’t moving. ”

    If something must be converted to something else then the first thing was not the second thing. If a certain thing “has” another certain thing, then it is not the other thing. They may be equivalent for the purpose which we are concerned, but they are not the same thing. Why is this hard for you to understand? A bunch of pre-processed aluminum ore is not an aluminum can. If energy is something physical then why can I not sit upon it? If mass is energy then why can I not run my lights with the plastic bottle on my desk? Because neither is the other. End of story, end of analysis, end of discussion in the cases in the CAFC and end of my arguing with you. When you learn to think then we can continue this discussion by your agreeing with me.

    Btw, here is the ultimate explanation for you:

    This formula also gives the amount of mass lost from a body when energy is removed. So the E in the formula is the energy released or removed, corresponding to a mass m which is lost.

  19. “So when the Supreme Court (or others) speak separately of “abstract ideas” and “Laws of Nature” they are betraying their misunderstanding. Both are merely abstract ideas.”

    Or maybe they show that they understand that the two are the same, but that they’d like to make certain that other, more simple, minds understand that they are the same and that both fall under the same category of stuff they wish to address.

  20. “Ever hear of the fact that mathematical “equivalence” for the purposes of performing calculations does not make one thing another thing?”

    keep digging 6, keep digging. No breadcrumbs for you.

  21. Well, I’m glad breadcrumbs brought up E=mc^2

    and that DaveM brought up “Law of Nature”

    because that highlights the unscientific thought process of judges and others. There are no “Laws of Nature” if one wants to be precise in one’s thinking. Mother Nature is both mute and deaf. She does not speak her “laws” out and she does not hear the noises we humans make.

    Maybe E=mc^2 is an accurate depiction of how the Universe works or maybe it should be E=mc^1.99 or maybe it should be E=(m*)c^2.01 where m* is the Lorentz transformed mass. In any of these cases, these are our “ideas”, our mental models of how we humans think the Universe operates. Mother Nature has never announced any of them to be the final word.

    So when the Supreme Court (or others) speak separately of “abstract ideas” and “Laws of Nature” they are betraying their misunderstanding. Both are merely abstract ideas.

    On the other hand when a bit flips in a physical digital machine, real energy has been spent and matter has been transformed from one state to another. To say that these real and physical changes are abstract ideas is ridiculous.

    Benson’s claim 8 recites real physical steps. However the Bilski panel poo poohed them as being “insignificant” and not part of the “gist” of the invention –as “extra-solution” activities. Bilski’s claim also recited real physical steps. Newman’s dissent in Bilski goes into detail on these issues (as applied to Bilski’s claim steps). So there is no need to repeat the same here. It is the irrationality of the Bilski majority that is troubling. what is understood is that they got to where they wanted to go, namely, to limit the number of process applications that are filed. It’s how they got there (legislating from the bench) that is troubling.

  22. “Ever hear of that? I’m pretty sure you know what the “m” stands for.”

    Ever hear of the fact that mathematical “equivalence” for the purposes of performing calculations does not make one thing another thing?

    brb

  23. Focusing on Benson not Bilski, on the belief that a good understanding of Benson is needed to begin discussion of Bilski, this discussion has isolated the three apparent issues with claim 8 of Benson. The third issue is where the controversy seems to exist:

    1. whether the inclusion of a structural element (e.g., reentrant shift register) in a method claim creates patentability that would not otherwise exist in light of the remainder of that claim: the point about Ex Parte Dammers seems well-taken, so the answer is NO

    2. whether a method which does nothing more than translate between one representation of a number (e.g., BCD) and another representation of a number (e.g., binary), where the two representations are related by a direct mathematical transformation, is patentable: the answer is NO, due to the transformation being a natural law

    3. whether a method that is based upon a natural law (e.g., BCD conversion in discrete electronics or multiplication in a microprocessor) could be enhanced through creative endeavors that merit patent protection under the existing patent laws: Benson doesn’t answer this question except as to Benson’s particular implementation of BCD conversion, which SCOTUS rejected.

    One might reasonably say that Benson’s implementation is so closely tied to the transformation implied in the natural law as to be indistinguishable. Although one may also say that the shift register aspects of the method distinguish the transformation, incorporation of the shift register is arguably only a means for focusing on transforming one bit at a time, much like children are taught to perform “long division” through operations on one digit at a time. Thus, the shift register aspect of the purported invention was conceptually trite and the natural law predominated.

    If this (or some similar) interpretation of issue 3 is accepted, and reasonable people may differ of course, then creative claim drafting isn’t going to solve the problem. I admit this is a conclusory statement, but please read on, because I care little about saving Benson or similar patent applicants in such situations.

    My hypothesis: if Benson had developed a more elaborate method, which initially transformed the BCD number into an intermediate form, and then later operated on that intermediate form to produce the binary number, that method could be patentable if the intermediate form and its transformation were “inventive.” Inventiveness would exist if Benson “created” the intermediate form and transformation to solve the problem presented by otherwise impractical implementations.

    In Benson’s case, there was no need to use a more elaborate method (involving intermediate forms), since the BCD->binary relationship was so direct. Other applications (e.g., computer multiplication), however, routinely reduce the multiplier and multiplicand (the two digits being multiplied) into intermediate forms and transformations that were created (or identified, if you prefer) solely to address that specific purpose; more direct approaches are manifestly impractical. The fact that these intermediate forms and transforms may be mathematically-based does not mean they are a natural law; instead, their existence (or our utilization of them, if you prefer) is artificial and only due to the purpose they serve – to remove the barriers existing with impractical approaches through creation of a practical solution.

    Viewed in the more conventional rubric of innovation, such “algorithms” seem to fit comfortably within our notions of what the patent laws were meant to protect.

    Viewed also in a more metaphysical sense, this seems consistent with our understanding of how method patents for compositions-of-matter work; the method transforms matter into something else, and the method is patentable subject matter, even though we recognize that nature inherently created the ability to transform matter into (all possible) other forms. Our choice of how to do so (e.g., the method), as a means to an end (e.g., solving the problem we face), is what we provide patent protection for.

    This is how I read Benson.

  24. 6,

    “No, what is sad is that you believe “energy” is anything other than “a thermodynamic quantity equivalent to the capacity of a physical system to do work” which is most certainly not a physical thing.”

    E = mc^2

    Ever hear of that? I’m pretty sure you know what the “m” stands for.

  25. “Isn’t that true only for 102/103 analysis and not 101?”

    Where’s your basis for this detemination? Did you hear it in law school or something?

    Frankly, I’ll be fine if it is and my interpretation here of Landis and Dammers the first time I reviewed it was wrong. But nobody shows anything to support their point of view.

    Btw Bloom, iirc you were the same one that was involved in the discussion last time it came up. In the response to that case the claim was completely rewritten so that there was no ambiguity as to if it was an appratus or method claim, and the apparatus limitations were only put in the new claim such that the method steps themselves would require something like the appratus limitations anyway. As that case and others have demonstrated for me it seems that lawyers get stuff right after a rejection based on such arguments irl, they only really argue about things like this online etc. Perhaps reality only sinks in when you guys recieve an OA that requires money for you to respond to. Or maybe the client demands you get your sht together. Idk, but I do know that getting results is a lot easier with an OA than it is on here.

  26. “Subject matter eligibility is a threshold inquiry, and has nothing to do with novelty or anticipation. Thus, supposed maxims regarding how to distinguish method claims from the prior art are completely irrelevant.”

    Do you have a link to Dammers? I looked it up a long time ago and forgot to favorite it. It took me forever to find the dang thing last time and was taking the same amount of time when I just tried to review it again the other day.

    In any event, this is not a supposed maxim as to how to distinguish a claim. If you actually read the passage in Landis you will see that he has stopped addressing how to distinguish, and has started telling you why you should refrain from including apparatus limitations.

    Here, let me reproduce the relevant paragraph for you since you don’t feel like clicking a link.

    “Although there is no per se objection to including structural appratus limitations in the elements (steps) of method claims, when the steps are properly phrased in method language, the use of such limitations should be avoided insofar as possible for at least two reasons.

    First, apparatus limitations will often unduly limit the claim. If a method step can be performed by hand and without a COOPERATING apparatus, avoid reciting the appratus, at least in the earlier of the claims. If the practicioner nonetheless wants to claim the non-cooperating appratus element, save it for a following dependent claim. Second, AND MORE IMPORTANT, the black letter law is that the patentability of a method claim cannot be predicated solely on the structure of a mechanism used in practicing the method. Obviously, a structure associated with a claimed method will be selected because the structure and its mode of cooperation may be claimed. But patentability of the method cliam will still turn on the method steps, PERHAPS PERFORMED WITH THE COOPERATING APPRATUS, and patentability of the method claim will NOT TURN on the presence of an apparatus that is not associated with a method element. Accordingly, thre is usually no point in including the structure excertp where the method necesarily involves manipulation of apparatus. There is no objection to including composition of matter or chemical limitations in method claims, and in fact these are frequently relied on for patentability as noted in section 4:7.”

    Landis is not simply referring to 102/103/112 and there is no reason to limit his statements to such. Your assertion that I’m still extrapolating a sentence (perhaps an overbroad sentence) is baseless. There is no extrapolation taking place, he said what I’ve now recited. In fact, you can replace what I’ve recited with his exact sentence and not have used his sentence out of context. What the man is saying makes absolute sense, and there is no reason to believe otherwise.

    “Subject matter eligibility is a threshold inquiry, and has nothing to do with novelty or anticipation”

    Never said it isn’t or did. If your claim fails to reach the threshold without being predicated on an appratus limitation then it fails. There may be an interaction step that requires a specific apparatus, and that step is still good to rely upon. Simple as that. Now if the Bilski judges will further investigate in subsequent cases we’ll be through with most of the nonsense raised by the case.

  27. step back:

    J. Moore is M.S. and B.S.E.E. from MIT. Linn is a B.S.E.E. from RPI. Gajarsa is a B.S.E.E. from RPI, too.,

    6:
    “However, the patentability of the claim can never be predicated solely upon the appratus structural limitation. In other words, they serve, in practical effect, to limit your claim’s ability to capture infringers, but add all but nothing to the claim’s ability to be affirmed as valid.”

    Isn’t that true only for 102/103 analysis and not 101?

  28. “The sad thing is that today’s “modern” Federal Circuit panel hardly has any technically trained people on it. Pauline Newman is one of the last. We are leaving the Age of Enlightenment and returning to Medieval times, even in patent law. There is only so much that Judge Newman can do to fight the tsunami. In Bilski, she points out how ridiculous the majority decision is. But alas, that’s like spitting into the wind. The rest of her colleagues believe that energy is not a “physical” thing (see In re Nuitgen) and that “process” means the Medieval arts.”

    No, what is sad is that you believe “energy” is anything other than “a thermodynamic quantity equivalent to the capacity of a physical system to do work” which is most certainly not a physical thing. Or perhaps even “a scalar physical quantity, an attribute of objects and systems that is conserved in nature. In physics textbooks energy is often defined as the ability to do work or to generate heat.” which is also not a physical thing. Both are abstractions made up to describe a relationship between physical things.

    Maybe the wiki will change your mind.

    link to en.wikipedia.org

    And while Newman’s dissent is decent in that it points out flaws, it presents no better point of view iirc. This being because her views are equally ridiculous, for various other reasons.

  29. “So, I’ll restrain myself from extrapolation. The patentability of a method claim cannot be predicated soley on an apparatus limitation. This applies to the 101 patentability determination just the same as any other. How then would they predicate (affirm) the patentability of claim 8 upon the apparatus structural limitation “shift register”? Answer is: They could not.”

    Didn’t you just say the exact same thing again? Sorry, it’s still rubbish.

    Neither Landis nor Ex Parte Dammers was addressing subject matter eligibility. Notwithstanding the fact that Landis accidently makes an overbroad statement, without further support, you can’t simply declare “This applies to the 101 patentability determination just the same as any other.”

    Subject matter eligibility is a threshold inquiry, and has nothing to do with novelty or anticipation. Thus, supposed maxims regarding how to distinguish method claims from the prior art are completely irrelevant.

  30. “I’ll save D the trouble. Landis’ comment is fine. But your extrapolation from Landis’ commentary doesn’t follow, and is absolute rubbish.”

    Actually you are right. I definitely over extrapolated into the practical realm from the legal bs realm.

    Where I said:

    “Bottom line. The apparatus limitations relating to the apparatus performing the method in a method claim, such as claim 8 above, are not limiting. ”

    I was wrong. In fact, the apparatus structural limitations are limiting on the claim. However, the patentability of the claim can never be predicated solely upon the appratus structural limitation. In other words, they serve, in practical effect, to limit your claim’s ability to capture infringers, but add all but nothing to the claim’s ability to be affirmed as valid.

    So, I’ll restrain myself from extrapolation. The patentability of a method claim cannot be predicated soley on an apparatus limitation. This applies to the 101 patentability determination just the same as any other. How then would they predicate (affirm) the patentability of claim 8 upon the apparatus structural limitation “shift register”? Answer is: They could not.

  31. From my recollection of Benson, I think the reason SCOTUS got that decision wrong is that they decided that Benson’s algortithm exhausted BCD to dinary conversion, when in fact it is only one of many algorithms that one could write to do BCD to binary conversion. Benson wanted to patent it because it was faster than other algorithms, but with today’s computers, the difference in CPU cycles saved is hardly a significant issue. You could use a different algorithm, and the time difference would be in nanoseconds. Even with the then current computers, unless one is going to do billions of BCD to binary conversions for some calculation, the time difference is negligible.

    More importantly, there is no issue that a novel digital circuit would patentable. One can program a computer to accomplish the same task that the patentable digital circuit would do (e.g., provide a transfer function in software rather than in hardware). Are we being told that the programmed computer that performs the same operation as the digital circuit is unpatentable? Why does that outcome make any sense at all? If you put each one of them in a “black box” and you pick one “black box” at random, you can’t tell which is actually doing the work.

  32. “In relevant part: Second and more improtant, the ‘black letter’ law is that the patentability of a method claim cannot be predicated solely on the structure of a mechanism used in practicing the method. See Ex Parte Dammers.”
    Therefore, patentability, even under 101, cannot be predicated solely on the structure of a mechanism used in practicing the method.
    I would like to hear what your opinion on this little excerpt from Landis is D.”

    I’ll save D the trouble. Landis’ comment is fine. But your extrapolation from Landis’ commentary doesn’t follow, and is absolute rubbish.

  33. Terry,

    You actually studied some electronics and admit to being a bit fuzzy on it. (A 7-segment display, BTW for you young folk, is how they used to display numbers in the vacuum tube days before flat panel LCD displays were invented. The number 8 can be drawn as two squares, one on top of the other and that gives you 7 independently driven line segments. Light up the two segments on the right to give you a “1”, light up the top and bottom as well to get a “3”, and so on.)

    So imagine Terry, how confused the Supreme Court judges get when some fast talking lawyers get in front of them and start talking gobbledygook about “software” being abstract and intangible and about the whole preemption of an “algorithm”. Lions and Tigers and Bears, Oh My!. None of the Supremes (as far as I know) in the Benson days had a science background. You can fool most English majors into believing the most absurd unscientific things, such as for example that Benson’s reentrant shift register method was the only practical way to convert BCD into binary and thus the world would collapse if the method of claim 8 were allowed.

    The sad thing is that today’s “modern” Federal Circuit panel hardly has any technically trained people on it. Pauline Newman is one of the last. We are leaving the Age of Enlightenment and returning to Medieval times, even in patent law. There is only so much that Judge Newman can do to fight the tsunami. In Bilski, she points out how ridiculous the majority decision is. But alas, that’s like spitting into the wind. The rest of her colleagues believe that energy is not a “physical” thing (see In re Nuitgen) and that “process” means the Medieval arts.

  34. Interesting question re prior art. Since it was rejected on examination, the prior art would have been primarily prior publications, and given that the application was filed in 1963, I suspect that the published prior art might have been pretty thin. If I’m right that the algorithm is trivial, then even if someone had previously developed it, it would not have been published in any engineering or academic journal, so all you might hope for is to find it as an example in a textbook. It’s not really too surprising that you wouldn’t have found exactly the same algorithm in a text prior to ’63.

    By coincidence, I worked as a lab assistant in the university electronics lab one summer during my engineering degree in the late 70’s and I wrote an assembler language BCD to binary conversion. I remember only because it was the first program I wrote after learning assembler, and the lab supervisor liked it and used it in a few projects, so I felt pretty good about it. Of course I can’t remember the exact algorithm, but I’m pretty confidence it was basically similar to Benson’s. And I do remember that it only took me about a day to write it. Anyway, my point – that’s not the kind of stuff that makes it into the journals, even if it had been 1963.

  35. Dear Mr Siebrasse,

    “My guess is that the USPTO deliberately brought the issue to SCOTUS on the worst patent they could find, making it very hard for the Court to uphold the patent…”

    Aha. I did wonder about the subject matter of Benson.

    It’s been a good quarter-century since I last studied digital electronics, unless you count engineering school, but even back in 1981 BCD to binary decoders were a standard classroom exercise.

    If memory serves, the process of solving something similar – BCD to seven-segment, I think – was find the truth table, generate the Karnaugh map, get the minterms which gives you the NAND implementation. That’s rather different to the register-based claims in Benson, but you’re right, should that claim have been granted the effect on electronics would have been staggering.

    One other thing puzzled me about Benson – not the obviousness, since Prof Smillie was at pains to point out that legal obviousness is not the same as real obviousness to and engineer. It’s the prior art.

    I’m sure TI was selling BCD to binary decoder chips back in the late 60s. I know my father – an electrical engineer working in Telecoms – discussed BCD conversion with his workmates in the early ’70s.

    But the prior art can’t have been decisive, because the silly case went through every possible level of appeal (which I suppose makes the ultimate referral to the SC a bit less sinister).

    Perhaps the critical point was the decoding was being done on a general purpose computer, not a custom TTL circuit. This would represent a reversal of the usual criterion for patentability.

  36. “Processors are patentable insofar as they use physics and electronics to handle problems”. Anon, insofar as 1) my brain is such a processor, and Citibank is such a processor, and neither is patentable, and 2) your logic gate diagrams, burned into the memory of the aforesaid processor to make it a “particular” machine, are new and non-obvious, you still haven’t quite defined the boundary of patentability, have you? Is Metabolite relevant?

  37. Mouse wrote: “Full adder (implemented in transitors e.g., NAND gates)?…. Now scale that up to any portion of any processor, and processors aren’t patentable.”

    Processors are patentable insofar as they use physics and electronics to handle problems such as signal timing, glitches, stray current, etc.

    The abstract logic gate diagrams probably aren’t, nor should they be. But there’s a lot of processor design which *isn’t* abstract logic gate diagrams. Not being a circuit designer, you probably didn’t know that.

  38. JTS:
    “The only way I can understand the cases is to assume that 101 analysis, despite many broadstroke statements in the opinions, is really a case/fact-specific analysis with an unwritten concern for overreaching patents.”

    This is essentially correct. Constitutionally and pragmatically, this is how it should be. Patents are monopolies. Monopolies are normally, with rare exceptions, bad policy economically, ethically, and legally. Patents are supposed to be an exception, but obviously aren’t *inherently* an exception. Overreaching and overbroad monopolies (including overreaching and overbroad patents) are a threat to the public interest and directly contract to the goals of the “progress of Science and the Useful Arts”.

    I think your analysis is correct. On the whole, subject matter is excluded, basically, if and only if it would stymie further research. That seems to be the Supreme Court principle, and it’s correct.

  39. “Malcolm, it’s a fact that the ability to patent one’s work generally makes one’s work more valuable (assuming effective enforceable patents)”

    No. It’s not a fact.

    Certainly not if someone else can patent a crucial part of your work first.

    That’s the situation in software “patents” on pure algorithms. The entire software industry exists only because patents are routinely ignored.

  40. This is pretty accurate and presents a pretty decent state of the law. Thankfully under Bilski and Benson we should get rid of the junk patents.

    Not surprised that patent lawyers who aren’t programmers but are hired to file cryptic invalid patents on software are annoyed that their wasteful, pointless, anti-business stream of income is going away.

  41. Mr. Cole

    Judgments of the CCPA are still good law and are routinely referred to by the CAFC. While the CAFC certainly has the authority to overrule a decision of CCPA, I doubt that a footnote would be considered to overrule a fully considered decision by implication.

    With all that said, the more I think about it, the more I think that you are right to emphasize fn. 26 in Bilski; while it may not be sufficient to formally overrule Musgrave, it is certainly a significant indication of how the CAFC is thinking about these issues. The fact that it is somewhat offhand and in a footnote makes it all the more revealing – it’s a bit like a look into the subconscious mind of the CAFC. And certainly fn 26 is consistent with the mental steps doctrine that was rejected in Musgrave. Whether the CAFC ultimately formally revives the mental steps doctrine remains to be seen, but you are right that this is a significant portent.

  42. “Luddites opposed to patents want to address known problems uncreatively with a blunt instrument.”

    I’m not opposed to patents. Not at all. I favor them and I favor a strong patent system that recognizes a non-obvious enabled invention and can distinguish it from a crappy flowchart. I am certainly opposed to the granting of software patents, particularly so-called Beauregard claims, because they are nothing more than an legally unsupportable gift to an industry where clever lawyers and sometimes even their clients can become wealthy for no reason other than that they wrote some bogus claims the right way at the right time and found the right people to sue in the right district.

    “Criteria like obviousness and lack of novelty can be fairly applied to solve these problems.”

    LOL. As anyone who has paid attention to this blog and others over the past several years, anytime those “criteria” are used to bust garbage claims, the same team of whiners pops up to complain about offensive THAT is and how software innovation is going to dry up unless the PTO and courts chill out on the wonderful non-obviousness of software patents.

    Let me just deliver the bad news: the odds are very much in favor of a future where software patents, at least as they appear in Beauregard claims, are going to disappear in the US. So what will you do when that happens? What are you going to do? Move to Europe? Seriously. What’s the plan?

  43. MM writes “Oy, I’m going to vomit.”

    JTS — suggestion … treat everything that MM writes as being a result of the above-reproduced statement. MM isn’t here to engage in serious debate over the issues. He is here to act as the proverbial message board troll. His agenda is that all software patents are “obvious doodoo” — he likes to use various terms for excrement in his posts.

    If you want to have some fun and explain to him how little he knows about computer/business/real life/etc., then go for it. However, don’t expect any rational response from him.

  44. Dear Mr Siebrasse,
    Thanks for that, especially the reference to the dissent in Diehr.

    The Musgrave case (and the Prater one which preceded it) were so old I thought they were no longer good law, particularly since they were judgments of the Court of Customs and Patent Appeals (CCPA) which no longer exists.

    I had the impression that since it was replaced by the Federal Circuit, the CCPA was not a superior court to Bilski. Am I wrong?

    Since the S.C. in Diehr only mentioned the rule in a dissent, as you mentioned, the Bilski court has the authority to overrule Musgrave, and just did so – in footnote 26.

    But as with a lot of Bilski, that wasn’t required to reach their decision and one could call it obiter dicta. It remains persuasive, though, if not binding.

    I guess we are going to have to await events, in the form of a specific case to the point.

  45. “Because it isn’t simply a matter of “freely copying” these features, it is a matter of doing all the hard work of implementing them robustly.”

    You overstate the difficulty of writing software, especially when someone else has given you the hardest part – the design. Some ideas are easy to implement, some are not.

    Suppose you hire some UI researchers who you pay. They spend a couple of months studying user behavior and studying a usability problem. They try different solutions and ideas. They tinker around and brainstorm. After 4 or 5 months they come up with a really clever way to present and navigate information, allowing users to produce the same content in half the time. The solution is not hard to implement; it’s a few hundred lines of code. The solution is a result of careful observation and clever ingenuity. Would you like someone to give away their invention for free? Would you like pay them without making anything for yourself? Would you even hire them if their idea would be ripped off as soon as it was released?

    And besides, it’s absurd to argue that an innovative idea shouldn’t be patented just because it might be difficult to implement it. You could argue the same thing about ICs, or amplifiers, or new drugs, or whatever.

    “It is not hard for programmers to think of features that would make their lives easier. At most, seeing the operation of someone else’s program just provides a proof of concept.”

    Again, the true hindsighter. Everything is obvious. Nothing is clever or new. You criticize patents as over general yet you present only generalities. There is a wide range of things that can make a programmer’s life easire. Ranging from nice keyboards, decent editors, short little utility scripts, etc., to more sophisticated things like Intellisense, code complexity analyzers, testing tools, algorithmic refactoring, and so on.

    If you are saying no patents on automation of things programmers do routinely, I agree. If you are saying all software is inherently obvious (“not hard to think of”), then you have no idea what creativity is about.

    “Software patents do not serve to prevent others from stealing their ideas – they stake out territory to keep others from doing generally similar things, either to make it hard to compete or simply to set up a toll booth (in the case of the IP holding companies that have no products of their own and exist solely to collect royalties or sue).”

    Spoken like a true freeloading hindsighter; after seeing someone else’s lightbulb: “oh yea, anyone would have thought of that, it’s obvious and trival”. Implementation is pennies. Innovation is dollars.

    Are there silly and overreaching s/ware patents? Absolutely. Some I’ve seen asserted are laughable but nonetheless a nuisance. Criteria like obviousness and lack of novelty can be fairly applied to solve these problems.

    The unfamiliarity with creativity carries on to patent problems. Luddites opposed to patents want to address known problems uncreatively with a blunt instrument. Patent abuse can be addressed with things like better examination, legal reform like requiring losers to pay the legal costs, more third party involvement, deferral of examination, and so on. That’s the debate we ought to be having.

  46. Upon further consideration I believe I know why claim 8 was not seen as being limited to a shift register by the original court. It is quite simple.

    link to books.google.com

    As my good friend Landis here recites:

    A very important rule to remember is that the “elements” of a method claim, instead of being structural parts, are, and must be, acts or manipulative steps that are performed upon an article, workpiece, or chemical substance.

    Here the storing is not an act which is performed upon an article, workpiece, or chemical substance. In other words, the storing, as well as the rest of the steps, are not acts performed upon the shift register, they are being performed by the shift register.

    I’ve had this conversation already. Back in the day, like when Benson was around, courts actually knew the basics and applied them without mercy or explanation, because all of the lawyers around knew them too. Sadly, it appears that over the years this basis in the basics has become eroded. Thus we get left with the explanation in Bilski with which many take issue.

    Bottom line. The apparatus limitations relating to the apparatus performing the method in a method claim, such as claim 8 above, are not limiting. Never are, never have been, never will be. There’s a section about this in the MPEP somewhere, but I forgot to fav it.

    See here for further discussion on what the black letter of the law on the matter is: link to books.google.com

    In relevant part: Second and more improtant, the “black letter” law is that the patentability of a method claim cannot be predicated solely on the structure of a mechanism used in practicing the method. See Ex Parte Dammers.

    Therefore, patentability, even under 101, cannot be predicated solely on the structure of a mechanism used in practicing the method.

    I would like to hear what your opinion on this little excerpt from Landis is D.

  47. JTS “It’s about seeing professional software developers and researchers should get full due for advances they make possible.”

    Oy, I’m going to vomit.

  48. “I’ll add, I use Visual Studio 2008 for development. The many clever improvements in it let one develop more robust code in less time. Tell me why someone should be able to freely copy the many innovative features that make VS useful?”

    Because it isn’t simply a matter of “freely copying” these features, it is a matter of doing all the hard work of implementing them robustly. It is not hard for programmers to think of features that would make their lives easier. At most, seeing the operation of someone else’s program just provides a proof of concept.

    Software patents do not serve to prevent others from stealing their ideas – they stake out territory to keep others from doing generally similar things, either to make it hard to compete or simply to set up a toll booth (in the case of the IP holding companies that have no products of their own and exist solely to collect royalties or sue).

  49. Norman S., it’s the nitty gritty details of a case that explain what it was really about. It’s tempting to parse the words of a decision and not pay much attention to the facts (also forgetting the difference between dicta and law). But that’s an insane approach in the 101 realm.

    When BCD conversion is understood (as you explained nicely), the Benson case, though still confusing, seems more sensible.

  50. “Examiner 6,000″ -> “6,000” -> “6”. Examiner six thousand, you’re about ready to start drafting claims.

  51. Malcolm, it’s a fact that the ability to patent one’s work generally makes one’s work more valuable (assuming effective enforceable patents). It’s not about whether research will stop or go, it’s about the level of recompense for researchers.

    It’s a fallacy to construct the problem as exists/not-exists. Algorithmic research would continue even if there were burdensome taxes on it, or if were a crime, or even if it were incredibly expensive. But things like this will diminish a useful activity. It’s better to view the question as whether research gains or suffers from patents.

    Many of your view just don’t want to fully reward people for their mental labor and innovation. They want to benefit from the labor of others without paying full price. Naievete. Some are happy to get from A to B in less time, or receive packages in less time, or prepare 3d designs in a hundredth of the time it took 20 years ago. But they don’t care if the people who improve the algorithms to make these things possible are paid their full worth.

    And I’ve seen research gain from patents firsthand. I’ve seen startups whose funding (and life) was conditioned on patents for their technology. Some of these startups employ researchers/PhDs for basic algorithmic advances (and even consider them their most important asset). Patents help increase the demand for at least some researchers, and therefore incrase demand and income for researchers.

    I’ll add, I use Visual Studio 2008 for development. The many clever improvements in it let one develop more robust code in less time. Tell me why someone should be able to freely copy the many innovative features that make VS useful? If Open Source Entity X can just copy VS, would VS come to exist? Maybe, but it wouldn’t make Microsoft as much money, and therefore there would be less money available to improve VS. VS wouldn’t be as good a product. Consequently, productivity in the software industry would be lower.

    To me, the debate is not about metaphysics or intracicies of 101 law. It’s about seeing professional software developers and researchers should get full due for advances they make possible.

  52. Ah, it is in the appendix, nm. In any event, I’m at a loss for why the court skipped right over claim 8, although it could indeed have to do with the way they presented claim 8 in the preamble and that if it were changed then it might have passed.

  53. BTW, where did you obtain claim 8? Perhaps you found it on a patent that eventually issued from the application and it is not the actual claim in question? Idk, but there is something going on here.

  54. No big guy I will not be arguing that I was “right” that they did not limit themselves to a shift register because I’ve specifically stated that they might have. I also stated that it appears from the case itself that none of the parties involved considered the claims to be limited to only being performed on a shift register even though one is recited as having the information stored within it and etc. As I have already said, I did not review it in depth and I do not see how the claim is limited to a shift register, especially in light of the fact that nobody involved in the litigation felt as if it was. However, D seems to explain this as being an anomaly since the court rejected 8 out of hand even though it seems to be limited to a shift register.

    Perhaps though D, you are right and claim 8 is indeed being taken to be limited to a shift register. Perhaps, the claim is being understood to be one of those occasions where drafters are trying to cleverly sidestep the 101 analysis and the SC cut them off, or perhaps the parties involved agreed to let the claim stand or fall with the other for the time being for purposes of the case. Or maybe… a million things. But it does seem like there is more going on here than meets the eye because the claim seems to plainly attach itself to a particular machine even though the court says that everyone in attendence admits that it does not.

  55. JTS

    I think you’re right that the decision in Benson was driven by a pragmatic concern that the patent in question would cover too much basic computing. For that reason I think that even though we’re talking about subject matter, it’s important to recognize that the patent was almost certainly obvious; the decision might have gone very differently if the RSA encryption algorithm were at issue. The USPTO didn’t want to allow software patents because at the time they didn’t have examiners skilled in the art (Benson at 72). My guess is that the USPTO deliberately brought the issue to SCOTUS on the worst patent they could find, making it very hard for the Court to uphold the patent, but without raising obviousness in order to force the Court into rejecting it on subject matter grounds.

    The Benson patent was a particularly good choice because it looks formidable to someone not skilled in the art, but it is actually trivial. BCD stores 10s and 1s digits separately in binary form. The least significant (1s) digit is already in binary, so it doesn’t have to be altered (so claim 13(5) says don’t process the least significant digit). The 10s digit represents 10*N where N is represented in binary, e..g N = 6 = [0110]. To convert to binary you have to take the tens digit and multiply it by 10, then add the result to the 1s digit. To multiply by ten you take each binary digit individually and multiply that by ten e.g. 10*[0110] = 10*[0010]+10*[0100]. Looking at claim 13, each repetition specified in (5) treats a separate binary digit. The machine / assembler language I am familiar with from the late 70s /early 80s didn’t have a ‘multiply’ command. (I don’t know if they do now). Instead you have to use a ‘shift’ command. Shifting one digit left corresponds to multiplying by 2; shift by 2 digits multiplies by 4; and so on (just as 3 * 10 is “3” shifted one place to the left and add a zero in the ones position = 30). To multiply by 10, you shift by 1 and independently shift by 3 and add the two results together. This is specified expressly as shifts in claim 5, and in claim 13(3) the same process is described as adding a binary 1 at the (i + 1)th and (i + 3)th positions.

    So the claim as a whole says “take each binary digit in the 10s column, multiply by 10 and add to the 1s column.” Given that machine language constrains you to the shift function instead of direct multiplication, this seems like a very obvious algorithm. Of course hindsight is 20/20, but I can’t really think of a non-trivial alternative algorithm using only assembler commands. (Of course there are trivial alternatives, like starting from most rather than least significant binary digit position.)

  56. JTS “To some of us out here, there is a lot riding on the 101 issue, especially in the realm of general algorithmic research where innovations are applicable to computing itself independent of any real world activity/problem ”

    What exactly is riding on the 101 issue? Will “algorithmic research” in the US grind to a halt if Bilski kills software patents or computer-implemented business methods?

    The answer is that what is riding on the 101 issue is job security for attorneys who specialize in drafting software patents and the trolls who peddle those patents.

    That’s it. The effect of getting rid of software patents on the broader economy or the rate at which new advances in computer-related technology are brought to the public is either zero or a net improvement.

  57. Mr. Cole,

    I believe the mental steps doctrine as you describe it was expressly rejected in In re Musgrave 431 F.2d 882 “We cannot agree with the board that these claims . . .are directed to non-statutory processes merely because some or all the steps therein can also be carried out in or with the aid of the human mind.” The dissent in Diehr discussed the doctrine at length and would have revived it, but the majority in Diehr declined to do so. In light of that case-law, I don’t think we can say that a single footnote in Bilski has revived the doctrine.

  58. BigGuy: “Am I missing case law somewhere that defines ‘particular?'”. It’s in the hidden/deleted text of the original MS Word versions of the decisions. Unfortunately, on the courts have access to them.

    Read the family of 101 cases a hundred times and you still won’t be able to make any sense of them. I almost feel sorry for the CAFC having to actually render opinions based on precedent.

    The only way I can understand the cases is to assume that 101 analysis, despite many broadstroke statements in the opinions, is really a case/fact-specific analysis with an unwritten concern for overreaching patents.

    If you look at Benson, the SCt assumed that the algorithm itself was not new. The SCt refused to allow a patent that would have covered all computer BCD conversion using a known (assumed) algorithm. I think the Ct thought that the patent would cover too much basic computing.

    Similarly in Flook, it came down to lack of novelty (tho the Ct denied it): “If we assume that that method was also known, as we must under the reasoning in Morse, then respondent’s claim is, in effect, comparable to a claim that the formula 2[pi]r can be usefully applied in determining the circumference of a wheel”. I.e., applying a known algorithm/formula to a known process. They go on to state: “this decision should [not] … be interpreted as reflecting a judgment that patent protection of certain novel and useful computer programs will not promote the progress of science and the useful arts, or that such protection is undesirable as a matter of policy”. I.e., the decision is fact-specific.

    All the comments in this thread are great food for thought. Thanks D. Stein, Sofa.Annoyed, Dennis, Zura…

    To some of us out here, there is a lot riding on the 101 issue, especially in the realm of general algorithmic research where innovations are applicable to computing itself independent of any real world activity/problem Think of code profilers, compilers, caching algorithms, routing algorithms, etc.

  59. Norman,

    Thank you for pointing out FN11 in Flook. I don’t think I’ve ever notice it before. Great find, will be useful someday….

  60. It’s worth pointing out that in footnote 26 of the Bilski decision. (This was a comment on the Supreme Court decision in Diamond v. Diehr which asserts that “a [patent] claim is not a patent-eligible “process” if it claims “laws of nature, natural phenomena, [or] abstract ideas.”)

    The Judge made it clear Diehr meant you can’t patent something which can be performed entirely with mental steps. Hence the death knell for business patents.

    But what about software? Anything a Turing machine can do, a human can (an educated human mind is Turing-complete). Then in principle, any
    computer process can be done just as well, if slower, by a human brain.

    By that logic, just associating a machine won’t save a patent claim on process which can be performed mentally, and Benson wouldn’t overturn that.

  61. It is interesting that the preemption analysis has made a resurgence. Certainly it was central in Benson, but it was subsequently doubted in Flook at 590 n.11 – “Of course, as the [Benson] Court pointed out, the formula had no other practical application; but it is not entirely clear why a process claim is any more or less patentable because the specific end use contemplated is the only one for which the algorithm has any practical application.” – and not revived in Diehr. With that said, the SCOTUS trilogy has no coherent principle and I see the majority in Bilski as the result of a good faith attempt to make sense of nonsensical authority. More deferential than Alappat, but less sensible.

    Incidentally, SCOTUS was willing to grant a preemptive patent to Bell in the Telephone Cases: “It may be that electricity cannot be used at all for the transmission of speech except in the way Bell has discovered, and that therefore, practically, his patent gives him its exclusive use for that purpose, but that [is not reason to deny the patent]” (at 535). Curious that this passage never gets cited.

  62. Dennis,

    Thanks for the attribution. Didn’t know anyone reads my occasional blogs anymore. I don’t know how you manage to do it (blogging) on such a regular basis. Blogging is hard hard work –and time consuming.

    That said, it amazes me that the debate over what is “software”, what is a wholly pre-empted “algorithm”, what is transformation of a “physical” thing,etc. erupts once again. I thought Alappat settled it many years ago. A computer whose bits are flipped is a machine different from what it was before its bits were flipped in accordance with a useful pattern. A process which flips bits is a process that transforms the computer into a particular kind of machine.

    In Benson’s claim 8, the bits of a reentrant shift registered were flipped so as to change (transform) the register into a new and useful state.

    In re Bilski, of course does not address “software” per se. However, Bilski relies on Benson as being good law. And as discussed on Zura’s blog (link below), Ex parte Godwin takes Bilski the one extra step to argue that claims “directed to” software (as such) are not eligible under 101.

    link to Zura’s blog:
    link to 271patent.blogspot.com

  63. Can a novel, non-obvious method of using an old abacus to calculate an output Y from an input X be patented?

    Can it be patented if a step of receiving X from a customer and communicating Y to the same customer is included in the claim?

  64. “Patently-Unobvious suggests that careful drafting could have avoided the whole problem for Benson: “If only the inventors had been less forthcoming, more obtuse, and called their claim a method for operating a shift register, who would have seen that the machine-implemented signal processing method surprisingly also happens to convert a binary coded decimal signal into a binary coded one?”

    This sardonic comment cleverly exposes the farce of 99.9% of computer-implemented baloney and software claims.

  65. SFA:

    In the CAFC’s defense, they are dealing with incoherent (i.e., logically inconsistent) case law from SCOTUS. And they’ve been, ahem, sensitized to the importance of following SCOTUS case law. So they had to tap dance around the particulars of Benson, wave their hands around, and stick to Benson’s broad language (like what 6000 quoted).

    They did admit that Benson was a tough case–and thus signaled that if Benson’s claim 13 doesn’t pass the SCOTUS’s own test, then that puts several nails in the coffin for all things digital.

    Also, they didn’t want to come out and say whether a general purpose computer is a particular machine. If they say it is, then the Bilski claims, amended with “on a computer” would pass the first prong (tied to a particular apparatus) of the Bilski test–which they didn’t want to do.

    And if they say it isn’t, then they’ve almost certainly ruled out 101 patentability for all things digital.

    In other words, SCOTUS screwed it all up. I still think Rader’s dissent was the right answer. These software issues weren’t in the case. Instead of a 1 page per curiam, we got 31 pages of what should be dicta.

    A case with better facts needs to get to Fed Cir and then appealed to SCOTUS.

  66. Sofa King:

    Yes, the undefined term “particular” in Bilski gives me the heebie-jeebies, too.

    This puts practitioners in a terrible situation: how “particular” must we make our independent claims? If the CAFC/BPAI/etc. interpret this term more strictly than we do, they will reject our claims under Bilski; but if they interpret this term LESS strictly, our claims might be overly limited and we might unnecessarily lose claim scope.

    When I signed up to practice in this area, I knew I’d need many sharp skills: legal, technical proficiency, business sense, writing. I wasn’t informed that I might also need the skill of clairvoyance.

    – David Stein

  67. Folks, I think this is actually OK.

    Here’s how I see it. An “abstract” method (according to Bilski) is too far removed from any implementation: the problem and solution are clear, but there’s insufficient detail as to the manner of carrying out the solution. This can be remedied by involving the “particular” machine to the claim, and/or by characterizing the problem and solution as a transformation of an article.

    On the other hand, a “preemptive” method (according to Benson, as reinterpreted by Bilski) is overly grounded in an implementation, and is not sufficiently directed toward a particular problem or solution. The problem is that this technique could be used to solve an indefinite range of problems – it “preempts” solutions to problems that haven’t arisen yet.

    These are two different requirements. Our apps need *both* a sufficient computing basis to be non-“abstract” *and* a sufficient scenario to be non-“preemptive.”

    That’s how I read it, anyway. To me, this isn’t a big deal, because I’ve always directed my claims to a particular problem and solution. Even foregoing Benson, there are at least two good reasons for this:

    * Best mode. If your inventor dreamed up the invention for a particular use, it’s likely to be particularly well-crafted for that use, and less efficient/specific/etc. for other uses in a general class. So you have to disclose the inventor’s anticipated use to satisfy best mode.

    * Salesmanship. Explaining the value of the invention is helpful for getting the examiner on the same page. It also explains the value of the patent to potential licensees, etc.

    – David Stein

  68. 6000: Benson’s Claim 13 was not limited to any particular machine and is easy to dismiss under Bilski. However, Claim 8 – as reproduced above – was also rejected by the Supreme Court even though it includes a “reentrant shift register” element. (See claim above).

  69. What in blue blinkin’ blazes does a “particular machine” mean? (Michel also starts out using “a particular article” in the transformation test, but later dances away from that.) What does “particular” mean? Do you have to draft a claim to one computer and claim, say, its IP address or some other specific identifier? Does it mean a particular TYPE of machine? Clear as mud, these people.

    Am I missing case law somewhere that defines “particular?”

    What’s the point machinating about the machine test anyway? Try drafting claims around such speculations and I guarantee you the CAFC will cut your thingamahickeys off when it finally addresses the point. Michel left 15,000 s/ware patents and who knows how many applications just hanging with his “We’ll eventually get back to you on what we mean by the machine test,” thereby stiffing examiners, practitioners, and trial court judges all across the country.

    Bilski belongs in the $hitcan, not so much for what the CAFC tried to do, but for the incompetent way they tried to do it. If I was paying US taxes and the CAFC’s salaries, I’d be screamin’ annoyed. As it is I’m only sofa king annoyed.

  70. “Where does Benson limit himself to a shift register?”

    Dude, you might want to actually read the post before you begin lecturing Dennis. Try looking at the first element of the claim at issue in the case (which Dennis was kind enough to quote): “storing the binary coded decimal signals in a reentrant SHIFT REGISTER”. Or the next couple: “shifting the signals to the right by at least three places, until there is a binary `1′ in the second position of SAID REGISTER, masking out said binary `1′ in said second position of SAID REGISTER”.

    Now, are you going to go on and on in this thread about how you were right, in the hopes that everyone will forget the original topic?

  71. D, I haven’t reviewed Benson in quite awhile, but I sincerely doubt that the claims at issue were directed to a shift register only. If they had a limitation in them about a shift register then all uses of bcd conversion would not have been preempted and the SC, and the CAFC’s analysis would have been entirely improper. However, from what I hear, it was entirely proper because all implementations of BCD conversion would have been preempted. That simply cannot be if the claims are restricted to a shift register.

    Actually, since I found the case quickly I’ll cite some relevant portions:

    “Respondents filed in the Patent Office an application for an invention which was described as being related “to the processing of data by program and more particularly to the programmed conversion of numerical information” in general-purpose digital computers. They claimed a method for converting binary-coded decimal (BCD) numerals into pure binary numerals. The claims were not limited to any particular art or technology, to any particular apparatus or machinery, or to any particular end use. They purported to cover any use of the claimed method in a general-purpose digital computer of any type. Claims 8 and 13 1 were rejected by the Patent Office but sustained by the Court of Customs and Patent Appeals, ___ C. C. P. A. (Pat.) ___, 441 F.2d 682. The case is here on a petition for a writ of certiorari. 405 U.S. 915 . ”

    There we see that there was no tying to a particular machine.

    “Here the “process” claim is so abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary conversion. The end use may (1) vary from the operation of a train to verification of drivers’ licenses to researching the law books for precedents and (2) be performed through any existing machinery or future-devised machinery or without any apparatus.”

    Again, the same thing. Where does Benson limit himself to a shift register? Of course he might could have limited himself to a shift register, but who gives a flaying sht? The claim would be nowhere near as valuable and he plainly did not want to be satisfied with that.

    link to caselaw.lp.findlaw.com

  72. Regarding avoiding 101 by claim drafting…

    I can see why a good law would be put forth to apply a 101 analysis regardless of claim form (Method or Apparatus or even Beauregard) in order to not promote form over substance.

    However, when a ruling rationale is set forth for 101 rejections explicitly on the grounds of “process”, doesn’t that framework override the otherwise good law?

  73. …so this was a pre-emption issue.

    But it seems that Benson did limit beyond “computer” as stated here – the limit was on a “digital computer”. The claimed method would not have reached an analog computer (perhaps an analog computer could employ this method when interacting with a digital computer in a network scheme), thus Benson itself seems a contradiction beyond just meeting THE clue to patentability.

  74. This is what you get from judges that first figure out their novel new “test”, and then have to dance around the controlling precedent that they were obligated to apply in the first place.

  75. Yep to all.

    Even worse, there’s still good law in those cases (and State Street, BTW) that say it doesn’t matter how you draft the claim (method or apparatus), the 101 analysis should come up with the same answer. This was to prevent crafty patent lawyers capturing non-101 material through claim drafting.

    Under strict readings Benson & Bilski, I don’t see how much of anything that embodies logic (e.g., algorithms) is patentable under 101.

    Full adder (implemented in transitors e.g., NAND gates)? If you write the claim as “a method of adding two binary numbers…” then it won’t pass the Bilski/Benson test as it pre-empts all uses of the algorithm (which is only useful, after all, on a full adder).

    And therefore the apparatus isn’t patentable, either. Now scale that up to any portion of any processor, and processors aren’t patentable.

    I’m not saying the courts will go this way. My only point is that they will do a case-by-case tap dance — which begets unpredictability, which begets litigation and discourages licensing/settlement.

  76. Gottschalk v. Benson, and to even greater extent Parker v. Flook, illustrate how badly SCOTUS has mangled the computer program/software area regarding what can be patentable subject matter. Unfortunately, the Federal Circuit is not writing on a “clean slate” in Bilski, but the majority there would have been better off not foist this “machine or transformation” test on us, and to simply say the Bilski claims were too “abstract.”

    Many comments on this subject seem to turn their noise up at how Bilski, Benson, and Flook can be simply finessed by how the claim is written. But that is what patent claims are all about, so that argument doesn’t hold soap with me.

  77. This is a point that I made right after Bilski was handed down.

    The question is how dire is the court’s reasoning to most existing software claims? Do most software claims no longer fall under the machine prong of the test?

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