BPAI: PTO Should Apply Broadest Reasonable Claim Interpretation to Section 101 Analysis

Ex parte Koo (BPAI 2008)

Acting sua sponte, a BPAI panel recently entered a new ground for rejection against an IBM patent application: That the claimed process is unpatentable subject matter based on the Federal Circuit’s recent en banc decision in Bilski. The claim is directed to a method of optimizing relational database queries and appears to be specifically directed to speeding up queries where a table is joined to itself. Although the preamble does focus on a “relational database management system,” the body of the claim does not refer to any specific machinery beyond queries, sub-expressions, rows, and sets.

The legal point to consider from this case is that the PTO will apply its “broadest reasonable” claim interpretation during its §101 analysis. Here, the BPAI panel found that the broadest reasonable interpretation of IBM’s claim does not necessarily “require computer or machine implementation” and thus that the claim fails the “tied to a particular machine” prong of Bilski machine-transformation test.

“Claim 1 does not recite any steps that necessarily involve machine implementation. While the preamble of claim 1 recites a “system,” the “system” of claim 1 is not recited in terms of hardware or tangible structural elements. Rather, the “system” could be a software system, where the elements of claim 1 are implemented solely in software or algorithms. Thus, the nominal recitation of a “system” in the preamble does not transform claim 1 into patentable subject matter under § 101.”

The BPAI also found that the claim “does not call for any transformation of an article to a different state or thing, nor does it require any transformation of data or signals.” Based on the claimed step of “reforming the query,” I would argue that the claim does require a transformation, but that transformation does not satisfy Bilski because the thing transformed (the query) is not “representative of physical objects or substances.”

Notes & Comment

  • In the appeal, the BPAI overturned the examiner’s obviousness rejection based on the absence of a “self join” in the cited prior art.
  • The disputed claim:

1. A method for optimizing a query in a relational database management system, the method comprising:

  • evaluating the query to determine whether a sub-expression of the query is being joined to itself and whether a predicate of the query comprises an equality test between a same column of the sub-expression;
  • determining whether a first row set producible from a first set of references of the query to the sub-expression is subsumed by a second row set producible from a second set of references of the query to the subexpression; and
  • reforming the query to eliminate the joining of the sub-expression to itself based on evaluation of the query and determination of whether the first row set is subsumed by the second row set.

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

129 thoughts on “BPAI: PTO Should Apply Broadest Reasonable Claim Interpretation to Section 101 Analysis

  1. 6,

    for all your admonitions about keeping up with caselaw and your self effacing “/facepalm’s”, why is it that you never seem to remember the ruling case law regarding software and particular machines?

    Must I school you yet again?

    C’mon, you know the case… which of half a dozen threads do you want me to pull it from?

    For a fool provocateur, you are really slipping into just being a fool.

  2. “I’m tempted to ask Mrs. Daye just what exactly she felt made the machine recited in the claim particular.”

    You do that … a computer is a particular machine.

    A computer isn’t a stapler, a hole punch, a rotating chair, an oven, a faucet, a catyltic convertor, or a whole host of other types of machines. As such, it is a PARTICULAR machine. Not rocket science — except for people having trouble reading plain English.

    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 adifferent 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'”); Cochrane v. Deener, 94 U.S. 780, 788 (1876) (“A process is . . . an act, or a series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing.”).

  3. I’m tempted to ask Mrs. Daye just what exactly she felt made the machine recited in the claim particular.

  4. Haha, just because one examiner in the PTO doesn’t fully understand Bilski doesn’t mean that you’ll get away with murder every time. Looking at the notice of allowance only it appears this guy is clueless.

    You also notice the stunning lack of a reasons for allowance.

  5. “Yet again, MM gets worked up over nothing.

    Unless this gets appealed, this application will receive a Notice of Allowance within a couple of months after the amendment that adds the ‘magic words’ to the claim.”

    On January 13, 2009, the amendment to claim 1 added the words “computer-implemented” to form the phrase “A computer-implemented method” and also replaced the phrase “the method comprising” with the phrase “wherein the computer performs the following functions.” Claim 19 was similarly amended. No other amendments to the claims.

    A notice of allowance was issued on 04/30/09 as to claims 1-27.

    So much for “the war on software patents.”

    Hahahahahahahahahahahahahahahahahahaha

  6. ummmm. it seems really really obvious to me that the IBM patent here fails the simple obviousness test, rather than anything else… the patent asks for protection of essentially reforming a sql query thourgh simple optimization that any DBA sitting down doing manual DB optimization would perform or any number of optimizers on the market do already or could easily do. essentially it’s the process of abstracting and re-organising SQL to gain optimization that should be patentable not what particular algorithm you apply inside this capabilty.

  7. “I like Risch’s approach.”

    Thanks, curious. This case is like the perfect storm for my scholarship – my last article “The Failure of Public Notice in Patent Prosecution” discussed the problems associated with broadest reasonable construction and advocates for using the PHOSITA rule during prosecution.

    As for this case, it illustrates one of the concerns in my article – the BRC causes us to not focus on what’s important. On the one hand the rule appears to do what it was designed to do – read a claim broadly so as to reject it if it was vague.

    On the other hand, what a gigantic waste of resources – the BPAI admits that the BRC could broadly be construed as a “software system.” Fair enough (even though I disagree), but even so, where else does software run? Is there some non-machine software execution system out there? Some wetware I’m not aware of?

    What’s the result? An amendment that says “a system running on a computer” which adds almost no explanatory power to the claim. Instead, the BPAI could have applied the PHOSITA interpretation rule and hit this issues head on – is this patentable subject matter or not?

  8. Yes indeed Noise, but 6 is on to something, namely, whether the app as filed states any fall back positions (intermediate limitations/generalisations). What I find is: in ROW Yes, in the USA No. It’s not a matter of the wording of the Statute, just how the judges interpret it. I have indeed been around a long time, and have consistently said that it’s up to the courts to fix the system (if it is indeed broken).

  9. “Let me rephrase that for your gentel English ears.”

    MaxDrei, you’ve been around long enough to recognize that 6 is NOT interested in applying the law, he is interested in applying the law as he sees it. And his bias is in direct confrontation with the law.

    Compare:
    “because I personally believe in the public policy of granting patents only for true “breakthroughs” which of course are few and far between,…”

    with

    “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

    This plain, simple, basic premise of our system does not include the public policy of limiting patents only to those items deemed by the watchdogs of the system as “”true” breakthroughs”. Specifically, the part about ANY new and useful improvement speaks to incrementalism, which by its nature is rarely “breakthrough”.

    The law is good. We need to execute to the law, not make up the law as it fits our perceived public policy or make power grabs to change the law to be how we want it to be. To continue my (american) football analogy, this is like the center not giving the ball to the quarterback and attempting to make a forward pass himself. It doesn’t work and isn’t meant to be played that way.

    This is a prime example of why the patent system is NOT working. Let’s get a coach in a position who will drive his players to perform their roles as the rules of the game are set up. We’re on a football field and we are not playing field hockey.

  10. I’m saying that it likely doesn’t fail either Max, that’s why it’s a beast to take down. Let me rephrase that for your gentel English ears. This is a son of a bich to kill using the statutes 101 and perhaps 112 as well.

    Funny you should bring up hating to search and the attorney declining to state what the invention really is.

    Well, I’ve got a story for you. I just picked up an application that is a DIV of several other apps I have previously done. The AAPA has been relied on in the other cases, which are all abandoned now save one so I feel secure using it again. I would simply find his AAPA, but I have a feeling it’s in Japanese. The invention was narrowed down to one species of a device through restriction. Two claims. Already had art on the dep. So it came down to finding art on about 10 words. Those words were the invention. Without dependents getting in the way, and a lot of old device recited in the ind to trip me up, I had found a solidly combinable reference within an hour of searching and thoroughly enjoyed myself the whole time. When you’re hot on the google trail you always feel excited. One NPL leds to another backwards in time until the publication date is proper, and whallah, your reference.

    Moral of this story: If the attorney tells us what the invention is then it’s a blast to search and then to find the invention.

    I should add, if the inventor had troubled himself to include all the different species of the genus that was the elected species in the spec/dependent claims I would still be looking. I appreciate the japanese guys, they don’t f around as much.

  11. “a beast to take down” is it, 6? How about the 100 year old English case of No-Fume v Frank Pitchford that was so durable that it was relied upon when the EPO wrote its MPEP in 1977. Invention: something like “An ashtry with an openable lid, configured to keep the smoke in, after a smoker has consigned his smouldering dog-end to the tray.” That’s the case that legitimated functional/structural/intended use language in the UK. Was it wrongly decided? If so, where does it fail: 101 or 112?

  12. “Fair enough, then let’s say the same for everything else.”

    While I personally agree with this because I personally believe in the public policy of granting patents only for true “breakthroughs” which of course are few and far between, I cannot agree that there is no reason to “discriminate” against software devs. Besides the fact that peices of paper are computer readable mediums (see the citation a few threads back about the real emerging technology of using colorful sheets to store GB’s of data) and most bgard claims read on those sheets of paper and the printed matter doctrine is applicable to those particular computer mediums, there are still other reasons to “discriminate”. Principle among them is that bgards are describing the functionality of a device in terms of the functionality of a completely different device, and the only limitations distinguishing the claim are the function of the other device. Not to mention that those limitations are generally method limitations in a product claim.

    “a CRM configured to perform a method does not run afoul of the mixed statutory class caselaw

    a CRM that is performing the method might”

    I concur. But looking at your standard bgard you see a CRM that is “a CRM which when read causes a computer to perform a method” so the CRM is performing the method step of “causing…”. Even if you claimed a CRM “configured to cause a computer to perform a method comprising:” I still say that you are improperly invoking functional language. According to the caselaw, and to the MPEP, functional language is distinguishing a thing by what IT does, not what something else does. By invoking the phrase “causes the computer to” you then shift the functional language away from describing the function solely of the disk, and make it encompass the function of the computer as well. In other words, my argument is that proper functional claiming claims in terms of what the only the item does and that these types of claims encompass what the item does as well as what another item does. You have thus not properly used functional language, and the entire functional limitation goes out the door and you’re left with a CRM which is of course 102 rejected.

    I will likely be making a rejection along these lines shortly irl so we’ll see what happens. I don’t really see how it could fail because, as with pds’s example, claiming “a piece of metal configured to cause a screw with an cross shaped opening to perform a method comprising: tightening a beam to another beam” fails to describe ONLY the functionality of the screwdriver, and instead encompases additionally the functionality of a turning screw, which is not the device being described.

    In any event you say you were talking about the bgards where the crm is configured to… Ok.

    “If a CRM is configured to perform a method, but that method is abstract and doesn’t meet the machine-transformation test, then the method is irrelevant to utility. ”

    I disagree, except as has been talked about above. Perhaps we are stating the same thing differently. If you are stating the the method has no impact on the utility of the CRM itself I concur. Because the utility of the CRM is to store data and be read and that’s all. That is the basis for my improper functional claiming argument. You say utility, I say functionality but we’re probably referring to the same thing, i.e. the purpose for which the CRM is used is to store data and be read and that is all. You then make an assertion that such a limitation that does not bear on utility should not be afforded weight. I’m not sure if I agree with you or not. It seems to me I afford limitations that don’t have any direct impact on utility weight all the time in other cases. Isn’t it widely held that if a claim as a whole passes 101 then the whole thing does? We have to go after the whole thing if we’re going to use 101 man. That appears to likely be impossible. That’s why I’ve all but abandoned using 101. That and the arguments that could be made based on the commissioners statements in bgard against any examiner bringing the case (but not litigator). We’ve got to use the more basic principles of patent law. Functional language, method steps being the only distinguishing things in a product claim, etc.

    The “configured to” language is like a hybrid of functional language combined with structural language combined with intended use language and is thus a beast to take down.

  13. Dennis and Leopold Bloom both brought up the nature of the transformation of data:

    “”I would argue that the claim does require a transformation, but that transformation does not satisfy Bilski because the thing transformed (the query) is not ‘representative of physical objects or substances.'” [Dennis]

    “I haven’t read the case yet, but hopefully this is a good vehicle for an appeal (whether or not it’s a “crap claim”), so that we can get some of this silliness cleared up. For example, why should the patentability of a communications-related method claim, which “transforms” electronic data, turn on whether or not that data is “representative of physical objects or substances”? And how much “tying to a particular machine” is enough?” [Leopold].

    I think this is a very important point. I agree with you, Dennis, that a transformation of data is at least arguably made (whether or not one likes the claim, or software patents, or IBM, or whatnot). This case highlights an important problem with the Bilski opinion that Leopold highlights with his question. The “representation doctrine” expressed in Bilski does not make sense. Moreover, it is based on a completely inaccurate reading of In re Abele (discussed at more length here link to randomsheets.com).

    This artificial creation of Bilski (that is, it originated in Bilski rather than — as claimed — being restated there) leads to many problems such as the one Leopold points out. In fact, even in this case (Koo), one might ask whether it makes a difference if the query relates to a physical thing (such as a self-joined query concerning the contents of a warehouse), or if it relates to something “non-physical” (such as stock trades). In the first case, one could argue (following Bilski) that a transformation of data that is representative of a physical thing is made, rendering the claim potentially patentable under the machine-or-transformation test (with the “representation doctrine” built in). In the second case, it would not rise to this level because the transformation was not of data representing a physical thing.

    It seems unwise to me that the statutory patentability of a claimed invention should rest squarely on what is represented by the data. Even in Abele, the difference between patentable claim 6 and unpatentable claim 5 is that “said data is X-ray attenuation data produced in a two dimensional field by a computed tomography scanner” — this is what the Federal Circuit majority in Bilski used to create the representation doctrine. The Court erroneously asserted that the “data clearly represented physical and tangible objects, namely the structure of bones, organs, and other body tissues”. The X-rays could have been diffracted by these “real” objects, but it could also have been diffracted by gases of varying densities, or nothing at all. Abele’s patentable (and presumably patentED) claim 6 does not specify that the data comes from a CAT scan on a human being; it merely specifies that the data comes from a process of computed tomography using X-ray diffraction.

    The clue (a word badly misused in Bilski) to patentability in Abele is that claim 6 did not preempt all use of the algorithm, but only uses involving this particular kind of data WITHOUT REGARD to what the data represents (if anything). The unpatentable claim 5 of Abele would preclude any use of the algorithm WITHOUT REGARD to WHERE the data CAME FROM (again, what the data represents, or not, is irrelevant).

    This is the real issue, which Bilski completely obscured (although Judge Newman clearly was not fooled). This case just extends this problem, although maybe this would be a good one for appeal to address (that is, KILL) the representation doctrine, which is misbegotten.

  14. 6:

    a CRM configured to perform a method does not run afoul of the mixed statutory class caselaw

    a CRM that is performing the method might

    I was talking about the former.

    If a CRM is configured to perform a method, but that method is abstract and doesn’t meet the machine-transformation test, then the method is irrelevant to utility. If it’s irrelevant to utility, why should it be considered for 102/103? For instance, suppose you claimed “a red compact disc”? If the color does not affect utility, why should it be given weight under 102/103?

  15. ” And then I would argue that there cannot be two standards. If features may be inherent in prior art, then features may be inherent in claims. ”

    The biggest problem arises from the fact that there is a difference between a dicslosure (either reference or spec maybe, or maybe only reference) and claims. As you are well aware, claims must include each and every thing they wish to require to be present. There is no reading in limitations from anywhere, not the spec, and certainly not the prior art. I was wrong above, what you suggest goes beyond reading limitations into the claims from the spec, you’re reading limitation into the claims from the prior art hah. I see this one getting really farm, yea h right. Next can we have “implicit” limtations in claims?

    Oh, and what happens when bio computing comes up and running? Were all software claims inherently including a disclosure of using a bio computer to perform them as well as an old fashioned transistor based comp?

    link to geek.com

  16. More on the belief of the universal-obviousness of all software. Just about any invention can be analyzed closely enough to cast it as obvious (except maybe the stumbled-on-it inventions like snot dripping on a petry dish).

    Take any problem. Break it down into very small parts. Analyze each part and try to solve it. The techniques for solving are at some level all old. Need a new drug? Ok, look at the closest equivalents. Perform some routine modifications (known). Analyze the results (old). Pick one that might be promising (yawn). At every micro-step of the innovation process you could argue that the mini-step is obvious. Everything is old at some level.

    But there are some things that are above the level of routine engineering. It’s nearly impossible to describe, but people in the field know and appreciate it when they see it. Returning to Malcom’s Michael Jackson, innovation is kind of like a joke; an obvious one is not usually funny, but a good one employs some insight and creativity.

  17. Examiner Six Thousand wrote:

    “”Would we want to reward the workers in the black box for their advancement of the common good? Of course!”

    Yes I would, but the patent system is not the way to do it.”

    Fair enough, then let’s say the same for everything else. There is no principled reason to discrimate between innovators of different types of useful technology. There is no reason for withholding patent rewards from software engineers while providing it to elecronic and mechanical engineers. It’s as American as apple pie: inventors who improve our lives get to own what they create. Take it away from everyone, or take it from no one. There’s no reason to nitpick with the software industry. The software patent naysayers are just people who want to freeride on the innovations of others. They want to be able to use other people’s new and useful ideas without having to pay.

    I’ve seen my share of junk software patents. Whose fault is it? The PTO and practicioners both (and applicant’s, for that matter, who ought to be able to distinguish routine software engineering from true advancement … to digress, some years ago, many companies filed applications for “inventions” that conisted of taking some known application and implementing in object oriented language, then it was XML, and and today its taking some known application and thinking its new to just implement it in a declarative language.).

    If there are bad patents, that is the issue to address. No need to throw out the baby with the bathwater. Keep a high bar for obviousness. Hire patent examiners with *experience* in the art; too many out-of-school examiners without industry experience. They lack the coarse mental filter of what’s new and what’s not. And tight examination would make applicants feel the pain of hiring non-software attorneys to handle their applications.

    Can you imagine a drug company hiring a civil engineer attorney to prosecute their patents? But for some reason, applicants will take any old attorney to file handle their software applications. Imagine how crummy drug patents would be if software folks like me wrote them!

  18. “After we had this long discussion about “mixed claim types” several months ago, you still don’t get it. There is a difference between a claim directed to “a method and device, comprising ….” and a method that refers to a device or a device that refers to a method.”

    Pds, I figured I would get back to you even though you missed the point by a mile. SF wanst the claim to turn only on the method steps for 101. If that were true, then you have a claim in one statutory catagory (device) that is only relying on another statutory catagory for it trying to be valid. That was what caused ambiguity in the mixed claim types, if you will recall correctly, the claims were not directed to “a method and device comprising:”.

    In one of his actually on point analysis phawk addressed the situation:

    link to patentlyo.com

    “The problem was that the claim could have been read either as a system claim or method claim.”

    If we are only considering the method steps then when does infringment occur? When the method steps are performed, or when a device is made that causes a computer to perform them?

    Bottom line is, SF is off base if bgards are going to be valid at all. They have to be concretely identifiable as a product through and through.

  19. “I think that part of the reason why people like Malcolm think that everything is obvious is because they ony see the world in physical terms. They don’t see the world of imagination.”

    Thank you, Michael Jackson.

  20. “Would we want to reward the workers in the black box for their advancement of the common good? Of course!”

    Yes I would, but the patent system is not the way to do it.

  21. “(a) PHOSITA doesn’t need to know what it looks like”

    O rly? Hmm, that’s funny because so far as I was aware Poshita does need to know what something looks like to practice a structural invention. You’re claiming the structure remember? How is one of ordinary skill supposed to practice the invention (i.e. the structure) by making such a structure if he does not even know what it is? Just because he could create a structure that will accomplish a function a device seperate from the claimed item (i.e. the seperate device being a computer) does not mean that the claimed structure is enabled since nobody (probably not even the inventorlol) in fact even knows what the structure is.

    Also, anyone who ever examines one of these applications should object to the drawings until such a structure is shown in them. In detail, with all the thousands of bits shown individually. Until then, no patent issues iirc. Why are software examiners so lazy? Seriously, they have a lot of objections and rejections to make. These apps don’t appear to be entitled to a patent at all.

    “(b) PHOSITA doesn’t know what it looks like, but can find out. See (a) above, then read the disk.”

    Wait, wait, so he can find out what his own invention/device looks like? Remember, you don’t just have to enable the functionality of the device, you have to enable THE DEVICE. Just because the device is nothing more than a recording of things that result in your functionality doesn’t mean that you’ve suddenly enabled a device by telling someone how to perform a function (on another device I should add).

    “And if you do get the result you want from a forthcoming Fed Cir decision (quite possible), it will be an exception to the rule-type decision that doesn’t logically fit with the rest of the law”

    Can you give me another example of a claim type that is enabled by disclosing the functionality of a device seperate from the device being claimed? Thought not. It fits quite well logically thanks. Even presuming I can program like a wiz I still would not know how to make a disk that has a STRUCTURE as claimed since there is no example/drawing/description of the structure given.

    “Do you not see how bizarre this proposed result is”

    Yes, I do. The printed matter doctrine is odd.

    “Printed matter doctrine” is nothing but an excuse to avoid coherent reasoning”

    No, it is to restrict patents from where they were blatantly not supposed to go when they were created. You have copyright.

    “Your assertion that “[n]o Poshita, or examiner knows what a structure of a cd that would perform such a function as claimed would look like unless the app tells us” evidences an ignorance of technology that is beyond belief.”

    Not really, I know you could program a cd with a program if you could write the program. That’s not what we’re talking about. What we’re talking about is straight up making a cd with such a functionality. You haven’t enabled the invention to the point that it is FULLY enabled. Fully enabling it would enable the poshita to simply make the device without having to go through iterative programming himself. Having it enabled to the point where a poshita can compile, test, reprogram, compile, test, reprogram until he gets a semifunctional program that may barely function hardly seems like the invention is fully enabled. It seems more like you enabled the functionality of a different device and said: go make your own device because I don’t want to tell you how to make mine. It is a structure, that consists of 1’s and 0’s. Pretty simple right? Having to perform any experimentation to make such a structure is impermissible. There is no reason the invention should not be disclosed to the point of eliminating the undue experimentation. And even if such a judgement is made such that having to program over and over to get the “right” program is not undue exp, where’s mah best mode? What’s the BEST structure for performing this functionality? Don’t even try to tell me the functionality IS the best mode. That is hands down ridiculous. We need a best mode of what accomplishes the functionality.

    “(b) PHOSITA doesn’t know what it looks like, but can find out (by making it himself and looking at it).”

    Is funny. Dude seriously.

  22. lwmi wrote (way back on page 1):

    “I think this is ridiculuous. Does the PTO require that the elements in claims in other arts be described with qualifications as it wants for software “system”? Has computing not progressed at all in last 50 years so that PHOSITAs don’t understand that system in context of a Relational DataBase Management (RDBMs) system means nothing but a computer? In theory you can have a static RDBMs schema on paper, but to run queries, do indexing or any sort of operations it will have to be implemented only on a computer of some kind. Someone please donate RDBMs textbooks to the USPTO library.”

    One thing you’re saying is that there are implicit limitations in the claims. But if that’s so, why not just claim them and avoid the whole issue?

    That’s a practical response. Practicality aside, I think you’re right. Language and terminology in the software arts is kind of like software itself; anyone call anything by any name they like. Overtime terminology can converge to common meaning, but often there is a problem with whether some language has well known meaning or now. Another problem is that many patent practicioners and examiners are not up to par on current terminology. Examiners often give ridiculous meaning to well-established terms, and drafters often use terms that are pulled out of a hat and have almost no meaning (to the phosita).

    So coming back to your point, you’re right, but there’s no way to address the problem systemically. It’s a problem with too many people involved who are out-of-the-know; they’ve never written or maintained code, they’ve never designed a system, never administered a database, never written project specifications, never had to debug a complex program, and so on… and they have usually have no clue about how a PHOSITA would interpret many common software terms.

    As to the MM’s of the world, try this thought experiment. Imagine a huge building, no windows, no information ever leeks out, hush hush and all that. A human “black box” so to speak.

    Now imagine people could call the black box (or walk up to a customer window) and ask questions like “where is the neares McDonalds”, or “find me information about FICA withholding”, or “find me a plane ticket with so and so conditions”, or “give me a circuit layout for this design specification”, or “here’s a movie, fit on this tiny little device for me”, or “analyze performance featureX of my investment portfolio”, … and so on… you get the idea, pick any real and tangible benefit that software has delivered to the public in the last 50 years.

    Now suppose we had no idea what went on inside that black box. Would we want the black box to work better? Would we want to improve the quality of what they do, how quickly they do it, what kinds of solutions/answers they can provide, and so on? Would we want to reward the workers in the black box for their advancement of the common good? Of course! Would we care about the metaphysical nature of the work they do? No. Why would we?

    I think that part of the reason why people like Malcolm think that everything is obvious is because they ony see the world in physical terms. They don’t see the world of imagination. They confuse implementation with creative conception. Implementation is easy, but conception often isn’t. Saying an entire field of science and engineering as “obvious” is … it speaks for itself.

    Malcolm, instead of continuing to spout off about how everything is obvious, why don’t you go pick up an old copy of “Programming Pearls” for some easy-to-understand examples of creative and beneficial programming. Pick a solution and tell us what makes it obvious to you.

  23. “Moonbeam, quick on his feet as ever, but not too quick of wit, as usual, argued that the person who just sells software avoids infringement liability under reverse inherency. Moonbeam’s point, which is inherent in his comment, is that if the hardware is inherent in the software step, then just selling the CD obviates culpability of the seller.

    Moonbeam — review induced infringement. You might start with ACCO v. ABA Locks and Belkin (Fed. Cir. 2007).”

    I don’t need to review induced infringement, douchebag. I specifically used the term “direct infringement” in my comment, as you are perfectly aware, for that reason.

    My point is that rather than invoke some dumbaxx “reverse inherency” theory, if induced infringement is good enough for you why not simply write your software claims as computer claims? Then you don’t need to create new legal theories (or give old ones new names) and we can be done with Beauregard claim nonsense.

  24. “At best, don’t you have split infringement with the problem of no direct infringer?”

    No.

    Sometimes Moonbeam should simply be dismissed out of hand.

  25. Babel Boy,

    At best, don’t you have split infringement with the problem of no direct infringer?

    Sometime, “Moonbeam” shouldn’t be dismissed out of hand (although he does make it very very tempting).

  26. With regards to my doctrine of reverse inherency, which, at this point is not quite a brain-child, but at least a brain-fetus, “curious” pondered what cases I would argue in support.

    I would argue any BPAI or CAFC case upholding the doctrine of inherency, which is good law and reasonable. And then I would argue that there cannot be two standards. If features may be inherent in prior art, then features may be inherent in claims. In fact, some features have to be inherent in claims. A claimed wheel inherently goes ’round. But, no, I have never seen the legal argument for reverse inherency raised. This tied to a machine Bilski stuff is fertile ground for it.

    Moonbeam, quick on his feet as ever, but not too quick of wit, as usual, argued that the person who just sells software avoids infringement liability under reverse inherency. Moonbeam’s point, which is inherent in his comment, is that if the hardware is inherent in the software step, then just selling the CD obviates culpability of the seller.

    Moonbeam — review induced infringement. You might start with ACCO v. ABA Locks and Belkin (Fed. Cir. 2007).

  27. Lowly,

    You assume the Office is capable of recognizing REASONABLE.

    Look at the actions of their top brass (re Continuation Rules, Appeal Rules etc). Is your assumption validated?

  28. Why is it that “broadest reasonable” to the PTO always mans “broadest.”

    The broadest REASONABLE interpretation of that claim is that its performed by a computer.

  29. My query “What about that personal check claim earlier — would that be 101 statutory subject matter?”

    6’s answer: That one would turn on whether or not the pto wanted to apply the printed matter doctrine it seems to me. It might not bother if it had a solid 103/102 since printed matter doctrine is much harder to rely on I’d imagine.

    Do you not see how bizarre this proposed result is? If the paper check was made of plastic, and the magnetic ink was instead impressed into the plastic (like a credit card), it would suddenly be 101 statutory?

    Here’s an invention (that revolutionized check processing, btw) that happens to be printed [gasp] on paper [oh noes!] and it is suddenly not a useful apparatus under 101?

    “Printed matter doctrine” is nothing but an excuse to avoid coherent reasoning, as are the other incantations regularly spewed forth (“software per se,” etc.)

  30. 6 blathered: “Also, I’ve been mulling it over, and I’m yet to see a software on hardware claim that was sufficiently enabled. No Poshita, or examiner knows what a structure of a cd that would perform such a function as claimed.”

    Ummm, nope.

    (a) PHOSITA doesn’t need to know what it looks like, PHOSITA just needs to know how to practice the invention after reading the spec. PHOSITA writes the code, compiles it, burns it to the disk.

    (b) PHOSITA doesn’t know what it looks like, but can find out. See (a) above, then read the disk.

    6, I understand your frustration. But you can’t get the result you want under current law. Sorry.

    And if you do get the result you want from a forthcoming Fed Cir decision (quite possible), it will be an exception to the rule-type decision that doesn’t logically fit with the rest of the law (e.g., apparatuses are statutory except when we say they aren’t and today red automobiles are not statutory subject matter).

  31. 6K:

    Really, this stuff is so basic once you have even a modicum of an understanding of the law and the basic technology.

    Your assertion that “[n]o Poshita, or examiner knows what a structure of a cd that would perform such a function as claimed would look like unless the app tells us” evidences an ignorance of technology that is beyond belief.

    Also, a good portion of your arguments are an attempt to parse statutory subject matter from non-statutory subject matter or functional limitaitons from structural limitations, which completely ignores that sections 101, 102, and 103 of 35 USC are ALL based upon the claimed invention as a whole.

    Sorry buddy, you lose … again.

  32. “Please. What is the invention? The method steps, or a disk causing method steps?”

    …. shaking head …..

    Du-mbass … the claimed invention “as a whole” … which has long been the standard.

    35 USC 103 talks about the “subject matter as a whole”

    From MPEP 2141.02: In determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been obvious. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983); Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983)

    From Bilski:
    Second, the Court has made clear that it is inappropriate to determine the patent-eligibility of a claim as a whole based on whether selected limitations constitute patent-eligible subject matter. Flook, 437 U.S. at 594 (“Our approach to respondent’s application is, however, not at all inconsistent with the view that a patent claim must be considered as a whole.”); Diehr, 450 U.S. at 188 (“It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis.”). After all, even though a fundamental principle itself is not patent-eligible, processes incorporating a fundamental principle may be patent-eligible. Thus, it is irrelevant that any individual step or limitation of such processes by itself would be unpatentable under § 101. See In re Alappat, 33 F.3d 1526, 1543-44 (Fed. Cir. 1994) (en banc) (citing Diehr, 450 U.S. at 187).

  33. “Suppose they then argue that their claimed computer readable medium is novel because of the cool image file encoded thereon”

    Presuming arguendo that we’ve established them to be valid claims under 101 I’m not sure what would happen under 103. That sounds like grounds for an appeal. The pictures might bite it as being aesthetic differences only, but the others might not.

    And btw, the ignoring the limitations for 102/103 is nearly what I’m getting at with my intended use rejection. That is to say that the only functionality of all disk structures is the same, to store data and be read, their function is not to store specific data. The only thing different in different computer product claims is the intended use that the functionality is being used for. Now, IF you made a disk where the functionality was actually to store specific data then you might have a claim, but no such applications that I know of exist, and you would have to actually tell what that data was, not relate it to the functionality of some entirely different object or merely recite what the function of the data is.

  34. 6:

    Suppose someone argues that a claimed piece of paper is an article of manufacture. Suppose they then argue that their claimed piece of paper is novel because of the claimed cool pictures printed on the paper.

    Suppose someone argues that a claimed computer readable medium is an article of manufacture. Suppose they then argue that their claimed computer readable medium is novel because of the cool image file encoded thereon.

    Suppose someone argues that a claimed computer readable medium is an article of manufacture. Suppose they then argue that their claimed computer readable medium is novel because encoded thereof is an abstract process that fails the machine-transformation test.

    Even if you find that each of these claims are statutory (because paper and computer readable mediums are articles of manufacture), wouldn’t you be able to ignore (for purposes of 102, 103) the claimed printed picture, encoded image file and the encoded abstract process because none them have any effect on practical utility?

  35. A poster with the pseudonym “Tazistan Jen” posted this comment on Tuesday’s “Means-Plus-Function Fools Gold” thread about the Welker Bearing v. PhD, Inc. (Fed. Cir. 2008).

    “Here is when I use a means plus function claim: in mechanical invention patents when I have talked about a lot of variations on mechanisms and I want a claim that will capture all of the variations. I WOULD NEVER HAVE *ONLY* A MEANS PLUS FUNCTION CLAIMS THOUGH.” (emphasis added).

    I asked Tazistan Jen this:
    My question may be naïve, but why would you never have only a means plus function claim?

    So far, no answer, and the question is more than academic to me as it involves one of my favorite inventions now pending and to which I am preparing a response to an OA. However, Mr. Bruce Horwitz, a humble but highly regarded learned layman for sure, posted this on Dec 16, 2008 at 04:16 PM on the same thread.

    “Tazistan Jen’s post is one of the appropriate uses. Another is when you really have invented an entirely new class of “thing” which can be accomplished in many different ways … .”

    While Mr. Horwitz’s statement gives some comfort regarding my pending application, it does not provide any specific guidance that will help me sleep so soundly as I would like.

    Please help…is there anything dangerous about securing only a M+F claim on a favorite invention that is also potentially quite valuable.

  36. “There is a difference between a claim directed to “a method and device, comprising ….” ”

    Sure there is a difference. But let me get this straight, in a claim that states “a product” comprising: “method steps”, there is no issue as to which class it is directed? L O L. That’s what the above poster was saying the statutoralitylol of the claim would rest upon, the method steps. If a claims statutorality is resting on method steps yet it is clearly a product you’re telling me that there is no ambiguity? Please. What is the invention? The method steps, or a disk causing method steps? If the later, then the statutoralitylol of the claim does not rest on the method steps as SF? asserted above.

    Merely “refering” to method steps is what all method claims do du mb arse. “referring” to something is the same as “including as a limitation”. Either way it doesn’t matter, I’ll stick by my original assertion that you may not distinguish a structure in terms of method steps even if the method steps are supposedly functional limitations. And I would reject your screwdriver claim directed to a phillips head the same way. I might also reject 99.9% of your computer method claims on a windows xp disk and say that the structure is capable of performing the intended use. I’m not sure about that one.

    Also, I’ve been mulling it over, and I’m yet to see a software on hardware claim that was sufficiently enabled. No Poshita, or examiner knows what a structure of a cd that would perform such a function as claimed would look like unless the app tells us. Would the structure look like:

    100101010101010101011010101010111010110110101010110

    or would it look like:

    010101011001101110110101011101010101010101101010110

    ?

    Hmm?

    The claim is impossible to be completely searched since there is no way to know what the structure actually is.

    All that said, distinguishing a structure in terms of the functionality of another structure also seems to be disallowed.

    “A computer keyboard which, when connected to a computer and operated by 6 causes a computer keyboard under the control of pds to perform *novel method of typing*.

    Assuming my keyboard is old, and your keyboard is old, is my claim statutory and nonobvious if this were the first exchange between us?

  37. “CAFC will shoot you down faster than god knows what.”

    Wrong again ….

    We consider independent claims 17 and 46 separately. They recite the use of “modules,” including “a registration module for enrolling” a person, “an arbitration module for incorporating arbitration language,” and “an arbitration resolution module for requiring a complainant [or party] to submit a request for arbitration resolution to the mandatory arbitration system.” Claim 17 also recites “a means for selecting an arbitrator from an arbitrator database.” These claims, under the broadest reasonable interpretation, could require the use of a computer as part of Comiskey’s arbitration system …. independent claims 17 and 46 and dependent claims 15, 30, 44, and 58 claim patentable subject matter under § 101.”

    If the Federal Circuit followed the “broadest reasonable interpretation standard” to include non-statutory subject matter and exclude statutory subject matter, then claims 17 and 46 would have been rejected under § 101, since the Federal Circuit made a finding that a “module [is] ‘[a] self-contained hardware or software component that interacts with a larger system.'” Thus, the claim language also encompasses non-statutory subject matter (i.e., the software).

  38. “If we go down your road then the whole claim fails for having mixed claim types. Every single time.”

    …. shaking head ….

    After we had this long discussion about “mixed claim types” several months ago, you still don’t get it. There is a difference between a claim directed to “a method and device, comprising ….” and a method that refers to a device or a device that refers to a method.

    A Beauregard claim is a product claim that refers to a method.

    Really, are you stup1d or do you just act stup1d?

  39. “If not, and many seem to lean toward scoffing at this sort of invention, then some of the most important American innovations of the 21st century will be donated gratis to the world, screwing this great nation. Why do we put mixing a couple common chemicals on such a high pedestal that such a mixture (changing matter) is deserving?”

    What “most important American innovations” are you talking about that we get gratis? We have copyright for a reason you know.

  40. “What about that personal check claim earlier — would that be 101 statutory subject matter?”

    That one would turn on whether or not the pto wanted to apply the printed matter doctrine it seems to me. It might not bother if it had a solid 103/102 since printed matter doctrine is much harder to rely on I’d imagine.

    “Software running on a GP computer functions as a calculator and is a tool for humans. ”

    No, the gp computer functions as a calculator and is a tool for humans. Software is just instructions on how to use it as one.

    “I’m here today, Moonbeam, to tell you what Plan B is. Plan B is when some genius of a lawyer stands up in the CAFC and argues reverse inherency. ”

    Already shot you down at Phawk. You have no basis for reverse inherency and it does not in fact exist. It would be the definition of reading limitations into the claim from the specification. CAFC will shoot you down faster than god knows what. Funny that you took that ridiculous nonsensem that probably spawned from phawkm into your own RL practice. I’ll give you that it is interesting, but it is expressly forbidden. The court will simply tell you that it is reasonable for the PTO to require a recitation of such structure in the claim. If you argue it in an issued case with presumption of validity you might have a prayer. A very small one. You’re essentially running an end run around their en banc. They will likely not be pleased with such foolishness.

  41. “The issue is whether the method performed by the instructions on the medium is statutory.”

    HAHAHAHAHAAHAHAHAHA. I wish. If we go down your road then the whole claim fails for having mixed claim types. Every single time. The only reason b’gards have a prayer is because of the medium and supposedly making the method limitations into function limitations only. If you even consider the method limitations to be method step limitations rather than purely functional ones then the claim goes right down the tubes faster than I can flush them.

    That said, I hope you’re right SF.

  42. Mad Prosecutor,

    You assume that there is only one “reasonable” interpretation. Perhaps there is more than one.

    Oh, wait, then we have an indefinite Statute. Oh dear, If the Statute’s indefinite, we should let the USPTO decide.

    The Office decided long ago:
    “Everything that can be invented has been invented.”
    Charles H. Duell, U.S. Commissioner of Patents, in 1899.

  43. Broadest reasonable interpretation – too bad it isn’t applied to 35 USC 101. After all, broadest reasonable interpretation of “method” is simply an “Orderly arrangement of parts or steps to accomplish an end.” Interesting how a “reasonable” interpretation of 101 obviates all the nonsensical questions and games associated with non-statory software.

    This leads me to conclude if the above interpretation of 35 USC 101 is reasonable, the current interpretation is, by process of elimination, unreasonable.

  44. “Perhaps the distinction lies between a “specific” machine and a “general purpose” machine, though for the life of me I am currently unable to distinguish between the two.”

    M. Slonecker,

    Begin your journey with “In re Alappat”.

  45. Malcolm,

    If they ad simply rejected this claim as obvious, I would not have any problem with this decision. However, Bilski is a confusing, untenable basis and results in ridiculous rejections like the one presented here.

  46. “There is another distinction. A calculator is a tool for humans. Software is instructions for a computer.”

    Software running on a GP computer functions as a calculator and is a tool for humans.

    “Beauregard claims were made up out of thin air and have no legal basis in patent law.”

    35 USC 101. Apparatus. The tangible medium (e.g., floppy disk) is the apparatus. It doesn’t stop being an apparatus when you record evil obvious software on it.

    MM, you aren’t trying too hard today.

    What about that personal check claim earlier — would that be 101 statutory subject matter?

  47. Of course, people who sell software only do not directly infringe these “reverse inherency” claims. Right? Doesn’t that make the claims “worthless”?

    I apologize for not being able to keep all of the grievances of software patent proponents straight.

  48. Moonbeam said:

    “I’ll ask the software prosecutors again: what is plan B?”

    I’m here today, Moonbeam, to tell you what Plan B is. Plan B is when some genius of a lawyer stands up in the CAFC and argues reverse inherency.

    Elements, steps and limitations that are inherent in prior art can be used by PTO against an applicant. Reverse inherency will be when an applicant uses inherency against the PTO and argues that every claim to implementing a software instruction inherently meets the “tied to a machine” test. Software steps cannot be implemented in the absence of hardware. Hardware = machine.

    Everyone, including the IBM suits who wrote the claim at issue, is gun-shy of using “software” in a claim. But once the reverse inherency argument kicks in, those who have used it will be in good shape.

    The argument will be, essentially, a goose and gander argument. If PTO can rely on inherency, so can applicants. After all, if a feature or limitation is inherent — then that’s what it is. It’s an unavoidable feature for all purposes. Makes no difference if it’s in the PA or the claim. Besides it’s impossible to imagine any claim to a software-based method in which the disclosure doesn’t mention the hardware.

    If you would like to volunteer for this mission, contact IBM. [I tried, but, apparently, my fee is too high.]

  49. Having read the BPAI decision, I am intrigued that the decision overturned the Examiner’s rejection of claims by declaring that they described new and non-obvious subject matter.

    That having been said, it then proceeded to reject the claims on the ground that they should never have been allowed to enter through the “101” door.

    I guess the moral is that what the BPAI “giveth” the BPAI can sua sponte “take away”.

    My “take away” from Bilski was that “pure” software inventons have been shunned from entry into the patent system. This decision seems to confirm this, though I do not dismiss the possibility that I may be overlooking a key distinction that nonetheless enables their entry. Perhaps the distinction lies between a “specific” machine and a “general purpose” machine, though for the life of me I am currently unable to distinguish between the two.

  50. “Then what is the legal significance of an equivalent software implementation?”

    There is another distinction. A calculator is a tool for humans. Software is instructions for a computer.

    This gets back to the robot chef. Why isn’t a novel recipe for a robot patentable when its written on old paper? It’s written on a computer readable medium. It provides instructions to the robot. What’s the legal distinction?

    The answer is that there isn’t a legal distinction. The reason why there isn’t a legal distinction is because Beauregard claims were made up out of thin air and have no legal basis in patent law. They were a gift to the industry, much like the gifts given to the credit and banking industry during the same period. And both industries proceeded to abuse the gifts to line their own pockets while the vast majority of Americans got nothing while their Patent Office got bogged down in worthless crap.

    some eagle upthread: “many seem to lean toward scoffing at this sort of invention, then some of the most important American innovations of the 21st century will be donated gratis to the world, screwing this great nation.”

    LOL. Look where software patents got us so far.

  51. “Has computing not progressed at all in last 50 years so that PHOSITAs don’t understand that system in context of a Relational DataBase Management (RDBMs) system means nothing but a computer?”

    Why don’t you ask the twit who drafted the claim and chose to use the broad term “system” instead of the much narrower (and more accurate) term “computer”?

  52. “If you want to argue that the plaintiff’s computer program product claim is invalid under 101 because B’gard isn’t binding, be my guest. And I hope you take it on appeal to the Fed. Cir. so this can be decided on the merits one way or the other. Oral arguments will be entertaining.”

    What I said was that there was no precedent to overturn. My point was that the people saying that you’d have to overturn Federal Circuit precedent with respect to beauregard claims never read the case. The Federal Circuit never addressed the merits, as you note.

    I don’t believe you can challenge all beauregard claims as being non-statutory. I do believe, however, that the computer readable medium is irrelevant to whether its statutory or not.

    The issue is whether the method performed by the instructions on the medium is statutory. If the method fails the machine-transformation test, putting that same method on the medium isn’t going to cut it. I’d be happy to take that to oral argument.

  53. “It’s obvious per se because the algorithm executed by the button is not patentable.”

    This is a gr0ss misstatement….and, as best I can understand, wrong.

    A claim is not “per se” obvious because an algorithm is not patentable. Besides when there is hardware around, the algorithm plus the hardware equals a patentable claim under Aristocrat. What kind of persistent mor0n are you?

    “so be charitable and pretend that I have as much talent as you do in your little finger.”

    Gawd don’t encourage him.

  54. MM said, quoting FJF:

    “If a physical calculator (i.e., one implemented using hardware components) is considered patentable subject matter”

    The question is: what makes the calculator patentable? Let’s say a new calculator = old calculator plus an extra button that causes a new algorithm to convert number X to number Y. That’s not patentable. It’s obvious per se.

    It’s obvious per se because the algorithm executed by the button is not patentable.”

    I’m sorry, that doesn’t answer the question. Arguendo, assume the calculator is novel and non-obvious. (After all, this was supposed to be a 101 question.) Then what is the legal significance of an equivalent software implementation? Is it non-statutory subject matter because of Benson?

  55. 6, look at any BPAI decision. “Arguments which could have been made but were not made are deemed to have been waived.”

    So you must put in a section in your brief that says “claim X is computer program product claim and is therefore statutory subject matter. (cite B’gard).”

    To hammer the point home, you might want to include the following quote from B’gard:

    “The Commissioner now states “that computer programs embodied in a tangible medium, such as floppy diskettes, are patentable subject matter under 35 U.S.C. § 101 and must be examined under 35 U.S.C. §§ 102 and 103.”

    If you don’t, then the BPAI may evaluate the CPP claim as a method under Bilski and completely ignore the ‘holding’ of B’gard. You waived that argument, after all.

    It’s worked that way before, I can find an example decision if you ask nicely.

    Sad but true.

  56. If we disallow software patents… aren’t we encouraging software developers to hide/abstract/encrypt and treat as tradesecrets? Don’t we then prevent the public from learning these advances, doesn’t this clog the pipeway of progress?
    Do software developers really need 20 years of exclusivity as a carrot? Maybe reduce the exclusivity period? Or carve out a huge fair-use exception for academia?

  57. As a few postings on this thread have recognized, the question is really whether software methods–algorithms and similar recipes — are going to be patentable, and that is important national policy. If not, and many seem to lean toward scoffing at this sort of invention, then some of the most important American innovations of the 21st century will be donated gratis to the world, screwing this great nation. Why do we put mixing a couple common chemicals on such a high pedestal that such a mixture (changing matter) is deserving?

  58. “If you don’t argue B’gard, though, you waive that argument & your CPP will go down along with your method.”

    How are you going to “argue” b’gard?

    What are you going to put in your brief?

    “Um, the issue hasn’t been decided yet, but the printed matter doctrine doesn’t apply!”

    That about right?

  59. ((part 3, wherein I find what the filter doesn’t like)

    Also, I would not want to be the PTO attorney who argues an appeal from a BPAI decision on a B’gard claim — stuck with the position that B’gard wasn’t decided on the merits and is therefore not binding.

    You want to look a judge in the eye and say, “Yes, your honor, we are arguing that because you did not decide the issue on the merits in B’gard, we are free to change our position. Under Chevron…..”

    For these reasons, the BPAI views B’gard as binding for now. If you don’t argue B’gard, though, you waive that argument & your CPP will go down along with your method.

  60. (part 2, filter is dumb)

    If you want to argue that the plaintiff’s computer program product claim is invalid under 101 because B’gard isn’t binding, be my guest. And I hope you take it on appeal to the Fed. Cir. so this can be decided on the merits one way or the other. Oral arguments will be entertaining.

  61. No, SF, I’m not. Go back and re-read my last post. Especially the part about the Fed. Cir. deciding the issue on the merits.

    But district courts will treat B’gard as binding — especially given the public policy argument against viewing it as anything but binding (i.e., encouraging agency ‘bait and switch’ as you call it).

    (end part 1 — spam filter hates me)

  62. Mooney: Is this claim statutory under 101:

    An apparatus comprising:
    a piece of paper approximately 2.5″ by 6″; and
    a plurality of machine readable characters printed on said piece of paper in magnetic ink, wherein said characters represent at least a transit routing number and an account number.

    Yes, anticipated by check numbers 1300-1450 in my checkbook this very instant.

    And maybe the claim isn’t drafted very well, but it’s early, so be charitable and pretend that I have as much talent as you do in your little finger.

    So, was this invention (personal checks with magnetic ink readable by both man and machine which is crucial to automating the clearing of a gazillion checks every day) statutory?

  63. “An encryption algorithm that is held as a trade secret is commercially worthless. No one will take your word for it that your new algorithm is secure. A valuable encryption algorithm is one that works despite the fact that everyone knows how it works. This makes for a pretty poor poster child for trade secrets.”

    You have a good point. I was thinking more military than commercial. Encryption immediately made me think of Enigma.

  64. I think this is ridiculuous. Does the PTO require that the elements in claims in other arts be described with qualifications as it wants for software “system”? Has computing not progressed at all in last 50 years so that PHOSITAs don’t understand that system in context of a Relational DataBase Management (RDBMs) system means nothing but a computer? In theory you can have a static RDBMs schema on paper, but to run queries, do indexing or any sort of operations it will have to be implemented only on a computer of some kind. Someone please donate RDBMs textbooks to the USPTO library.

    In future, one may have to claim “a hardware mouse” or a “software mouse”. One might as well clarify “..wherein the mouse comprises a cable and a twin axis location sensing device”.

  65. “If a physical calculator (i.e., one implemented using hardware components) is considered patentable subject matter”

    The question is: what makes the calculator patentable? Let’s say a new calculator = old calculator plus an extra button that causes a new algorithm to convert number X to number Y. That’s not patentable. It’s obvious per se.

    It’s obvious per se because the algorithm executed by the button is not patentable.

    Go ahead and continue to do what most Examiners tell you to do. Just don’t say you weren’t warned. You were warned years ago.

  66. To Malcom and all the other software-phobes, a simple question:

    If a physical calculator (i.e., one implemented using hardware components) is considered patentable subject matter, why isn’t a calculator implemented in software running on a general purpose computer?

    Most Examiners would tell you, to get a software related method allowed, all you have to do in the preamble is to add:

    “A computer implemented method for ….”

  67. To Malcom and all the other software-phobes, a simple question:

    If a physical calculator (i.e., one implemented using hardware components) is considered patentable subject matter, why isn’t a calculator implemented in software running on a general purpose computer?

    Most Examiners would tell you, to get a software related method allowed, all you have to do in the preamble is to add:

    “A computer implemented method for ….”

  68. “Now, do you really think any federal court would allow an agency to evade the law’s contraints by essentially settling and then once the case is over, going back to their original position?”

    Don’t tell me you’re arguing that the Federal Circuit is going to defer to the USTPO’s prior interpretation on 101 for any reason, much less some notion that, because the USPTO is performing some sort of bait and switch, 101 caselaw should bend to the USPTO’s practice. What about signal claims? Didn’t the USPTO allow those for a while?

    The Federal Circuit had no choice but to dismiss the Beauregard case because there was no case or controversy. That means there is no Beauregard precedent to overturn. I’m sure you get that, don’t you? Or are you a prosecutor?

  69. (thinking cloud ~ Drat! another crap claim. Worthless garbage. I bet if post a hundred times saying things about pieces of paper and trying to be popular, I can really change the world of patent law. Durn, I have to get back to work, the boss needs me on the french fry line)

    I mean c’mon its “pieces of paper” people! What’s wrong with you people?

  70. “slowly … ever so slowly … backing away”

    I didn’t think you really wanted to engage in a serious discussion. Thanks for confirming it.

  71. pds “With the appropriate technical expertise (i.e., by one having ordinary skill in the art), he or she she be able to envision any method/device/product in his or her mind — ergo, “abstract idea. Does your device/method claims exclude a *simulated* device/method. What happens if the simulation occurs in one skilled in the art’s head or in a virtual environment?”

    [slowly … ever so slowly … backing away from pds]

  72. The Board decision in Ex Parte Bo Li is relevant here. This simply held that Bilski only applies to method claims and that a Beauregard claim is not a method claim, relying upon In Re Lowry, 32 F.3d 1579, CAFC 1994, and also quoting MPEP 2105.01.

  73. Why didn’t IBM just claim their invention in terms of what a database engine does? Seems like the only infringement would occur in a DBMS? For example, most database engines have a common set of components and architecture, such as a query parser that builds a query tree, an opimizer that performs operations on the tree to optimize execution of the tree, etc. I don’t fault the attorney for what was a reasonable claim at the time. But I don’t think it should be hard to claim the invention in a 101-satisfying concrete way that still encompasses the idea of the invention.

    Someone above mentioned Policy. Isn’t the policty of 101 supposed to be about whether the claimed subject matter is the type of thing or activity in which society wants to encourage investment, advancement, and research. Do we want people to invest in making databases run faster? It’s an easy question to dismiss sitting in a judge’s/beaureaucrat’s windowless world. But if you’re waiting in line at an airport ticket desk for a clerk’s query to complete – on a holiday travel day as millions hammer away at the same database – it’s not such an academic question.

    [if stream of consciousness bothers you, read no further]

    If a claim reads on some abstract algorithm, then how does one infringe it? I guess what I’m getting at is: doesn’t one have to perform an algorithm in the abstract to infringe an abstract algorithm, and isn’t that impossible? Maybe these kinds of claims should be deemed indefninite…

    To illustrate, try to work the problem in reverse. Imagine someone with a database that uses the algorithm of Koo (hee hee). IBM says: you infringe, you’re “evaluating the query to determine whether a sub-expression of the query is being joined to itself”. Accused infringer replies: No, evaluating a query is an abstract step (it could mean almost anything, like a person hearing a spoken question and their brain processing the question). We don’t perform the claimed abstract steps, we perform concrete teps like building a query tree in memory and determining whether the query tree has a particular property. And what we do is not a species of the claim; it’s a whole diffeernt category. A species of the claim would be a more specific abstract algorithm.

    And Malcolm, I don’t see how you can know jack about software, or anything else for that matter, since posting on Patently-o seems to be a full-time job for you. Seriously, how do you have so much time to spend on an internet blog?

  74. SF, why don’t you show all of B’gard:

    ———
    Briefly, on August 4, 1994, the Board rejected Beauregard’s computer program product claims on the basis of the printed matter doctrine. Beauregard appealed. The Commissioner now states “that computer programs embodied in a tangible medium, such as floppy diskettes, are patentable subject matter under 35 U.S.C. § 101 and must be examined under 35 U.S.C. §§ 102 and 103.” The Commissioner states that he agrees with Beauregard’s position on appeal that the printed matter doctrine is not applicable.

    Thus, the parties are in agreement that no case or controversy presently exists.
    ———

    Now, do you really think any federal court would allow an agency to evade the law’s contraints by essentially settling and then once the case is over, going back to their original position?

    Right now, only the Fed. Cir. or above can touch B’gard claims under 101 as long as they are properly argued.

    The Fed. Cir. might “overturn” B’gard with a 3 person panel by deciding the issue on the merits. Similarly, a panel can gut B’gard by saying any subject matter that isn’t 101 statutory doesn’t “count” towards 103 (remember the Comiskey dicta?). Lots of things can happen at the Fed. Cir.

    But until the Fed. Cir. speaks on the issue, a floppy disk is an apparatus and therefore statutory subject matter, even after you record evil obvious software on it.

  75. “What it does mean is that the BPAI isn’t unified in its application of 101 — something that has been opined before by myself and others on this board.”

    Well, consider FWIW that one of the panelists for Dutta was also on the Halligan panel.

    I’m not so sure the non-sua sponte here is meaningless. The Board clearly is looking at apps closely and raising 101 when it can (four or five times already since Bilski) and, as someone above mentioned, IBM appears to be a favorite target. The Registration Server in Dutta is described in technical detail in the spec, and is central to the reversal of the 103 rejection. This looks pretty instructive to me.

  76. “Yes, but just because they didn’t raise a new rejection sua sponte doesn’t mean much.”

    What it does mean is that the BPAI isn’t unified in its application of 101 — something that has been opined before by myself and others on this board.

  77. “I’ve drafted thousands of claims and none of them read on ‘abstract ideas.'”

    Then you aren’t using a broadest reasonable claim construction. With the appropriate technical expertise (i.e., by one having ordinary skill in the art), he or she she be able to envision any method/device/product in his or her mind — ergo, “abstract idea.”

    Does your device/method claims exclude a *simulated* device/method. What happens if the simulation occurs in one skilled in the art’s head or in a virtual environment? Sounds like an abstract idea to me.

    Of course, you skipped over the other issue of what happens when your method/device claim covers an embodiment that doesn’t have substantial utility. Should it be rejected under 35 USC 101? If not, why not?

    Come on … this has the potential for a real intellectual conversation … are you up for it MM?

  78. Here’s the claim from Dutta, Appeal 2008-4046:

    1. A method of rating an online auction user comprising the steps of:

    receiving personal information regarding the user;

    based on the personal information, obtaining objective information by a Registration Server about the user from a third party; and

    formulating an initial value by the Registration Server for a reliability rating based on at least the objective information.

  79. Is Alappat still good law? It was gutted with the loss of the the UCT test. Its specific reasoning (that a generic computer running special software is a special computer) was based on the UCT.

    Also its results seem at odds with the Abele results the majority in Bilski cooed over.

  80. For comparison, check out Ex parte Dutta (12/2/2008), also an IBM app, in which the BPAI did NOT raise a 101 rejection, presumably due to the recitation of a ‘Registration Server’ in the otherwise Bilski-failing claim. Is that all it takes?

  81. “Hardly, 101 blatantly creates a requirement that the patent falls into a stat catagory.”

    6K if you showed any cleverness with the English language and/or basic logic, I would bother to explain it to you. However, since you’ve shown neither, I won’t.

  82. pds “…if extended to the broadest extreme, it could invalidate almost ALL patents. I just imagined a novel method of isolating some gene. I also just imagined a novel machine tool. Seems to me that these are “abstract ideas” which could be covered by the BROADEST reasonable claim construction. As such, those claims run afoul of 101 based upon this analysis.”

    Uh, when you say “those claims”, what exactly are the claims that you are referring to? It’s sort of an important question. I’ve drafted thousands of claims and none of them read on “abstract ideas.”

  83. “If you want my opinion, it will cost you a few grand. Until you can cut me that check, I’ll just refer you to page 13 of the Decision:”

    Lawyer to english translation:

    Yes it is obvious.

    “(ii) if extended to the broadest extreme, it could invalidate almost ALL patents.”

    I cannot think of a single claim before me that could be 101’d because they encompass non-statutory subject matter. And I have a lot of method claims.

    “(i) it is inconsistent with the language of 101 ”

    Hardly, 101 blatantly creates a requirement that the patent falls into a stat catagory. If the claim may OR MAY NOT fall into a stat catagory then it is reasonable to make the applicant clarify during prosecution while the claims may still be amended.

  84. “Jebus MM, all this time I’ve been talking about what happened in Beauregard and you just replying away without even knowing the decision is all of two paragraphs telling about how the PTO dropped the argument? Come on, I’ve stated it umpteen times. ”

    [hangs head in shame]

    I’m torry.

  85. “That’s not what happened, pds. See the first comment, upthread. The key issue is whether non-statutory matter is encompassed by the claim, not whether some statutory subject matter is encompassed by the claim.”

    Ooooo … someone who finally sees the real issue. Congrats MM.

    The problem with that interpretation is (i) it is inconsistent with the language of 101 and (ii) if extended to the broadest extreme, it could invalidate almost ALL patents.

    I just imagined a novel method of isolating some gene. I also just imagined a novel machine tool. Seems to me that these are “abstract ideas” which could be covered by the BROADEST reasonable claim construction. As such, those claims run afoul of 101 based upon this analysis.

    How about this for another take … those claims would also cover methods and apparatus in a virtual world … which is nothing but a compilation of data … sounds pretty etheral to me.

    Does your claim cover non-functional embodiments (i.e., lack of utility)? If so, can I knock it out as well? If I can knock out a claim that covers one instance of non-statutory subject matter, then I should be able to knock out a claim that covers one instance of a device/method/product that lacks utility.

  86. “So you think it’s a novel and non-obvious method, pds?”

    If you want my opinion, it will cost you a few grand. Until you can cut me that check, I’ll just refer you to page 13 of the Decision:

    “Therefore, for the foregoing reasons, we will not sustain the Examiner’s rejection of claim 1, and dependent claims 2, 5, 8, and 9 for similar reasons. We also will not sustain the Examiner’s rejection of (1) independent claim 10 and dependent claims 11, 14, 17, and 18, and (2) independent claim 19 and dependent claims 20, 23, 26, and 27 for similar reasons.”

  87. “That said, a novel and non-obvious encryption algorithm is the poster boy for trade secrets if there ever was one.”

    An encryption algorithm that is held as a trade secret is commercially worthless. No one will take your word for it that your new algorithm is secure. A valuable encryption algorithm is one that works despite the fact that everyone knows how it works. This makes for a pretty poor poster child for trade secrets.

  88. Yep. Good decisionins

    Jebus MM, all this time I’ve been talking about what happened in Beauregard and you just replying away without even knowing the decision is all of two paragraphs telling about how the PTO dropped the argument? Come on, I’ve stated it umpteen times.

  89. “Shouldn’t a novel, nonobvious encryption algorithm be protectable in some way?”

    I’d like to know the answer to this too. Perhaps meeting the transformation prong is met by simply taking a readable message and transforming it into an unreadable message.

    That said, a novel and non-obvious encryption algorithm is the poster boy for trade secrets if there ever was one.

  90. “instructions that perform a method”

    LOL. It’s like a William Burroughs cut-up: the truth leaks out.

  91. … ok, I’ll do it for you:

    “The Commissioner states that he agrees with Beauregard’s position on appeal that the printed matter doctrine is not applicable. Thus, the parties are in agreement that no case or controversy presently exists. Accordingly, IT IS ORDERED THAT: The Board’s decision is vacated and the case is remanded for further proceedings in accordance with the Commissioner’s concessions.” In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995).

    Wow, that’s some powerful precedent!!!

  92. “As a Beauregard claim, yes. BPAI can’t overturn the Federal Circuit.”

    Really? What exactly is the holding of the Federal Circuit’s Beauregard case? Please quote it and explain to us all why this holding is so important.

  93. To Observer:

    That’s the same conclusion I’ve come to after reviewign the case law and the USPTO interim guidelines. At least, I think that is the USPTO’s view of things. The Beauregard claim is patentable becasue you have something functional, instructions that perform a method, stored in a computer readable medium. In that case, it does not matter whether the method manipulates data that is functional or data that is just written description (subject of copyright).

    But for a method claim, the data being transformed, stored displayed, etc. must be useful, and not mere written matter. So you are limited to a particular use of the algorithm.

    This interpretation is the only way I can make sense of Benson, for example.

  94. Leopold, if that’s true, then even better.

    I’ll ask the software prosecutors again: what is plan B? Thus far all I hear are pathetic defensive efforts to “tweak” these crap claims. Is that all you got? Are these inventions so dubious that there is no other way to claim them that provides “value” to your clients?

    You folks better start thinking. I’m guessing you got a year, max, before anything resembling the present paradigm becomes a non-starter.

  95. “Anybody who has the cash and time to take a claim all the way to en banc can overturn Beauregard.”

    As I recall, the court never ruled in In re Beauregard. because the PTO abandoned its position, the court remanded it. So I don’t think you would need an en banc decision to “overturn” it.

  96. “BTW — I was amused by the use of a “broadest reasonable” claim interpretation by the BPAI to EXCLUDE the statutory subject matter (i.e., the method being performed on a computer, as described in the specification).”

    That’s not what happened, pds. See the first comment, upthread. The key issue is whether non-statutory matter is encompassed by the claim, not whether some statutory subject matter is encompassed by the claim.

    It’s 2008. Even Judge Newman’s biggest fans have to understand that construing claims to read only on their valid embodiments is a dead proposition.

  97. “But if it is implemented in software, then it is most likely not patentable (unless the Fed. Cir. surprises me and announces that a GP computer running specific software is a special purpose machine for doing whatever the software does).”

    They already did that, in Alapat: “We have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.”

    “But if the data represents something intangible, like confidential negotiations between traders, then no. … Does this make sense? No. But it’t the law.”

    No, it’s not, notwithstanding the BPAI’s latest shenanigans and the dicta in Bilski. Read the part about x-ray data carefully – approving of an example is not the same as establishing an exclusive test.

  98. “As a Beauregard claim, yes. BPAI can’t overturn the Federal Circuit. They might ignore it if it isn’t argued, but if they ignore it and it is argued, then they were wrong. (Although on appeal to the Fed. Cir., you might expect B’gard to be overturned).”

    There is absolutely nothing holding the Beauregard decision up except for pure, unadulterated stare decisis. Anybody who has the cash and time to take a claim all the way to en banc can overturn Beauregard. An exceedingly clever lawyer will not be necessary, but a dumbaxx lawyer might manage to fxck it up.

  99. pds “Unless this gets appealed, this application will receive a Notice of Allowance within a couple of months after the amendment that adds the “magic words” to the claim.”

    So you think it’s a novel and non-obvious method, pds?

  100. “do you feel that an inventor who truly invents a novel and nonobvious piece of software should be entitled to a patent”

    No, just as I don’t feel that a chef who invents a novel and non-obvious method of making a cake is entitled to a patent on the piece of paper describing the method.

  101. “As I’m sure you recognize, simply because a claim is obvious does not mean that it is directed to non-statutory subject matter.”

    That’s correct. But as I’m sure you recognize, it is almost always the case that these bogus software inventions are obvious. Why is that? It’s because they are nothing more than trivial problems stated in solution form.

  102. “Would an encryption algorithm (however non-stupidly claimed, in software, a computer system, method etc.) be patentable under 101?”

    Under current BPAI decisions, claimed as a method for manipulating data or a ‘processor’ configured to manipulate data, no. Not tied to a specific machine, doesn’t transform something representative of a physical object.

    As a Beauregard claim, yes. BPAI can’t overturn the Federal Circuit. They might ignore it if it isn’t argued, but if they ignore it and it is argued, then they were wrong. (Although on appeal to the Fed. Cir., you might expect B’gard to be overturned).

    If you claim a specific instance of the algorithm, say encrypting data that represents x-ray machine readings of a person’s insides, then it is patentable.

    But if the data represents something intangible, like confidential negotiations between traders, then no.

    If it is implemented in a special purpose chip, then it is patentable, even if the chip is installed in a general purpose computer to encrypt generic data.

    But if it is implemented in software, then it is most likely not patentable (unless the Fed. Cir. surprises me and announces that a GP computer running specific software is a special purpose machine for doing whatever the software does).

    Does this make sense? No. But it’t the law.

    Anon E. Mouse (not Moose).

  103. BTW — I was amused by the use of a “broadest reasonable” claim interpretation by the BPAI to EXCLUDE the statutory subject matter (i.e., the method being performed on a computer, as described in the specification).

    Apparently, the BPAI is using the USPTO’s special dictionary in which “broadest” doesn’t mean “most broad.” Instead, it means as broad as it takes to support the USPTO’s rejection. I always knew that applcants could be their own lexicographer. However, I didn’t know that the USPTO could be their own lexicographer when interpreting decisions from the Federal Circuit.

    Makes it easy to reject claim language when you don’t have to work with the language of case law you don’t like. If you don’t like the language, just come up with a new definition — the USPTO’s own “truthiness.” Somewhere, Stephen Colbert is smiling.

  104. For those keeping score, 4 out of 5 of the BPAI Bilski 101 rejections so far are to IBM applications in Technology Center 2100.

    It appears that the war on software patents is progressing nicely.

    Should be fun to watch.

  105. For those keeping score, 4 out of 5 of the BPAI Bilski 101 rejections so far are to IBM applications in Technology Center 2100.

    It appears that the war on software patents is progressing nicely.

    Should be fun to watch.

  106. Yet again, MM gets worked up over nothing.

    Unless this gets appealed, this application will receive a Notice of Allowance within a couple of months after the amendment that adds the “magic words” to the claim.

    In fact, I would wager that if the attorney was nice, the examiner will even offer to supply the “magic words” to the attorney.

    Form over substance ….

    Either way, me and my compadres will continue to obtain allowances for computer-implemented inventions for our clients for years and years to come.

    Sorry MM
    :-(

  107. Malcolm Mooney said: “That’s all there is. That’s a patentable invention to you software types? You think someone deserves a 20 year monopoly on this? Why is this non-obvious? Where’s the unexpected result?”

    I won’t pretend that you don’t appreciate the distinction between 101 and 103 analysis, but you have to admit that this comment is silly. As I’m sure you recognize, simply because a claim is obvious does not mean that it is directed to non-statutory subject matter.

    This exemplifies my biggest problem with much of the argument on this blog on this subject. Arguing that software patents issue with claims that are in fact obvious in view of the prior art is an argument that, whether I agree with it or not, I can at least understand and appreciate. Stretching this to an assertion that software should be per se unpatentable for policy reasons is, again, an argument that whether I agree with or not I can at least understand and appreciate.

    However, recognize that this is a POLICY argument, not a legal argument based on statutory construction.

    As an aside, I’ve always been curious, do you feel that an inventor who truly invents a novel and nonobvious piece of software should be entitled to a patent even if it does not transform data representive of a physical article? If not, why not?

    And as a follow up, if such an inventor came to you as a client who knew their software had commercial value but would be easy for a third party to develop once released, what would you counsel them to do?

  108. Another patentability question. Would an encryption algorithm (however non-stupidly claimed, in software, a computer system, method etc.) be patentable under 101? There is no transformation into a different state or thing and there is no representation of physical objects or substances. Shouldn’t a novel, nonobvious encryption algorithm be protectable in some way?

  109. Isn’t a query just a mathematical expression? Doesn’t this claim simply perform algebra to transform the query into a different expression? The claim doesn’t even require the query to be executed.

    The “broadest reasonable interpretation” stuff is just smoke. If the claim had recited some machine in place of using the word system, the result is exactly the same. We talkin’ ’bout preamble man!

  110. I like Risch’s approach.

    “Everything is Patentable” by

    Michael Risch
    “The currently confused and inconsistent jurisprudence of patentable subject matter can be clarified by implementing a single rule – that which is otherwise patentable under the Patent Act is patentable subject matter. In other words, if a discovery otherwise meets the requirements of patentabilty – namely category, utility, novelty, non-obviousness, and specification – then the discovery will be properly patentable without need to consider traditional non-statutory subject matter issues such as mathematical algorithms, products of nature, or natural phenomena.”

  111. “It’s a METHOD claim, which includes active steps.”

    Actually there is only one “active” step which is a step of “reforming the query”. This claim could just as easily have been written

    “A method for optimizing a query in a relational database management system, the method comprising:

    reforming the query to eliminate the joining of a sub-expression to itself based on evaluation of the query and determination of whether a first row set is subsumed by a second row set.”

    That’s all there is. That’s a patentable invention to you software types? You think someone deserves a 20 year monopoly on this? Why is this non-obvious? Where’s the unexpected result?

    “Software doesn’t DO anything until it’s executed on a computer.”

    Trust me: you don’t have to tell me that. But I’m not sure that’s what the board as getting at. As the claim is written, the “reforming the query” limitation could be reached by simply writing the reformed query into the software.

  112. “Rather, the ‘system’ could be a software system, where the elements of claim 1 are implemented solely in software or algorithms.”

    What is a “software system”? If they mean “software per se,” then can someone explain how a computer program listing or some other nonfunctional representation of software can perform the active steps of the claim? It’s a METHOD claim, which includes active steps. Software doesn’t DO anything until it’s executed on a computer. Sorry, Malcolm, the analysis in the box is NOT “spot on.”

  113. “I would argue that the claim does require a transformation, but that transformation does not satisfy Bilski because the thing transformed (the query) is not ‘representative of physical objects or substances.'”

    I haven’t read the case yet, but hopefully this is a good vehicle for an appeal (whether or not it’s a “crap claim”), so that we can get some of this silliness cleared up. For example, why should the patentability of a communications-related method claim, which “transforms” electronic data, turn on whether or not that data is “representative of physical objects or substances”? And how much “tying to a particular machine” is enough?

  114. Good riddance to that crap claim.

    The analysis in the box is spot on. As I noted in earlier threads re 101/Bilski/Metabolite, the starting inquiry is not whether the claim *can* read to encompass statutory subject matter but whether its broadest reasonable construction *necessarily* requires more than a mental step or substantial non-tangible structure.

    Of course, the recitation of a “system” does not meet that requirement (caveat: a suitably narrow definition of system in the specification would change the result).

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