The BPAI and the Machine or Transformation test of Bilski

In three recent cases, the BPAI has continued its trend of applying the Federal Circuit’s en banc Bilski decision to reject software-style method claims as lacking patentable subject matter. The BPAI is not asserting that software is unpatentable — the Board is simply failing to find ties to a particular machine; transformation of a physical object; or transformation of articles “representative of physical objects.” In two of the cases, the BPAI applied its power to issue new grounds of rejection — raising the Section 101 issue sua sponte.

In ex parte Gutta (BPAI 2009), Gutta (Philips) claimed a “computerized method performed by a data processor.” The claims include elements such as “a history;” “a plurality of clusters;” a “target user;” and “preferences of a third party.” The final step in the method involved “displaying” a score. In Bilski, the Federal Circuit found that the transformation of data into a visual depiction could render a claimed method patentable. Here, however, the generically worded step was merely “post-solution activity [insufficient] to impart patentability to a claim involving the solving of a mathematical algorithm.”

In ex parte Barnes (BPAI 2009), Barnes (Landmark Graphics) claimed a “fault identification method” that obtains seismic data and determines “a planarity value for discontinuities” in each “analysis window” in the seismic data. In this case, the BPAI entered a new ground of rejection under Section 101. The BPAI recognized that the claim called for both gathering and analyzing data, but those steps – without explicit limitations of how they are done – are insufficient to render the claim patentable.

In ex parte Becker (BPAI 2009), Becker and his fourteen co-inventors (Siemens) claimed a “method for maintaining a user profile.” As in Barnes, the BPAI entered a new ground of rejection under Section 101 — finding again that the method claims failed to satisfy the machine or transformation test.

Read the Opinions

Note: This was originally posted on Jan 26, but was inadvertently un-published. I this version is slightly modified to take-into account an insightful comment regarding the transformation of data into a visual depiction.

129 thoughts on “The BPAI and the Machine or Transformation test of Bilski

  1. David Stein:

    “I sort of doubt that. Let’s say the invention is a machine involving components “A connected to B connected to C,” and the applicant uses a broad but undefined term “B”. It’s probably not “consistent with the spec” to interpret B to include an elephant, a sandwich, and an umbrella.”

    An infinite set does not necessarily include elephants, sandwiches, or umbrellas. The infinite set of odd integers, for instance, does not include 2, 4, or 6.

    ==

    “Well… again, within reason. Even within computing – one of the most dynamic fields of science – the basic definition of a “computer” hasn’t changed much. Turing laid out the basic concept and operation, and although some variations exist (“DNA-based computing” being some of the oddest), the core concepts are pretty static.”

    Of course within reason. Assume there is a true set X. The examiner’s version of X will be slightly larger than the true X. The applicant’s version of X will be slightly smaller than the true X.

    ==
    “To the latter point – how a dispute is resolved: the argument need not “usually” be made to the BPAI. As illustrated in a recent PatentlyO post:

    link to patentlyo.com

    …80% of filed appeal briefs and pre-appeal conference requests are “weeded out” by the USPTO before reaching the BPAI, probably by withdrawal of the final rejection.”

    Pre-appeal conferences “weeding out” 80% of appeals does not imply that a particular type of appeal does not usually go to the board. In my experiences, and being the stereotypical bureaucracy, the criteria for “weeding out” considers many other factors besides just “whether the examiner’s rejection is correct”. For instance, some SPEs like nice stats, and if the examiner missed a 101 or 112 rejection, then they’ll re-open just for that. Gotta increase the odds.

    ==
    “And how about “memory?” Logically, anything can be a “memory” that stores information: a piece of paper, a DNA sequence, a quantum state of an electron. Even black holes encode and transmit information, according to Hawking’s latest view of astrophysics… can I construe “memory” to include a black hole?”

    Doubtful, but I have interpreted “a processor” as “a software engine”. Of course, it was an interpretation consistent with the specification and one that a PHOSITA would have made. :)

  2. Alan McDonald said:
    “‘isn’t the reason for open-ended language in the spec to capture future infringers when the underlying technology (not the invention per se–in this example, the ‘underlying technology’ is a ‘computer’) changes in an unanticipated or previously unknown manner?’

    No, the reason is so a troll can use the claim as putty and mold it around anything it can conceive as a potential for harassment.”

    I’m not denying this possibility. My question was, aren’t there also legitimate reasons for the practice?

    Hypo (in general terms)–suppose the useful and non-obvious invention, otherwise adequately claimed, involves some particular method of signal processing that results in a better picture on a monitor (e.g., a TV set). And suppose (not unreasonably) the basic invention works on any currently-used monitor, whether LCD, plasma, or even obsolescent cathode-ray tubes. It might be reasonable to attempt to claim this method without tying it too specifically to the monitor, because suppose (again a hypo) sometime later, while the patent is still in force, a new monitor technology appears and captures a big market share, and suppose the signal processing invention works with this monitor as well. The problem for the inventor is, if she was forced to tie her method to then-existing monitors, a later user could for all practical purposes infringe with impunity.

    And so a court’s job can be tough. How do you weed out trolls from inventors? Or do we have to accept a tradeoff between the two?

  3. “isn’t the reason for open-ended language in the spec to capture future infringers when the underlying technology (not the invention per se–in this example, the “underlying technology is a “computer”) changes in an unanticipated or previously unknown manner?”

    No, the reason is so a troll can use the claim as putty and mold it around anything it can conceive as a potential for harassment.

  4. “Merely specifying “computerized” doesn’t save it from Bilski, anyway, as this does not tie the claim to a “particular” machine.”

    David,

    On this I would have to disagree and suggest a draw, as the example under discussion did not clearly point out what was in the specification, and thus a claim specifying “computerized” may or may not be tied to a particular machine.

    I would defer to Alappat if the specification included sufficient programing direction such that a PHOSITA would be enabled to “computerize” the remaining portion of the claim. In such a case, the mere word “computerized” in the preamble would in fact tie to a particular machine and would necessarily breathe life and meaning into the claim.

  5. An Examiner wrote:

    “Applicant’s spec can truthfully state “M can be A”. This does not imply that B and C are reasonable definitions, and if they are the only other possible definitions and are not reasonable, then the only reasonable definition is, in fact, A.”

    Precisely. We are now in agreement that the open-ended form of the statement “M can be A” does not create a presumption that M can also be B or C, which was my point. So endeth our discussion of open-ended language.

    ===

    The rest of our discussion pertains to whether a human brain is “reasonably” within the definition of an undefined term “computer.” Let’s start here:

    “Z is the intersection of Y and X.”

    No dispute here.

    “Applicant has complete control over Y. If you explicitly define a term in the spec, you can limit what is in Y. If, however, you solely use possible language, and provide no explicit definition, then Y is an infinite set.”

    I sort of doubt that. Let’s say the invention is a machine involving components “A connected to B connected to C,” and the applicant uses a broad but undefined term “B”. It’s probably not “consistent with the spec” to interpret B to include an elephant, a sandwich, and an umbrella.

    ===

    “Unfortunately (or fortunately), the examiner crafts what is and is not in X, and it changes over time.”

    Well… again, within reason. Even within computing – one of the most dynamic fields of science – the basic definition of a “computer” hasn’t changed much. Turing laid out the basic concept and operation, and although some variations exist (“DNA-based computing” being some of the oddest), the core concepts are pretty static.

    ===

    “The only way applicant can attempt to prove something isn’t in X is by arguing it (usually all the way to the BPAI), which may or may not be successful (and in my experiences has almost always been unsuccessful).”

    You’re sort of blurring two concepts: what does a term legally means, and how is a dispute over an undefined term resolved?

    To the former point – what a term legally means: the term is construed as PHOSITA use it… not as you, the examiner, use it. And there’s plenty of evidence to demonstrate that your interpretation is pretty off-base, Examiner. (Yet another example: does the field of “computing” include the work of psychologists, psychiatrists, neurologists, and neurosurgeons?)

    To the latter point – how a dispute is resolved: the argument need not “usually” be made to the BPAI. As illustrated in a recent PatentlyO post:

    link to patentlyo.com

    …80% of filed appeal briefs and pre-appeal conference requests are “weeded out” by the USPTO before reaching the BPAI, probably by withdrawal of the final rejection.

    And frankly, if you can get the backing of your SPE and the TC that the undefined term “computer” includes a human brain… then I’d be very surprised.

    ===

    In general… the problem with this whole debate is that you’re threatening to require applicants to define virtually every term, or else you’ll reject it by cramming in every possible interpretation that you (subjectively) believe to be reasonable, or at least barely plausible.

    You suggest that “machine-based computer” is sufficiently specific. On the contrary… if the term “computer” is open to wide debate, how about the term “machine?” A machine can be made of chemicals, right – as in DNA computing? And if chemicals are fine, why not neurons? They operate on electricity, after all… what is the technical difference between an organic “machine” and a semiconductor-based “machine?”

    And how about “memory?” Logically, anything can be a “memory” that stores information: a piece of paper, a DNA sequence, a quantum state of an electron. Even black holes encode and transmit information, according to Hawking’s latest view of astrophysics… can I construe “memory” to include a black hole?

    …and so on, and so on. Examiner, if you decide to leave the field of patent examination, I suggest looking into the literary field of deconstruction. You’ll like it.

    We’re tipping past the point of sanity. I don’t want to have to define every term with 100 pages of boilerplate. And, Examiner, you don’t want that landing on your desk. And your SPE doesn’t want to have to review a bunch of final rejections based on arguments that “computer” and “memory” are undefined and can therefore include bizarre combinations.

    – David Stein

  6. “The only way applicant can attempt to prove something isn’t in X is by arguing it (usually all the way to the BPAI), which may or may not be successful (and in my experiences has almost always been unsuccessful).”

    Thanks, Examiner. This is a useful reminder. I expect it to be ignored.

  7. David Stein says:

    “While your logic for proving the open-endedness of “X is at least 3″ is flawless, it’s analogous use is fundamentally misapplied and has no bearing on my argument, as you misinterpret my argument as being the first case is presumably true over the second.”

    But that WAS your argument. Here is your earlier statement:

    “The existence of the possible language in the specification evidences the fact that other interpretations by a PHOSITA could be reasonable.”

    “Evidencing” means “lends credibility to,” i.e., makes more possible than not. I strongly disagree. It PERMITS that possibility, but it does not promote it.

    ==

    Unfortunately my attempts at misdirection were circumvented. Here’s a better argument you should have made…

    Let Z be the set of all valid definitions for the term M. Assume Z = (A, B, C).

    Applicant’s spec can truthfully state “M can be A”. This does not imply that B and C are reasonable definitions, and if they are the only other possible definitions and are not reasonable, then the only reasonable definition is, in fact, A.

    Mathematically and logically you win the argument. However, in patent-land here’s how things work…

    The examiners are required (by the MPEP) to add definitions to the set Z, with two constraints.

    1. An element of Z must also be in the set Y, where Y is the set of all possible definitions for M that are consistent with the specification.
    2. And an element of Z must also be in the set X, where X is the set of all possible definitions that are reasonable by a PHOSITA.

    So Z is the intersection of Y and X.

    When looking at Y, you can see that applicant has complete control over Y. If you explicitly define a term in the spec, you can limit what is in Y. If, however, you solely use possible language, and provide no explicit definition, then Y is an infinite set. That happens for the majority of all applications I see.

    When looking at X, applicant has very little control over what is and is not in the set. Unfortunately (or fortunately), the examiner crafts what is and is not in X, and it changes over time. The only way applicant can attempt to prove something isn’t in X is by arguing it (usually all the way to the BPAI), which may or may not be successful (and in my experiences has almost always been unsuccessful).

    Carry on.

  8. It’s not absurd to consider a human being as a vehicle. Some commenters apparently do not like drafting applications. Not many people do, frankly. They can be exercises in extreme frustration, especially when the client is demanding that the spec include language to support very broad claims and very narrow claims.

    Most prosecutors would rather simply insert some language into their spec limiting a vehicle to a mechanical vehicle rather than engage in meaningless sophistry before the Board as to whether some broad claim interpretation is “absurd” or not.

  9. Well, I have learned something in this thread. I will add language in my spec that excludes all ridiculous interpretations of claims terms (e.g. a computer being a human) and won’t use the “may” language when describing the structure of the computer.

  10. If you say “the device has at least three legs” in a patent claim, you are clearly and deliberately saying that that the utility of the device requires that it has no less than three legs and will function usefully with three or more legs. If prior art shows a device that is otherwise identical, but with four legs, you shouldn’t be able to limit the claim to only three legs (or at least, you certainly shouldn’t be able to argue that three legs is non-obvious over four legs), unless you already had a dependent claim specifying only three legs, or the application otherwise provides an indication that a three-legged embodiment is particularly to be preferred.

    The statement “a tripod has at least three legs” is NOT true. Its clear meaning is that a tripod can have three or more legs, which is plainly untrue. A tripod always and only ever has exactly three legs (or three feet, for the truly pedantic – it’s right there in the etymology). That’s the whole point of a tripod – three legs/feet will always be stable on an uneven surface (OK, within limits). Any more or less will not.

  11. breadcrumbs wrote:

    “…but in the present discussion doesn’t the mere fact that the claim preamble save the claim from a Bilski death necessarily breathe life and meaning into the claim?”

    Merely specifying “computerized” doesn’t save it from Bilski, anyway, as this does not tie the claim to a “particular” machine.

    – David Stein

  12. …but in the present discussion doesn’t the mere fact that the claim preamble save the claim from a Bilski death necessarily breathe life and meaning into the claim?

  13. Oh, last point… An Examiner wrote:

    “With regard to 101 issues, we’re essentially arguing whether vague terms like ‘computerized’ inherently impose structure upon the claim. As you can probably tell, my stance is the following: Yes, if you explicitly define ‘computer’ in the spec as something structural. No, if you use wiggle language.”

    In fact, I agree with the outcome, Examiner. I don’t think a method is properly tied to a computer (either pre- or post-Bilski) simply by calling it “computer-implemented.”

    However, I disagree with your tactic. Broad terms are acceptable claim language, and I think that you’re arbitrarily choosing a term and giving it a ridiculously expanded scope in order to achieve a desired claim construction result. This isn’t the proper methodology for interpreting claim terms, and I doubt that argument will win the day.

    A much stronger argument is available, Examiner, that reaches the same result. A preamble term is only limiting if it “breathes life and meaning” into the claim, right? The way that I interpret this phrase is: “how does the preamble term interact with the body of the claim?” Or: “if you remove the term from the preamble, does the rest of the claim still operate in the same way?”

    In your case, there is no interaction between the term “computerized” and the rest of the claim. The claim is for a method that solves a problem in a logical manner, and the preamble deems to limit this whole thing to a “computerized” environment. If one removes the term “computerized,” the solution still makes perfect sense. You have a very strong argument that this term does nothing to “breathe life and meaning” into the claim, and is non-limiting; and without it, the claim dies under Bilski.

    – David Stein

  14. An Examiner wrote:

    “While your logic for proving the open-endedness of “X is at least 3″ is flawless, it’s analogous use is fundamentally misapplied and has no bearing on my argument, as you misinterpret my argument as being the first case is presumably true over the second.”

    But that WAS your argument. Here is your earlier statement:

    “The existence of the possible language in the specification evidences the fact that other interpretations by a PHOSITA could be reasonable.”

    “Evidencing” means “lends credibility to,” i.e., makes more possible than not. I strongly disagree. It PERMITS that possibility, but it does not promote it.

    ===

    “Every step of the method in claim 1 can be performed by a human. A ‘vehicle’ can also be defined as ‘a carrier of something’. Is it reasonable to interpret ‘vehicle’ as a human?”

    Well, I get your general point: by using the open-ended term “vehicle,” the applicant has created the possibility (though not the probability!) that more items than simply cars are included.

    What you mean is that, if undefined by the applicant, the term “vehicle” is to be given its broadest reasonable interpretation in the art. Of course, I agree with that, and the question becomes what a PHOSITA might consider a “vehicle.” That term indisputably includes a wide range of objects: bicycles, scooters, wagons, boats, aircraft, rocket ships…

    I disagree that a human being can reasonably be considered a “vehicle.” You’re basically stretching the term to include every object that (1) can move and (2) can, in some way, carry another object. Isn’t this every object in existence above the subatomic particle size? Bacteria are “vehicles” for hosted bacteriophage viruses, right? In semiconductors, ion beams are often formed that carry along other particles for implantation in a wafer – the atoms comprising the ion beam are “vehicles,” right?

    You can’t simply take a term, look up the dictionary definition, and then cram in every possible manifestation of that definition – this results in stretching the term to the point of absurdity. That’s why the broadest REASONABLE interpretation is used.

    Along the same lines – when you ask anyone in the art of computing to describe a computer in the most basic terms, they’ll talk about the components of a circuitry-based machine. They’ll talk about a processor, some memory, and an electrical power source; about input and output devices; about programming languages and techniques. And all of those features have nothing to do with an organic brain.

    – David Stein

  15. Dave Stein:

    While your logic for proving the open-endedness of “X is at least 3″ is flawless, it’s analogous use is fundamentally misapplied and has no bearing on my argument, as you misinterpret my argument as being the first case is presumably true over the second.

    Let me recap my argument: The use of possible language in the spec proves that the possible definitions/embodiments in the spec are not the only reasonable interpretation by a PHOSITA that is consistent with the specification.

    Here, let me give you a better analogy to work with…

    Claim 1: A vehicular method comprising:
    moving in a certain direction;
    identifying an object in the path;
    adjusting the certain direction such that the object is not hit.

    The spec says: The method described can be implemented with a vehicle. A vehicle can be a car that has an engine and a transmission.

    Every step of the method in claim 1 can be performed by a human. A “vehicle” can also be defined as “a carrier of something”. Is it reasonable to interpret “vehicle” as a human?

    With regard to 101 issues, we’re essentially arguing whether vague terms like “computerized” inherently impose structure upon the claim. As you can probably tell, my stance is the following: Yes, if you explicitly define “computer” in the spec as something structural. No, if you use wiggle language.

  16. Malcom, you still haven’t provided an intelligent response to David’s post of 6:07 PM (Classen v. Biogen). Should I bookmark this post and have it ready to submit to the blogs whenever you dredge up your cookbook-pieces of paper logic, or will you actually have something intelligent to offer (or better yet, acknowledge that your argument is groundless and dispense from ever using it again)?

    Still waiting for you to put up.

  17. The fact is that if you write a claim reciting “wherein X is at least 3″ and the Examiner finds art “wherein X is 4″, then your claim is toast and your wanking will get you nowhere. You will never be able to convince any adult human with a functioning brain that “wherein X is at least 3″ should be construed by A PHOSITA to mean “wherein x cannot be more than 3 and therefore is 3.”

    But I can imagine some folks insisting on making that argument and sticking to it. And I can imagine those folks concluding, after being told by an authority to stop playing games and write a decent claim, that the authority had “an agenda to deny them their rights.” Yes, that is quite easy to imagine, unlike, say, a robot chef that can understand instructions on paper which is so ridiculous that it belongs in the realm of magic.

  18. smashmouth wrote:

    “‘Stating ‘X is at least three’ only means that X cannot be less than three. It does not mean X can also be more than three.’

    That doesn’t make sense to me.
    X>=3 -> X=3 OR X>3
    so X can be more than 3, but it doesn’t have to be, nor is there a presumption that it is.”

    What I meant (and hopefully illustrated in the rest of my post) is: there is no presumption whether or not X can be more than three. Two possible cases exist:

    (1) X can be more than three (and in fact may be more than three, or may be three), or
    (2) X cannot be more than three, and therefore is three.

    An Examiner’s position was that with open-ended language, the first case is presumably true over the second case. I think that the ordinary mechanics of claim interpretation hold that neither is more likely or presumed over the other.

    – David Stein

  19. wite “your lack of knowledge regarding substantive patent law”

    Keep digging, wite. I’ve been studying and practicing substantive patent law for a long time, paying close attention to politics for a lot longer, and debating issues with my fellow humans on the internets for as long as it has existed.

    Here’s the most important thing I can tell you about substantive patent law. Are you sitting down? [drum roll………]: it changes.

    Yes, that’s right. It changes. Like all “substantive law” changes. And particularly because so much of patent law is administratively executed, it is very responsive to how the public responds to its decisions. And when I say the “public” I don’t mean the “patent bar” and the privileged minority who exploits the system. I mean the public. And as you must understand that when it comes to patents, those folks on CAFC and on the Supreme Court are more in tune with the public than they are with troll-chasing litigators, their clients, and/or multinational companies trying to claim methods of recommending zit lotion products using a powerful computer brain.

    And why should it be otherwise? Anyway, just trying to give you some perspective here because, frankly, you seem to have to lost all of yours.

  20. wite “What I find “repugnant” is the USPTO’s failure to follow long established law.”

    When did the USPTO begin failing to follow “long established law”?

    Seems to me that they haven’t been following it for years. But I don’t recall you complaining about it until very recently.

    “I also find you, Mr. Mooney, to be repugnant.”

    That isn’t a very measured response.

    “The evidence I’ve seen suggests that obtaining an allowance on a computer-related patent application is far more difficult than applications in most other technologies”

    Is that evidence collected before or after the USPTO began failing to follow long-established law, in your opinion?

    “I don’t find anybody making a claim to particular subject matter “repugnant” when that subject matter has been allowable for at least a couple of decades.”

    Can you tell me what law “established for decades” Becker could reasonably have been relying on to justify patentability on the day he filed his fault detection claims 1 and 30? Focus your answer on 101, 103, and especially 112, please.

  21. “And lawyers never use profanity.”

    I don’t recall a lawyer ever using profanity when establishing their bona fides as an attorney and as a professional.

    Since this message board is mostly anonymous, the only way one can determine whether a particular poster is an attorney or a poseur is by what they write and how they write. Based upon what you have written (e.g., your lack of knowledge regarding substantive patent law) and how you have written (e.g., your continuous use of scatalogical references), I find it difficult to believe you are an attorney.

    You pobably have had a greater exposure to law than most, but being sued for patent infringement does not make one a patent attorney.

  22. “Second of all, the hypocricy stinks. Business method and softare and computer-implemented method applicants have been treated like baby princes and princesses for years by the PTO. You got fat. You broke your playpen. Now you cry that it’s all so unfair.”

    The evidence I’ve seen suggests that obtaining an allowance on a computer-related patent application is far more difficult than applications in most other technologies, and this has been true for a great many years.

    “What about when patent claims are issued in a manner inconsistent with the law? What about when patent applications are filed in manner inconsistent with the law?”
    They get rejected. There is a reason why the “examination” process exists. The expectation is that not all applications meet statutory requirements. This is true not only for the USPTO but for many other Federal and State agencies.

    I don’t find anybody making a claim to particular subject matter “repugnant” when that subject matter has been allowable for at least a couple of decades. An Applicant should be able to rely upon long-standing case law. This is one of the pillars of a common law system. What I find “repugnant” is the USPTO’s failure to follow long established law. I also find you, Mr. Mooney, to be repugnant. If you really are an attorney, you are a disgrace to the profession.

  23. wite: ” you should seriously think about going to law school.”

    Truly asinine and dull. Unless it’s changed since I graduated, law school is filled with 22 year old girls and boys who never worked a real job and who became lawyers because science was too hard or they didn’t get into a good medical school. Blech. Never again.

    “those that tend to profanity are far more prone to being unhinged”

    Right. And lawyers never use profanity. Please take a hike to the grocery store (watch out for all the unhinged clerks there!!!!), buy some bleach, and remove the puritanical streak. It got stale around 1724.

  24. “Did someone say ‘pomp0us’? Geebuz fricking cripes on a crackbat, can you be more unhinged?”

    If that is your best response, perhaps you should seriously think about going to law school. Assuming you get in, you will be exposed to case law, be taught how to think on your feet using logical analysis, and you will be able to expand your vocabulary.

    Until such time, you should leave the discussion of law to lawyers. By intruding into this thread, the only thing you achieve is your own embarressment.

    My experience has been that those that tend to profanity are far more prone to being unhinged than those that can disagree without being disagreeable.

  25. David Stein said-
    “Stating “X is at least three” only means that X cannot be less than three. It does not mean X can also be more than three.”

    That doesn’t make sense to me.
    X>=3 -> X=3 OR X>3
    so X can be more than 3, but it doesn’t have to be, nor is there a presumption that it is.

    On another topic in this thread, isn’t the reason for open-ended language in the spec to capture future infringers when the underlying technology (not the invention per se–in this example, the “underlying technology is a “computer”) changes in an unanticipated or previously unknown manner? I recognize there is always a trade-off here and the disclosure must satisfy 112 (otherwise the public doesn’t get its part of the bargain), but it seems to me that the reluctance of the applicant to nail herself down too particularly is understandable. I doubt anybody tells a client to rely on the doctrine of equivalents.

    Anyway, in general I appreciate your measured comments, especially in the face of some of the abuse to which you’ve been subjected.

  26. “your hypothetical does not provide sufficient information to support such an interpretation consistent with the discussion on this thread.”

    LOL. In other words, just as predicted: “we are entering another one of those topic areas where you aren’t ever going to say what your position is.”

    Pathetic.

  27. “When patent applications are rejected in a manner inconsistent with the law”

    First of all, a friendly reminder: it’s just your opinion. I don’t share it. I’m entitled not to share it.

    Second of all, the hypocricy stinks. Business method and softare and computer-implemented method applicants have been treated like baby princes and princesses for years by the PTO. You got fat. You broke your playpen. Now you cry that it’s all so unfair.

    What about when patent claims are issued in a manner inconsistent with the law? What about when patent applications are filed in manner inconsistent with the law?

    Certain jokers here get riled up only when their precious turf is threatened. The fact that their peers are filing reams of (oh hello, since you brought it up) “repugnant” claims left and right, and managing to get some past the PTO in total contradiction of “the law” is just fine. Some of you can’t even bothered to admit that it’s happening. Some of you won’t even admit that computers can read. That’s a sickness, friends.

  28. “I find Mr. Mooney’s excuse of the abuses of the USPTO both repugnant and very dangerous. I cannot see how Mr. Mooney could have graduated law school and not have retained at least a modicum of respect for the rule of law and due process. Any properly trained attorney would be offended by his attitude towards the law. Also, it is attitudes like those of Mr. Mooney, in which due process and the rule of law are allowed to be jettisoned for expediency, that are extremely dangerous to a free society.”

    Did someone say “pomp0us”? Geebuz fricking cripes on a crackbat, can you be more unhinged?

  29. Where is the evidence,

    Thanks, couldn’t have said it better myself. At somepoint, I grow weary of wasting electronic ink on MM.

  30. “Malcolm, the ‘why’ is unimportant. The ‘How’ is extemely important. Mis-applying the Law is the critical point.”

    Extremely well said. It is easy to rhetorically ask “why do we need a trial to electrocute the murderer of a dozen children when there were 20 witnesses since a trial will only delay the inevitable.”

    In an ideal world, just like all people should receive fair trials, all patent applications should receive fair examinations. One should not excuse the disregard of the rule of law and due process because the ultimate end result will not change. A “pile of crxp” should fall on its own merits based upon properly applied law.

    I find Mr. Mooney’s excuse of the abuses of the USPTO both repugnant and very dangerous. I cannot see how Mr. Mooney could have graduated law school and not have retained at least a modicum of respect for the rule of law and due process. Any properly trained attorney would be offended by his attitude towards the law. Also, it is attitudes like those of Mr. Mooney, in which due process and the rule of law are allowed to be jettisoned for expediency, that are extremely dangerous to a free society.

    The reason “why” a patent application is ultimately rejected and abandoned is not the ultimate issue. However, “how” the patent application came to be rejected is the critical issue we are discussing. When patent applications are rejected in a manner inconsistent with the law, everybody loses, even if the patent application ultimately should have been rejected.

  31. “Let me get this straight. If I file an application directed toward a method of displaying a picture of a dipstick on a screen and I define a “screen” by saying the “the screen can by any screen understood by those in the art, including, but a computer screen”, I should be able to argue (e.g., in response to an obviousness rejection) that I’m not a PHOSITA and a PHOSITA would understand that a screen is only a computer screen?”

    First off, your proposed statement is overly verbose. One way of writing your proposed statement would be “the picture of the dipstick can be displayed, for example, on a computer screen.”

    Even if the claim recited a “screen” (a term I would not use — a “display” would be better), the Examiner should not be able to refer to a picture painted on a screen door or a privacy screen, as examples. However, a picture displayed, using, e.g., a projector, on a movie screen could be considered a display on a screen.

    Your reference to arguing that “I’m not a PHOSITA” doesn’t make any sense. The claim terms are interpreted in view of a PHOSITA. It does not matter whether Applicant is a PHOSITA or not.

    There are circumstances in which a picture (of a dipstick) on a screen door or privacy screen could be considered as disclosing displaying a picture of a dipstick on a screen. However, your hypothetical does not provide sufficient information to support such an interpretation consistent with the discussion on this thread.

  32. “who cares why it gets crushed?”

    Malcolm, the “why” is unimportant. The “How” is extemely important. Mis-applying the Law is the critical point. How can you not understand this?

  33. Additional evidence of the interpretation of open-ended language – here’s how MPEP 2111.03 defines open-ended transitional phrases:

    “The transitional term ‘comprising’, which is synonymous with ‘including,’ ‘containing,’ or ‘characterized by,’ is inclusive or open-ended and DOES NOT EXCLUDE additional, unrecited elements or method steps.” (emphasis added)

    “Does Not Exclude.” Thus, unrecited options are possible. However, there is no PRESUMPTION that the unrecited additional options are included. They are not tacitly included. It’s simply an open, unanswered question.

    The open-ended language “X is at least 3″ doesn’t exclude the possibility that X > 3. However, it doesn’t create a presumption that X can be greater than three. If X must be exactly three, “X >= 3″ is neither false nor misleading.

    – David Stein

  34. An Examiner wrote:

    “And unless your specification states that the method requires a machine based computer, I’d be willing to take you to the board over it.”

    I’d be willing to go to the Board with you over whether or not “computer” inherently means machine-based, unless more broadly defined by the applicant.

    The only times I’ve ever encountered qualifiers for the term “computer” were where the peculiar context of the discussion explicitly included organic processing. Similarly, in computer science, when we discuss a “neural network,” we inevitably mean an “artificial neural network,” and not an “organic neural network.” It’s customary to drop the term “artificial” when it’s clear – as it virtually always is – that we’re discussing the programming of a (machine-based) computer to express intelligence.

    Consider how the USPTO uses the term “computer.” Consider the USPTO’s own “Examination Guidelines for Computer-Related Inventions” … this title is definitely limited to “computers” involving circuitry, and yet the title is not “Machine-Based Computer-Related Inventions.”

    Must I have to start explicitly defining “memory” as also comprising circuitry, and not a memento like a photograph, or a clump of neurons storing a piece of information? Must I define “keyboard” as a board with touchable portions representing symbols, and not the dinky musical kind made by Casio? Must I define “mouse” as… well, it’s too easy.

    Frankly – the day someone convinces me that I must explicitly define the ordinary term “computer” as “not a human brain” is the day that I decide that the entire field has become silly and hopelessly pedantic, and start looking for another line of work.

    ===

    “I’ve got cases queued for the BPAI right now because applicant ‘defines’ terms using possible and negative language. Can you define a ‘car’ as ‘something that doesn’t fly’?”

    Of course not, and I agree with you on that. But I don’t see how that’s relevant, since no one has tried to define “computer” by something that ISN’T a “computer.”

    ===

    “Furthermore, the existence of the possible language in the specification evidences the fact that other interpretations by a PHOSITA could be reasonable.”

    Ummm… really?

    Open-ended, positive language does exactly one thing: it denies the converse. Stating “X is at least three” only means that X cannot be less than three. It does not mean X can also be more than three. That aspect of X is possibly true, but possibly false; neither aspect is more probable or presumably true than the other.

    A tripod has at least three legs. Of course, by definition a tripod also has AT MOST three legs, and something that has MORE than three legs isn’t a tripod. Does that make the first statement not true? It would not even be reasonable to assert that “tripods” include four-legged assemblies.

    – David Stein

  35. EG “By the appropriate standard (not Bilski’s test), what’s claimed by Becker and Barnes is not an “abstract idea, natural phenomena or law of nature,”

    EG, pleaes understand that merely saying something is so does not make it so. Nobody, not even the most rabid patent peddlers out there, believes that you have to LITERALLY and EXPRESSLY claim “an abstract idea” as your invention in order for it to be rejected under 101.

    That’s what folks just don’t seem to get. You can’t turn a pile of crxp into a statutory claim with magic words. It doesn’t work. The law is that the Examiner or the Board or the Judge is permitted to see right through unreasonable insignficant jibber jabber added to a bogus claim solely in order to (allegedly) render it statutory.

    And why not? That is my question. Why the hell not? If it’s crxp, who cares why it gets crushed? I’m still waiting for somebody — ANYBODY — to step up and defend any of these appealed claims as valid claims that should be granted. They are worthless. And there are a lot more that are worse and they are clogging up the system.

    Wise people will figure out how to write better claims. Stoopit people will continue to pixx in the wind.

  36. Let me get this straight. If I file an application directed toward a method of displaying a picture of a dipstick on a screen and I define a “screen” by saying the “the screen can by any screen understood by those in the art, including, but a computer screen”, I should be able to argue (e.g., in response to an obviousness rejection) that I’m not a PHOSITA and a PHOSITA would understand that a screen is only a computer screen?

    Is that the position?

    Or are we entering another one of those topic areas where you aren’t ever going to say what your position is except that the PTO isn’t granting enough of your patents therefore it has an agenda to hurt you?

    I hope it’s not the latter.

  37. So if a computer implemented process includes displaying a score, does the BPAI posit that the computer could be printing the score on paper, which eludes to the printed matter exception?

    Kind of makes me glad I kept drafting those dependent claims to displaying the result on an active display.

  38. Dear where is the evidence?

    Re: “The applicant is at least a PHOSITA, by definition.”

    Not that I’ve been following this thread, but, not so!, according to:

    “35 U.S.C. 103 Conditions for patentability; non-obvious subject matter.

    (a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. PATENTABILITY SHALL NOT BE NEGATIVED BY THE MANNER IN WHICH THE INVENTION WAS MADE.” (emp. added)

  39. “The evidence is in the specification, just as An Examiner told you. The applicant is at least a PHOSITA, by definition. If the applicant leaves his definitions open-ended, then the applicants is admitting that the term is open-ended.”

    Are you a really an attorney?

    1) An Applicant is NOT a PHOSITA, by definition as you have asserted. If you want to stand by your statement, please provide the case law upon which you rely upon for this “definition.”
    2) An open-ended definition does not give the Examiner a license to come up with any claim construction the Examiner deems fit. I suggest you review the Federal Circuit cases of In re Morris and In re Cortright, among many others.

    The requirement for evidence is what separates the U.S. legal system from a kangaroo court. Unfortunately, a kangaroo court is what the USPTO has become.

  40. MM,

    Again, I’m going to make an exception to responding to your drivel because it completely misses the point, as you generally do on the subject of what potentially qualifies under 35 USC 101. I’m not talking about the “ultimate” validity of what Becker and Barnes claim. Instead, I’m talking about whether those claims qualify as a potential “process” or “machine” under 35 USC 101. By the appropriate standard (not Bilski’s test), what’s claimed by Becker and Barnes is not an “abstract idea, natural phenomena or law of nature,” and thus meets the criteria of 35 USC 101. Whether what’s claimed by Becker and Barnes meet the requirements of 35 USC 112, 102, and 103 (the merits of the claimed invention which should be the primary criteria for determining validity) is a completely different story.

  41. I think it was probably correct to deny a patent in this situation as the invention dident involve a creditable or integritious business method. A method of hedging comodities is esentially gambling with investors money so no patent granted is good.

  42. wiste “where is the evidence that your interpretation is consistent with the interpretation that those skilled in the art would reach?”

    *sigh*

    The evidence is in the specification, just as An Examiner told you. The applicant is at least a PHOSITA, by definition. If the applicant leaves his definitions open-ended, then the applicants is admitting that the term is open-ended. You don’t get to have it both ways and argue later that, in spite of what the applicant put on the record, the term should be limited because the applicant is a dipshxt.

    By the way, EVERY time this bogus argument by whereistheevidence comes up here and I check out the spec to see if helps out the crxp claims, it doesn’t. It makes it worse.

    The bottom line (again) is that software and computer-imnplemented patent applications are among the worst of the worst applications that exist. It’s a field that the PTO has coddled since its infancy. It’s a field that hasn’t grown up, patently speaking.

    It’s time to flush the pacifier down the toilet and burn the security blanket. Dry your tears, sonny. If you’re sharp enough, you’ll find plenty of other ways to put food on the table.

  43. “Furthermore, the existence of the possible language in the specification evidences the fact that other interpretations by a PHOSITA could be reasonable.”

    Great!!!! But where is the evidence that your interpretation is consistent with the interpretation that those skilled in the art would reach?

    Too many “broadest reasonable interpretations” at the USPTO are interpretations that only exist within the confines of the USPTO’s Alexandria campus. Just because an examiner can think of some alternative interpretation that could be plausible does not make it consistent with the interpretation that those skilled in the art would reach.

    A rigorous application of administrative law at the USPTO would cure this problem, but the USPTO has been above the law over the past few years.

  44. At Anon + David Stein:

    You can argue all day that my earlier interpretation of “computerized method including a processor” was inconsistent with the specification and would be unreasonable by a PHOSITA.

    But alas, specs these days are poorly written. And unless your specification states that the method requires a machine based computer, I’d be willing to take you to the board over it.

    We both know your spec would never say such a thing, though. It will say something similar to “the method may/might/could/can be performed by a computer, including a microprocessor and computer memory, RAM, etc.” and go on describing a stereotypical computer. The key word being the possible language.

    I’ve got cases queued for the BPAI right now because applicant “defines” terms using possible and negative language. Can you define a “car” as “something that doesn’t fly”? Is saying “a car may be a Honda civic” mean that your claimed “car” must be a Honda Civic? No.

    Furthermore, the existence of the possible language in the specification evidences the fact that other interpretations by a PHOSITA could be reasonable. If applicant recognizes that the method “can” be performed by a machine-based-computer, then applicant recognizes it might not potentially be performed by a machine-based-computer, otherwise applicant would have stated it “must be” performed by a machine-based-computer. Is applicant not a PHOSITA?

    :)

  45. EG “Once more, the Becker and Barnes cases point out the absurdity of the “machine or transformation” test of Bilski,”

    No, they don’t. They point out the absurdity of worrying about the fate of claims that are so meritless they make reasoable people who aren’t invested in gaming the patent system puke their guts out.

    Barnes recites “at least a module component operable to generate a tehcnological functionality.” That right there is enough to toss the patent application in the garbage. Barnes should be glad that the PTO is offering him any explanation for tanking that garbage.

    And yet here are people complaining about the PTO’s logic?!?!? What possible legal defense could exist to defend the validity of such claims?

  46. Ex parte Becker, and Ex parte Barnes particularly demonstrate why the BPAI’s application of the holding in Bilski is troublesome, and why the “machine or transformation” test of Bilski provides no logical test for objectively determining issues under 35 USC 101, but is simply an arbitrary and capricious test. For example, Claim 30 in Becker defines the “fault identification method” as comprising the steps of “determining discontinuity values from seismic data” and then applying analysis to those values to “identify faults.” But for the misapplication of Bilkski, why isn’t at least Claim 30 a “process” under 35 USC 101? In Barnes, Claim 1 defines an “automation system” comprising “at least one automation object” having a “third component to manage at least one module” where each module comprises “at least a module component operable to generate a tehcnological functionality.” But for the misapplication of Bilkski, why isn’t Claim 1 either “machine” or “machine process” under 35 USC 101.

    Once more, the Becker and Barnes cases point out the absurdity of the “machine or transformation” test of Bilski, and how it is then being misapplied by the PTO, and the BPAI in particular, to artificially reject patent claims other than on the merits (35 USC 112, 102, and 103). If the Federal Circuit doesn’t reign in this Bilski-generated nonsense soon from the BPAI, we’re going to have a colossal mess in the area of what “patentable subject matter” is (or should mean) under 35 USC 101. Frankly, Judge Newman got it right, and the Federal Circuit majority got it very wrong, in Bilski.

  47. Mooney is a rope-a-dope act. He gets bashed and bashed and still he will come back with the same arguments time and time again. He has 3 main goals posts he shifts between as he bashed: Bad patents, not the law, and don’t need patents anyway.

    Unfortunately, Mooney is a good representation of the current state of the Fed. Cir. judges and the PTO. No one who is serious about applying the law need apply. We have a hidden agenda (not so hidden really) and we are going to lynch those software patents no matter what the law. We haven’t seen the back of George Bush yet.

  48. The problem with our patent system is that they have issued 7 million patents that are unmarketable. Of the 20-30 thousand good marketable inventions, they either refuse to grant a patent or they issue the patent to the wrong person, or after the first patent expires, they re-issue the patent to the same or a different wrong person. This destroys the incentive to create by allowing inventors to believe their brilliant inventions will not be compensated therefore there is no reason to create.

  49. The main problem with our patent system with regards to what patents to issue and what patents not to issue is that they have issued 7,000,000 patents on unmarketable items. Of the 20-30 thousand marketable items, they either refuse to issue a patent or issue the patent in the wrong name. Then subsequently re-issue the patent the second time in a different wrong name.

  50. “Why drag e6k and John Darling into this?”

    So says the guy who’s posted 23 of the 72 comments thus far.

    You’re funny. Not serious. But funny.

  51. “Didn’t MM mean that oil will be found whether patentable subject matter or not?”

    That’s what Chavez said, too. It works for a while.

    Mooney talking about earthquakes shows how much he knows about what he’s talking about. Mooney opining on the Barnes claim is like a monkey critiquing a novel.

  52. Emily,

    You just don’t understand.

    Back at computer “science” school, the professors used to give out free rolls of infinite Turing tapes all the time.

    And also, free energy/ infinite speed tape players. You see, without those infinite speed tape players, it would take, well, almost forever to get from one spot to the next on our Turing tapes.

    But heck. I still understand way more about “software” than all you whining patent lovers. Software is Turing complete. It’s that plain and simple. All software is obvious. Everything you’ll ever need is already in Knuth’s book of fundamental principles. Ergo there should never be any patents handed out for software.

  53. Once upon a time I worked at a company that paid me to be a patent basher and troll on this patent law blog site.

    Oh wait. I just got another pay check from the same company. How come? I don’t do that stuff anymore. Honestly. It’s not me.

    Anyway. As I was saying … Software patents and business method patents are just plain evil, especially the ones asserted against that company I used to (cough, cough) work for.

  54. “All you need is a Turing machine with an infinite roll of tape…”

    I am seeing this a lot, where do I get some of these infinite rolls of tape?

    Oh wait, this is merely an abstraction…

    “Never mind”

  55. “Seismic processing software is used for finding oil and gas”

    Thanks for clarifying. If anything, that makes my argument above even more potent, as one previous commenter appears to have noticed.

    “It is a difficult field”

    I hope that’s not an attempt to excuse this particularly weak attempt at claim drafting.

  56. “Once upon a time, I worked at a company where on odd weeks I had to go to the stockroom.”

    No wait, it was the french fry line, and it was and still is every day.

    “There was a guy who worked there who was a little “off”. Sometimes he’d argue with people that nobody could see. I guess they were in his own head. Most of the time, he won.”

    Oh wait, that was just me.

    No it wasn’t.

    Yes, it was.

  57. Mooney wrote:
    “When a company can demonstrate that it (or its machines) are capable of predicting earthquakes more accurately than any other company, that company’s services will be in great demand. That company will make money. That’s real competition.

    Still waiting for someone to defend that PARTICULAR claim on its “merits.” Does anyone want to argue that a claim like Barnes’ should be patentable?”

    Mooney sure is quick to pass judgment on the substantive patentability (102/103) of those Barnes claims. Seismic processing software is used for finding oil and gas, not for predicting earthquakes. It is a difficult field, and along with nuclear weapon research and weather research it’s one of main users of cutting-edge massively-parallel computing. But no worries, Mooney can find that oil, no problem. He knows where it is. Under the earthquakes.

  58. step back wrote:

    “”By the way, what can’t be represented by a string of 0’s and 1’s?”
    “That’s easy. The precise value of Pi. Or any other irrational number.”

    Hmm… well, those aren’t directly representable as a string of 0’s and 1’s representing a floating-point number – it’s true. However, one can easily generate 1’s and 0’s representing a set of instructions that, when carried out, result in such numbers. All you need is a Turing machine with an infinite roll of tape…

    Just sayin’. :)

    – David Stein

  59. “one or two people who love their own opinions (and share them incessantly) drive the signal-to-noise ratio so high that the forum dies out.”

    Why drag e6k and John Darling into this?

  60. “To say that punch cards with one set of holes in them are no different than punch cards with other holes in them is to admit that you really really don’t get one iota of it.”

    That’s nice. Nobody here ever said that, however.

    Once upon a time, I worked at a company where on odd weeks I had to go to the stockroom. There was a guy who worked there who was a little “off”. Sometimes he’d argue with people that nobody could see. I guess they were in his own head. Most of the time, he won.

  61. “Most people want free booze, drugs and sex. Algorithms are at the bottom of the list, really.”

    If someone would come up with an algorithm to filter out messages from people who do nothing but blog all-the-day-long and therefore don’t know diddly, I don’t know where it’d fall on my list, but I’d be happy to have it.

    And Dennis, if you’re out there, why don’t you have something to allow readers to filter out certain posters? It’s classic phenonema I’ve seen since first using the Internet in 1988; one or two people who love their own opinions (and share them incessantly) drive the signal-to-noise ratio so high that the forum dies out. As for myself, other forums are looking more like a place for adults these days… sainora.

  62. Once upon a time, I worked at a company where on odd weeks I was assigned to the hardware department and on even weeks to the software department.

    What amazed me most at the start of each shift, was how the members of one department disparaged those of the other and vise versa. Something like: ‘Give me a break. How hard can it be to do the nonsense that those guys in the other department do?’

    I suspect that those who disparage software here probably work in the hardware side of things and have no clue as to how difficult and complex software can be.

    To say that punch cards with one set of holes in them are no different than punch cards with other holes in them is to admit that you really really don’t get one iota of it. Why don’t you say in the same breath that chemical compounds with one subset of elements in them are no different than compounds with other element combinations? Or that all things that can be invented have been invented?

    Actually, you probably have already said all those things too. Sheesh.

  63. Night Writer Patent Attorney asks at Jan 27, 2009 at 07:24 PM:

    “By the way, what can’t be represented by a string of 0’s and 1’s?”

    That’s easy. The precise value of Pi.
    Or any other irrational number.
    However, theoretically on an analog computer, irrational numbers can be precisely represented as part of a continuim.

  64. “Are new algorithms beneficial to mankind? Undoubtably.”

    What percentage of new algorithms is beneficial to mankind, do you suppose?

    “Are they hard to come up with? They can be.”

    LOL. “Yorg werk hard like hors. Yorg wan patint fer hard werk. No patint for Yorg then Yorg no werk hard. Contree fall part. Yorg family die.” BWHAHAHHAHAHAH!!!!!

    “Do we want more and better algorithms? Of course.”

    Most people want free booze, drugs and sex. Algorithms are at the bottom of the list, really.

    “So why should these people be precluded from the benefit of being able to patent their work?”

    Great argument.

  65. This trend is disturbing for some areas of innovation. Improvements to specific technologies (e.g., a router to better handle a specific protocol) probably will not have any difficulty. But there are folks out there whose time and energy is devoted to basic computer science research. I’m lucky enough to work with some of these people. They come up with smart and beneficial algorithms, things that can be applied to almost any form of computing… to any application. Under the current trend, it seems impossible that their work can be patented in any meaningful way.

    Are new algorithms beneficial to mankind? Undoubtably. Are they hard to come up with? They can be. Do we want more and better algorithms? Of course. So why should these people be precluded from the benefit of being able to patent their work?

    IF you accept the basic ideas of patent law as true… that public disclosure is worth the grant of exclusivity, that exclusivity incents innovation, and that people should be entitled to own as property that which they create out of nothing, then this whole Bilski thing is a cherade.

    A computer is a blank slate. It’s an infinite variety of specialized machines waiting to be configured in just the right way. There’s no reason why innovations strictly within the confines of a generic computer should not be patentable.

    If I were to invent a specialized circuit… hardwired… that performed a new sorting algorithm, and I claimed the circuit, it would not be a problem. Yet if I claim the same algorithm being performed on a general purpose computer, this is somehow significantly different? Bull! What’s the difference between that hardwired circuit and a computer? If I take that hardwired circuit and give it one switch, and the switch changes the properties of the circuit, does that make it a general purpose computer? How many switches does it take? A computer is just a bunch of switches. When those switches are arranged in the right way, the circuits they form perform very useful processes. But somehow because the medium for those processes is adaptable the processes are unpatentable?

    The 101 approach of the BPAI points up the problems at the PTO in general (and among practicioners). There’s a real lack of technical expertise. To avoid the technical analysis necessary for substantive examination, the PTO is falling back on the open-ended gobbly-de-gook of Bilski. What a mess.

  66. “The analogy between the placement and number of holes and an infomration processing machine is incorrect.”

    I agree. Too bad it wasn’t my analogy.

  67. “How many patents issued on punch cards that differed from prior art punch cards only in the placement and number of holes?

    Keep moving the goalpost, bro’. I suppose I’d do the same if I were you. ”

    Too late Malcom – you just did move the goalposts.

  68. It just goes to show that Mooney’s garbage recommendations about a “communication step” would be deemed insignificant post solution activity. But since he is just pretending to be a patent guy, he wouldn’t have known that.

  69. Let me post a claim completely out of context without benefit of the specification. I will then proceed to call it a sick joke and make all kinds of disparaging remarks about the attorney that wrote it.

    Then when people call me the a$$hole that I am, I will whine about “vitriolic personal attacks.”

    Its true, sadly, the only lame sick joke around here is me. And I might be a redneck.

    Oh well, its off to another “order of the coitus” meeting.

  70. >>ahem* The question was how many patents issued >>on punch cards that differed from prior art >>punch cards only in the placement and number >>of holes

    The analogy between the placement and number of holes and an infomration processing machine is incorrect.

    The analogy is between the physicl structure of the punch card machines which implemented a method of sorting and the information processing machine that implemented the same method of sorting. I think the name was radix sort.

    An information processing machine, in the form of an electronic omputer can be built without the CPU architecture that would take the same form as the meachanical punch card machines.

    You see, MM, another thing that Johnny figured out was that rather than building a giant machine that what we could do was make the machine run other machines. And, that is how modern computer programming and the invention of the modern computer architecture began.

    Johnny’s genius has apparently confounded the Supremes who to this day seem to think that a computer program is an abstraction.

    And it has apparently confounded MM as well who wants to exault form over function. Yes, an information processing machine can be represented by holes in punch cards and can be represented as a stand alone special purpose electronic information processing machine.

    By the way, the placement and number of holes is probably best analogized to computer memory. I would image that the reader of the card was patented but not the cards.

    But actually, your question brings up something very interesting. That is that what was being patented was the method of the machine. The infomration processing sort. And, why a method on a machine was permitted to be patented was because it was too easy to design around a patent that claimed the physical structure of the machine, so they had to allow method claims for the processing that was occurring on the machine.

    They had most of it worked out long ago, and got it pretty much right.

  71. “Actually, interestingly, if you read the patents, you will find that a lot of the innovation was how to sort the punch cards. And in effect, what was being claimed were algorithms for sorting the punch cards—and it didn’t matter what was on the punch cards. So, they were claiming information processing algorithms! And in fact the algorithms that the punch card machines ran were very similar to the first computer sorting algorithms. In fact, Johnny von Nuemann wrote a computer sorting algorithm on the first modern computer and ran a speed test with the top of the line IBM card sorter. ”

    *ahem* The question was how many patents issued on punch cards that differed from prior art punch cards only in the placement and number of holes?

    You may recall (but I understand how difficult this might be for you) that we were discussing what patents were needed for innovation to occur. Somehow the republic managed to innovate without thousands of punch card patents.

    So once again: your red herring, not mine.

  72. David,

    What An Examiner presents, is unfortantely, one way one can apply the terms “computer” or “processor”.

    I think the better test instead of arguing with someone over the PHOSITA position, is to apply what is legally required. “During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” See MPEP 2111

    This then gets me to thinking about something about tying a method to a particular machine, in view of Bilski. Do you need to recite a specific machine in the body of a claim, or can such a tie in be implicted? For example, if I recite a method for compressing video data, arugably video data is going to processed by a video apparatus. One could argue, in view of the specification, that video data is going to be limited to a particular type of machine, instead of it being either open ended or performed by a human?

    If not, are there any pitfalls for reciting limitations into a method claim which recites a specific machines? Let’s assume that the recited machine is well defined in the specifiation.

  73. >>Huh. If it’s so difficult, David, then how >>come the claims almost invariably read like a >>frickin kindergartener wrote them?

    Because the PTO does not do its job and get rid of these ridiculous patents with 102, 103, and 112.

    There are plenty of real claims.

  74. MM wrote:

    “Huh. If it’s so difficult, David, then how come the claims almost invariably read like a frickin kindergartener wrote them?”

    I didn’t write that, Malcolm – NWPA did.

    – David Stein

  75. >>How many patents issued on punch cards that >>differed from prior art punch cards only in >>the placement and number of holes?

    Actually, interestingly, if you read the patents, you will find that a lot of the innovation was how to sort the punch cards. And in effect, what was being claimed were algorithms for sorting the punch cards—and it didn’t matter what was on the punch cards. So, they were claiming information processing algorithms! And in fact the algorithms that the punch card machines ran were very similar to the first computer sorting algorithms. In fact, Johnny von Nuemann wrote a computer sorting algorithm on the first modern computer and ran a speed test with the top of the line IBM card sorter.

    So, patents were issuing with claims to sorting algorithms regardless of the data on the punch cards! In effect, information processing algorithms.

  76. NWPA “The punch card machine which use to compete with electronic computers were eligible for patents.”

    How many patents issued on punch cards that differed from prior art punch cards only in the placement and number of holes?

    Keep moving the goalpost, bro’. I suppose I’d do the same if I were you.

  77. DS “This is an incredibly difficult task. If it were easy, then companies would not have to spend 10’s of millions of dollars trying to figure out how to do a good job of it. Companies right now are vying for the prize of building the best information processing machines that web shopping sites will pay to use.”

    Huh. If it’s so difficult, David, then how come the claims almost invariably read like a frickin kindergartener wrote them?

  78. “Think about your mobile phone – each phone has about 10000 patents …. Each patent filed-issued adds once small-tiny inventive step.”

    Here we go again. Just say it. Without his cell phone, grandpa would have died of his heart attack that day. Why do I dislike grandpa so much that I would deny software patent protection to the good folks at Qualcomm?

  79. Examiner wrote:

    “Now, unless applicant specifically defines a ‘computer’ or ‘processor’ as ONLY being a machine (read as no ‘may’ language), then it is perfectly reasonable to read a ‘computerized method with a data processor’ as ‘a person with a brain’.”

    I think that PHOSITA would disagree with you by stretching the plain definition of a “computer,” as used in the field of art to which it pertains (i.e., computing), to include a human brain.

    Indeed, there’s an entire field of “computing” that relates to making a “computer” emulate a human brain. This would be trivially solved by defining “computer” to include a human brain – which need not emulate itself, but which need only the ordinary requirements of a human brain (oxygen, glucose, etc.)

    ===

    “Furthermore, does a ‘computerized method’ require every step to be computerized to qualify as a ‘computerized method’ or just at least one of the steps?”

    Well, if the entire method (comprising a plurality of steps) is defined as “computerized,” then presumably every step must be performed by the (circuitry-based) computer. Of course, the specification should make that clear.

    – David Stein

  80. >>Starting with the Benson court.
    Exactly! It was heavily criticized at the time and for it to have come back alive is like the Night of the Living Dead.

  81. “it is perfectly reasonable to read a “computerized method with a data processor” as “a person with a brain”.”

    That may be the broadest interpretation, but likely not the broadest reasonable interpretation in view of the specification and not one that is consistent with what one of ordinary skill in the art would define the term. any person with a brain would know the difference.

  82. >>Now I go buy a DVD on a website and you are >>telling me that patents are necessary to >>encourage website owners to recommend DVDs to me?
    MM: What needs to be encouraged is building information machines that are capable of making good recommendations. (Like the difference between saying your barber plays chess vs. the computer world champion chess information processing machine.)

    This is an incredibly difficult task. If it were easy, then companies would not have to spend 10’s of millions of dollars trying to figure out how to do a good job of it. Companies right now are vying for the prize of building the best information processing machines that web shopping sites will pay to use.

    David Stein outlined above pretty well what is going to happen without patent protection. Either the software won’t be built–capital will not flow to support the development if it can’t be protected–or it will be built if it can be hidden.

    Say good-bye to disclosure. And say good-bye to many start-up companies. Small companies create 2/3 of the jobs in the U.S.

    Did you know MM that computers in some sense got their start from the U.S. census bureau holding a competition for automating the census because the census could no longer be taken every 10 years. They needed a way to automate it. The person that won went on to found IBM. The punch card machine which use to compete with electronic computers were eligible for patents.

    The fact is that information processing machines are capital intensive. Their development needs speculative capital.

  83. All of these “post-solution activity” objections to software patents are just one more example of the sad consequences of one of the worst IP decisions ever: Gottschalk v. Benson. Look at the hundreds, if not thousands, of hardware circuit patents that issue each year. Most don’t cite any “post-output activity”, because to do so is engineering nonsense – engineers are trained to hook things up to circuit inputs and outputs. All the engineers care about in a new hardware patent is the new circuit between the inputs and outputs. Everyone knows how to use the FFT in applications – all anyone who knows anything about engineering (which excludes most federal circuit judges) is the new FFT calculation circuit between the inputs and outputs. The same is true for software, for example, a new algorithm for the FFT (which should be rejected on 102, 103 and 112 grounds, not 101 – EVER). So any judge on any court using the phrase “post-solution activity” is too technically incompetent to be such a judge. Starting with the Benson court.

  84. Stein said:… “In ex parte Gutta (BPAI 2009), Gutta (Philips) claimed a “computerized method performed by a data processor.” … The final step in the method involved “displaying” a score. The logical trickery should be clear. The step that was rejected did NOT include “writing the resulting score on a piece of paper,” because the method itself is “computerized” and “performed by a processor.” That computerization INCLUDES the displaying.

    Dear Stein:

    Definition of “computerized”: Of or relating to a computer or the use of a computer.

    Definition of computer: 1. A device that computes.
    2. One who computes.

    Definition of processor: 1. One who processes.
    2. A central processing unit.

    Now, unless applicant specifically defines a “computer” or “processor” as ONLY being a machine (read as no “may” language), then it is perfectly reasonable to read a “computerized method with a data processor” as “a person with a brain”.

    Furthermore, does a “computerized method” require every step to be computerized to qualify as a “computerized method” or just at least one of the steps?

    :)

  85. rakgcain wrote:

    “Each patent filed-issued adds once small-tiny inventive step.”

    Right. And modularity is one of the key components of hardware – a combination of A+B+C+D can be vastly improved by inventing an improved C ‘and soldering it in. Even if the C’, sitting by itself, had absolutely no value, one could still patent it for use in other combinations, such as A+B+C’+D. Same with chemistry, of course – as long as a novel chemical can have plausible utility (even if only in combination with dozens of others), no 101 issues are raised.

    Sadly, that type of innovativeness has traditionally been denied to the software patent system on the basis of “abstractness” or “preemption.” If the courts don’t see that the software has direct real-world value, then it is rejected as “preempting” every combination using the “principle.” Gottschalk so held; Diehr so held; and even State Street did not alter that concept.

    Imagine how this logic might be applied to hardware… e.g., a patent application for new device C’ is rejected because C’ is not useful in isolation, and it “preempts” every known combination of circuitry that includes C’.

    This is an entirely artificial distinction – one without precedent, and even without a frank discussion in any court or the USPTO. It reflects nothing but a systematic denigration of software as a valuable area of technology. And even Bilski did not invent this denigration, but merely resurrected its level from 29 years ago… back when computers *were* used as high-powered calculators.

    – David Stein

  86. MM – NWPA is talking about AI – and implementing it. For a human being – recommendation is an inherent feature – thousands of years of genetic programming has conditioned the human brain to such things. To teach a machine – is a different thing. Consider teaching your car to parallel park itself. If this is too difficult – consider teaching a machine – to choose a path/pattern out of given set of finite paths. or to choose a voice pattern amongst say 10 patterns.

    And talking of your so called “grown-up” arts, are all on the electrical side. Each patent filed-issued adds once small-tiny inventive step. Think about your mobile phone – each phone has about 10000 patents – from wireless operations to ICs used to design and operate such instructions/software/algorithms to assembling devices together and on top of that the software used to integrate and provide an interface to you – the end user. These patents do not contain reams of source code – just small ways of implementing a small function that adds one wee bit of pleasure and ease in your experience.
    Want to see an example – see this site: http://www.3GPP.org

  87. “True enough. But you’ll have copyright to fall back on. Enjoy.”

    Copyright protects particular implementations, not inventions. There is no “falling back” on copyright for protecting inventions.

    There are only three reasonable tactics in view of a cratering patent system for software:

    (1) Trade secret: Invest R&D only on algorithms that are kept completely in-house, and never sell it to anyone, ever.

    (2) DRM: Push the “Palladium” path, so that users no longer know what software is running on their machines. Abandon any non-DRMed platform. This will inevitably create tons of administrative and interoperability issues, but that’s really the users’ collective problem.

    (3) Copying: Don’t bother with R&D – ever. Just wait for someone else to come up with something interesting (on their own dime and at their own R&D risk), and then reverse-engineer and copy it to death.

    – David Stein

  88. “No they won’t. They still will not be patentable under the Bilski test as applied by the BPAI.”

    True enough. But you’ll have copyright to fall back on. Enjoy.

  89. NWPA “the need that was created by web shopping.”

    LOL. So before computers when I went to the theatre I got advice from the usher or ticket seller who noticed that I liked movie X and Y and said “Hey, you know a lot of people who liked X and Y also liked Z, have you seen that?”

    Now I go buy a DVD on a website and you are telling me that patents are necessary to encourage website owners to recommend DVDs to me? It’s a bogus argument, NWPA. You’ve been brainwashed or you’re just a shill because you can’t be serious.

  90. MM wrote:

    “When software filers start filing reams of examples of source code to which they are subsequently limited, then all of these issues will go away”

    No they won’t. They still will not be patentable under the Bilski test as applied by the BPAI.

    Software per se, no particular machine, no transformation of an article, not patentable.

    They might pass the MM doo-doo test, but unfortuntately we are not quite a nation of The Law According to the Almighty MM.

  91. NWPA “I am not sure if funding for these types of companies will continue post the elimination of information processing machine patents.”

    I’m not sure either but I am sure that I could care less because if such software is important to Amazon’s bottom line, Amazon will keep developing the software, just like cereal companies started putting more oats in their cereals. That’s the free market.

    “Your Beauregard argument is a red herring.”

    No, it’s not a red herring. My argument is King Kong’s foot in the 1976 version and Beauregard claims are Charles Grodin. But I know you: you like to find things out the hard way.

  92. anon-rak “So before you state that “ALL” software patents are crap – think about this – one needs to show only one instance – where it does what it is supposed to – and it can be implemented in different ways”

    In the grown-up arts, we have to deal with this thing called “written description”. It’s a way of preventing applicants from describing some abstract concept with a little bit of data (maybe one limited “working” example or a prophetic example) and obtaining broad claims covering all implementations of the concept.

    When software filers start filing reams of examples of source code to which they are subsequently limited, then all of these issues will go away … oh, except for the whining from software filers about how “claims that cover only what was actually produced aren’t worth anything.”

  93. >>What else could possibly have inspired the >>innovation, do you suppose?

    Good question. And guess what, the answer to that is the need that was created by web shopping. Websites such as Amazon are very keen to be able to give people recommendations for several reasons: (1) so that they can give recommendations for additional products that people may be willing to buy, and (2) as an added service to decrease the amount of time that people have to spend searching for products, e.g. you put in a toaster and the information processing machine figures out the 3 toasters that most likely fit your purchasing profile. That saves the user of the webshopping service time; thus, providing a valuable add-on service, and increasing the sales for the website.

    So, here we are with you telling the marketplace what is valuable.

    Companies like Amazon have said we want the information processing machine. We are willing to pay for it if someone can figure out how to build it.

    Inventors and businesspeople have started companies to meet the need. Capital in excess of $50 million dollars has flowed into trying to build this information processing machine. This is actually a very hard problem to do a good job on. I am not sure if funding for these types of companies will continue post the elimination of information processing machine patents.

    Information processing machines deserve patent protection. The problem is that the patent applications that are being used to make new law are ones that should be dealt with using 102, 103, and 112.

    By the way, I have no financial interest in the company I described. I am not even writing an patent application for them.

    People in software would like the PTO to reject patents with broad claims and little enablement. The PTO is giving us a double punch: not doing its job in getting rid of the ridiculously broad patent applications that are trying to grab ridiculous amounts of land and then trying to eliminate all software patents because the PTO can’t do its job.

    P.S.Your Beauregard argument is a red herring.

  94. Mike: “I don’t see how the recordation of data would be any different than the display of data.”

    I can think of many ways in which recordation of data differs from display of data, including circumstances in which substituting one step for the other in a particular mehtod could result in the loss of someone’s life.

  95. David Stein wrote:
    “Anyone notice the sleight-of-hand here?”

    For each of these cases which refer to a processor doing a thing – they have been problematic or not on 101 issues – because of the presence or absence of support in the specification. BoLi is a good example of the same. Also there are implementation (112) issues in each of these cases and there is good reason for a rejection.

    Have you ever thought about how software is created – think of any operation (say select a line or select text or select an area ) in any commercial program – think of the math behind it and then its implementation – the math is the algorithm – the implementation is different for each program – as it may or may not be done in the same way. So before you state that “ALL” software patents are crap – think about this – one needs to show only one instance – where it does what it is supposed to – and it can be implemented in different ways. (2+2 =4′ 6-2=4′ ////..ad infinitum).

    Preambles:

    Gutta – A computerized method performed by a data processor for recommending one or more available items to a target user, comprising the steps of:

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

    Cornea-Hasegan – A computer readable media including program instructions which when executed by a processor cause the processor to perform the following:

  96. MM wrote:

    “Bernie Madoff got $50 billion from your “free market.”

    True.

    And the patent office has received somewhere between $82 and $850 in basic filing fees (per app) for probably 100,000 apps that are sitting around 2600, and that will now be rejected with a template OA reciting Bilski, and without the examiner having performed even a single search. Additional funds are available from CPAs, appeals, etc. – each of which will, again, result in a one-paragraph form letter citing Bilski.

    And all of these cases – or at least, those filed before October 30th, 2008 – were fully in keeping with current law (State Street.)

    Perhaps the USPTO’s 2600 backlog was a pyramid scam all along… a way for the office to seize a huge war chest in fees from applicants, conduct very little work, and give them nothing but form letters in return.

    – David Stein

  97. I don’t think this is as big of a deal as it appears. It does not appear that the BPAI is expanding Bilski as some have suggested. For example, MM cites claim 1 from Barnes which is directed to a system. However, the BPAI did not find that claim 1 was directed to non-statutory subject matter. Similarly, in Gutta, the system claims were not rejected under 101.

    They are focusing on methods because Bilski only applies to the examination of method claims. It does not apply to system claims. It doesn’t appear that the BPAI has even extended this to typical Beauregard claims. In Barnes, the claim was still for a method even though the preamble stated it was a computerized method. The drafter errored in drafting the claim. It should have claimed the medium having instructions stored on the medium, etc. It doesn’t appear from these cases that the BPAI is using Bilski to wholesale reject any and all computer related claims.

  98. NWPA: “The free market has decided that recommendation software is worth investing at least $50 million dollars to develope, and yet you, Mr. MM, say it isn’t worth anything and should be jeered.”

    I never said that but I’ve learned never to expect apologies from commenters with their heels dug so into the muck.

    I will note, however, that the “free market” didn’t decide a thing. Some investors decided that they wanted to invest, is all.

    $40 million is peanuts, though. Bernie Madoff got $50 billion from your “free market.” But I’m not jeering.

    It would be wrong to jeer at any scheme that some folks threw a lot of money at. You taught me that, NWPA.

  99. “The problem with those claims are 102, 103, and 112 issues. Not 101 issues.”

    Bingo.

    I’ll even give them other 101 issues – mental steps, abstractness, preemption – all well-defined and applicable concepts. Of course, there’s a simple term for that state of the law: State Street.

    – David Stein

  100. “In two of the cases, the BPAI applied its power to issue new grounds of rejection — raising the Section 101 issue sua sponte.”

    So now the board is getting in on the action of the Examiners – namely Reject all claims at any cost on any convenient grounds (the most popular trick of which is “Why bother searching for the art when I can just waive my hands and make a 112/1, 112/2 or 101 rejection”).

  101. NWPA “Gee, how terrible that would be to have an information processing machine that could recommend products and movies that people are more likely to want to purchase.”

    The argument that patents are necessary for developing movie recommendation software is ridiculous on its face. Do you realize how weak your position appears when you make such an argument?

    Somehow back in the dark ages before POWERFUL COMPUTER BRAINS became as commonplace as candy bars, people still managed to obtain movie recommendations. You can check the PTO database, but I don’t recall many applications on methods of providing movie recommendations being filed in, say, 1956. And yet nobody doubts that there were many different ways of providing those recommendations. What else could possibly have inspired the innovation, do you suppose?

  102. Also, MM:

    The free market has decided that recommendation software is worth investing at least $50 million dollars to develope, and yet you, Mr. MM, say it isn’t worth anything and should be jeered.

    The problem with those claims are 102, 103, and 112 issues. Not 101 issues.

  103. DS “I never have, and never will, waste my time and my clients’ money filing for an invention that the USPTO is not going to allow.”

    That is very admirable, David. But you must realize that you are a tiny minority. Not quite an island unto yourself, but a minority. I mean, look at Classen. Classen is appealing for en banc review at the CAFC for a claim that will never be allowed even if it somehow does pass muster under 101 (which it won’t).

    Therein lies the real problem. The gates are closing for a reason.

  104. “Mooney, you’re essentially arguing for a per se rule barring seismic processing software (and any software not specifically tied to a physical object outside a computer for that matter) from patenting.”

    Yes, that’s about right.

    When a company can demonstrate that it (or its machines) are capable of predicting earthquakes more accurately than any other company, that company’s services will be in great demand. That company will make money. That’s real competition.

    Still waiting for someone to defend that PARTICULAR claim on its “merits.” Does anyone want to argue that a claim like Barnes’ should be patentable?

    Because let’s face it: anybody could conceive and file an invention of such shallowness in five minutes. That claim is an empty vacuum wrapped around a blob of nothing.

    “It depends on how highly you value disclosure.”

    If someone is incapable of writing a comprehensible patent claim, what makes you think their disclosure is going to be of any value? And do you honestly believe that non-obvious advances in earthquake prediction are going to be based in software? That’s hilarious.

    POWERFUL COMPUTER BRAINS have been used to crunch geological data for a long time. Did those computer brains rely on “analysis windows”? I suspect they did, or they did something more or less the same. Maybe someone can patent the use of an “analysis catdoor,” an “analysis keyhole” or an “analysis mesh screen” to predict earthquakes. I mean, why not? Everything should be patentable or else we’ll all die in a huge earthquake.

  105. MM wrote:

    “A better question is: who cares about these claims? On what planet is the granting of claims to ‘inventions’ as lame as those described by THESE claims beneficial to the public?”

    Most of the claims that are being rejected under Bilski are kind of lame… including the ones at stake in Classen v. Biogen.

    I don’t care that Bilski is being used to reject claims that are otherwise unallowable (often for several reasons.) I care that the logic being developed under Bilski is (1) a highly formalistic approach to patentability with little analysis of the substance of the invention; (2) logically inconsistent in many aspects; and (3) capable of being subjectively applied to reject claims in a conclusory and inarguable manner, therefore rendering the USPTO a much more arbitrary and unpredictable administrative agency.

    Many of my clients have inventions that are definitely novel, definitely valuable, and definitely describable (in detail – and often with an algorithm) for configuring a computer to solve a particular problem. But if Bilski continues to be applied according to these trends, then there is no way to claim these inventions that is both (1) allowable and (2) sufficiently broad to capture the real-world scenario in which an infringer – even a willful, open infringer – will implement and profit from the invention.

    If the system continues in this direction, I’m going to start advising my clients not to file applications on certain types of inventions – to rely on copyright or trade secret. I never have, and never will, waste my time and my clients’ money filing for an invention that the USPTO is not going to allow. My goal is not to maximize my billings, but rather to provide valuable services for my clients.

    – David Stein

  106. >> remember already laughing at this swill >>before. Oooh, displaying a recommendation >>score! Some transformation. As if nobody ever >>recommended anything to anybody before based >>on what other people liked. But wait! THIS >>RECOMMENDATION USES A POWERFUL COMPUTER >>BRAIN!!!!!

    Yes, Mooney, and I remember pointing out an entire company that has MIT researchers building an information processing machine to make recommendations. Gee, how terrible that would be to have an information processing machine that could recommend products and movies that people are more likely to want to purchase. It would save time and improve the quality of people’s life. And make money for many companies.

    But rather than use your evaluation of the invention, first apply 101, and then go to 102 and 103. The marketplace can short out whether the invention is worth anything.

    Many people here have tried to educate you on why it is folly to evaluate the worth of an invention.

  107. I shouldn’t feed the troll. But I can’t help it. Just once.

    Ok, Mooney, you’re essentially arguing for a per se rule barring seismic processing software (and any software not specifically tied to a physical object outside a computer for that matter) from patenting. One problem is that these companies have been thinking they can get patents and have been disclosing these technologies. If you had your way AND the rules became clear, these companies would just stop filing and rely on trade secret protection. Better outcome? It depends on how highly you value disclosure. Mooney obviously doesn’t give a rat’s behind about that.

  108. From what I understand from someone who knows more about this than I do, the Barnes claims should have been taken out under 102 because of prior art published/patented by Amoco. So the claim apparently wasn’t new.

    So you have a double PTO failure here: issuing a bogus 101 rejection, and failing to identify 102 art.

  109. Dennis on Barnes: “The BPAI recognized that the claim called for both gathering and analyzing data, but those steps – without explicit limitations of how they are done – are insufficient to render the claim patentable.”

    Anyone want to disagree? Anyone want to argue that a method claim that merely handwaves some baloney about “determining a value” in an “analysis window” without reference to any machine or any action other than “obtaining data” is **more** than just abstract hoo-haw?

    Lay it out for me.

  110. I believe that the statement that “In Bilski, the Federal Circuit found that a displaying step could render a claimed method patentable” is incorrect.

    The statement in Bilski (talking about Abele) was that “[T]he electronic transformation of the data itself into a visual depiction in Abele was sufficient. . . .” This quote shows that it was the “transformation of [the] raw data” in Abele that made the invention patentable. The fact that the transformed data was displayed is insignificant.

    Further, I believe that such an understanding of Bilski is consistent was past case law. In example, the recordation of data resulting from the application of a mathematical algorithm has, despite the fact that such a recordation requires some physical apparatus, been deemed insignificant post-solution activity. In re Walter, 618 F.2d 758, 770 (C.C.P.A. 1980). I don’t see how the recordation of data would be any different than the display of data.

  111. David Stein asks: “Folks – why are we even bothering any more?”

    That’s easy, David. The answer is that every once in a while the wet toilet paper sticks to the wall and looks like this: $

    If you got the money to spend on this kind of crxp, why not play the game? Compared to CEO salaries, filing these applications is a drop in the bucket.

    Seriously, though, a better question is: who cares about these claims? On what planet is the granting of claims to “inventions” as lame as those described by THESE claims beneficial to the public? The whiners seem to be very upset by the lack of “logic’ here. But they weren’t upset when Beauregard claims started being issued, in spite of their being no legal logic available to support those sort of claims.

    Go figure.

  112. In re Gutta

    1. A computerized method performed by a data processor for recommending one or more available items to a target user, comprising the steps of:

    obtaining a history of selecting one or more available items by at least one third party;

    partitioning a third party selection history into a plurality of clusters, wherein each cluster contains items that are closer to
    the mean of the cluster than any other cluster from among the plurality of clusters,
    modifying a target user’s history of selecting said one or more available items with one or more third party clusters to produce
    a modified target user’s history;

    processing the modified target user’s history to generate a target user profile, wherein the modified target user’s history characterizes preferences of the target user as modified to
    reflect preferences of the third party;

    generating a recommendation score for at least one of said available items based on said target user’s profile; and displaying the recommendation score to the target user.

    I remember already laughing at this swill before. Oooh, displaying a recommendation score! Some transformation. As if nobody ever recommended anything to anybody before based on what other people liked. But wait! THIS RECOMMENDATION USES A POWERFUL COMPUTER BRAIN!!!!!

    Yes, claims like these are bad jokes. But nobody’s laughing anymore. Sort of like those “redneck comedians” that polluted TV a few yaers ago.

  113. Ex parte Barnes:

    1. A fault identification method that comprises: obtaining seismic data; and for each of multiple positions of an analysis window in the seismic data, determining a planarity value for discontinuities in the analysis window.

    What a sad shame that this claim can’t be patented. Truly a horrifying loss to the American public and the world that a 20 year monopoly can’t be handed out for an invention described with such an incredibly high degree of lameness.

    Were attorneys actually paid to write that claim AND prosecute it? LOL, and buh-bye.

  114. “The BPAI is not asserting that software is unpatentable.”

    Of course the BPAI isn’t going to state that “software isn’t patentable,” or (try once again to) carve out an explicit patentability exception for software. They’re just going to reject every software case that isn’t so thoroughly grounded as a precisely defined algorithm in a precisely defined machine. This will simply add up to a tacit, unspoken categorical exception, rather than an explicit one.

    Even though such an exception is flatly contrary to the expressed intent of the CAFC in Bilski, the BPAI is actually using the CAFC’s playbook here. After all, in the very same opinion, the CAFC denied a categorical rejection on business method patents – but then crafted requirements that, plain practice, categorically exclude business methods.

    In short: what these administrative bodies are prohibited from doing expressly, they will do tacitly. They intend to bully applicants into compliance with substantive rules that are both illegal and unwritten. Such is the deplorable state of affairs of patent law.

    ===

    “In two of the cases, the BPAI applied its power to issue new grounds of rejection — raising the Section 101 issue sua sponte.”

    Interesting. I wonder if this signals a split of opinion between the BPAI and the examining corps.

    The examiners that I’ve spoken with about Bilski (notwithstanding 6 ;) … but including several examiners who attended the Partnering in Patents conference) hoped for and expected a ruling that allowed them to reject claims that looked like abstract methods. But as long as the method was claimed in the context of software configured to be executed on a computer, they were perfectly accepting of the non-abstractness of the invention. The examiners wanted a modest and nominal shift toward grounding the method in the context of a computer – but no more than that.

    By contrast, the BPAI is aggressively applying Bilski. It’s becoming Bilskizilla.

    Anyone keeping score of recent decisions? I think we’re somewhere around Bilksizilla: 8, software inventors: 1.

    ===

    “In ex parte Gutta (BPAI 2009), Gutta (Philips) claimed a “computerized method performed by a data processor.” … The final step in the method involved “displaying” a score. In Bilski, the Federal Circuit found that a displaying step could render a claimed method patentable. Here, however, the generically worded step was merely ‘post-solution activity [insufficient] to impart patentability to a claim involving the solving of a mathematical algorithm.'”

    Anyone notice the sleight-of-hand here?

    First, the BPAI mentions as an aside that claim recites a “computerized method performed by a data processor.” Second, the BPAI first rejects the “displaying” as “insignificant post-solution activity,” because “it may be accomplished simply by writing the resulting score on a piece of paper.” Feeling empowered to ignore that step, the BPAI then looked at the rest of the claim and found all of it inadequately “tied to a particular machine.”

    The logical trickery should be clear. The step that was rejected did NOT include “writing the resulting score on a piece of paper,” because the method itself is “computerized” and “performed by a processor.” That computerization INCLUDES the displaying.

    What’s the upshot? We can expect the BPAI to make logical mincemeat of the claims by tearing out critical limitations as somehow being “insignificant,” and then desultorily dismissing the remaining bits of the claim. Awesome. This is in addition to calling applicants’ inventions insufficiently tied to a “particular” machine (Bilski)… and blatantly using hindsight and speculation in obviousness combinations (KSR)… and misreading “multiple plausible constructions” into claims (Ex parte Miyazaki)…

    Folks – why are we even bothering any more? Are we wasting our clients’ money by filing, when the USPTO’s allowance rate is on its way to plummeting to 0%?

    – David Stein

  115. Ex parte Becker

    1. An automation system comprising:
    at least one automation object, each automation object having a hierarchy of components, said hierarchy comprising a first component generating system functionality related to internal services of the system, a second component generating base functionality related to generic services that facilitate manipulation of the at least one automation object, and a third component operable to manage at least one module,

    wherein each module comprises at least a module component operable to generate a technological functionality.

    —————-

    Wow, 14 inventors to come up with that?

    Good riddance to yet another sick joke of a claim.

  116. So even though Bilski explicitly said it’s not a software case, it looks like the PTO’s position is that the overwhelming majority of software is no longer statutory subject matter. A bold move. How long will it take for CAFC opinions on this cohort of cases to come out?

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