Tuesdays with Aaron

12:01 am on Tuesday morning is a special time for patent attorneys. That is when the USPTO releases the newest batch of issued patents. Usually, over 3,000 issue each week.

Patent Attorney Aaron Feigelson (Leydig Voit firm) has started a great new blog: 1201tuesday.com covering PTO events. Aaron writes with an eye toward patent prosecution and does a good job of finding examples from recently issued patents that raise important practice issues. He has also been closely following the aftermath of Bilski. Aaron describes his project as follows:

I started regular weekly monitoring of issued patents a few years ago for some particular client-related matters, but my intrigue grew after stumbling upon certain patents, unrelated to client matters, with stories that were too interesting to keep to myself. Like U.S. Patent No. 6,097,812 and its 67-year prosecution history (thanks to a very long lasting secrecy order). Or U.S. Patent No. 7,472,070 for a seemingly innocuous grain aeration system — but granted to Microsoft, that well-known player in agricultural technology. Or trends, like the trickling-off of issuances to applications filed the first week of June 1995 (when there was a pre-GATT filing surge). Or Jerome Lemelson being granted U.S. Patent No. 7,343,660 more than a decade after his death, with priority going back over fifty years to 1954.

Lately, my attention has turned to the fallout from the Federal Circuit’s recent decision of In re Bilski and its effect on patentable subject matter under Section 101. In particular, I was curious (to aid my own practice) to see what sorts of claims had been allowed pre- and post-Bilski, and what techniques applicants had used to address or circumvent the machine-or-transformation test. I began sending my weekly findings internally to a few attorneys in my firm. Then to a few more. Then to a few more..

After a few months of these “Bilski Watch” emails, this blog was created.

I enjoyed Aaron’s recent post regarding patents issuing from applications filed in early June 1995 – just before the patent term reference was switched from the issue date to the filing date.

Notes

  • For those of you who don’t know, the IP blogging community is rather inter-connected. For instance, Aaron Feigelson was a 2L at UChicago Law when I started there as a 1L. He was also a summer clerk at the MBHB firm. I started at MBHB soon after Aaron left and actually took over his desk and sat next door to his classmate Aaron Barkoff of the Orange Book Blog. Also at the MBHB firm are the PhD’s who blog at Patent Docs (both Aarons hold PhD’s as well). I interviewed at Matt Buchanan’s (Promote The Progress) former Chicago firm, which is just across the Chicago River from Feigelson’s office. Matt has participated in several business ventures with Steve Nipper (Invent Blog) and Doug Sorocco (PHOSITA). Matt and I are also working on a project for this fall. My old firm also paid for my patent bar review course with PLI partially taught by Gene Quinn (IPWatchdog). I could continue…

88 thoughts on “Tuesdays with Aaron

  1. Oh, and I should add. As a consequence of them not speaking to the subject at hand, or really anything remotely comparable to the subject at hand, this is not “controlling law” on the subject. Referring to it thus is folly, and will be justly rewarded as such if you rely upon it. Good luck.

  2. I don’t recall the full content of this thread, as it has been like a month or two since I last addressed it. It seems as if I made a Bilski judgement as to a hypo claim and Noise spouted some nonsense out of nowhere, apparently with no motivation to do so (since he apparently wasn’t implying that I made a mistake, and I only imagined that was what he was doing). The conversation can jolly well end here since Noise doesn’t even allege that I’ve made a mistake, and all that I’ve said stands uncontested with regards to the hypothetical which was the original subject.

    However, it also appears that Noise still feels that the Alappat decision was undertaken in an attempt to set forth a general test for distinguishing between “machine” and “particular machine” even though the words “particular machine” appear no where in the entire decision. And even though there was no need to make such a distinction around that date, in so far as caselaw would have required it for some reason.

    Specifically:

    “So the point about the CAFC en banc Alappat decision as I posted is clearly pertaining to the general test for distinguishing between “machine” and “particular machine” dialogue, rather than to the explicit claims as 6 trounces forth. The Alappat holding is also something that 6 clearly does not believe should be Law as it does not confirm to his “extraordinarily smart brain” subjective view of the law (more on that later).”

    To which I reply, as above, that the “test” in Alappat is still good law, in so far as it has not been countermanded. Like I’ve said, the courts purpose in issuing the decision was to address the instant claims, and the rejections thereto. That of course does not limit the ramifications of the holdings put forth to support the decision they make. The “test” in Alappat deals with this subject specifically:

    “Given the foregoing, the proper inquiry in dealing with the so called mathematical subject matter exception to Section 101 alleged herein is to see whether the claimed subject matter as a whole is a disembodied mathematical concept, whether categorized as a mathematical formula, mathematical equation, mathematical algorithm, or the like, which in essence represents nothing more than a “law of nature,” “natural phenomenon,” or “abstract idea.” If so, Diehr precludes the patenting of that subject matter. That is not the case here.”

    That is to say, the “test” in Alappat is good for determining if the claimed subject matter as a whole is a disembodied mathematical concept. A worthy goal. And a worthy test to accomplish that goal since we can’t have Diehr running amok rendering perfectly valid claims invalid can we now? Certainly not.

    Furthermore, the “test” in Alappat relates to an erroneous holding by the Board. The board attempted to broadly exclude “general purpose digital computer “means” to peform the various steps under program control.” The CAFC tells us that such an exclusion of subject matter is improper: “this alone … does not justify holding claim 15 unpatentable as directed to nonstatutory subject matter. We agree.” Further the CAFC tells us why they agree: “We have held that such programming creates a new machine (note here, not a particular machine), because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions persuant to instructions from program software”. Thus putting forth the reasoning that such an exclusion of subject matter is improper because some of that subject matter has been held drawn to statutory subject matter in the past.

    Note here that there is no “test” for what makes a machine particular or not. There is only a “test” directed to what may be patentable. May.

    “Consequently, a computer operating pursuant to software may represent patentable subject matter, provided, of course, that the claimed subject matter meets all of the other requirements of Title 35.”

    A statement which does not rise to the occasion of stating that a computer operating pursuant to software does represented patentable subject matter, provided that the claimed subject matter meets all of the other requirements of Title 35.

    In sum, you see before you a classic example of an attorney taking language that has held that something is not forbidden in every single instance, and turning it into a statement saying that it is permitted in every single instance (with regards to 101) so long as it meets the terms given. Thus, the attorney believes this is a “test” as to what makes a general purpose computer statutory. Such is not the case. It is a statement which is permissive for only some instances, not every instance, of programmed general purpose computers (regardless of whether or not 112, 102/103 are satisfied). And there is no test recited as to what instances are appropriate. Neither is there a test recited in Bilski. There are hints, in so far as there is a statement regarding some instances which have been held to be proper, and what they were. Where they cite Freeman (Apparatus claim held to be patentable over the reasoning in Benson where it was to a specifically programmed assortment of structural characteristics of a general purpose computer) Noll (Again with the Benson contestation being reversed against the Board) and Prater (apparatus claim to a general purpose computer held nonobvious over the PTO simply saying that reprogramming a computer is obvious without citing any references at all, and basing the rejection on the basic principles of mathematics being used). All contain perfectly decent claims. None deal with the issue which you want them to. Accordingly, there is no test recited, and there is nothing pertaining to any hypothetical test you might craft from their reasoning, there is merely the CAFC addressing the issue of whether or not the broad rejection of subject matter the board would make is legally supported or not, and giving a justification why. Just like they told you, if you could be bothered to read.

    Bottom line is Noise, the court in Alappat didn’t come up with the “test” for which you so desparately search. And they didn’t lay down the groundwork for something to come later, at least not in sufficient detail as to be workable. All they did was confirm what had gone before them in so far as apparatus claims directed to an amalgamation of parts making up a general purpose computer and reciting specific functionalities thereof had been held proper under 101 so the broad’s broad exclusion it wished to make in Alappat had no basis. Gee golly. Big whoop. And no test to find a particular machine as put forth in the Bilski test.

    Sorry. It just isn’t.

    Again, Noise, bother yourself to understand the case before you before you bring it to me spouting off about what the caselaw has held, holds, or will hold. Find an instance where they address the issue at hand, and not some auxiliary issue with some sentence you can pluck out to support your position.

    I’m through educating you for today, this will have to suffice on this topic until you’re willing to pay. If this isn’t sufficient, you can pay me, or you can pay to go through the board, and up to the CAFC to have them tell you the exact same thing.

    I look forward to the case that justifies my opinion, and shows yours to be lacking. It will come in the next year. Mark my words.

  3. 6, Still spinning….

    Even when I plainly tell you what Alappat refers to, you come back with “presumably when I’m addressing the claim at issue..”

    Um, no, that would clearly be a wrong presumption. And only one that would be taken to create confusion with deceit or stupidity.

    “There is no “intent” to the Alappat caselaw other than to resolve Alappat’s case.”

    Spoken in true ignorance of what Case Law is and does. At this point, 6, any continual flapping on you rpart is clearly done (again) in either deceit or stupidity.

    “…but was intended to make me feel…”
    Your mistake. I care not at all about how you feel. Your ignorance served as an opportunity to disabuse those who may lean towards your twisted logic by presenting a STILL VALID point on what case law holds.

    Awesome googler without the ability to understand what you’ve googled. Someone else mentioned 6 as an example of USPTO training – here’s another example. Just another briar patch trick.

    ” I speak from up here – you speak from down here _ ”
    So completely full of yourself, and so completely wrong. Wait, you are only partially wrong. We are at two different levels, it’s only the relative direction you are off on and that’s easy to understand since any direction that you are headed must be “up” in your mind. Perhpas you can google the phrase “play the fool” and see yourself in the results.

    “It is decent law in so far as it hasn’t been countermanded” – In other words, if I can find any hint not to follow it, I like that hint. But “I don’t make my own law, I interpret the law as it is already” – and we can add 6′s thoughts “except for the parts that have direct holdings I don’t like….” Call it what you will – law and lawlol.

    “DOES NOT NECESSARILY MEAN that you can omit…” – yes, this is 6 addition to the direct holding of an en banc CAFC decision, …and fully meaningless. Omit, – nice try at snaring back to specific claims (and yet so predictable parlor trick 6).

    “What does the “cult of caselollaw” mean?” Wtf do you think it means? Pay attention.
    - pay attention to what? Give an understandable answer that I can pay attention to. Try to explain yourself without trying to “trick” people if you can get out of your own way.

    “When you soundbyte in context, is different than soundbyting out of context.” Translation, I think I’m always right, so my soundbyting is always right. I think you are always wrong, so you should not soundbyte.”

    Give the man some more rope – 6, did you not notice the phrase “under the law”?” Did you notice what precedes it? Context, that’s what.

    Let’s try this rope – you sound byted out of context. I put your sounbyte in context by supplying you with the critical phrase and even explained what that phrase does to your “logical” position. Your reply is that I have to pay attention to context. No 6, you have been caught (again) with your pants down playing your parlor tricks. Not that anyone believes your spinning (or can stop you from trying to spin out of this), but how is my adding context to your rendition of USC 151 “out of context”?

  4. “Other blog readers, please allow me some patience as I distinguish some of the folly of 6.”

    Like many lawyers before you, you then jumped straight into explanation without explaining why in the heck what you’re about to say is relevant and what it is relevant to. You initially say that your Alappat statement was just to establish a general rule, not that your statement should be taken to pertain to the claim at issue. There’s some bs, and then you work your way from various bs to outright lie. Let’s take a quick look.

    However, looking at your post:

    “6,

    As you well know (and choose to ignore), since Bilski refused to touch “specific machine”, the ruling case law is In re Alappat (We have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software).”

    You state that I am intentionally ignoring this, or forgot it, presumably when I’m addressing the claim at issue. I did not intentionally ignore it, I didn’t forget it, and your entire statement wasn’t just to establish the rule generally, it was designed to make me think I was mistaken about the claim at issue. I wasn’t. And I wasn’t ivo Alappat, I should add that I wasn’t even when we interpret it like you (wrongly).

    “Yet, 6 states “Are you daft?” and proceeds to apply Alappat directly to the claims and ignores the intent and meaning of the post and the Law.”

    There is no “intent” to the Alappat caselaw other than to resolve Alappat’s case. And as to your intent, plainly it was not to just set forth a general rule, but was intended to make me feel as if I mistakenly misapplied law to the claim at issue. Which of course is something that did not occur but that you implied occured anyway.

    “Well, 6, it is you that is wrong (again) and talking out of your behind (again). Busted (again) for misrepresenting what has been said as you apply (again) your favorite briar patch trick. ”

    The only briar patch trick on display here is you attempting to lawyerly your way out of a clear demonstration of how bad you are at practicing law, specifically the interpretation part, and how that reflects on others just like you, as well as your inability to simply fess up to it.

    “Utter nonsense. Point out the suggestion by many attorney bloggers that Allappat might be overruled. ”

    Sorry I didn’t favorite the pages. Take a look around, you’ll find it.

    Being the awesomest googler around these here parts I’ll help you out with some I can find in a few seconds:

    link to thefreelibrary.com…-a0189220012

    Here one writer/blogger whatever states that Newman’s dissent stated that portions of Alappat are in disagreement with the majority’s decision:

    link to fulbright.com

    And guess what? If those portions are in disagreement, then guess what that leads to? That leads to the portions on which you’re relying to be also in disagreement. Try reading Alappat to figure out why. (Here’s a hint, the statements made in Alappat were too broad, even the case that was under review was correctly decided based on the facts of the claim before the court. Consequently, much of your soundbyting relies on “precedent” that is improperly being asserted)

    One need only look, not question me for citations to back up everything I say. I speak from up here – you speak from down here _ at least make an attempt to come to my level before you question me and have me drag you up to my level.

    “What can you possibly mean by lumping the Allappat stuff under 1 and 2 above for your own purposes?”

    Wtf do you think? I consider the algorithm (if it is specified) as perhaps having made the device so specific that I can’t think of meaningful variation thereupon, or perhaps that the algorithm turned the device specified in the claim into something that performs a specific functionality. Jebus, it’s like playtime with a 2nd grader when I have to discuss things so simplistically with you. You remind me of many of your brethern, so don’t be too ashamed. Simply come to the light, you will receive mercy.

    “Jules correctly points out that 6 is out of his league trying to make his own law (we’ve pointed this out before with 6 and his choosing between what he considers law and lawlol)”

    As I’ve stated time and time again, I don’t make my own law, I interpret the law as it is already, and do it correctly rather than in concurrence with your bs interpretations. Interpretations that are being overturned with what must be alarming regularity you, in case you hadn’t noticed.

    “The Alappat holding is also something that 6 clearly does not believe should be Law as it does not confirm to his “extraordinarily smart brain” subjective view of the law (more on that later)”

    You forget that I’ve already addressed how Alappat doesn’t even hold what you espouse it to hold. It is decent law in so far as it hasn’t been countermanded, and in so far as it is taken in context.

    For kicks let’s revisit Alappat:

    “When independent claim 15 is construed in accordance with Section 112 Para. 6, claim 15 reads as follows, the subject matter in brackets representing the structure which Alappat discloses in his specification as corresponding to the respective means language recited in the claims:

    A rasterizer [a “machine”] for converting vector list data representing sample magnitudes of an input waveform into anti-aliased pixel illumination intensity data to be displayed on a display means comprising:

    (a) [an arithmetic logic circuit configured to perform an absolute value function, or an equivalent thereof] for determining the vertical distance between the endpoints of each of the vectors in the data list;

    (b) [an arithmetic logic circuit configured to perform an absolute value function, or an equivalent thereof] for determining the elevation of a row of pixels that is spanned by the vector;

    (c) [a pair of barrel shifters, or equivalents thereof] for normalizing the vertical distance and elevation; and

    (d) [a read only memory (ROM) containing illumination intensity data, or an equivalent thereof] for outputting illumination intensity data as a predetermined function of the normalized vertical distance and elevation.”

    Hmm, does that claim look like nonstat subject matter to you? I don’t think so. It meets the Bilski test, even using my “subtests” above, easily. What this portion of the decision:

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

    DOES NOT NECESSARILY MEAN is that you can omit all the various structural portions of the general purpose machine (just as Alappat did not omit them) and their various fuctionalities accomplished after programming. This however is a point that many attorneys miss entirely. I suspect that you are one of these. I’ve made this point before when I see people making this mistake. Here I’ll make it again, for your benefit. Again, potentially saving your clients thousands, if only you’ll pay attention.

    “it wasn’t your office”

    O rly? Who’s office is it? Yours? JD’s? No mor on, it’s mine. It has my name right next to the door.

    “What does the “cult of caselollaw” mean?”

    Wtf do you think it means? Pay attention.

    “It’s amusing to see 6 lambast soundbyting then in the same breadth do his own soundbyting.”

    When you soundbyte in context, is different than soundbyting out of context. Like you did in your statement of the “controlling law” of Alappat. Alappat isn’t even applicable to the claims at issue, there is no programming available to the general purpose machine.

    Just state that you were spouting off precedent for no apparent reason and I’ll be satisfied rather than making you state you were wrong. Even though technically you were, by bringing up precedent that isn’t even applicable to the instant case.

    “6, did you not notice the phrase “under the law”?”

    Did you notice what precedes it? Context, that’s what.

    I’m not going to bother with the rest of your nonsense that is merely a summation of what you spout outrageously all the time to get out of having to man up to the actual issues and accept the flaying you will receive when you do.

    See you in the next gen of CAFC decisions that adhere nearly directly to what I say little man.

  5. 6 is a tool alright, but not how you think.

    A tool for catching chicks, man. As 6′s wing man, my cup overflows and I lose many electrons out of the end of my wire.

    Usual place and time 6?

  6. 6,

    You are such a freakin tool!

    As Malcolm is “sound and fury signifying nothing”, his compatriot 6 is “sound and tricks signifying nothing”.

    Welcome to the briar patch. Misquoting and taking out of context to “prove” a point only diminishes the already low credibility of the rantings of 6.

    Other blog readers, please allow me some patience as I distinguish some of the folly of 6.

    At Apr 01, 2009 at 10:25 AM, 6 posted concerning “”Would you care to share with us your test for distinguishing between a ‘machine’ and a ‘particular machine’? Maybe the CAFC will adopt it in a future case.” Sure thing man.”…”
    Later in that post, 6 discusses a transformation prong, and only in that prong does 6 reference the claims of the overall thread subject.

    So the point about the CAFC en banc Alappat decision as I posted is clearly pertaining to the general test for distinguishing between “machine” and “particular machine” dialogue, rather than to the explicit claims as 6 trounces forth. The Alappat holding is also something that 6 clearly does not believe should be Law as it does not confirm to his “extraordinarily smart brain” subjective view of the law (more on that later).

    Yet, 6 states “Are you daft?” and proceeds to apply Alappat directly to the claims and ignores the intent and meaning of the post and the Law. Either this was purposeful (evil intent) or not (stupidity). 6 further states “Go ahead, I’m waiting. Just write down you were wrong, and talking out of your behind”. Well, 6, it is you that is wrong (again) and talking out of your behind (again). Busted (again) for misrepresenting what has been said as you apply (again) your favorite briar patch trick.

    6 posts at Apr 02, 2009 at 04:18 PM “You can also include a portion including the allappat stuff above for when the device whose particularity is in question has been programmed to perform a certain algorithm. You’ll be on shaky ground there though. It has been suggested by many attorney bloggers that Allappat might be straight up overruled. Personally I lump the Allappat stuff under 1 and 2 above for my own purposes, but you can feel free to include it as a another whole inquiry if it makes you feel nice inside.”

    Utter nonsense. Point out the suggestion by many attorney bloggers that Allappat might be overruled. Bilski explicitly did not overrule the en banc Allappat. What can you possibly mean by lumping the Allappat stuff under 1 and 2 above for your own purposes?

    Jules correctly points out that 6 is out of his league trying to make his own law (we’ve pointed this out before with 6 and his choosing between what he considers law and lawlol). Arrogant, god-complex 6 retorts “You’ll have to be more specific so I can demolish that position as well.” And “Not going to cut it in my office.” 6, your grasp of logic is so poor, the only demolishing going on is your credibility, and last I checked, it wasn’t your office. You do make a nice court jester though.

    What does the “cult of caselollaw” mean? It’s amusing to see 6 lambast soundbyting then in the same breadth do his own soundbyting. And getting that soundbyte wrong, abusing horribly USC 151. 6 would have that law mean that the examiner has complete subjective viewing power of whether an applicant is entitled to a patent (did I mention god-complex?). 6, did you not notice the phrase “under the law”? What pray tell, does that mean? It means exactly what you wish it did not. You do NOT have the authority to determine WHAT the law is, or is not, what is law and what is lawlol. It is precisely the congress and the courts (such as in Alappat) that put forth the holdings of what the law is. You are to follow that law, even if it does not agree with your little tiny world view.

  7. “Stick to your guns or lighten up on your 103′s?”

    I already lightened up on my 103′s because my primary talked me into it almost two years ago now. I am considerably lightened up. If something seems obvious under the statute to me though I will simply let them direct the case to go to allowance without my concurrance. And that is fine, I have no problem with it, and I’m sure they wouldn’t either. In the alternative they might direct me to make a new rejection or do something else. But they can usually persuade me if they don’t feel like any specific rejection isn’t up to par anyway so it is pretty much a moot issue. We’re pretty much on the same page over here. If anything, my current spe is probably more of an everything’s obvious type of guy than I am, but he gives me considerable flexibility if I want to allow something that is reasonable. Half the time lately as soon as I get the ok I get curious about something in the case and do another quick search somewhere new and find a 102 for the ind.

    “Well, 6, I am not prepared to scrutinize every one of your posts for a mistake in logic.”

    I doubted it. Your brethern that practice before me are not prepared to scrutinize every OA I send out for mistakes in logic either. Funny, that, wouldn’t you say? That is, after all, their job. What is funnier though is the amount they’re no doubt charging their client to do little besides get some manner of a response in on time.

  8. Well, 6, I am not prepared to scrutinize every one of your posts for a mistake in logic. I do appreciate your sense of duty. But I can’t help wonder whether you are just being hard headed, or whether you can see the issue from a perspective different than your own.

    So when your SPEs and directors start saying “issue more patents” (of course not formally) what do you do? Stick to your guns or lighten up on your 103′s?

  9. “So your job is to execute the laws, not write them or interpret them.”

    I concur, but I have to interpret the judicial decisions in order to perform that job correct? And what exactly do you find illogical anyway? You’ll have to be more specific so I can demolish that position as well. My “illogical” train of thought has carried the day quite often in actual practice, so why is it that you feel like an administrative agency making completely effective and unchallenged decisions is against what we’re here to do? My guess is you belong to the cult of the caselollaw don’t you? And I also bet you think you carry with you all the rights and priveleges that soundbyting from it bestows. Not going to cut it in my office. I paid to uphold USC 151 just as much as any other law.

    Since you’re new I’ll quote for you: “If it appears that applicant is entitled to a patent under the law, a written notice of allowance of the application shall be given or mailed to the applicant. The notice shall specify a sum, constituting the issue fee or a portion thereof, which shall be paid within three months thereafter.”

    That appearance that they mention, that is a subjective view. Guess who’s view they’re referring to? The court’s? Yours? No and no. They’re referring to mine, my spe’s, and the director’s.

    That’s the law, and I’ll be dam if I let you talk me out of upholding it so that you can have an easier time drafting claims.

    On the other hand if we were talking latte’s and smoothies… but of course not! Ethical violations!

  10. 6, as far as I can tell, not many people follow your illogical train of thought. Using your brain is all good and fine, and I applaud you for it. Have fun doing it on a blog. But you’re part of the executive branch while the USSC is part of the judicial branch. So your job is to execute the laws, not write them or interpret them.

  11. “Or, alternatively, you can provide us with a claim, and apply your test to show us how great it works.”

    You can apply it to any of the claims on this site. I could do it just as easily. You can also include a portion including the allappat stuff above for when the device whose particularity is in question has been programmed to perform a certain algorithm. You’ll be on shaky ground there though. It has been suggested by many attorney bloggers that Allappat might be straight up overruled. Personally I lump the Allappat stuff under 1 and 2 above for my own purposes, but you can feel free to include it as a another whole inquiry if it makes you feel nice inside.

  12. “As you well know (and choose to ignore), since Bilski refused to touch “specific machine”, the ruling case law is In re Alappat (We have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software).”

    Are you daft? The trip manaagement computer (the supposed particular machine) wasn’t the thing that did the algorithm, or was programmed with an algorithm. Allappat doesn’t apply to anything in the claim.

    Read this and tell me what specific algorithm made the trip management computer be a particular machine:

    “A method for providing fuel savings information, comprising

    receiving first data representative of a destination location;

    receiving second data representative of instant GPS location information;

    execution a fuel savings algorithm using the first data and second data, wherein said algorithm comprises the following steps (and I lay out the steps using the known prior art algorithms and the novel, non-obvious addition of my clients invention); and

    proving resulting data to trip management computer, where trip information represented in the resulting data is provided to the operator.”

    Go ahead, I’m waiting. Just write down you were wrong, and talking out of your behind and we’ll call it a day ok? I let lawyers off easy like that all the time. And I forsee it happening tomorrow in an interview I have scheduled.

    “So the mere fact that a “particular machine” today becomes common 5 years from now makes the subject matter of the claim suddenly (or gradually?) become nonstatutory? There has to be something wrong with a rule that works like this…”

    I concur, but then again, I think there is a lot wrong with Bilski. But, it is what we’ve got. And understand, it isn’t because the machine became common, it is because, presumptively, in becoming common, it now has a million variations, 10 years after the app was filed.

    Jules I’ll tell you how I came up with all of that, it is called using my brain. It is similar to, but not exactly the same as the often used “using my extraordinarily smart brain” that the USSC often uses. You really should try it out sometime. It works like a charm.

  13. It is said above:

    One of the oddest things dealing with the EPO is that when the logic is embedded in a chip it can be part of the technical solution, but when it is “software” then it can be taken out of the technical solution. It doesn’t make much sense and big tech companies burn a lot of money fighting the magical line.

    Can the writer clarify? Mr Mooney is accused of making light of the difference between 101 and 103. At the EPO, the distinction is clear. Art. 52 (Europe’s 101) bans computer programs as such, and is all about “technical character” while Art. 56 is all about technical features that solve an objective technical problem in a way that is not suggested by the prior art. Nothing there which to me constitutes “one of the oddest things”. Admittedly, it all depends on what you mean by “technical” but a “puzzle at the margin” in the words of an English judge, is not good enough to get rid of the otherwise elegant and efficient work of architecture that is Articles 52 to 56 of the EPC.

    And TRIPS tells us that patents are proper to fields that are “technology” so we have to struggle anyway with what that word means.

  14. 6, I don’t know where you came up with all that. The case law is new, and examiners just do what they’re told based on case law and the MPEP, not whatever rationale you can come up with in your head. Respectfully, if I were you, I’d try to keep it simple. Or, alternatively, you can provide us with a claim, and apply your test to show us how great it works.

  15. “…as time goes by that machine might become common and thus Bilski would hit the claim later in life…”

    So the mere fact that a “particular machine” today becomes common 5 years from now makes the subject matter of the claim suddenly (or gradually?) become nonstatutory? There has to be something wrong with a rule that works like this…

  16. 6,

    As you well know (and choose to ignore), since Bilski refused to touch “specific machine”, the ruling case law is In re Alappat (We have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software).

  17. Dennis – Patents used to issue at 12 noon on Tuesdays. Are you sure it is now 12:01 am, rather than pm? Jim Hawes

  18. “Would you care to share with us your test for distinguishing between a ‘machine’ and a ‘particular machine’? Maybe the CAFC will adopt it in a future case.”

    Sure thing man. Generally speaking, you ask yourself the following questions (there might be more you can ask):

    Does the term used to describe the machine bring a specific machine to mind that you can’t really think of meaningful variation thereupon? (this is probably the best kind of particular machine language, but the rarest used of course)

    Does the term describe a machine that performs a specific functionality? (This of course is one of the worst types of ways to describe a particular machine because this method of describing it will probably be called into question)

    Does the term describe a brand new machine that has never before been seen? (This one is debatable because of course as time goes by that machine might become common and thus Bilski would hit the claim later in life, also note you probably can’t rely on the new machine to distinguish a method claim from the prior art methods).

    This has been another episode of helping attorneys. It is kind of a pro bono persuit of mine. I’m a real community service minded person.

    “For what it’s worth, I would consider an argument that the hypothetical claim above meets the transformation prong of the test, which Bilski actually did discuss. Like the x-ray data in Abele, which the Bilski court discussed favorably, the data crunched in this method “clearly represent[s] physical and tangible objects,” i.e., the data represents current position and target position for a GPS receiver. The transformation prong will need some elaboration in future cases as well.”

    I considered that, but I don’t see any transformation. There could hypothetically be one in the algorithm, but it hasn’t been specified yet.

  19. West Coast Guy: read link to 1201tuesday.com and look at some of the examples of particular machines that he gives. It doesn’t make much sense to one skilled in the art, but the PTO finds it magical to recite words that describe a particularly machine like a car navigation determiner.

    One of the oddest things dealing with the EPO is that when the logic is embedded in a chip it can be part of the technical solution, but when it is “software” then it can be taken out of the technical solution. It doesn’t make much sense and big tech companies burn a lot of money fighting the magical line.

    MM: define the difference between an algorithm and a method. A physical machine with gears that carries out an information processing method is not more definate then a electronic machine. Functional claiming and method claiming of machines is something that occurs in EE, CS, and mechancial apps. Your attitude towards patents, MM, goes back to before Deener. So, that would put your understanding of patent law at sometime in the early 1800′s.

    Here’s a discussion by adults that don’t work for the PTO management about information processing methods:
    link to judson.blogs.nytimes.com

  20. “I’m going to remind you, just for lols on my side, that Bilski says little about a ‘machine’ but says a lot about a ‘particular machine’.”

    Really? Is there a new version of Bilski that I missed? Because as I recall, Bilski repeated the phrase ‘particular machine’ over and over again, but actually said essentially nothing about what that phrase means. In particular, as I recall, Bilski said: “[I]ssues specific to the machine implementation part of the test are not before us today. We leave to future cases the elaboration of the precise contours of machine implementation, as well as the answers to particular questions, such as whether or when recitation of a computer suffices to tie a process claim to a particular machine.”

    Would you care to share with us your test for distinguishing between a ‘machine’ and a ‘particular machine’? Maybe the CAFC will adopt it in a future case.

    For what it’s worth, I would consider an argument that the hypothetical claim above meets the transformation prong of the test, which Bilski actually did discuss. Like the x-ray data in Abele, which the Bilski court discussed favorably, the data crunched in this method “clearly represent[s] physical and tangible objects,” i.e., the data represents current position and target position for a GPS receiver. The transformation prong will need some elaboration in future cases as well.

  21. 6,

    “I probably just saved your clients thousands (if not tens of thousands or even hundreds of thousands) in prosecution fees, they should send me a small stipend. They can send mails to me at examiner6k@yahoo.com

    Check’s in the mail.

  22. “Not in my opinion. The method is tied to a machine, i.e., the trip management computer, which for this hypothetical is not a general-purpose PC. ”

    I see, so you have a detailed explanation in the spec that specifically defines the term as not reading on my computer at home. Ok.

    “Here, I’ll define a machine to be “an electrically or electronically operated device for performing a task.”"

    What does that have to do with anything? I’m not questioning if it is a machine, I’m questioning if it is particular.

    I’m going to remind you, just for lols on my side, that Bilski says little about a “machine” but says a lot about a “particular machine”.

    I probably just saved your clients thousands (if not tens of thousands or even hundreds of thousands) in prosecution fees, they should send me a small stipend. They can send mails to me at examiner6k@yahoo.com.

  23. 6,

    “Bilskied?”

    Not in my opinion. The method is tied to a machine, i.e., the trip management computer, which for this hypothetical is not a general-purpose PC. Here, I’ll define a machine to be “an electrically or electronically operated device for performing a task.”

    I would believe that this claim would be unpatentable subject matter under 101 and Bilski without the “providing” element tying the data generated to a machine. Without this element, then the final result is just an execution of algorithms without putting the result towards some utility.

  24. “The following meets 101, doesn’t it, when I claim:

    A method for providing fuel savings information, comprising

    receiving first data representative of a destination location;

    receiving second data representative of instant GPS location information;

    execution a fuel savings algorithm using the first data and second data, wherein said algorithm comprises the following steps (and I lay out the steps using the known prior art algorithms and the novel, non-obvious addition of my clients invention); and

    proving resulting data to trip management computer, where trip information represented in the resulting data is provided to the operator.

    Bilskied?

  25. “So, you disagree with Diamond v. Diehr”

    No, not insofar as Diehr holds that the mere recitation of an algorithm renders a process or article unpatentable. However, if the algorithm is, in fact, the only inventive limitation in the claim, then the claim is dead.

    I don’t care if it dies under 101 or 103. Some people pretend that it matters. It doesn’t.

  26. >>So, you disagree with Diamond v. Diehr,

    It’s better not to discuss cases with MM. He prefers to pontificate and then run away when someone takes the time to refute his ridiculous statements.

    MM will be back to make the same statements again in another thread. He generally just wants to wear you down. He doesn’t put any work into his posts.

  27. Malcolm,

    “Correct, and no.”

    So, you disagree with Diamond v. Diehr, i.e., the case which held the process for curing rubber which includes in several steps the use of a mathematical formula and a programmed digital computer was patentable subject matter under 101?

  28. Noise above Law,

    “WCG – surely you realize that there is no difference between 101 and 103 to Malcolm”

    I often sense that Malcolm commingles the two.

  29. “This isn’t patentable subject matter under 101 in your opinion? Would it matter to you if the fuel savings algorithm applies two-dimnesionally to cars and three-dimensionally to planes (i.e., altitude)?”

    Correct, and no.

  30. “Also, if I understand your reply, the issue is not a 101 issue but now a 103 issue.”

    WCG – surely you realize that there is no difference between 101 and 103 to Malcolm.

  31. Malcolm,

    “It can’t be relied on, however, as a means of distinguishing the claim from the prior art.”

    I disagree. Also, if I understand your reply, the issue is not a 101 issue but now a 103 issue.

    Previously, my client formulated a new algorithm for saving fuel on a trip, and I disclosed it in the spec. The algorithm receives instant GPS data and final coordinates of the destination, and makes it fuel saving calculations on the fly. The algorithm is executed by a processor, and the resultant data set imparted functionality on the trip management computer such that the driver was provided with new instructions to travel.

    No one else has developed this algorithm, and it has been built on a (assuming) non-obvious combinations of algorithms known to PHOSITA.

    The following meets 101, doesn’t it, when I claim:

    A method for providing fuel savings information, comprising

    receiving first data representative of a destination location;

    receiving second data representative of instant GPS location information;

    execution a fuel savings algorithm using the first data and second data, wherein said algorithm comprises the following steps (and I lay out the steps using the known prior art algorithms and the novel, non-obvious addition of my clients invention); and

    proving resulting data to trip management computer, where trip information represented in the resulting data is provided to the operator.

    This isn’t patentable subject matter under 101 in your opinion? Would it matter to you if the fuel savings algorithm applies two-dimnesionally to cars and three-dimensionally to planes (i.e., altitude)?

    Note that I am not claiming the algorithm per se (just like Morse cannot claim electromagnetism), but I am claiming a useful product of the algorithm (just like Morse can claim the generation of electromagnetism). But according to you, because I cite an algorithm in an element of a claim it cannot survive 103 (assuming a non-obvious combination with a novel algorithm)?

  32. WCG “While I’ll agree with you that an algorithm per se cannot be patented, you certainly cannot disagree with me that an algorithm can be included as an element of a claim.”

    I don’t disagree with that. It can’t be relied on, however, as a means of distinguishing the claim from the prior art.

  33. “No. You can’t patent algorithms.”

    Hmm, last I checked, “algorithms” are methods and methods are patentable.

    Odd sense of Deja Vu – Malcolm, you have already been schooled on this topic.

  34. MM: Quickly, you and I argued about the algorithm for making recommendations. If the software is just so easy and “gobbledygook” why don’t you write it and make a few hundred million dollars? Let me see, is it because you, once again, have no idea what you are talking about?

  35. Malcom,

    “No. You can’t patent algorithms.”

    While I’ll agree with you that an algorithm per se cannot be patented, you certainly cannot disagree with me that an algorithm can be included as an element of a claim. For example, after receiving data representative of GPS coordinates:

    “execute direction algorithm using successive GPS coordinates;”

    or

    “execute a Kalman filter algorithm using successive GPS coordinates;”

    then, doing something very novel using the results of such calculation such as providing steering signals to a vehicle or visual representation to a driver.

    With my example, I disagree with your statement:

    “And you shouldn’t be able to obtain patent protection for an algorithm by burying the algorithm in a bunch of computer-related gobbledygook. Court decisions appearing to reach the opposite conclusion are simply wrong. They are misguided efforts to make it easy to obtain broad software patents, which is why there is so much crap out there (e.g., claims that recite acts of “considering” an outcome as their final steps….!!?!).”

    I think you’re direction your frustration with business method patents and not those that use a processor to accomplish something other than computer business methods, correct? Without a programmed microprocessor, my client’s vehicle control business would not exist.

  36. “shouldn’t the inclusion of the algorithm for each means or step be sufficient?”

    No. You can’t patent algorithms.

    And you shouldn’t be able to obtain patent protection for an algorithm by burying the algorithm in a bunch of computer-related gobbledygook. Court decisions appearing to reach the opposite conclusion are simply wrong. They are misguided efforts to make it easy to obtain broad software patents, which is why there is so much crap out there (e.g., claims that recite acts of “considering” an outcome as their final steps….!!?!).

  37. “If you’re correct, then it sounds to me that these should be read as means-plus-function claims”

    Perhaps except that if you look behind the curtain there is no “structure” sufficient to meet the requirements of 112P6, properly read. You’ll just find MORE means-plus-fxn type language, e.g., the determiner is a “processor.”

    “case law for software means-plus-function claims requires an algorithm to be taught in the specification as the accompanying structure”

    And there we find another one of those bizarre handouts: a bullet hole shot into the whiskey barrel because the James Gang is thirsty. The bartender doesn’t mind. Gte them addicted and next time they might show up with real money.

    Bets?

  38. Malcolm,

    “In contrast, the typical software claim skips the structure and claims the function. The closest analogy to a mechanical implementation would be: “A machine for determining whether X is equal to Y, comprising a determiner part that measures X and compares it to Y, wherein if X is equal to Y, then said determiner part stores said result in a storing part.”

    If you’re correct, then it sounds to me that these should be read as means-plus-function claims because they’re “expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof[.]”

    Shouldn’t claims like the example that you’ve quoted be construed under 112 construction priciples? That is, since case law for software means-plus-function claims requires an algorithm to be taught in the specification as the accompanying structure, shouldn’t the inclusion of the algorithm for each means or step be sufficient?

  39. “It just seems to me that there is perhaps room for patentability of some truly innovative logical design”

    I agree that there is room in our universe for a government-implemented system for promoting “innovative logical designs” but I think the PTO is not up to that task now, has never been up to the task before, and will take several decades at least to reach a state where it is up to the task, and will require a complete re-write and/or introduction of (more)major “exceptions” to existing patent laws to make it happen. The state of patent law and the PTO will get far worse before it gets any better if this is chosen route to “protecting” “innovative logical designs.”

    Or the soft IP industry can lobby Congress to pass some special laws just for its benefit and do an end-around “the system”. See, e.g., the DMCA.

  40. “In the real world, everyone agrees that the quoted claim is crap.”

    I understand and agree that most software claims are crap. It just seems to me that there is perhaps room for patentability of some truly innovative logical design and that it should not matter if you implement that logical design in brass and steel or Java.

  41. “Why is the one patentable and the other, modern equivalent, arguably not”

    A properly claimed mechanical device that could perform a novel “if then” function is described structurally, with the physical relationship of the device’s parts defined with enough particularity that no functional language is needed in the claim, i.e., when the claimed structure is built, it works.

    In contrast, the typical software claim skips the structure and claims the function. The closest analogy to a mechanical implementation would be: “A machine for determining whether X is equal to Y, comprising a determiner part that measures X and compares it to Y, wherein if X is equal to Y, then said determiner part stores said result in a storing part.”

    In the real world, everyone agrees that the quoted claim is crap. In the Magical Software Whiner Land, such a claim is treated as if it were written by a god whose integrity, ingenuity, and importance to the survival of civilization as we know it can never be questioned.

  42. “MM: Who is the bigger wanker, the wanker that designs a machine, or the wanker that spends most of his life using the machine?”

    Just define “considering” for in light of that specification, Obi Wanker Kenobi.

  43. >>in software to run on general purpose hardware.

    Good catch Big Hairy Rat. Software is a specification for a machine. The hardware nothing more than a slave that implements the machine specified by the software. See Johnny Von Neumann.

    MM: Who is the bigger wanker, the wanker that designs a machine, or the wanker that spends most of his life using the machine?

  44. “US Patent No. 6,097,812 and its 67-year prosecution history”

    What is interesting about this patent is it appears to be a mechanical implementation of an algorithm. Nowadays we would implement that same algorithm in software to run on general purpose hardware. Why is the one patentable and the other, modern equivalent, arguably not

  45. “One skilled in the art, (as I am both from experience and education), would say that “considering” has a pretty clear meaning.”

    So what does “consdering” mean to a skilled software wanker, NWPA?

    Please cite the relevant passages in the specification when you provide your answer.

    This is going to be a lot of fun.

  46. “And you conclude this based on your years of experience as a professional claim drafter? ”

    I conclude it based on his being an amateur irl. If you’ve ever dealt with him you’d know.

    I swear to g od I could not figure out what was wrong with amatuer for the life of me lol. I should have slept a bit more last night. End of the quarter date cases ftl :( Which brings up the most unfair thing about allowing cherry picking. Someone will get stuck with a crp ton of sht of the sht cases that are “date cases” aka “cases so badly written/cited so many refs that nobody will pick them up” at the end of the quarter. Actually this happens to several someones, but not to everyone. Specifically, those that are falling behind will not get stuck with (as much of) this type of pile of sht.

    Oh, and Bigguy, it doesn’t take a claim drafting expert to tell when a claim is horribly drafted. Although I wouldn’t level that charge against Kia, he does ok.

    “Particularly when you don’t have the facts.”

    I just said that it was likely, I didn’t say that it was a fact. And don’t think I’m critisizing, he’s a cool guy in my book, prosecuting all as many apps as he has, and from what I can see, he does most by himself (though the apps themselves might be attny drafted). Like I say, he’s probably the best non attny pro se out there.

  47. “More likely it was drafted this way because good ol’ Kia, while perhaps the best amatuer [sic] claim drafter in the business, is still an amatuer [sic].”

    And you conclude this based on your years of experience as a professional claim drafter? Just a tip – don’t assume that experience rejecting claims is equivalent to experience drafting them. The required skill sets are more than a little different.

  48. >>More likely it was drafted this way because >>good ol’ Kia, while perhaps the best amatuer >>claim drafter in the business, is still an >>amatuer.

    Sure is easy to criticize other people’s claims. Particularly when you don’t have the facts.

  49. “It was probably claimed like this because different protocols treat trusted and untrusted in different ways, so this is just a category to capture the different ways this may be implemented. ”

    More likely it was drafted this way because good ol’ Kia, while perhaps the best amatuer claim drafter in the business, is still an amatuer.

  50. >>g) in the event of a match, considering the >>untrusted chip and the data message to be >>valid; otherwise considering the untrusted >>chip and the data message to be invalid.

    One skilled in the art, (as I am both from experience and education), would say that “considering” has a pretty clear meaning.

    I would would look at the code that is performing information processing for the chip and the data message. It would be clear if there was a distinction being made between trusted and untrusted.

    It was probably claimed like this because different protocols treat trusted and untrusted in different ways, so this is just a category to capture the different ways this may be implemented. It would obvious to one skilled in the art whether the information processor was considering a chip trust or untrusted.

    Start putting up some of the biotech claims and I can make them seem silly when taken out of context.

  51. “You’re just one of the regulars here who changes his name whenever it suits him,”

    Probably because his posts are getting deleted. Yet your garbage continues unabated.

    Hmmmmm.

  52. Why is the post in my email from Patentlyo not on the website? It deserves comment, as there is a significant difference between a 30 month PCT date and a run of the mill abandonment…

  53. Judge Mooney, I had thought that claims must be analyzed as a whole, and not just on a single limitation?

  54. “But it proves the rule: analysis of claims under 101 is not about magic words that render claims PATENTABLE. It’s about magic words that render claim worthless.”

    Now “worthlessness” is another 101 test, Mr. Mooney?

  55. Um, question. Being lazy on a Saturday and not feeling like looking on Pair, what was the reason for allowance? Was it a breath-takingly new algorithm or the application of a 100 year old encryption system to chip verification? What is the chip limited to in the spec? Any untrusted chip is really vague. Does this cover my Amex smartcard, my PTO RFID badge, my EZ-pass for the Jersey turnpike, or just RAM chips for 286 processors? And why isn’t this chip limitation from the spec in the claim to avoid this whole conversation?

    Though they are the blogs favorite pinatas, 6 and MM have valid concerns about the claim scope.

  56. A claim that ends with a mental step is a claim to an abstract concept. It is indistinguishable from a “purely” mental process (i.e., any method of observing a phenomenon and thinking a particular thought about it).

    This is just reality. The “everything is patentable” crowd hates it when a claim limitation is ignored but watch them beg to ignore the “considering” limitation in this instance.

    But it proves the rule: analysis of claims under 101 is not about magic words that render claims PATENTABLE. It’s about magic words that render claim worthless.

  57. Malcolm says “Any claim which has as its final step the action of “considering” whether something is to be labeled X or Y is invalid under 101.”

    Is this a new test which you have added onto the Bilski tests, Judge Malcolm?

  58. “A method of considering something. It’s unbelievable. ”

    That’s the way I feel about the “determining” limitations, especially when the determining is done by a human. Though I’m not so against this particular limitation in this claim as you seem to be.

  59. “Yes, if you pull the word “chip” completely out of its context, you can raise all kinds of speculative questions about what it might or might not mean, and about whether it’s “particular” or not. ”

    Out of its context? Alright, I will give you that perhaps this claim has some context because of what goes on inside of the chip, so perhaps that is the case in that claim (though even with that said, the chip still reads on general purpose chips so long as a certain output popped out of it), but that is not even nearly always the case. Its very specific context in my cases is “any chip under the sun”.

  60. The usual two questions: (1) who care if the claim above is patenable or not? What difference does it make to anybody except the patentee if such claims are patentable?

    (2) What difference does it make whether its unpatentable under 101, 103, or 112? Who cares? Why the fuss?

    This stuff is garbage.

    A method of considering something. It’s unbelievable.

  61. “The Silverbrooke claim above may have problems, but statutory subject matter is not one of them.”

    Any claim which has as its final step the action of “considering” whether something is to be labeled X or Y is invalid under 101.

    Period. End of discussion. You can wank your away around this problem (Judge Newman would) but you’ll be wrong. Every. Time.

  62. “I’m aware of the Benson context, and you’re aware that that limited context has not limited determinations on generic computers thus far in the cases we’ve seen from BPAI, and will likely see from CAFC.”

    Actually, I’m not so aware. Exactly which BPAI cases have invalidated method claims implemented with a “generic computer” where the claims were not simply abstract processes or fundamental principles slapped on to a computer?

    With all due respect, your last post is pretty typical of the responses to arguments I’ve been getting lately from the PTO. Yes, if you pull the word “chip” completely out of its context, you can raise all kinds of speculative questions about what it might or might not mean, and about whether it’s “particular” or not. The same if you pull the words “server,” “program instructions,” or “system” out of context. Fortunately, as far I’ve seen, the BPAI still appears to know that the claim has to be looked at as a whole.

    The Silverbrooke claim above may have problems, but statutory subject matter is not one of them.

  63. “You think the chip’s serial number has to be in the claim?”

    Um, not all chips have serials.

    “Sounds pretty tangible to me.”

    Tangibility has nothing to do with it being a particular machine so far as I know.

    “untrusted chip, not a generic chip.”

    Um, an untrusted generic chip. Being trusted or not doesn’t make a chip more or less generic.

    “You really do have to read all of the words, not just the ones that you like.”

    I do thx.

    “Context, 6, context. Here’s how Bilski quotes Benson: “[The claims] purported to cover any use of the claimed method in a general-purpose digital computer of any type.” ”

    I’m aware of the Benson context, and you’re aware that that limited context has not limited determinations on generic computers thus far in the cases we’ve seen from BPAI, and will likely see from CAFC.

    “Now, go look at the Silverbrook claim again. Is it fair to say that this claim is directed to a fundamental principle, and that the claim is just slapped onto a computer to make it look machine-oriented?”

    I’m not alleging the ol’ fundamental principle, or the insignificant post solution activity. I’m alleging that the chip is not particular.

    “The claim is quite clearly tied to the untrusted chip,”

    Now if the chip is particular then it is all good, but the chip isn’t particular so we have a bit of a problem.

    The only question is, how is one’s subjective opinion of a chip (it being untrusted) supposed to make the chip more or less particular? What if the claim simply said “a chip”? That is my real beef, as I see that in my cases occasionally so it is relevant to me. The same goes for “unknown chip” or a “chip with x unknown property”.

  64. “In any event, you believe that a generic chip is a particular machine?”

    It certainly can be. You think the chip’s serial number has to be in the claim? In any event, the claim recites an untrusted chip, not a generic chip. You really do have to read all of the words, not just the ones that you like.

    “What if the chip is just a block of Si with a trace?”

    Sounds pretty tangible to me. And in this case, without getting into the wisdom of choosing the claim term “considering,” I bet this method would result in a determination that such a chip is invalid.

    “Seems to me like you couldn’t hardly describe a ‘chip’ in a more generic fashion than ‘a chip’, I mean any more abstract and you’re just saying ‘a device’. Sht, if a general purpose computer isn’t a particular machine, how the f can a general purpose chip be one?”

    Context, 6, context. Here’s how Bilski quotes Benson: “[The claims] purported to cover any use of the claimed method in a general-purpose digital computer of any type.” This is in the context of a discussion about trying to claim “fundamental principles.” Bilski’s take on Benson is simply this – you can’t make a method claim directed to a fundamental principle patentable simply by slapping it on a computer, because the claim is still not really about the computer.

    Now, go look at the Silverbrook claim again. Is it fair to say that this claim is directed to a fundamental principle, and that the claim is just slapped onto a computer to make it look machine-oriented? No, it’s not. The claim is quite clearly tied to the untrusted chip, and would make no sense absent the untrusted chip.

  65. “Tuesday…a special day for patent attorneys?”

    Not sure if you would get much agreement on that. By the time Tuesday rolls around, most real patent attorneys I know are hitting their stride for the week and could care less about the particular Tuesday that the patent that is issuing on the Notice of Allowance that crossed their desk months before.

    “the IP blogging community is interconnected”

    I once read PatentlyO and POSITA on the same day I felt really interconnected. And nobody paid for my patent bar review course because I didn’t need one.

  66. “considering the untrusted chip and the data message to be valid; otherwise considering the untrusted chip and the data message to be invalid.”

    yes, “considering” is a poor choice of claim terms– difficult to prove whether infringed

  67. “For those of you who don’t know, the IP blogging community is rather inter-connected”

    Plus, all of the aforenamed attorneys are members of the Council For Foreign Relations. :-)

  68. “For those of you who don’t know, the IP blogging community is rather inter-connected”

    Coincidentally, I just learned that Malcolm is my evil twin and we were separated at birth.

  69. Just an FYI about that errant “Microsoft” patent. Appears to be an example of sloppiness on the part of the practitioner — the PTO will take whatever you put in the Issue Fee transmittal as gospel. In this case, the PTO did not have any assignment information, but the parent application is assigned to Cerys Systems, Inc. (Chino, CA).

  70. “The claim doesn’t recite an ‘unknown chip.’ Your rejection is improper – please try again.”

    Maybe I wasn’t referring to this claim in particular…

    In any event, you believe that a generic chip is a particular machine? What if the chip is just a block of Si with a trace? Seems to me like you couldn’t hardly describe a “chip” in a more generic fashion than “a chip”, I mean any more abstract and you’re just saying “a device”. Sht, if a general purpose computer isn’t a particular machine, how the f can a general purpose chip be one?

  71. I suspect that 12:01 am on Thursday morning is another special time for patent attorneys, since that is when the USPTO timely publishes the newest batch of pending patents. (I had one published this month.) Usually, that should be well over 3,000 each week.

    So, who wants to blog it?

  72. “Good ol’ Kia begs the question, is a ‘chip’ a particular machine?”

    In the context of this claim, almost certainly. Why do you doubt it?

    “What about an ‘unknown chip’?”

    The claim doesn’t recite an ‘unknown chip.’ Your rejection is improper – please try again. (Malcolm’s rejection is better.)

  73. All you need to know about the claim is this:

    “considering the untrusted chip and the data message to be valid; otherwise considering the untrusted chip and the data message to be invalid.”

    You’re going to sue me for considering something?

    Try again, m0r0n.

  74. “U.S. Patent No. 7,509,292 Authentication of consumable items

    Assignee: Silverbrook Research Pty Ltd.

    1. A method for validating the authenticity of an untrusted chip, the method includes the steps of:

    a) generating a random number and applying an asymmetric encrypt function to the random number using a public key to produce a first variable;

    b) passing the first variable to the untrusted chip;

    c) receiving a third variable together with a data message read from the untrusted chip, the third variable having been generated, in the untrusted chip, by a process including:

    d) decrypting the first variable with an asymmetric decrypt function using a secret key to produce a second variable, the public and secret keys being a public-private key pair;

    e) applying the asymmetric encrypt function to the second variable together with the data message using the secret key to produce the third variable;

    f) decrypting the third variable with the asymmetric decrypt function and using the public key to generate a fourth variable and comparing the fourth variable with the generated random number and the received data message;

    g) in the event of a match, considering the untrusted chip and the data message to be valid; otherwise considering the untrusted chip and the data message to be invalid.

    (Indentation as in original. Go parse it yourself.)

    Good ol’ Kia begs the question, is a “chip” a particular machine? What about an “unknown chip”?

  75. In the comment above, I read “You sound like another one of those pathetic whiners” and immediately knew it was another of Malcolm’s comments.

  76. “Just to nip this thread in the bud… my blog is not about finding crap. It’s about finding interesting stuff. There are plenty of *positive* examples in there, too….”

    *Yawn*

    Remember that popular TV show called “America’s Least Wanted”?

  77. “Jebus that’s like being able to patent the wheel. You just about know that patent has got to be worth something.”

    Actually, the patent goes towards an old Engima-style mechanical cryptography machine. Completely worthless nowadays, both for the specific invention and the general technique. Furthermore it’s owned by the US government via the NSA, not exactly a renowned patent-litigation machine.

  78. Wow.. a simple blog roll would have been fine… But this is great. Thanks, DC.

    Just to nip this thread in the bud… my blog is not about finding crap. It’s about finding interesting stuff. There are plenty of *positive* examples in there, too, such as claims that did a good job of avoiding Bilski’s rigors, and from which we can learn nice prosecution approaches. I’ll try to make sure that’s highlighted in future posts.

    -aaron

  79. Shorter “Scaremonger callout”: Don’t look behind the curtain!

    “Sounds like a another big firm attorney generally against patents”

    You sound like another one of those pathetic whiners who complains whenever raises the possibility that the PTO issues a significant number of crappy patents EVERY WEEK. But we all know that you’re not really “another one”. You’re just one of the regulars here who changes his name whenever it suits him, and quite likely one of the regulars who sporadically trashes “anonymous” posters like yours truly for not using their “real names.”

    But I digress.

    Thanks for the tip, Dennis. That’s a great blog: thought-provoking, accurate, and well-written. Along with other sources, it’s a good place to point those who like to pretend that “the swing patent” is some irrelevant, misleading anomaly or “the only example” that “everyone” points to as evidence for PTO sloppiness and/or patent inanity.

    Of course, no real surprises there for us who have been paying attention for years. Finding examples of recently issued or published invalid garbage does not take long. Writing ABOUT crap claims takes ten times longer than writing crap claims for the simple reason that anybody can write the latter. You don’t even need to be an attorney (and I don’t mean to imply that attorneys typically write well).

  80. “6,097,812 and its 67-year prosecution history (thanks to a very long lasting secrecy order). ”

    “7,343,660″

    Jebus that’s like being able to patent the wheel. You just about know that patent has got to be worth something.

  81. Sounds like a another big firm attorney generally against patents…(nothing against Aaron)

    I think we are all aware of the problems in the patent process that are unavoidable… But to scoff at them and the brandish them (because they were “too interesting to keep to [himself]” – please!) does not solve problems and promote useful information like this website does.

Comments are closed.