IN DEFENSE OF SOFTWARE PATENTS – PART 2

Guest Post by Martin Goetz

 

Back on November 30, 2009, Patently-O published my article “In Defense of Software Patents” in response to the editorial “Abandoning Software Patents” by Ciaran O’Riordan, Director of End Software Patents (posted on Patently-O on November 6, 2009) which had as its premise that software companies are trying to protect “software ideas”.

 

In this article I comment on the Bilski Opinion as well as give some concrete examples of software-only patents as well as hardware/software patents. Also, my previous article received hundreds of comments, many being negative, and part of this new post is in response to those negative comments.

 

Since the June 28th Supreme Court Bilski decision there have been many articles[1] on what the Opinion stated and inferred about the patentability of software.

 

The Opinion restated what previous Supreme Courts concluded: that laws of nature, physical phenomena, mathematics, mathematical formulas (by themselves), algorithms (by themselves), and abstract ideas (which would include software ideas) are not eligible for patent protection.

 

While the Bilski Opinion never directly questioned the patentability of software, the Justices wrote extensively about the meaning of Section 101, the meaning of the term “process” and why the test for patent eligibility should not exclusively be “the machine-or –transformation test”. Justice Kennedy, with the concurrence of all other Supreme Court members, wrote that the Information Age puts innovation in the hands of more people and raises new difficulties for the patent law (and the Patent Office) to determine who should or should not receive patent protection.[2]

 

My November 2009 Patently-O article “In Defense of Software Patents” produced hundreds of comments. Many wrote that they were against the patenting of software because software was an “algorithm” or “mathematics”. In that article my primary argument was that a computer software invention is as patentable as a computer hardware invention and the only difference is the mode of implementation. My thesis was that Software Product companies in the Software Industry are looking to patent a machine process and not a computer program, which is protected by the copyright law. I showed why software product companies can be viewed as high technology manufacturing entities and should be just as eligible for patent protection as computer hardware companies.   

 

In this article I give examples of patents where the preferred implementation of an inventive machine process is in software (via a computer program[3]), hardware (via circuitry), or a combination of both software and hardware.

 

There is little argument that “processes” and “machine processes” are patentable subject matter[4] The question has always been about the nature of software and what one is trying to patent. For over 40 years I have been involved in that argument since I received the first software patent in 1968 for an innovative way to sort large amounts data on a computer that had tape drives that could only read and write data in a forward direction (See Patent # 3,380,029, Sorting System, Issued April 23, 1968).

 

The Sorting System patent was dubbed a software patent but it could also have been a computer hardware patent. It was dubbed a software patent solely because the preferred implementation (the disclosure) was a logic chart (which is recognized by the patent office as a proper disclosure). My Sorting System patent would not have been controversial if the disclosure had been hardware circuitry since there were many hardware patents for sorting data on special-purpose computers and special apparatus. In my patent application I referenced six of those patents which all had unique hardware circuitry in their patent disclosure. Three of them are available online, courtesy of Google Patent Search[5].

 

From 1968 through 1980 my previous company, Applied Data Research filed Amicus briefs in the Prater & Wei, Benson, Johnson, Flook, and Diehr cases in which we argued that a machine process patentable in hardware is equally patentable in software. Here is exactly how we posed a “Question of Law” “in our 1980 Diehr brief:

Whether a computerized machine or industrial process that is patentable subject matter under 35 USC 101 when constructed with a hardware program (wired circuits) would also be patentable subject matter when constructed with a stored computer program (i.e., firmware or software)?

The USPTO is currently in agreement with that “Question of Law” when in 1996 it published its Examination Guidelines for Computer-Related Inventions (Final Version).  The Guidelines stated in its Introduction the following: “The Guidelines alter the procedure office personnel will follow when examining applications drawn to computer-related inventions and are equally applicable to claimed inventions implemented in hardware or software.”

 

In that 1980 Diehr brief we also posed the following argument to the Supreme Court:

An inventor demonstrates his new invention to his patent attorney with great pride; he has developed a cabinet for reading books out loud to the blind. The cabinet contains both a reading and talking computer. After the demonstration, the patent attorney responds:

 

What's inside the cabinet? Did you build it with software or hardware (a stored program or hardware circuitry)? If built with a hardware program, your machine would be patentable. But if you built it with a stored program, the Patent Office would say it was merely mathematics and, therefore, unpatentable.”

The example above of a hypothetical “cabinet for the blind” invention was back in 1980 in our Diehr Amicus brief.

 

Twenty years later, in 2000, a renowned inventor, Ray Kurzweil received a patent named Reading System which Reads Aloud From An Image Representation Of A Document. The patent disclosure shows a diagram of a monitor, scanner, speakers, and a PC computer composed of a processor, storage and a keyboard. The essence of the disclosure and the invention is a logic chart describing a machine system which interacts with a speech synchronizer and the various devices.  

 

The first sentence of the abstract in the patent stated “a reading system includes a computer and a mass storage device including software comprising instructions for causing a computer to accept an image file generated from optically scanning an image of a document.”

 

At that time, Ray Kurzweil’s company, Kurzweil Educational Systems marketed a special purpose hardware/software system called the Kurzweil 3000 Reading Machine which was marketed to the blind and poor readers. Their 2000 year patent protected this product from imitators. Today the company sells a software only system called Kurzweil 3000 and continues to have the protection of the patent system thru his original 2000 patent and with additional patents e.g., Reducing processing latency in optical character recognition for portable reading machine (which is a software-only patent).

 

Few would argue that the Kurzweil 3000 Reading Machine was not an invention and not deserving of a patent.

 

While I am a strong advocate for software-related patents I have always been opposed to the patenting of Business Method Patents (BMPs). In my 2006 article Patents: Where's the Invention? I stated that the Patent Office should do what the European Patent Convention did when it  ruled that anything that consists of "schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers" is not an invention and therefore not patentable.” Justice Stevens, in his Opinion[6] also wanted to ban BMP’s from being patentable subject matter when he concluded that a method of doing business is not a “process” under 101.

 

Although the Bilski Opinion disallowed the Bilski application they stated that under certain conditions business methods could still be patentable subject matter. On July 27th the USPTO set up more stringent rules for the issuance of BMPs in their Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos. In many ways those guidelines are similar to the way computer software and hardware patents are currently being treated under the 1996 Guidelines for Computer-Related Inventions.    

 

One of the greatest challenges facing the Patent office today for BMPs, software or hardware patent applications is in discovering prior art and determining if there is an invention. The USPTO “Peer to Patent” pilot project” which  allows the public (including professionals in their respective fields) to comment on patent applications is still in its infancy, but offers the potential to assist the Patent Office in rejecting the large number of applications that are filed each year. The stated goal of the pilot project was to “connect the USPTO to an open network of experts online.”   Also, private companies e.g., the Article One Partners, a patent research firm, have the potential to significantly reduce the large number of patent litigation cases.

 

In conclusion, while I am a strong proponent of software patents I am very aware, and agree with, many of the arguments against patents because of patent trolls, frivolous patents, e.g. Amazon’s one-click patent, and frivolous patent litigation that can put companies out of business. And I support changes in the Patent Law to reduce those problems. But if one believes in the how the Patent System has fostered innovation and helped the US grow and prosper, then there is no rational reason to eliminate technology inventions that use software as its implementation.

 

In my previous article there were many comments from die-hards that continued to believe that software companies are trying to patent a computer program,  Whether those die-hards still  believe that a computer program is mathematics, or a mathematical formula, or an algorithm, or an abstract idea, so be it. Computer software programs are not what software companies are trying to patent. A software patent invention is on a unique machine process —- nothing more and nothing less. And the criteria should be 1. Innovation 2. A proper disclosure and 3. Usefulness — the same requirement that is the criteria for all patentable subject matter.



[1] Click below for a sample of many of these articles. Reading the Bilski Tea Leaves For What The Supreme Court Thinks Of Software Patents Comments on Bilski and Software Patents; Here's Bilski: It's Affirmed, But . . .No Decision on Software Patentability; Supreme Court Decision Raises Software Patent Questions; Supreme Court 'Bilski' ruling doesn't rule out software, business-method patents; Software patent debate rages on; Software, pharmaceutical, and business method patents survive; Patent Office Says No to Supreme Court and Software PatentsDeath Knell For Software PatentsSoftware Is Not Necessarily Business MethodSoftware Patents and Business Method Patents Still Possible after Bilski Supreme Court Decision.

 

[2](Underlining and bold added) (pages 9 & 10) “The machine-or-transformation test may well provide a sufficient basis for evaluating processes similar to those in the Industrial Age—for example, inventions grounded in a physical or other tangible form. But there are reasons to doubt whether the test should be the sole criterion for determining the patentability of inventions in the Information Age. As numerous amicus briefs argue, the machine-or-transformation test would create uncertainty as to the patentability of software, advanced diagnostic medicine techniques, and inventions based on linear programming, data compression, and the manipulation of digital signals. See, e.g., Brief for Business Software Alliance 24– 25; Brief for Biotechnology Industry Organization et al. 14–27; Brief for Boston Patent Law Association 8–15; Brief for Houston Intellectual Property Law Association 17–22; Brief for Dolby Labs., Inc., et al.”

 

The Opinion went on to state:

It is important to emphasize that the Court today is not commenting on the patentability of any particular invention, let alone holding that any of the above-mentioned technologies from the Information Age should or should not receive patent protection. This Age puts the possibility of innovation in the hands of more people and raises new difficulties for the patent law. With ever more people trying to innovate and thus seeking patent protections for their inventions, the patent law faces a great challenge in striking the balance between protecting inventors and not granting monopolies over procedures that others would discover by independent, creative application of general principles. Nothing in this opinion should be read to take a position on where that balance ought to be struck.

[3] While the implementation is in a computer program, the disclosure for one skilled in the art, are thru flow charts (also called logic charts) and thru block diagrams.

[4]. The Bilski Opinion closely examined the meaning and the words of 35 U.S.C 101. From 35 U.S.C. 101: Inventions patentable: Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent there for, subject to the conditions and requirements of this title.

[5] The Sorting Patents below were described thru and/or gates, and as methods and apparatus for sorting data. Sorting Device, Fillebrown, 5/1961 #2,985,864; Sorting Apparatus, Guerber, 5/1960 #2,935,732; Apparatus for sorting of Recorded Digital data, Dirks 3/1966 #3,242,466.

 

[6] (page 15) Because the text of §101 does not on its face convey the scope of patentable processes, it is necessary, in my view, to review the history of our patent law in some detail. This approach yields a much more straightforward answer to this case than the Court’s. As I read the history, it strongly supports the conclusion that a method of doing business is not a “process” under §101.

 

606 thoughts on “IN DEFENSE OF SOFTWARE PATENTS – PART 2

  1. “Here’s a fun little hypothetical for general discussion. Suppose you claim “a computer-readable medium containing instructions which, when executed by a general-purpose computer, cause the general-purpose computer to perform actions A, B, C.” That’s a good Beauregard claim, right?

    Now, suppose I have a computer hard-wired to perform actions A, B, C when it receives an image of the Magna Carta as an input. The computer otherwise behaves as a general-purpose computer in every imaginable way. Does the Magna Carta infringe your claim?”

    No.

    A computer hard-wired to perform actions A, B, C when it receives an image of the Magna Carta as an input is hardly a “a general-purpose computer”, is it? That’s before you even try to construe “instructions”.

  2. It is sad that basic patent law eludes the likes of 6 and MM.

    For example, take a claim directed to a computer-readable medium (i.e., the language commonly found in a Beauregard claim). Before you can analyze whether or not it passes muster under 35 USC 101, you first have to construe the language. Luckily, there are tens of thousands of patents out there that give descriptions of a computer-readable medium.

    However, you don’t need to read anymore than a couple of those patents to realize that a computer-readable medium includes such things as a hard drive, memory, DVD. As such, a computer-readable medium can be considered an article of manufacture and/or a machine. When you look at it using this very straight-forward approach, it is clear that a computer-readable medium is directed to statutory subject matter.

    Now what really gets MM and 6′s pant-ies in a knot is that Beauregard claims use what appears to be method steps in the body of the claim (i.e., MM’s ‘recipe’). However, the case law is clear that there is nothing inherently wrong with defining some part of an invention in functional terms – i.e., the alleged method steps are functional limitations. These functional limitations impart a different structure onto the computer-readable medium. If you think otherwise, take a blank DVD, put it into your computer, and try to upload the latest version of Microsoft Word from that DVD.

    In short, a Beauregard claim is simply a claim directed to a part of a machine and/or an article of manufacture, and the particular language recited therein is a functional manner of claiming.

    Cut and dry basic stuff, which is why the USPTO acquiesced on this claim language 15 years ago. No matter the repetitive moaning and wailing of MM over the years (and it has been many years) is going to change this.

    BTW – In re Beauregard was simply a follow-on to In re Lowry, which issued the year before. Although In re Beauregard was not a decided Federal Circuit case (instead, it was a remand from the Federal Circuit after the USPTO agreed that the claim language at issue was statutory), In re Lowry was and the Federal Circuit made it perfectly clear that a data structure (e.g., a computer program) stored in memory (i.e., a computer-readable medium) is statutory subject matter.

  3. Ned: After reading the Federal Circuit’s opinion in In re Nuijten (2007) (“signals” are neither machines, articles of manufacture, compositions or processes), it is quite apparent to me that Beauregard claims would not survive such an appeal.

    2007? Please, Ned, spare us your outdated industrial-age ramblings. Get with the times, man!

    What the Federal Circuit didn’t say in Beauregard is still not the law, and it’s time we all accepted that. Thank you for opening my eyes, Les.

    Ah Pook: Anyone who refuses to acknowledge any meaningful difference between a recipe book and a CD-ROM with MS Office on it cannot possibly contribute anything useful to this debate.

    Nor can anyone who refuses to acknowledge any meaningful difference between a human-readable page in a recipe book and a person actually making bread.

    Here’s a fun little hypothetical for general discussion. Suppose you claim “a computer-readable medium containing instructions which, when executed by a general-purpose computer, cause the general-purpose computer to perform actions A, B, C.” That’s a good Beauregard claim, right?

    Now, suppose I have a computer hard-wired to perform actions A, B, C when it receives an image of the Magna Carta as an input. The computer otherwise behaves as a general-purpose computer in every imaginable way. Does the Magna Carta infringe your claim?

    Or, in keeping with our “computer age”, should it now be called the Electromagna Carta?

  4. >What I miss is how relentless she was about >rubbing it in Malcolm’s face. She was like a >pitbull to Malcolm’s toy poodle.

    Those were the days. We could call Malcolm a ba$boon and NAL would shoo him back into the jungle.

  5. “The meaning of the case law as it currently stands needs to be understood, because it’s the law.

    If there are policy reasons for amending the case law, those should be considered. But until the case law is amended, it means what it means.

    Me quoting me quoting IANAE.

    Ya just gotta love that quote – just the right balance of sympathy and ha-in-your-face-read-it-and-weep dem’s da breaks.

    And it suits dem actual dust kickers – those be the ones throwing out the recipe analogies. Talk about some serious smoke screen.

    IANAE, I hopes ya don’t mind me borrowing it for the current points on Printed Matter Doctrine do ya? Iza think I could use it also for beauregard, but that might be a little different. But sunshine chuckles Malcolm can get enough mileage outa the PMD.

    Why isn’t David Boundy upset about this?

    Um, that be easy – because he focuses on real issues with real data – ya ever notice how no one, not even my man IANAE ever has a comeback against the HMS Boundy? That man is a juggernaut. Malcolm and 6 (natch enough) be wanting him to focus on somethin that aint a real issue and somethin that simply aint flountin no law.

    I missed this the first time through this morning: “Too bad that never happened…. and NAL’s fondness for revising history

    Malcom – pure chuckles – especially after she nailed you for you doing exactly what you be claiming she done – with like a four page series of date stamped quotes. I be too busy today, but Iza know I got that faved somewhere.

    What I miss is how relentless she was about rubbing it in Malcolm’s face. She was like a pitbull to Malcolm’s toy poodle.

  6. And another tidbit from the Robotic computer brain that I am.
    If Congress thinks that weakening the Patent System is the answer, shutting out the little guy with the flashes of genius. They had better rethink this strategy. If the problem with Chinese Knock offs has been a problem, you ain’t seen nothing yet, if you stop American Genius from flourishing.
    Imagine an American product for 15.00, that creates Jobs, turns the wheel, is then overrun by a chines knock off for 3.00. that is also covered in lead. Or some other substance that enters the child’s body, that leaves us with a country full of Mcdonalds employees, while China swoops in and keeps us at that level.
    Awesome don’t you agree? Awesome for China. Go ahead make their day.

  7. I wonder why.

    Because I done tol ya, Homey don’t do answers.

    But chucklehead, I do make some mean observations. I done observe that Big D’s last post on this subject, the one implicating the magic hat band case, also provided a couple of other case law cites for ya. Most high tech stuff do appear to be similar to magic to those without a clue.

    One of those cases lays out the argument clear as day – the argument even stems from none-computer arts, but the case law be pretty powerful. Clearly, this be somethin that irked ya way back then and it be somethin that has consumed your soul ever since. It aint goin away sunshine.

    I’ll leave the actual case law citin to Ned. He be awful quiet lately and hasn’t had much to say other than chasin his ghosts.

    But it be good readin, layin out the Printed Matter Doctrine and very importantly the edges of that Doctrine.

    Finally, I do miss NAL in at least this area. Her unrelenting trouncing of you was pure chuckles. She even got you trying to claim there was no such doctrine.

  8. Anyone who refuses to acknowledge any meaningful difference between a recipe book and a CD-ROM with MS Office on it cannot possibly contribute anything useful to this debate.

  9. AI:
    “Molding raw rubber is a process.
    Making potash is a process.
    Blasting flour is a process.
    Not only do all these processes represent patents for inventions under each category, they are all steps for conducting business because that is what all patents do.
    Yes, none of the aforemetioned inventions can come into existence and be reduced to practice for the purposes of examination without going through the steps (process) for conducting business.
    So when you argue that methods of conducting business should not be eligible for a patent you are essentially arguing that processes, the heart and core of all inventions, should not be eligible for patents.”

    Thanks for re-stating your point and for proving mine.

  10. So an Idea is stolen, and it enters the International Market. Then it too is hijacked by another that has many missing parts. But it is recorded on the USPTO web as allowable?
    And if the USPTO is not guilty of anything, then why are they allowing themselves to be Hijacked by Two attorneys, and their Marketing Counsel, that are either in cahoots. or arguing over who stole it first.Or if the second one was ever necessary in the first place. And if the second one obviously missing huge parts, then it is as i first thought. the Blue Eyed baby is recorded, or it can be.
    And if Congress knows the story. WHATS up with that?

  11. I used the language I did because inherent in any license agreement or sale of a patent or patented article is the threat of litigation (e.g., if you don’t take a license we’ll sue you).
    [...]
    I posit that the risk factors involved in litigation and overt threats thereof are much higher than for voluntary license agreements and sales, and therefore despite the comparatively small number of patent lawsuits those are the dominant terms.
    James Daily, above

    Perhaps I’m missing something, but this seems to just make your argument worse, as you now seem to be contradicting yourself. If you make the assumption that an implied threat of litigation is present in all cases (as you do explicitly), then you can hardly claim that only those cases that actually proceed to litigation are to be counted.

    Further, suggesting that only such high-profile conflicts are relevant is like suggesting that stealing five dollars from one million people has no cost, because none of the individuals is sufficiently motivated to expend the costs for attempted recovery.

  12. “Also, Dennis, may I suggest that you find someone to write a post titled,

    IN DEFENSE OF BUSINESS METHODS”

    good idea!
    Posted by: fish bones | Sep 14, 2010 at 07:49 PM

    ____________________________

    My defense of business methods is to state there is no reason to have a defense because there is nothing to defend. There is no such thing as a business method patent.

    A business method is simply a process and nothing more. All inventions are process inventions at their conceptions and remain processes at their core. The four categories are processes, machines, manufactures, and compositions of matter.

    If we have learned anything from the quantum age and the success of the hadron collider it is that all these categories are interdependent.

    Anything that can be manufactured requires a process. Yet a machine can be manufactured or operated, and used in new and different ways.

    In order for any composition of matter to exist and be used it requires a continuous process.

    Computer software is a process.

    A recipe is a process.

    Molding raw rubber is a process.

    Making potash is a process.

    Blasting flour is a process.

    Not only do all these processes represent patents for inventions under each category, they are all steps for conducting business because that is what all patents do.

    Yes, none of the aforemetioned inventions can come into existence and be reduced to practice for the purposes of examination without going through the steps (process) for conducting business.

    So when you argue that methods of conducting business should not be eligible for a patent you are essentially arguing that processes, the heart and core of all inventions, should not be eligible for patents.

    And that my friends would throw us back into the age of the Amish. Which is fine if you are of that cult. But Actual Inventors prefer the cult of capitalism and all it’s riches.

    Long Live Patents!

    God Bless America!!

  13. “”6″ needs to take a look at the hugh patent pools of Intellectual Ventures, RPX and others to get an idea how valuable software patents are. ”

    That’s how valuable they are now with only you guys out there to challenge them. Were I to enter private practice… well, I can’t comment on anything in specific you know. You could at least let a patent hawk loose on em before you trouble me with them.

  14. “6″ needs to take a look at the hugh patent pools of Intellectual Ventures, RPX and others to get an idea how valuable software patents are.

  15. I wrote a rebuttal to this before it was officially published, I gather that Martin hit the wrong button, published it before he meant to, and then removed it. I was under the impression that it was removed for other reasons, but I have a nasty, mean, suspicious mind.

    For those interested my rebuttal is here. Yes, I did confirm that what I responded to was in the final article, all that I was missing was the footnotes. Even the grammatical errors are still there.

    Wayne

  16. Posted by: IANAE | Sep 15, 2010 at 11:03 AM: No, AI’s missing a completely different point. He’s saying “every physical object is a method of doing business because you could sell it”, which is about as absurd as saying “every algorithm is a composition of matter because you could write it down on a computer-readable medium”.

    ________

    Silly IANAE, Strawmen are for kids.

  17. What I would like to see is NAL come back and send you running up the hill again

    Too bad that never happened. I remember what did happen though (Hint: I’m still here, and you seem to share both NAL’s inability to articulate why the printed matter doctrine establishes the validity of Beauregard claims and NAL’s fondness for revising history).

  18. “What I would like to see is NAL come back and send you running up the hill again with your skirt in hand.”

    Update about NAL. I ate her. She’s gone. Well, more like a part of me now.

  19. As far as I know, no court has considered the patentability of a Beauregard claim. After reading the Federal Circuit’s opinion in In re Nuijten (2007) (“signals” are neither machines, articles of manufacture, compositions or processes), it is quite apparent to me that Beauregard claims would not survive such an appeal. In fact, Judge Linn was highly critical of the patent office position that the “unpatentable” signals in Nuijten could be made patentable by simply reciting that they be recorded on a machine-readable medium.

  20. Posted by: Les | Sep 15, 2010 at 05:26 PM: and a recipe is not abstract…a recipe is a method for doing something….making bread or making Crestor…or making stainless steel. A recipe is as concrete as any method can be.

    _________

    Well said! Notice no one will even dare try and refute it.

  21. ping has been invited to bring it on, but he refuses.

    I wonder why.

    Posted by: Malcolm Mooney | Sep 15, 2010 at 05:12 PM
    ____________

    What I would like to see is NAL come back and send you running up the hill again with your skirt in hand.

    Good Times :-)

  22. Posted by: Malcolm Mooney | Sep 15, 2010 at 05:03 PM

    AI: Any applied process that produces novel, new and unexpected results is patentable

    MM: This is false, of course.

    AI: Oh really? Can you cite one issued valid process patent that when applied does not produce novel, new and unexpected results?

    MM Exhibit A, demonstrating that AI is a goalpost-moving, dishonest hack.

    __________

    Typical Malcolm. When intellectually backed into a corner with reason and facts come out swinging with the ad hominems.

    Here’s some advice. Just don’t get into this particular debate, especially with an Actual Inventor. Because as you can see, its always gonna end badly for you.

  23. “Isn’t a tardface abstract?”

    Well I think Lester Jester exists. I could be wrong about that tho.

    “Why isn’t David Boundy upset about this? This wildcat behavior by the PTO has led to an incredible waste in office resources and a backlog that affects everybody. ”

    Seriously, his pa nties are disturbingly undisturbed by this massive flaunting of the lawl.

  24. Les Software instructions are the gears in the machine and should be just as patentable as a particular arrangement of gears and levers that made a mechanical adding machine work. Any ruling that written text isn’t patentable did not contemplate the computer age and you should not cling to those outdated rulings.

    Ah, nice to see the truth sort of leaking out here. So the UPSTO is ignoring “outdated” rulings when it issues Beauregard claims. I agree.

    Why isn’t David Boundy upset about this? This wildcat behavior by the PTO has led to an incredible waste in office resources and a backlog that affects everybody.

  25. and a recipe is not abstract…a recipe is a method for doing something….making bread or making Crestor…or making stainless steel. A recipe is as concrete as any method can be.

  26. “Because you can’t patent recipes. Recipes are abstract, or printed matter if you prefer. You can patent things (machines, manufactures, compositions of matter), and you can patent doing things (methods). Giving a person or a computer instructions on how to carry out a method doesn’t make you the “real thief”. It makes you an inducer of “theft”, and not even that until an actual “theft” happens.

    If the method is patentable, the method is to be claimed. The patentee may exercise the usual recourse in the usual way against anyone who practices the claimed method. Same as any non-computer method.”

    You are playing with semantics based on rulings made in the industrial age…

    Software instructions are the gears in the machine and should be just as patentable as a particular arrangement of gears and levers that made a mechanical adding machine work. Any ruling that written text isn’t patentable did not contemplate the computer age and you should not cling to those outdated rulings.

    Anyway…computer readable media with instructions is different than just text on paper. The computer readable media is a component of the machine. If ya ask me, an Xbox 360 don’t to anything worthwhile if it ain’t got the Ace Combat 6 disc in the drawer.

  27. Me Valid apparatus claims are tied to bona fide structures. That’s how we can examine an apparatus and have a good idea as to whether that it infringes an apparatus claim, even without seeing the apparatus in action.

    Cynical The first half of this is something of a tautology

    But it’s not, actually. I was going to write “all apparatus claims are tied to a bona fide structure” but then we risk being side tracked when a doofus finds some crxp claim that isn’t.

    The argument that IANAE, 6 and I are making about Beauregard is not a complicated one. It’s straightforward.

    NWPA’s “argument” is that instructions are structures. That’s a self-serving load of hooey with no basis in fact or law.

    ping keeps referring generally to the “printed matter doctrine” as if the mere recitation of those three words is some sort of magic spell that will cause everyone to believe that Beauregard claims can be coherently and legally justified. Fortunately, ping is wrong. If there is some “there” there in ping’s beloved doctrine, we haven’t seen it. ping has been invited to bring it on, but he refuses.

    I wonder why.

  28. AI: Any applied process that produces novel, new and unexpected results is patentable

    MM: This is false, of course.

    AI: Oh really? Can you cite one issued valid process patent that when applied does not produce novel, new and unexpected results?

    Exhibit A, demonstrating that AI is a goalpost-moving, dishonest hack.

  29. >What prey tell, do you think that those claims >to instructions on computer readable mediums >preempt tardface? All uses of the abstract >instructions floating in thin air? Hmmm, yeop. >Bilski 4 lief!!!!

    Isn’t a tardface abstract?

  30. “There might be claims do a computer readable medium with instructions…but not “abstract” instructions floating in air. ”

    What prey tell, do you think that those claims to instructions on computer readable mediums preempt tardface? All uses of the abstract instructions floating in thin air? Hmmm, yeop. Bilski 4 lief!!!!

  31. Les: I have never seen patents directed solely to that.

    You’ve never seen a Beauregard claim?

    Les: There might be claims do a computer readable medium with instructions…but not “abstract” instructions floating in air.

    How is it any different to write the instructions down? Sure, the piece of paper you wrote them on is statutory, but the piece of paper is known in the art and is not your invention. Instructions written on paper are abstract because you would infringe the patent merely by possessing that piece of paper, even if you never carried out any steps at all.

    Les: if you agree that the method is patentable, why do you have a problem with a claim to computer readable media, so the inventor can go after the real thief?

    Because you can’t patent recipes. Recipes are abstract, or printed matter if you prefer. You can patent things (machines, manufactures, compositions of matter), and you can patent doing things (methods). Giving a person or a computer instructions on how to carry out a method doesn’t make you the “real thief”. It makes you an inducer of “theft”, and not even that until an actual “theft” happens.

    If the method is patentable, the method is to be claimed. The patentee may exercise the usual recourse in the usual way against anyone who practices the claimed method. Same as any non-computer method.

  32. Cy,

    IANAE be looking over his shoulder for the Nazguls.

    C’mon guys – you just starting to see the genius that is sarah? She be tha Thing!

    Printed Matter Doctrine be all the structure ya need.

    Wassa matta IANAE – you didn’t like my quote of the law? They be your words – why you having such trouble with them now – Oh I get it – you be on the wrong side of the fence. Sorry – my bad.

  33. I see the difference. I have never seen patents directed solely to that. There might be claims do a computer readable medium with instructions…but not “abstract” instructions floating in air. You can only go after the infringing software author on the basis of contributory infringement on a method claim, unless you can show he ran the code to test it…if you agree that the method is patentable, why do you have a problem with a claim to computer readable media, so the inventor can go after the real thief?

  34. >>Please explain it to NWPA.

    OK. I get it now. You don’t like components of machines that are functionally related to the machine and that cause the machine to perform a method. Those components with structure are not ok by you.

    OK.

  35. Les: That goes for “software patents” that claim methods of doing things too.

    Right. I don’t have a problem with software patents that claim methods of doing things.

    The problem is with software patents that claim instructions for doing things. You know, the ones that are infringed by a piece of paper with a program written on it, even though the piece of paper is never actually read by a computer and the process is never actually carried out. The ones where you don’t have to actually perform any method at all to infringe.

    It’s the difference between “a method for making bread products” and “instructions for making bread products”. You do see the difference, right? Please explain it to NWPA.

  36. I wrote earlier about what could be applied facts. The feds just busted a store in china town. they sold 693 units,, purses. maybe 67932 units. I don’t know Chinese.
    but in my home town the fFlea Market sold 6789000 units. And my sisters group of home parties amde a killing of 45334 this month. where does that put the USA? Answer. HAHAHHA. you’ve got to be kidding me.The USPTO then steals an Idea from a person that doesn’t have much. But the promise was real to buy it. In the mean time the Home Partys’. And the Chinese underground are working like ANTS. They have made 6, 778,445. And the input was 23,556. Are Design Patents viable? Yah for the Chinese. They belong in Copyright. The USPTO needs to understand cash flow only works when it flows in! And design Patents don’t belong in the USPTO! Raise the cost of each unit. JUST DO IT!

  37. “You don’t infringe until you actually make some bread products. ”

    Of course not. You don’t infringe any method until you actually perform the method. That goes for “software patents” that claim methods of doing things too.

  38. IANAE: … functional terms in an apparatus claim don’t define structure unless they’re means-plus-function terms.

    I’m pretty sure this is wrong. The cases cited in MPEP 2173.05(g) don’t appear to agree.

    Mooney: Valid apparatus claims are tied to bona fide structures. That’s how we can examine an apparatus and have a good idea as to whether that it infringes an apparatus claim, even without seeing the apparatus in action.

    The first half of this is something of a tautology. The second half suggests a test that has no basis in law.

    Both of you guys can do better.

  39. Looks like broad protection for recipes to me:

    It’s not protection for recipes at all. Look at all the claims. You don’t infringe until you actually make some bread products. No recipe book that you could ever print could possibly infringe, unless you somehow printed it on bread products.

    Making bread products is not abstract. Instructions for making bread products are abstract, whether computer-readable or not. That’s why you may patent the former but not the latter.

  40. >>That is recipe.

    You are loopy.

    And, MM, that it recites structure is the same argument that the method steps recite structure.

  41. IANAE -

    Looks like broad protection for recipes to me:

    1. A method for making an open top bread by a sponge and dough process, said method comprising:

    incorporating potassium bromate as an aqueous solution, as well as incorporating ferrous sulfate and ascorbic acid in powder form independently of the aqueous solution of potassium bromate, in a step of forming a sponge in the sponge and dough process, to prepare a bread dough; and

    baking the bread dough in an uncovered baking pan to make the open top bread;

    wherein the baked open top bread is free from residual bromate or has residual bromate at a level below 1 ppb, and

    the amounts of said potassium bromate, ferrous sulfate and ascorbic acid are 8-15 ppm, 10-20 ppm, and 10-30 ppm, respectively, based on a total wheat flour required to prepare the bread dough.

    2. The method according to claim 1, wherein the ascorbic acid is partially or completely coated with a fat or a mixture of a fat and a mono-glyceride fatty acid ester.

    3. The method according to claim 1, wherein the bread dough is baked at a temperature of from 160 to 180° C.

    4. The method according to claim 1, wherein the potassium bromate is incorporated in an amount of 10 ppm to 12 ppm based on the total wheat flour required to prepare the bread dough.

    5. The method according to claim 1, wherein the ascorbic acid is incorporated in an amount of 20 ppm to 30 ppm based on the total wheat flour required to prepare the bread dough.

    6. The method according to claim 1, wherein an amount of wheat flour used to form a sponge ranges from 50 to 80% by mass of total wheat flour required to prepare a bread dough.

    7. The method according to claim 1, wherein the sponge is fermented at a temperature of 26° C. to 29° C. in the step of forming a sponge.

    8. The method according to claim 1, wherein the sponge is fermented for 4 to 6 hours in the step of forming a sponge.

  42. IANAE -

    Looks like broad protection for recipes to me:

    1. A method of making bread products without using shortenings and/or oils comprising:

    substituting waxy barley flour for said shortenings and/or oils in bread dough which is baked to make bread products.

    2. A method of making bread products without using shortenings and/or oils as described in claim 1, which further includes mixing said waxy barley flour in a bread base such as a white bread base or a bran bread base, and then mixing said bread base with wheat flour, water, and yeast to make said bread dough for making said bread products.

    3. A method of making bread products without using shortenings and/or oils as described in claim 2, wherein said waxy barley flour is made from processed and unprocessed, hulled and nonhulled waxy barley.

    4. A method of making bread products without using shortenings and/or oils as described in claim 3, wherein said bread base includes an amount of waxy barley flour in the range of 35 to 60 percent by weight of said bread base.

    5. A method of making bread products without using shortenings and/or oils as described in claim 4, wherein said bread dough comprises waxy barley flour in the range of 15 to 40 percent by weight of said bread dough for making said bread products.

  43. >>Come on, what/where is the structure? Point to >>it.

    Instructions that make the computer execute the method described. That is structure.

    >>to bona fide structures.

    That is a bona fide structure. The rest of your nonsese is nonsense. All claims that I know of include many structures that would infringe. Nice blowing smoke though. That should be added to the MM cookie recipe. The MM cookie blows lots of smoke when you bite into it.

  44. AI: Any applied process that produces novel, new and unexpected results is patentable

    MM: This is false, of course.

    AI: Oh really? Can you cite one issued valid process patent that when applied does not produce novel, new and unexpected results?

    MM: Moreover, you can count the business methods that produce an “unexpected result” on one hand.

    AI: And if that were true what would it prove exactly?

  45. Malcolm: Moreover, you can count the business methods that produce an “unexpected result” on one hand.

    Even giving them one finger would be generous.

  46. AI: Any applied process that produces novel, new and unexpected results is patentable

    This is false, of course. Moreover, you can count the business methods that produce an “unexpected result” on one hand.

  47. Ah Pook wrote: “AI, your argument seems to be: “All industrial manufacturing processes are, in some sense, methods of doing business. All industrial manufacturing processes are eligible for patent protection. Therefore, all methods of doing business are eligible for patent protection.”

    You may (or, for all I know, may not) be an Actual Inventor, but if you can’t see the flaw in that argument then you sure ain’t an Actual Logician.

    ______

    Well that’s not my syllogism it’s yours. So maybe you are the one that is or is not an Actual Logician. But who cares right? As an Actual Inventor I deal in real world facts. And by citing patent No. 5,841 I simply and quite eloquently demonstrated the fact that, for centuries, it was considered well established by the Courts that a series of steps for conducting business was, in itself, patentable.

    Now you seem to implie with your syllogism that since all my examples of series of steps for conducting business, that were granted patents by the Courts were of the industrial manufacturing sort, then only industrial manufacturing processes are the type of business methods eligible for patent protection.

    The only problem with your logic is the Courts have never held such a position, not even in Bilkski, so its an outright false conclusion.

    In fact quite the opposite is true. As I pointed out up thread, the Courts have confirmed what their precedents and the statute has always held,

    “Any applied process that produces novel, new and unexpected results is patentable. And that includes methods of conducting business.”

  48. NWPA There are many structures that infringe all apparatus claims.

    Again with the dust kicking and ignorance of fundamental facts. Valid apparatus claims are tied to bona fide structures. That’s how we can examine an apparatus and have a good idea as to whether that it infringes an apparatus claim, even without seeing the apparatus in action.

    Of course, the problem of claiming objects without reference to their structure is why the Federal Circuit required infringement of product-by-process claims to require that one carry out the recited method steps.

    Your falling way way behind NWPA. Do try to keep up.

  49. NWPA: Don’t be silly. POSITA would recognize the structure and so does fed. cir. case law. There is structure there that causes a computer to perform the method. That is structure.

    Your answer to “where is the structure” is “oh, there’s structure in there somewhere”.

    Come on, what/where is the structure? Point to it.

    NWPA: There are of course many structures that could cause the same method to be performed. But, so what.
    There are many structures that infringe all apparatus claims.

    Of course there could be many structures that perform the method. But if you insist that your claim is structural you must recite that structure in the claim. And then if someone else uses a different structure, they don’t infringe. Drug composition claims recite the molecule. Gene claims recite the sequence. Mechanical claims recite no end of structures. Beauregard claims recite … a computer-readable medium with writing on it.

    How about you pick a single preferred embodiment of a single Beauregard-type invention and tell me where exactly the structure is in that particular case. Come on, it’s structure. It can’t be that hard to find.

  50. NWPA Don’t be silly. POSITA would recognize the structure

    Really? Don’t you consider yourself a POSITA? So if I provide you with a Beuregard claim you can describe for me in structural terms what makes the claimed computer disc different from the prior art disc?

    and so does fed. cir. case law.

    Really? Cite please.

  51. IANAE functional terms in an apparatus claim don’t define structure unless they’re means-plus-function terms. And that’s pretty much what a Beauregard claim is, if it’s anything at all. Storage means for performing a function. So what’s the corresponding structure in the spec? What structure performs the function?

    There is none. And that’s why Beauregard claims are vapid crxp, a very special exception created out of thin air by the PTO for software applicants. Where did the PTO get the authority to do this?

    Here’s where David Boundy is conspicuously silent.

  52. >>So what’s the corresponding structure in the >>spec? What structure performs the function?

    Don’t be silly. POSITA would recognize the structure and so does fed. cir. case law. There is structure there that causes a computer to perform the method. That is structure. There are of course many structures that could cause the same method to be performed. But, so what.
    There are many structures that infringe all apparatus claims.

    It is a component. Give it up and bake some MM cookies with me.

  53. NWPA You notice that ole MM is silent as he was beaten down again

    You’ll notice that NWPA really has nothing to add to the subject other than name-calling.

  54. Alun f MM doesn’t agree, he is simply wrong,

    No, I’m not. The PTO is wrong. Remember the PTO? You know, the government office that the wankers here are always saying is anti-applicant blah blah blah? Isn’t it funny how all of a sudden the PTO is right on this issue, even where their legal reasoning justifying Beauregard claims is completely absent?

    but as it’s not his art, his opinion on the matter isn’t worth all that much.

    As you know, Alun, the “art” of most software claims is the art of wanking out a bunch of functional language and/or method steps that are not unique and require not technical skill or training, then sticking it behind the words “computer-readable medium”. As you also know, Alun, there are many individuals out there “in the art” and far more skilled than you who agree with me. So your comment is even more worthless and petty than it appeared on its face.

    Now take a look at Les and NWPA and Actual Inventor’s posts on this subject. They pretend not to understand the difference between a method claim and some instructions on a piece of paper? Are they dipshxts, or just kicking up dust? You know it’s the latter Alun. The question is: why do they do this? The answer is that they are true believers who know they are wrong but know they can’t admit it. And so they never will.

    And ping — let’s hear all about the “printed matter doctrine” and how it justifies Beauregard claims. Go for it, buddy. I’m all ears. Just spell it out in plain English and try not to put yourself in rehab like NAL. You can start by explaining the original purpose of the “printed matter doctrine” to us.

  55. NWPA: Those method steps define a structure.

    Well, first of all, you don’t need structure in a method claim. You need steps. Instructions aren’t steps till someone follows the instructions, but that’s a whole other kettle of fish.

    Second, functional terms in an apparatus claim don’t define structure unless they’re means-plus-function terms. And that’s pretty much what a Beauregard claim is, if it’s anything at all. Storage means for performing a function. So what’s the corresponding structure in the spec? What structure performs the function?

  56. >>A recipe for Malcolm Mooney chocolate Looney >>Dooneys that spin while cooking and spew out >>nonsense may get utility.

    Wow! I want a recipe for those! You notice that ole MM is silent as he was beaten down again. But he will pop up again soon.

  57. what I am saying is, copying a utility Patent to try to overide it is a DESIGN! The USPTO need to recognize the strength in the First Utility idea as the original. The rest are just trying to cash in like the CHINESE! There is lies what the USPTO needs to recognize. You want a strong Patent system? Put Design where it belongs. BEHIND!!!!!!!!
    Stop ballyhooing get a grip of the system you all claim defensively as the best in the universe.

  58. A recipe for Malcolm Mooney chocolate Looney Dooneys that spin while cooking and spew out nonsense may get utility.

    Easily the best comment of the week. Thanks, Sarah!

  59. So I guess the question should be: do you get protection for the claims in the patents or the methods? Or both? Do the methods and the claims have to be infringed to get an infringement judgement, or just the claims?

    Seems like the one-click patent is only dealing with the claims when it comes to enforcement. It doesnt’ really matter how the “invention” is implemented. What the author of this article is really trying to say is that the patent protects every method of how the invention is implemented. That is to say, no matter how the invention is implemented, as long as the claims are reached by the alleged infringer, there is infringement.

    If that is true, the “invention” is nothing more than an idea. Just like those flow charts which disclose hardly anything to anyone. They are all too, just ideas.

    *THAT* is the problem with software patents and BMPs. And you cannot draw the line between them.

    So…Who on earth is smart enough to tell the difference? Are they working for the patent office, or are they gaming the system?

  60. Hey Les.
    Copyrighting Bread Recipes that’s what you need to do.Beating a dead horse is what 6 and Mooney do.
    I have a recipe for butterscotch brownies. And I have a recipe for chocolate brownies.
    The only problem (BIG ONE) is there are 345 for for chocolate and 246 for Butterscotch. but if I scan through with my robotic computer brain I see they are the same. Only space changes the volume of what they claim as original.
    Me thinks you need to sell it to a bake off company Les. A recipe for Malcolm Mooney chocolate Looney Dooneys that spin while cooking and spew out nonsense may get utility. But a regular Recipe with alternates is weak at best.

  61. Alun Palmer: “A perfectly drafted statute would provide patent protection wherever software had replaced hardware,

    Public policy dictates that where a computer program directs a computer to carry out steps that previously would have been controlled by hardwired circuits or even (gasp) electromechanical relays, it ought to be entitled to the same patent protection, if any.”

    I think it does, as it currently stands. More or less, anyway. If you have a black box that does something, the box and the method are equally patentable whether what’s inside is hardware or software. A properly claimed method shouldn’t recite any of the hardware anyway. It would simply recite carrying out the method. If you want to claim the physical arrangement of the circuit for some reason, there is simply no software analogue to that.

    The software people are complaining that they can’t get a patent to the recipe itself – as opposed to the method of carrying out the recipe. But that’s not statutory in hardware either. You can’t patent instructions for putting together a machine, even by a patentable method.

    The law is fine the way it is. If software patents don’t find enough infringers, that’s the patentees’ problem.

  62. Les: “My point is that a recipe IS patentable. That’s all.”

    My point is that none of those patents protect recipes, and more generally that a recipe is not patentable. That’s all.

    NWPA: “A Beauregard claim meets what you want me to give you.”

    No, it doesn’t. A Beauregard claim doesn’t claim any structure other than a known memory device, and even the structure of the memory device itself isn’t specified. The software is recited in terms of “whatever arrangement of data produces this result”, which is not structural at all.

    If a Beauregard claim were structural, you’d be able to identify an infringing memory without plugging it into a computer or reading the information. It’s not. It’s precisely the computer equivalent of a piece of paper on which instructions are written.

    There are lots of patents to computer memories per se, and even they recite way more structure than Beauregard claims.

  63. It’s easy to conflate the state of the law versus what we wish were the law. A perfectly drafted statute would provide patent protection wherever software had replaced hardware, otherwise previously patentable areas of technology would gradually become unpatentable over time, which is an absurd and unacceptable result. I think that’s very much the point of the article. We don’t have that statute, because we haven’t revised 35 USC 101 since 1952, AFAIK.

    Public policy dictates that where a computer program directs a computer to carry out steps that previously would have been controlled by hardwired circuits or even (gasp) electromechanical relays, it ought to be entitled to the same patent protection, if any.

    Whilst the courts can and do apply policy considerations, they are subordinate to statute and precedent, as they should be, but that is why we have the current mess. We need a new statute, and we needed it at least thirty years ago!

    If MM doesn’t agree, he is simply wrong, but as it’s not his art, his opinion on the matter isn’t worth all that much. This is why you probably won’t see me commenting much on the Hatch-Waxman Act, for example.

  64. If you look at my files to Tamai. You will see that the original idea was there but it was denied by TAMAI! . Want a copy. Let me know and I will Fax to you what was sent to Tamai. ON MY TRUSTY OLD COMMODRE 64.and then there is so much more out there. where do i begin. I can also show you that the drawings have been altered! Try me.

  65. IANAE

    A Beauregard claim meets what you want me to give you.

    I can never tell what Sarah says either. But for some odd reason I like reading it. It brings strange images to my mind.

  66. James Bellie, you hit the nail on the head. Everything else is noise (6 in particular, will you never get tired, pls stop already).

    Ned Heller: “…But your “black box” example is an entirely different matter, because it does something new.”

    Ned, that is precisely his point. i.e. if the box does something new/inventive/useful, it should not matter whether the logic inside it is implemented in hardware or software.

  67. IANAE – WT F are you talking about?

    The person I addressed said:

    “Well, a recipe is a program for a human to follow. The ingredients list are the variable declarations and initialization, and the directions are the actual program.

    This is copyrightable, but not patentable.”

    My point is that a recipe IS patentable. That’s all.

  68. NWPA: “and what sarah said.”

    Sadly, that incorporation by reference is the most coherent argument you’ve made in this thread.

    So what did sarah say, exactly? I can never tell.

  69. NWPA: “The computer readable medium is a component with structure of a MACHINE.”

    Great. Give me an enabling written description of that structure, claim that structure, and if it’s novel and non-obvious you are welcome to your patent.

  70. IANAE:

    What? A car isn’t a whole new car with a new wheel. And a person isn’t a machine.

    The computer readable medium is a component with structure of a MACHINE. Goodness.

    Roll over and give up already. You are left with a king and one pawn and I have all my pieces. (The pawn represents the potental madness that might strike the SCOTUS to strike down fed. cir. case law regarding Beauregard claims.)

  71. Spacial is just that. When you copy the space can be ingredients. more or less, or space more or less. that is why there are Generics when time is past. But mine was original. And adding spacial before time is up….. Is INFRINGEMENT! Because design means Crxp. and mine was not a design. That came in defense of. Fraud… theft.

  72. NWPA: “The structure is there and the fact that you don’t like the structure doesn’t matter.”

    Oh, I’m a big fan of useful structures. Show me a claim to the structure, and I’ll admit that it is patent-eligible.

    But as long as you’re claiming a method, you’re going to have to show me somebody actually doing something.

    NWPA: “They will pop up again with the same arguments in a day or two, but for now they are beaten.”

    Actual Patent Attorneys win again!

  73. NWPA: “It is a component of the machine. The recipe is not a component of a machine, since we don’t count people as machines.”

    Now you’re just playing silly word games. The recipe is not a component of the person, whether or not the person is a machine and whether or not the recipe is stored in the person’s internal memory. The person isn’t a whole new person once he writes that recipe to his memory.

    Les: “Why wouldn’t a recipe for bread be patentable?
    The recipe for Lipitor is patenable.
    The recipe for Crestor is patentable.
    And…. Google says there are a few methods of making bread patented as well:”

    Have you read those patents? I think you’ll find they are all infringed only by the act of performing the method. I’d be very surprised to learn that the Lipitor patent put any restriction (other than by contributory infringement) on a computer-readable medium containing instructions that would cause a robot to synthesize Lipitor. I’d be similarly surprised if you could sue any recipe book publisher for direct patent infringement for including a patented recipe.

  74. unless it has been claimed as a structural arrangement of parts.” – amongst others

    It has – the word be called configured

    I’m not sure why that wasn’t clear to you the first time, but there you have it.

    Now don’t make me dig out my Great Court example that put all ya’all to shame.

    As NWPA points out, “algorithm” as a term is oft misused and certainly abused. In one instance the definition is clearly a process, one of the statutory classes of patentable subject matter.

    Posted by: ping | Sep 15, 2010 at 09:44 AM

    Me quoting me – gotta love it.

    Anyways, as soon as the nutcases came out with the “algorithm” nonsense, I says to myself – damm there is no NAL which means here comes the crrp Recipe arguments and the blatant disregard for the Printed Matter Doctrine which plain as day esplains the difference for computers. Sure nough – Sunshine chimes in.

    And btw – citing the doctrine and the supporting case law be all the move anyone needs to answer this wayward chem/bio jealousy. Seriously folks – the law here is nigh black letter – time to move along.

    The meaning of the case law as it currently stands needs to be understood, because it’s the law.

    If there are policy reasons for amending the case law, those should be considered. But until the case law is amended, it means what it means.

    Word – yes, your own (modified in a delightfully ping way of course) – man don’t that sound sweet!

    IANAE – it is easy to see when you leave the areas ya know about. Are you still looking for Middle Earth and the Nazguls?

  75. It is always fun beating IANAE, MM, and 6 down.

    They will pop up again with the same arguments in a day or two, but for now they are beaten.

  76. IANAE: you have lost.

    The structure is there and the fact that you don’t like the structure doesn’t matter. You can’t discount the structure by saying it is like the ink. So what. The ink is like the steel that makes a tractor too.

    The structure of the disk is a component of a machine.

  77. “The fact is that the medium must have a certain structure to perform the method.”

    So why do we never hear about it? Or see it in drawings.

    “All those electrons will have to organized in a certain way.”

    Electrons are structure now? Or did you mean atoms?

    “I will take a nap you are a boring.”

    And you are a drunk because your article sux and you’re starting to realize that you’re a bad person for conning the office for decades.

    “But that is represented information which to you doesn’t exist and is magical and abstract.”

    Technically speaking, “electrons” as such may not “exist”. Perhaps they are the hand of god. Have you ever seen one? Do you have evidence that they “exist”?

  78. NWPA: “Computer + computer readable medium = particular machine.”

    Person plus person-readable medium = particular person.

    NWPA: “The instructions are just a short hand for a hardware specification. A componenet of a machine.
    Sorry to disappoint. But that disk has structure. You just can’t see it. Like atoms that you believe in.”

    That “hardware” and “structure” is no different from the physical arrangement of ink on a printed page. It is not the structure of the arrangement that causes the machine to act in a particular way, but the information represented by the arrangement. Classic printed matter doctrine.

    Take DNA, for example. Sure, the sequence of the nucleotides represents information and can be represented in a base-4 sequence listing or any other form, but it’s the physical structure of each nucleotide that determines the amino acid sequence of the protein that will eventually do something. The enzyme that responds to the physical structure of three RNA nucleotides to add the next amino acid in the sequence is one heck of a particular machine.

  79. Hawkeyeaz1 -

    Why wouldn’t a recipe for bread be patentable?

    The recipe for Lipitor is patenable.

    The recipe for Crestor is patentable.

    And…. Google says there are a few methods of making bread patented as well:

    METHOD OF MAKING BREAD
    US Pat. 2534734 – Filed Feb 10, 1945 – The Standard Stoker Company
    METHOD OF MAKING BREAD. Filed Feb., METHOD OF MAKING BREAD 4 Sheets-Sheet BY
    INVENTOR. …

    Method of making bread from dough and cutting means for use therewith
    US Pat. 6562389 – Filed Aug 27, 1998
    … Billig & Czaja, PLLC (57) ABSTRACT A method of baking bread from dough …
    cutting the strip of dough into pieces, baking the flat pieces of dough in an

    METHOD OF MAKING BREAD OF HIGH SUGAR CONTENT
    US Pat. 3830938 – Filed Apr 12, 1972
    For making bread using Saccharomyces rosei of the present invention, exactly the
    same procedure as in the conventional method of making bread except that …

    METHOD OF MAKING BREAD STICKS
    US Pat. 2134026 – Filed May 23, 1936 -
    (Cl. 99—90) This invention relates to baked or toasted bread in the form of
    sticks and to a method of making same. Bread, as sold at the present time, …

    Method of making bread products without shortenings and/or oils
    US Pat. 5510136 – Filed Oct 21, 1994
    SUMMARY OF THE INVENTION 30 35 50 This invention relates to a process or method
    of making or baking leavened bread products without shortenings and/or oils …

    PROCESS FOR MAKING BREAD
    US Pat. 3594180 – Filed Jun 3, 1968
    In the traditional method of bread making (a) all or (b) a portion of the
    ingredients are mixed and allowed to ferment for periods which vary between and
    6 …

    [APPLICATION] Method for making bread with rice flour of chief component using bread maker
    US Pat. 11328615 – Filed Jan 10, 2006 -
    FIELD OF THE INVENTION [0002] The present invention relates to a method for
    making bread using a bread maker, and more particularly, to a method for making

    METHOD OF BAKING BREAD
    US Pat. 2000384 – Filed Aug 13, 1934 -
    Patented May 7, 1935 UNITED STATES PATENT OFFICE METHOD OF BAKING BREAD Charton
    C. Frantz, Pittsburgh, Pa. Application August 13, 1934, Serial No. …

    [APPLICATION] Automatic breadmaking apparatus and method of making bread
    US Pat. 10772354 – Filed Feb 6, 2004
    Field of the Invention [0003] The present invention relates to an automatic
    breadmaking apparatus and a method of making bread, particularly to an automatic

    METHOD OF MAKING BREAD WITHOUT CRUST
    US Pat. 771795 – Filed Jan 11, 1902 – BY MESNE ASSIGNMENTS
    To this end my invention consists in the 25 hereinafter-described novel methods
    of making such bread. My invention will be fully understood by referring to …

  80. >>Your move.

    It is a component of the machine. The recipe is not a component of a machine, since we don’t count people as machines.

    Check.

  81. NWPA: “There is no functional relationship between the piece of paper and a machine and the piece of paper doesn’t make the machine perform a method.”

    Pieces of paper were the original computer-readable medium.

    NWPA: “The fact is that the medium must have a certain structure to perform the method. All those electrons will have to organized in a certain way.”

    A sort of electronic mise en place?

    I’m not sure what exactly you’re going for here, but the chef still needs all the ink blobs on the paper organized in a certain way, as well as the appropriate kitchen hardware, and the necessary ingredients. He’ll even need some basic knowledge of cooking techniques so he can “compile” the recipe. None of that makes the recipe a method until he starts cooking.

    Your move.

  82. The instrucitons that are computer readable are fairly a part of the machine.

    Computer + computer readable medium = particular machine.

    The instructions are just a short hand for a hardware specification. A componenet of a machine.

    Sorry to disappoint. But that disk has structure. You just can’t see it. Like atoms that you believe in.

    Processing of information MM. Represent it and then process it. Magic.

  83. So, you guys run from the recipe argument. Nice try.

    There is no functional relationship between the piece of paper and a machine and the piece of paper doesn’t make the machine perform a method.

    The fact is that the medium must have a certain structure to perform the method. All those electrons will have to organized in a certain way.

    But that is represented information which to you doesn’t exist and is magical and abstract.

    I will take a nap you are a boring.

  84. NWPA According to MM it is abstract and therefore doesn’t really happen.

    Nice try. I have no idea what you’re talking about. What is “it”? Information?

    You can’t patent “The ball is green.” You can’t patent, “If y=2, then x=4.” You can’t patent “Boiling water makes the water evaporate.”

    None of this has anything to do with Beauregard claims, of course. Seems you’ve given up trying to defend them with reason. Wise move.

  85. Mr. Goetz is best ignored.

    The substance he brings to the debate is minimal, and is old news.

    Nothing to see here…

  86. NWPA: “IANAE: >>The person who actually makes the >>molecule.
    Or uses THE METHOD to make the molecule!”

    Yes, the person who actually makes the molecule by implementing the method of making the molecule. I’m not sure why that wasn’t clear to you the first time, but there you have it.

    NWPA: “The recorded medium + machine is a specific machine. Not a person or line cook.”

    The person with a recipe book is a completely different person. By which I mean the exact same person but now in possession of a set of instructions.

    Until the machine actually does something, it is not statutory as a method. A machine that sits idle while being capable of doing something is purely abstract, unless it has been claimed as a structural arrangement of parts. A machine that sits idle while in possession of instructions cannot possibly infringe a method claim.

  87. NWPA processing information is real. It takes space, time and energy.

    So does thinking. But methods of thinking aren’t patentable. Nor are written instructions for thinking.

    You make it sound like only chemicals are patentable, but the method of making the chemical is patentable.

    You’re not even trying to understand. The method of making the chemical is patentable as a method claim, but the instructions for making the chemical are not patentable as a composition claim. Maybe take a nap, grandpa, and come back later.

  88. “The computer is processing information like a human being.”

    A wonderful argument to extend the PMD to the disk. But other than that, irrelevant.

  89. >>Chimps don’t process information?

    According to MM it is abstract and therefore doesn’t really happen.

  90. IANAE: to be clear. You make it sound like only chemicals are patentable, but the method of making the chemical is patentable.

    Information is real man. Processing informatino is useful and what separates you from a chimp.

    Goodness.

  91. IANAE: >>The person who actually makes the >>molecule.
    Or uses THE METHOD to make the molecule!

    Douglas Hofstadter was trying to understand how to make computers intelligent by the use of methods.

    >>exact same functional relationship with a line >>cook.

    The recorded medium + machine is a specific machine. Not a person or line cook. The line cook if following instructions for making say silly putty when it was still patented would be infringing.

    MM>>This is such a bunch of horseshxt its almost >>impossible to know where to begin.

    MM, the point is not silly. The point is that the software is just a short hand for a machine. You just need to get your head around the fact that processing information is real. It takes space, time and energy. It’s real man. Really.

  92. NWPA What is a sad joke is that you rust brains cannot adopt to new technology.

    Very compelling argument. The fact is that every week reams of patent claims are granted on software “technology” which have no “technological” aspect whatsoever. Computerized bird identification anyone?

    The issue has nothing to do with “adapting to new technology.” The people who are failing to adapt are the people who draft Beauregard claims and think they are complying with the patent statutes. In addition, as you know and as everyone knows, there are plenty of outstanding software developers out there who think that software patents are bogus. I’m not aware of anything similar in any other technology area, except possible for business method/money manipulation crxpola.

  93. NWPA: “The recorded medium –let’s be clear– has a functional relationship with a machine–the reipe does not. The mahcine and computer readable medium together make quite a team.”

    The only functional relationship with the machine is that the machine follows the instructions. A recipe has the exact same functional relationship with a line cook. They make quite a team, those two, but the written recipe is nevertheless non-statutory until someone follows the instructions and produces a composition of matter via a method.

    NWPA: “IANAE: ahhh…a chemical guy. That explains a lot.”

    Yeah, I get to dabble in the chemical arts when I’m not examining applications.

    NWPA: One does claim a method of making a chemical.

    One does indeed claim a method of making a chemical. That was exactly my point. One does not claim instructions for making a chemical. Who infringes a chemical claim? The person who actually makes the molecule.

    Another problem with recipe patents is that they’re self-infringing. Every method patent contains instructions for carrying out the method, so its publication infringes by putting those instructions in a readable medium. Furthermore, if you sent someone a cease-and-desist letter they’d have to infringe your patent by downloading or printing it to see if they infringe. That’s as abstract as can be. Douglas Hofstadter would be proud.

  94. The recorded medium –let’s be clear– has a functional relationship with a machine–the reipe does not.

    (1) a recipe can be read by a machine and change its functionality; and (2) the recipe can read by a human and change the humans functionality.

    This is not a distinction that justifies claiming a recorded medium in purely functional terms. On the contrary, if the relationship between allegedly new object X and old object Y is purely functional, then allowing claims to object X to be written in functional terms utterly and completely fails to meet the requirements for patentability under section 112, pretty much by definition.

  95. An inventor demonstrates his new invention to his patent attorney with great pride; he has developed a cabinet for reading books out loud to the blind. The cabinet contains both a reading and talking computer. After the demonstration, the patent attorney responds:

    What’s inside the cabinet? Did you build it with software or hardware (a stored program or hardware circuitry)? If built with a hardware program, your machine would be patentable. But if you built it with a stored program, the Patent Office would say it was merely mathematics and, therefore, unpatentable.”

    This is such a bunch of horseshxt its almost impossible to know where to begin. But here’s where to begin: if you claim this apparatus structurally in a way that distinguishes it structurally from other prior art apparatuses, it doesn’t matter whether you call it “hardware” or “software.”

    So there’s your answer. Everything else is just a distraction designed to answer a totally different question which has never been answered, i.e., how can we justify exceptions in the patent law for people who write instructions for computers?

  96. The recorded medium –let’s be clear– has a functional relationship with a machine–the reipe does not. The mahcine and computer readable medium together make quite a team.

    IANAE: ahhh…a chemical guy. That explains a lot. One does claim a method of making a chemical.

  97. IANAE Do you think any sane examiner in the chemical arts would allow a claim to a recorded medium containing readable instructions for manufacturing a molecule?

    Of course not. And this gets back to age old question of why the software folks are entitled to such excessive hand-holding. Or is it the case that they are not entitled and the software examining corp is simply not intelligent enough to deal with the problem? Or are they understaffed? And given the hand-holding and exceptions granted to software applicants, why is it that they seem to be the ones complaining the most about how unfairly the PTO treats them?

    These are rhetorical questions, of course. The answer, of course, has to do with the type of software applicant who spends most of his/her time on the internet. Rhymes with “bowls.”

  98. Why shouldn’t food recipes be patentable?

    Let’s be clear. A food composition is patentable as a composition.

    A “recipe” is just instructions for making the food. It’s information. Not patentable.

    This is why Beauregard claims are such a sad joke on our patent system.

  99. What is the difference between a recipe for food and a chemical method?

    The difference is that you don’t claim the chemical recipe. You claim carrying out the synthesis reaction, which is a statutory process.

    Do you think any sane examiner in the chemical arts would allow a claim to a recorded medium containing readable instructions for manufacturing a molecule?

  100. What if that robot could do anything a person could do? Then would that mean that nothing was eligible for patentability?

    What is the difference between a recipe for food and a chemical method?

    The computer is processing information like a human being. Why shouldn’t food recipes be patentable? Should an alloy such as steel be patentable? Should a method of manufacturing steel be patentable?

    Food recipes are not Turning machines.

  101. 2 cups warm water (110 degrees F/45 degrees C)
    2/3 cup white sugar
    1 1/2 tablespoons active dry yeast
    1 1/2 teaspoons salt
    1/4 cup vegetable oil
    6 cups bread flour

    Directions

    In a large bowl, dissolve the sugar in warm water, and then stir in yeast. Allow to proof until yeast resembles a creamy foam.
    Mix salt and oil into the yeast. Mix in flour one cup at a time. Knead dough on a lightly floured surface until smooth. Place in a well oiled bowl, and turn dough to coat. Cover with a damp cloth. Allow to rise until doubled in bulk, about 1 hour.
    Punch dough down. Knead for a few minutes, and divide in half. Shape into loaves, and place into two well oiled 9×5 inch loaf pans. Allow to rise for 30 minutes, or until dough has risen 1 inch above pans.
    Bake at 350 degrees F (175 degrees C) for 30 minutes.

    Now why am I posting a recipe for Amish White Bread taken from link to allrecipes.com?

    Well, a recipe is a program for a human to follow. The ingredients list are the variable declarations and initialization, and the directions are the actual program.

    This is copyrightable, but not patentable. However, if I made a machine that could implement it, then any recipe would be a program, and by your logic, patentable. And making a machine to follow recipes to make food would be both simple and inexpensive for anyone out there who knows how to build a robot.

    But if I were able to patent it, say because I made said machine and thus the recipe was machine specific, then I could sue PizzaHut, Dominoes, Papa Johns, Panera Bread, Wonderbread, Merita, Sunbeam, Rainbow, etc.

    But of course it would be frivolous if only because they were making these products for years before any patent for making bread would be granted.

    But take any recipe and compare it to any program, and you will see direct correlations on all aspects. Should recipes really be patentable? No, of course not. But a recipe is ALL a program is. There is no difference except one is executed by a computer in practice, while the recipe is executed by a human in practice. But nothing prevents the computer from executing a recipe, and programmers execute programs mentally or manually every time they read it, write it, debug it, etc.

  102. >>what exactly is it that a software supplier >>possesses that others are prepared to pay good >>money to obtain in order to make the elaborate >>paper-weight called a computer do something >>useful?

    Very good question. Consider a computer that detects tumors in from an x-ray. According to some here it is abstract. What part of that machine that you electronically send an x-ray and the machine then determines whether or not you should have a biopsy should be eligible for patentability?

    It seems some of you are saying that the function the machine is performing is abstract (whatever that means). Or maybe that the method is a mathematical method and trying to claim it is a trick to try and get the method claimed. But wait (and please read this Stevens), that method only works with a computer because of the complexity of the method and that method was devised for the computer.

    I think the term dishonest reasoning applies to many people who write comments in this blog.

  103. The examples provided in this post relate to applications of software in systems that perform a function (such as converting text to sound). They are actual software patents, like the granddaddies-Lowry and Beauregard, or the incremental compiler (5,204,960-assigned to Microsoft) or 5,124,989(software pest control, also signed to Microsoft or 5956033(a document control interface). Since the principle behind these useful software is described as a flowchart, the resulting claim is a method claim or a hybrid such as the Beauregard claim (a system claim is possible by having a processor and computer usable media that has the code). The Bilski opinion relating to method claims applies to all of these (even if the opinion was a throwback to prior Supreme Court opinions, as some of us had proposed).

  104. See, this is exactly why these issues need to be settled at a public policy level, and not on the basis of learned debate about the meaning of the statute in the light of the constitution and judicial precedent or whatever.

    The meaning of the statute as it currently stands needs to be understood, because it’s the law.

    If there are policy reasons for amending the statute, those should be considered. But until the statute is amended, it means what it means.

    If a computerised process qualifies for patent protection, should the protection afforded by the patent be enforceable against others who make and/or supply a computer program that implements the process?

    Of course. They are inducing others to infringe that patent. There’s already a cause of action for that.

    BTW, if a “computer program” is so “abstract”, what exactly is it that a software supplier possesses that others are prepared to pay good money to obtain in order to make the elaborate paper-weight called a computer do something useful?

    What does monetary value have to do with abstractness or patent-eligibility? People pay good money for paintings that, far from being statutory, aren’t even subject to copyright anymore. People pay good money for shares in a company, even when the company’s business model is itself abstract. People even pay good money to use someone else’s good money for a while. Writing computer programs takes skill. And a virtually limitless supply of semicolons. Why not pay good money for that?

    Instructions for doing something useful are still valuable. People buy recipe books and books “For Dummies” that give instructions for doing things. And yet, the instructions to do a thing are not the thing itself. Ceci n’est pas un logiciel.

  105. IANAE:
    “The real problem is that everybody wants to sue the manufacturer who writes down the instructions instead of the end user who performs the process. Well, too bad. All the manufacturer did was print some instructions on a disk, and instructions for infringing a patent are not statutory.”

    See, this is exactly why these issues need to be settled at a public policy level, and not on the basis of learned debate about the meaning of the statute in the light of the constitution and judicial precedent or whatever. The question is fairly simple:

    If a computerised process qualifies for patent protection, should the protection afforded by the patent be enforceable against others who make and/or supply a computer program that implements the process?

    BTW, if a “computer program” is so “abstract”, what exactly is it that a software supplier possesses that others are prepared to pay good money to obtain in order to make the elaborate paper-weight called a computer do something useful?

  106. No, AI’s missing a completely different point. He’s saying “every physical object is a method of doing business because you could sell it”, which is about as absurd as saying “every algorithm is a composition of matter because you could write it down on a computer-readable medium”.

    Besides, atoms are statutory. They’re just not usually novel.

  107. AI, your argument seems to be:

    “All industrial manufacturing processes are, in some sense, methods of doing business. All industrial manufacturing processes are eligible for patent protection. Therefore, all methods of doing business are eligible for patent protection.”

    You may (or, for all I know, may not) be an Actual Inventor, but if you can’t see the flaw in that argument then you sure ain’t an Actual Logician. But don’t worry, you’re not alone. A popular argument among the anti-software-patent fraternity seems to be:

    “Mathematical algorithms are not eligible for patent protection. All computerised methods are made from mathematical algorithms. Therefore, no computerised method is eligible for patent protection”.

    Which is much like saying:

    “Atoms are not eligible for patent protection. Therefore, nothing made from atoms is eligible for patent protection”.

  108. Malcolm: Really? Beauregard claims are process claims?

    Could have fooled me.

    See, this is my real problem with software claims. A computer program is not a process. A computer program is not a computer-readable medium, even if it’s printed on one.

    A computer program is a set of instructions for performing a process, which is abstract. Maybe the process carried out by the program is itself non-abstract and therefore patentable, but in that case the process should be claimed.

    Ned had it right when he considered whether a black box that did something new was patentable as a new machine if the way it did its work was by using software rather than by using hardware. Clearly this question was answered yes in Diehr, but more importantly the answer would’ve been yes even in Benson.

    The real problem with software patents is not whether companies can get coverage for their programs and algorithms. The real problem is that everybody wants to sue the manufacturer who writes down the instructions instead of the end user who performs the process. Well, too bad. All the manufacturer did was print some instructions on a disk, and instructions for infringing a patent are not statutory.

    On the plus side, this is a great opportunity to develop the law on inducement.

  109. It’s funny, I think that the author’s example of the blind-reading box is a classic example of the problem that many on the other side of the debate raise: it doesn’t take a genius to combine things already known.

    The flow-charts in the Kurzweil application basically amount to stating the “obvious” steps that would be necessary to “read” aloud an image: Take image as input -> scan the image for words -> synthesize speech corresponding to words -> output speech.

    It adds almost NOTHING else.

    So, what is the difference between THAT and what is suggested by your brief disclosing a reading and talking computer? I’m thinking I’d have a hard time buying that it was non-obvious for at least the following reasons:

    By the time the Kurzweil application came around, both OCR (thank you Mr. Kurzweil from the late 70′s) and voice synthesis (Dr. Sbaitso was on my first computer in the early 90′s) were very well-known in the art. The input of OCR programs is an image, the output is text. The input of voice synthesis is text and the output is speech. You basically are stringing two things together with matching inputs/outputs.

    In addition, in your brief, you close the gap. Not only did you recognize the value and need, you recognized the necessary components, the steps to make it happen, and the need to combine them. The only thing you lacked: the now-common place hardware and software to do it.

    If you watch sites like slashdot.org, most of the griping is about patents that seem to do the same thing: take an idea that is straight forward and known and apply it to technology just being developed. This is gripe characterized by: take process A and “add the internet” or “add a mobile device.”

  110. Even if we were to assume that the only negative effects of patents come from instances that “give rise to licensing agreements, sales, litigation, or threats of litigation” (which assumption is almost certainly false), the argument fails. This claim of “comparatively low volume” is, in effect, the claim that, since “A + B + C + D = X”, and ‘C’ is a small number, therefore ‘X’ must be a small number. This argument is plainly invalid.

    I used the language I did because inherent in any license agreement or sale of a patent or patented article is the threat of litigation (e.g., if you don’t take a license we’ll sue you). Also, you’ll note that I said “Of these, litigation or the threat thereof is probably of the greatest concern.” I did not say they were the only concerns.

    The equation is really more like A*R1 + B*R2 + C*R3 + D*R4 = X, where Rn is a ‘risk factor’ reflecting how important it is to get the correct result regarding a patent’s validity. I posit that the risk factors involved in litigation and overt threats thereof are much higher than for voluntary license agreements and sales, and therefore despite the comparatively small number of patent lawsuits those are the dominant terms.

    But even if I’m wrong about all that, the point remains that, absent some kind of transaction involving a given patent there is really little reason to be concerned about whether it’s a ‘good’ or ‘sufficiently innovative’ patent. It is only when two parties have opposing interests in a patent that it matters. And most patents have no associated transactions, certainly not high risk/high cost transactions like litigation. So we don’t have to determine with absolute precision the ultimate truth regarding ever patent or patent application. It is enough that we get it right reasonably often, reasonably quickly, and reasonably efficiently for those patents that do cause controversy.

    And apart from needing to hire some more federal judges, give more resources to the Office to handle reexaminations, and tweak the litigation system a bit (e.g., lower the presumption of validity and work in more fee-shifting), I think the patent system as it is does that pretty well. Certainly it’s not particularly worse in this regard when it comes to software patents than any other kind.

  111. That 35 USC § 101 comes before 35 USC § 112 in the patent statutes shouldn’t change this review order.

    Haveta disagree EG – not that the order necessarily is important, but that 101 is supposed to be the wide open welcoming gate – 112 is a rigorous determination. Reversing the order of the two would make 101 even more superfluous. If ya wanna do 112 first, simply drop 101. BTW – Iza OK with 112 before 102 and 103.

    And where companies that have no product try to make millions by suing using patents they bought

    Ya got a problem with perfectly legal property rights vexorian? Take it up with your congressman. In the mean time, take your commie beliefs elsewhere.

    As NWPA points out, “algorithm” as a term is oft misused and certainly abused. In one instance the definition is clearly a process, one of the statutory classes of patentable subject matter.

    NWPA, I would guess that vexorian stumbled over here from techdirt and doesn’t understand patents. I think a fair translation of how he is using “software” is as a global label for the ideas that will be captured in something else called code and then will be put into something else called a machine. Vexorian is limited to an abstraction quite a bit removed from the patent sense of “software”.

  112. >>determining whether the claimed invention is a >>patent-ineligible “abstract idea” is an >>exercise in subjectivity and futility.

    I agree with the way the SCOTUS has used the term abstract, but not in the way J. Newman in her Bilski defense correctly defined the term abstract in the way it has been used in patent law for a hundred years.

    Vex: Not abstract? A machine is working and performing a function and someone has to prove it is not abstract? OK. Sure. Whatever.

  113. It seems the article skips the question. Instead of explaining why the author would think software is not abstract, he goes to explain how is software used and where it is useful. Dismissing proponents of the argument as “die-hards” is probably an ineffective argumentation if the explanation on why software is not abstract remains hidden.

    Algorithms have been around us since way earlier than the invention of machines and computers. Per digit addition of base 10 numbers is an algorithm, also ask Euclid about how he managed to quickly find the greatest common divisor of two numbers. Etc…

    In a world were there are patents for double click and for things as simple as an interface. And where companies that have no product try to make millions by suing using patents they bought a cynic would find it difficult to believe software patents in their current state can be supported…

  114. “Could somebody please define “Abstract idea” for me?”

    Daniel,

    A very astute question. Unfortunately, none of the SCOTUS Justices in Bilski bothered to define (other than inexact terms based on their penchant for avoiding “bright-line” rules) what an “abstract idea” is. But based on the reference in Part III of the Opinion of the Court to the Bilski method as “adding even less to the underlying abstract principle than the invention in” Parker v. Flook (which was characterized by the Court’s opinion as involving a “mathematical formula”), any claim that is deemed to cover subject matter that is analogous to that in Flook (i.e., a “mathematical formula,” or an “algorithm” as the invention in Flook more specifically related to) will be considered a patent-ineligible “abstract idea.”

    But instead of trying to subjectively determine what is an “abstract idea” based on 35 USC 101 using the nebulous language of SCOTUS in Bilski, I would suggest using paragraphs 1 and especially 2 of 35 USC 112 to do the heavy lifting on what is or isn’t an “abstract idea.” For example, the Bilski claims should have been scrutinized (and likely rejected) under one or both of paragraphs 1 and 2 of 35 USC § 112. Many, if not all, of the key claim terms are undefined (and potentially undefinable from) the Bilski patent specification. Illustrative examples are: “series of transactions,” “commodity provider,” “historical averages,” “market participants,” “counter-risk position,” “balances the risk position.” The paucity of the description in the Bilski patent specification simply doesn’t tell you what these claim terms mean, nor does it “enable” the scope of, for example, claim 1.

    What has happened in Bilski reinforces my view that claims should be judged first under 35 USC § 112 before applying 35 USC § 101. That 35 USC § 101 comes before 35 USC § 112 in the patent statutes shouldn’t change this review order. Until you understand what the claims mean, and whether the scope of those claims are enabled (and defined) under 35 USC § 112, determining whether the claimed invention is a patent-ineligible “abstract idea” is an exercise in subjectivity and futility.

  115. >>but simply calculated a mathematical algorithm,

    Can you define that term? I think not. I think that every method could be swallowed by that term. Benson is nonsense. Someone figured out a new way of building a machine to perform a calculation that was performed billions of times a day and it was held inelgible under 101 because it could be expressed loosely as a “mathematical algorithm”. Any method could be expressed as a mathematical algorithm.

  116. Martin, you posit whether a black box that did something new was patentable as a new machine if the way it did its work was by using software rather than by using hardware. Clearly this question was answered yes in Diehr, but more importantly the answer would’ve been yes even in Benson. The problem with the Benson claim was that it did not do anything new, but simply calculated a mathematical algorithm, possibly in a more efficient way. But your “black box” example is an entirely different matter, because it does something new.

  117. 6,

    But not all ideas are abstract.

    You are conflating instances and actualities. The fact of the matter is that all ideas are abstractions, but not every abstraction has an actuality. All ideas are indeed abstract – it is an inherent property of being an idea.

    The mere fact that the patent office allows constructive reduction to practice introduces abstractions into the patent arena. The translation necessary from the Supreme Court term “Abstract Idea” to the general term of art “Abstract” is not that the item must have an actuality. The problem is that the translation, much like pornography, has not been adequately defined.

  118. Therefore, we can conclude that at least under definition 1, hitting you in the face is not strictly an abstract idea.

    Posted by: 6 | Sep 15, 2010 at 04:18 AM

    _____________________________

    No, but merely thinking of hitting me in the face is an abstract idea. Understand the difference now?

  119. Justice Stevens, in his Opinion[6] also wanted to ban BMP’s from being patentable subject matter when he concluded that a method of doing business is not a “process” under 101.

    _________

    This is unenforceable on its face. So when have you technically conducted business? is it is when money has changed hands?

    Then all you have to do is eliminate any money changing hands in your process claims and bingo, your so called business method is no longer a business method and you get your patent anyway, virtually unchanged.

    Steven’s says “For centuries, it was considered well established that a
    series of steps for conducting business was not, in itself, patentable.”

    Oh really?

    What does Steven’s think patent No. 5,841, granted to William F. Cochrane, on Jan. 6, 1863, for the improvement in processes for manufacturing flour was if not a series of steps for conducting business?

    The steps were performed in a factory, aka business.

    The steps required factory workers to perform the steps whom worked for a business.

    The steps consisted of manufacturing a product which sold at, you guessed it, a business!

    Again, even if you want to take money exchanging hands out of the equation, anyway you look at it, you still have a series of steps for conducting business. And the same can be said of Diehr, of which Steven’s was in dissent. In fact, same can be said of every process patent ever granted, all were simply a series of steps for conducting business whether any money exchanged hands or not.

  120. This can be answered fairly straightforwardly. To begin, the vast majority of patents are never sued upon or used to threaten others with a suit. So we first need only concern ourselves with the patents that eventually give rise to licensing agreements, sales, litigation, or threats of litigation. Of these, litigation or the threat thereof is probably of the greatest concern. Yet only a few thousand patent lawsuits are filed each year, and only a few hundred of those go to a verdict. Contrary to Mr. O’Grady’s assertion, the patent system seems well equipped to handle the comparatively low volume of what might be called contested patents.– James Daily, above.

    That answer may well be ‘straightforward’, but it is not adequate; indeed, it is misleading.

    Even if we were to assume that the only negative effects of patents come from instances that “give rise to licensing agreements, sales, litigation, or threats of litigation” (which assumption is almost certainly false), the argument fails. This claim of “comparatively low volume” is, in effect, the claim that, since “A + B + C + D = X”, and ‘C’ is a small number, therefore ‘X’ must be a small number. This argument is plainly invalid.

    Thus, even if we accept the assumption that only these factors are relevant, the argument that the problem is small fails unless one can provide information regarding the volume of ‘licensing agreements’, ‘sales’, and ‘threats of litigation’. I am no expert in this area, but I strongly suspect that Mr. Daily does not have that information.

  121. Those are some wonderful definitions there AI. But not all ideas are abstract. For example, the idea of hitting you in the face exists in thought or as an idea, but on the other hand it does have a physical or concrete existence, as I’m sure you found out during HS. Therefore, we can conclude that at least under definition 1, hitting you in the face is not strictly an abstract idea.

  122. Could somebody please define “Abstract idea” for me?

    Posted by: Daniel Gross | Sep 14, 2010 at 10:01 PM

    _______________

    Hmm.. well the term is a misnomer of sorts since all ideas are abstract. Nonetheless, the American Heritage dictionary defines abstract as follows:

    abstract:
    adjective |abˈstrakt; ˈabˌstrakt|
    existing in thought or as an idea but not having a physical or concrete existence : abstract concepts such as love or beauty.
    • dealing with ideas rather than events : the novel was too abstract and esoteric to sustain much attention.

    • not based on a particular instance; theoretical : we have been discussing the problem in a very abstract manner.
    • (of a word, esp. a noun) denoting an idea, quality, or state rather than a concrete object : abstract words like truth or equality.
    • of or relating to abstract art : abstract pictures that look like commercial color charts.

  123. MM Wrote: I’m all for methods of increasing the size of one’s bank account, old and new. But’s absolutely pointless and counterproductive for the government to grant patents on such methods”

    ___________

    I did a quick search for patents on how to get rich and patents on how to make money and found exactly zero such issued patents. Which makes your argument against so called business methods nothing more than a strawman.

    i.e. (np) 1. Stating a misrepresented version of an opponent’s argument for the purpose of having an easier target to knock down. A common, but deprecated, mode of argument. See fallacy.
    link to talkorigins.org

    ::Poof::

    The sound of Mooney going up in smoke.

  124. You all miss the point about software patents.

    Software patents, like all patents, are intended to provide a period
    of exclusivity in exchange for revealing the details of your invention,
    thereby providing information that others can use
    to further advance the state of the art.

    There have been several software patents, such as early patents
    on compression technology, that I believe were clearly innovative, provided means for further developments, and well deserving
    of patent protection.

    The problem with software patents is that people started
    getting patents for “ideas” that were not innovative but there
    was not sufficient documented prior art to prevent it. If one
    clicks on a hyperlink provided on a CD, was this innovative at
    the time, even though hyperlinks were known? Is putting it
    on a CD patent worthy? I would say no.
    The problem is one of obviousness, not of software patent per se.

    In response, people have started interpreting software as a bunch
    of abstract zero’s and one’s in computer memory and not for what they
    really are: processes for obtaining meaningful results. The key is
    in determining the usefulness and non-obviousness of the processes.

  125. “Do you think they would have achieved their dominate positions simply because of their products”

    Funny that you ask that since all of them did, in fact, achieve their dominant positions simply because of their “products”, along with other things like marketing etc. If you really believe that patents helped those companies in their infancies you’re living a fantasy.

  126. Excuse my bluntness here… patents are economic tools. Microsoft, Apple, Symantec, Oracle, etc… are largely software companies. Do you think they would have achieved their dominate positions simply because of their products? Software patents are vital to economic development irrespective of who cries foul. Get over it!

  127. ” (quite the slight to the Office!). ”

    Not really, none of the world renowned experts in my field work here either. There’s experts and then there’s Experts.

    “And here are a few words for the huge community of legal professionals who make their living pursuing patent law: You’re actively damaging society. Look in the mirror and find something better to do.”

    LOL attorneys. Even those in industry don’t like you. I hope he can carve out a little niche for liking me when I’m all for a more reasonable stance on patents when I get outta schoolin’.

    link to tbray.org

  128. Can you respond to Stephen O’Grady’s argument, which I think represents the opinion of many if not most programming experts

    His argument has two many thrusts. First: “it is not reasonable to expect that the current patent system…will ever be able to accurately determine what might be considered legitimately patentable from the overwhelming volume of innovations in software.”

    This can be answered fairly straightforwardly. To begin, the vast majority of patents are never sued upon or used to threaten others with a suit. So we first need only concern ourselves with the patents that eventually give rise to licensing agreements, sales, litigation, or threats of litigation. Of these, litigation or the threat thereof is probably of the greatest concern. Yet only a few thousand patent lawsuits are filed each year, and only a few hundred of those go to a verdict. Contrary to Mr. O’Grady’s assertion, the patent system seems well equipped to handle the comparatively low volume of what might be called contested patents.

    (I’ll grant that the Patent Office is slow to handle reexaminations, but that could be fixed with a reasonable increase in resources at the Office.)

    His second thrust is this: “for some of the proposed inventions, there may only be a handful of people in the world qualified to actually make a judgment on whether a development is sufficiently innovative so as to justify a patent.”

    First, he fails to cite an example of this. Second, all the examiner or judge needs to do is determine whether something would have been obvious. The ‘handful of experts’ can be called as witnesses and their testimony weighed, or their publications can be introduced as evidence. Again, Mr. O’Grady fails to cite an example of the courts getting it wrong in which experts produced evidence showing that, in fact, the patented invention was anticipated or obvious. Indeed, it would take numerous such examples to prove his point.

    Mr. O’Grady further claims without evidence that none of these experts will be employed by the Patent Office (quite the slight to the Office!). His claim that fact witnesses cannot be given adequate incentives is based on a single blog post in which a single programmer documents a single instance in which he was paid $55 for his services as a fact witness. And of course the witness did, in fact, testify, which tends to fly in the face of Mr. O’Grady’s assertion.

    But we can refute his conclusions thus: First, witnesses can be compelled via subpoena or contractual obligations in some circumstances, and in other cases they will be motivated out of self-interest. Second, otherwise, if a case is important enough, then witnesses will be compensated sufficiently to encourage their cooperation. Third, publications and other forms of documentary prior art don’t require the cooperation of witnesses.

    One final point of Mr. O’Grady’s is especially specious: “Nor will two developers always come to the same conclusions as to the degree to which a given invention is unique.”

    Witnesses disagree all the time in all kinds of cases. If we can decide murder cases on the basis of which witnesses to believe, surely we can decide patent cases on the same basis. The law has developed many safeguards and procedures for dealing with this issue. It is not the total impediment to justice that Mr. O’Grady seems to believe.

    I could go on at greater length, but those are some major objections to his argument that can be made in a (relatively) succinct fashion.

  129. I’m all for methods of increasing the size of one’s bank account, old and new.

    But’s absolutely pointless and counterproductive for the government to grant patents on such methods, which are ultimately methods of transforming one abstraction (a monetary value) into another (a different monetary value). Still abstract. Still not a substantial utility under 101.

  130. Malcolm,

    You say that like it’s a bad thing…

    Posted by: ping | Sep 14, 2010 at 08:57 PM

    ____________

    Ummm..me thinks Malcolm missed this breaking news….

    “The American journalist Jeffrey Goldberg recently asked Cuban leader Fidel Castro whether the Cuban economic and political system was worth exporting. Mr. Castro’s answer was, “The Cuban model doesn’t even work for us anymore.” ”

  131. IN DEFENSE OF BUSINESS METHODS

    Better yet, how about “IN DEFENSE OF THE PATENTABILITY OF METHODS WHOSE ONLY TANGIBLE PURPOSE IS TO INCREASE THE SIZE OF ONE’S BANK ACCOUNT”. That way we can eliminate some or most of the b.s. sideshow about how nobody can define “a business method”.

  132. Goetz: A software patent invention is on a unique machine process

    Really? Beauregard claims are process claims?

    Could have fooled me.

    Is a computer disk a new and useful process, machine, manufacture, or composition of matter? If it’s a machine, manufacture, or composition of matter, how is it possible that it is defined purely functionally, without reference to any novel or non-obvious structure whatsoever?

  133. Isn’t the main problem really still that it is too difficult for PTO examiners to find the best prior art for such patent applications, hence overbroad claims in some cases? Plus some such patents that previously issued with insufficient 112 enablements?
    Also, this technology has moved so fast that what may be regarded in the field as “ancient history” may still be [surprisingly] within the life terms of older patents still running for their 20 years from their original filing dates.

  134. “Also, Dennis, may I suggest that you find someone to write a post titled,

    IN DEFENSE OF BUSINESS METHODS”

    good idea!

  135. What Martin wants…

    What’s the word that I’m thinking of? Um, let’s see – ah yes – Gobbledygook.

    What next, guest posts by Michael R.Thomas?

  136. Methinks that your amicus is prior art to the Kurzweil 3000. A/K/A MST3000.

    Also, I agree … you are quoting a minority opinion.

  137. Also, Dennis, may I suggest that you find someone to write a post titled,

    IN DEFENSE OF BUSINESS METHODS

    Especially since that is what is consistently under attack here.

  138. Essentially the Court confirmed what their precedents and the statute has always held,

    “Any applied process that produces novel, new and unexpected results is patentable.”

    And that includes methods of conducting business. So this notion that software is somehow worthy of patent protection but so called business methods are not is totally without judicial, statutory, or constitutional merit.

  139. “Justice Kennedy, with the concurrence of all other Supreme Court members, wrote that the Information Age puts innovation in the hands of more people and raises new difficulties for the patent law (and the Patent Office) to determine who should or should not receive patent protection.”

    Look NWPA, I know you have a hard time distinguishing what is a plurality opinion, what is a majority opinion, and what is a unanimous decision. But you need to go and read real slowly who signed on to that portion. It was 4 judges total iirc.

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