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
[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.
Any more information on the “Associate Commissioner for Innovation Development”? I wonder if the USPTO is looking for more technologies for improving examination efficiency.
I almost wish more Applicants would be willing to appeal.
I’ve actually noticed some Examiners lately seem to try and keep the applications out of condition for appeal. Are Exmainer’s getting dinged for reopening prosecution?
LOL,
Is the big bad Patent Office losing its Strong Arm fake judiciary in a shake up to make the judiciary appear above the taint currently associated with taking their pay from the very same party they be ajudging?
What if this backfires and the BPAI actually treat examiners and applicants with equal deference (including the stoppage of cherry picking cases that are accepted in order to “make judicial law”.
6, you think your appeals smack you upside the head now, you aint seen nuthin yet.
I wonder if this is what Shaking My Head was alluding to:
link to uspto.gov
“It also transfers the reporting of the Board of Patent Appeals and Interferences and the Trademark Trial and Appeal Board, which were formerly part of the Office of General Counsel, to the Office of the Under Secretary. Additional changes involve the Patent Organization – including the addition of an Associate Commissioner for Innovation Development – and the Office of the Administrator for Policy and External Affairs to better align and clarify competencies and functions performed by those organizations.”
its obvious you still don’t know who grants Congressional Power.
The army?
The almighty dollar?
If the opposite of “pro” is “con,” then what’s the opposite of “progress?”
Have you figured out what a “Congressional Power” is yet, and how it is different from a “Constitutional Right?”
/hatches evil plan to keep thread going
Posted by: TINLA IANYL | Sep 29, 2010 at 04:0
_______________________
As the producers of Hawaii 5 0 will soon learn, you should never attempt to remake a classic. Besides its obvious you still don’t know who grants Congressional Power.
last word?
Gratuitous padding of pposts is no way to add substance to a thread.
Agreed.
On the other hand, for this thread, such would be an improvement over the vast number of posts here.
Gratuitous padding of pposts is no way to add substance to a thread.
Impressive yes, but no thread will ever surpass the Constitutional Right to a patent debate thread(s) which BTW the Actual Inventors won. 😀
Amen to that, AI. I salute your munificent and esteemed self once again!
“Constitutional Right to a patent”
I still LOL every time I read that.
Have you figured out what a “Congressional Power” is yet, and how it is different from a “Constitutional Right?”
/hatches evil plan to keep thread going
The bugle call and the faint “mehing” sound you hear from 6 reverberates with the poster above, answering the namesake question, and signifying the power of TINLA’s “/thread”
Posted by: ping | Sep 28, 2010 at 08:09 PM
Impressive yes, but no thread will ever surpass the Constitutional Right to a patent debate thread(s) which BTW the Actual Inventors won. 😀
/thread?
The bugle call and the faint “mehing” sound you hear from 6 reverberates with the poster above, answering the namesake question, and signifying the power of TINLA’s “/thread”
Meh there wasn’t much in that article actually. It was mostly about the law as it actually is, which I don’t care much about.
There, fixed it for you.
Only 74 more comments to go. C’mon! We can do it if we work together!
There are these two guys hanging out on the corner of Beauregard BLVD and MPF AVE, sporting picket signs that read “The End is Near.” A third joins them and says, “Hiya MM and 6. What’s up?” They reply, “Hiya, IANAE. The end is near, don’t ya know?” IANAE replies, “Yup. Here’s my sign.”
Classic chuckles 6 – simply classic.
You supply the references, you note how interesting they be, and then them same references turn around and Ki ll your position. “Meh there wasn’t much in that article actually.” Dem references have plenty to say about functional claiming.
” both the legislature and the courts ”
Not the legislature, but the courts sure did.
“Any updates on this fine excursion into the unknown for the one called 6?”
Meh there wasn’t much in that article actually. It was mostly about 112 6th nonsense which I don’t care much about.
Primer to be published soon by 6:
“Everything I didn’t like when I learned me about the actual Law.”
Hows them studies coming along 6? Let me guess – both the legislature and the courts were feeling mighty generous on those special days and ruined the system for everyone, right?
“Yep. I’m reading an article about it now.”
Any updates on this fine excursion into the unknown for the one called 6?
Actual Inventors win again.
Posted by: IANAE | Sep 24, 2010 at 04:27 PM
“Actual Inventors win again.”
They always win 🙁
lol.
Posted by: 6 | Sep 24, 2010 at 04:29 PM
______
True, but you have to actually be an Actual Inventor, to be a winner.
But don’t worry because you always work for one. 😉
Nothing you just said in the third and fourth para makes any sense tardface.
What’s interestin 6, is that your posts sound more and more like the bugle call of full retreat.
Sure, O’l Steinie’s notes aint got the force of law, and neither do the Mighty Landis, from whom those notes be takin. But iza say that either of those two have better positions than anything you’ve done thrown up on this thread.
And what’s also interestin is your backtrackin when it comes to Rich and company. Ya see, when a majority (not one) o judges decide a case and make law that’s one thing – but it smacks of pretty nigh conclusive when one of those judges intersects with the architect of the legislative law. As much as you don’t like it – both avenues of law say you be wrong. Plus given the fact that the physics (the real world) facts also paint ya wrong, ya be left holdin the Willton bag of “policy only” driven by your wanna be philosophy.
Svcks to be you.
OOPS, my bad. It does have function… It is a Frisbee.
If means is the data on the DVD/ Disc. And function is the Computer? And if the data can’t function unless it uses something to read it…..Doesn’t that just stop it at means with no function until it’s read?
Students interested in functional claiming can look here to find the decision where it appears the judiciary first started to f with the pre-1952 act nigh “ban” on functional claiming.
Fuetterer, 319 F. 2d 259 – Court of Customs and Patent Appeals 1963
link to scholar.google.com
They base their finding on a number of things in this particular case, including one outrageous one. This being the writing of a scholar of the 1952 act stating his belief that more functional claiming is now allowed with the introduction of (what is now 112 6th, but used to be 3rd para). Well no sht sherlock, the kind that is specifically sanctioned by it is now allowed where it wasn’t before.
So, in any event, we have these guys to thank for assisting breaking the patent system:
Before RICH, MARTIN, SMITH, Associate Judges.
In particular RICH, Judge, who wrote the opinion.
And we have these guys to thank for attempting to preserve the respectability of the patent system and continue to ensure what we would now call enablement over the entire breadth of functional terms:
WORLEY, Chief Judge, with whom ALMOND, J., joins (dissenting).
One dude changed how you draft applications today. Too bad the PTO didn’t get the USSC to remedy the situation right then. Now here we are, 50-60 years later still waiting on a case to do the deed.
“Yeah 6, I be waiting to ya get to the interestin parts that negate everything you have said on this here thread.”
Lol, what Landis and David Stein think is the law is quite irrelevant. All I said was that it was interesting. They provide no justification (at least david doesn’t, and I don’t recall Landis doing it either) for their beliefs in some specific points of lawl that you’d like to be the lawl. They simply say that they are allowed ways of claiming. He’s right, nobody has bothered to smack them down just yet, they are allowed. When I smack them down in my own office they naer make a peep. Too bad too, because I’d be all too happy to disabuse these fellas of their “allowed” formats.
And pinger, I told you to stop doodling in the thread, so stop ya tard.
“Interesting reading notes from Landis by David Stein (he’s on here sometimes)…”
Yeah 6, I be waiting to ya get to the interestin parts that negate everything you have said on this here thread.
Let me know if ya still think it be interestin then, will ya?
“6, you have to know that Congress responded to that debate by explicitly changing the statute in 1952 to say that we can claim things functionally. ”
Yep. I’m reading an article about it now.
“What IANAE has a problem with is that the CAFC has said the disclosed algorithm is the structural means”
Yeah I have a problem with that too because it is a lie. But, so long as it is means p f, I’m not that concerned about it really. Mpf is just asking for invalidation lately.
I’m not so worried about mpf, just f limitations by themselves are what holds interest for me.
A pity that congress did not write 112 7th paragraph to ban the rest of functional claiming and make you use MPF.
6, you have to know that Congress responded to that debate by explicitly changing the statute in 1952 to say that we can claim things functionally. What IANAE has a problem with is that the CAFC has said the disclosed algorithm is the structural means. A different algorithm that does that functions in the same way to achieve the same result would not infringe becaseu the patentee doesn’t get functional equivalents under the DOE with M+F. But the same algorithm used to accomplish something else is still a structural equivalent.
Happy Friday! I’ll pwn yu later.
Here’s a nice one from 1995 “bringing theory into practice: predictable scope for functional patent claims” JPTOS 1995
Interesting reading notes from Landis by David Stein (he’s on here sometimes)
link to djstein.com
MM, if you look at the Lowry decision it is actually to something different than you think it is. They are, in essence, iirc, claiming a different manner of storing small data packs, physically, on the computer. They’re not trying to patent the information content thereof.
That I have less of a problem with than trying to patent the content of the information by putting it on a disk etc and calling the disk new.
Here is what I was looking for in the first place though. General Electric v Wabash, 304 US 364, 1938 CD 813.
“The court of appeals for the night circuit relied on the fact that the description in the claims is not “wholly” functional. 80 F. (2d) 958, 963. But the vice of a functional claim exists not only when a claim is “wholly” functional, if that is ever true, but also when the inventor is painstaking when he recies what has already been seen, and then uses conveniently functional language at the exact point of novelty.
A limited use of terms of effect or result, which accurately define the esential qualities of a product to one skilled in the art, may in some instances be permissible and even desirable, but a characteristic essential to novelty may not be distinguished from the old art solely by its tendency to remedy the problems in the art met by the patent. And we may doubt whether the language used in claim 25, taken by itself, conveyed definite meaning to those skilled in the art of incandescent lighting”.
Claim 25:
A filament for electric incandescent lamps or other devices, composed substantially of tungsten and made up mainly of a number of comparatively large grains of such size and contour as to prevent substantial sagging and off-setting during a normally or commercially useful life for such a lamp or other device.
I note that I also share the opinion with the court about 112 here. We have relative terms aplenty.
broje You start out saying the caselaw only permits Beauregard claism becasue the PTO took a dive on the issue.
That wasn’t the argument. The argument is there is no reasoned legal basis for allowing methods carried out by a computer to be claimed as compositions where the applications disclose zero novel structure which would distinguish these compositions from the prior art. Period.
It’s very simple, broje. Only two types of people don’t “get it”: rhymes with criers and borons.
And then there was that WIDFTL character upthread who claims it’s all justifed by In re Lowry which is an incomprehensible self-contradicting piece of crxp that Rader pulled out of his axx.
O, and he cites Haliburton Oil Well Cementing Co. v. Walker. I think that is the case Ned brings up actually.
man broje, you might like what Learned Hand had to say about smacking down functional claiming. Check out Royal Typewriter v. Remington Rand 77 USPQ 517. He smacked em down hard back in the day.
I quote: From the beginning courts have held, that since the claim is the measure of the monopoly, it must advise the public of its scope, and may not be stated in terms of ends or purposes, for that would extend the monopoly to all contrivances which would accomplish the same results, and these might owe nothing whatever to the patentee.
He goes on to note how there needs to be a reasonable balance between this and the “drafter’s dilemma” of not having anything worth claiming if they can’t use some functional language.
sorry, “functional claims” is the title.
Man this is cool, I just found a PTOS publication from 1949 entitled “Functional Claiming” and the first few things it says is that the subject was argued for generations at the time of publishing. I’m reading the article now.
How about that case Ned keeps citing
link plx
Now show me some case law that interprets 112 in the strict way you say, that structural equivalents necessarily have to be narrower than functional equivalents.
How about that case Ned keeps citing, that said functional claiming at the point of novelty is indefinite? You know, the one that led to 112 6th being enacted in the first place.
That one was a Supreme Court case, and I sure as heck can pick and choose caselaw if it means disregarding Federal Circuit cases that contradict the Supreme Court.
LOL. You start out saying the caselaw only permits Beauregard claism becasue the PTO took a dive on the issue. Then I kept pounding you with different caselaw to show otherwise, and you keep saying you disagree with those cases. You can’t pick and choose from the caselaw. It’s hurting your credibility.
Now show me some case law that interprets 112 in the strict way you say, that structural equivalents necessarily have to be narrower than functional equivalents. Don’t come back without one or I will make fun of you, and you will cry. qq
“Actual Inventors win again.”
They always win 🙁
lol.
So long as the computer readable medium contains instructions that carry out the disclosed algorithm, it must be a structural equivalent. That’s the only logical conclusion.
It’s not a logical conclusion at all, because it’s contrary to 112 6th. The only reason 112 6th exists in the first place is to make means-plus-function claims narrower than “anything that performs the function”, which would otherwise be indefinite.
This conclusion is about as ridiculous as the “it’s a whole different computer now!” bit immediately preceding it.
Strange, Rader is usually better at this.
Checkmate.
Actual Inventors win again.
Come on Broje, give us the whole quote.
“For computer-implemented means-plus-function claims where the disclosed structure is a computer programmed to implement an algorithm, “the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). Thus the patent must disclose, at least to the satisfaction of one of ordinary skill in the art, enough of an algorithm to provide the necessary structure under § 112, ¶ 6. This court permits a patentee to express that algorithm in any understandable terms including as a mathematical formula, in prose, see In re Freeman, 573 F.2d 1237, 1245-46 (CCPA 1978), or as a flow chart, or in any other manner that provides sufficient structure.”
Checkmate urself lol.
The reason Judge Rich said the indica on the measuring cup is acceptable as patentable, is because it is a measuring cup. And without the markings to show the measure it would be just a cup.
“The CAFC has ruled that disclosing an algorithm, psuedocode, detailed step by step process, mathematical equation, etc. fulfills the requirement to disclose means for the claimed function.”
That is a rather generous reading of WMS.
“Any computer readable medium containing software that functionsin that way is then a structural equivalent.”
That is a rather um, “creative” application of a rather generous reading you just made up of WMS. “structural equivalent” lol, I like that broje, you make that up all by yourself?
link to cafc.uscourts.gov
“the patent must disclose, at least to the satisfaction of one of ordinary skill in the art, enough of an algorithm to provide the necessary structure under § 112, ¶ 6. This court permits a patentee to express that algorithm in any understandable terms including as a mathematical formula, in prose, see In re Freeman, 573 F.2d 1237, 1245-46 (CCPA 1978), or as a flow chart, or in any other manner that provides sufficient structure.”
The structure is the algorithm disclosed. It is not necessary to specify the disk locations and pointers employed, or the target operating system. So long as the computer readable medium contains instructions that carry out the disclosed algorithm, it must be a structural equivalent. That’s the only logical conclusion.
Checkmate.
Any computer readable medium containing software that functionsin that way is then a structural equivalent.
That last bit can’t possibly be right. If every possible structure that performs the function were automatically a statutory equivalent, 112 6th would be meaningless and your claim (now purely functional) would run into the same problems that functional claiming had before 112 6th was enacted.
Okay, so claim the structure.
If you claim functionally, you still need to describe the structure in the spec to satisfy 112 6th. I don’t think I’ve ever seen a written description of the microscopic structure of a computer-readable medium that corresponds to its function, much less any reason to include as statutory equivalents all possible structures of all commonly-accepted media that perform the same function.
The CAFC has ruled that disclosing an algorithm, psuedocode, detailed step by step process, mathematical equation, etc. fulfills the requirement to disclose means for the claimed function. Any computer readable medium containing software that functionsin that way is then a structural equivalent.
/thread
But a disk storing one instance of software is physically/structurally different from an otherwise identical disk storing different software. Those structures are microscopic, but they are no less physical and tangible.
Okay, so claim the structure.
If you claim functionally, you still need to describe the structure in the spec to satisfy 112 6th. I don’t think I’ve ever seen a written description of the microscopic structure of a computer-readable medium that corresponds to its function, much less any reason to include as statutory equivalents all possible structures of all commonly-accepted media that perform the same function.
But a disk storing one instance of software is physically/structurally different from an otherwise identical disk storing different software. Those structures are microscopic, but they are no less physical and tangible.
You guys really just have a problem with the article being claimed using functional language, but the statute was amended by Congress in 1952 to allow that, especially because it can be possible to enable all possible structures by disclosing some example structures, yet impractical to disclose and claim all structures explicitly.
“Sorry, chum. I don’t think you have an education in computer science/EE. Bad software can cause real physical harm to the hardware. It can break a headdisk and break a monitor forever.”
Yeah I was going to tell him, but that whole line of discussion didn’t matter one whit so I didn’t bother.
His original point (my point from a long time ago) about the CRM just sitting there doing the same thing, delivering the data thereon is correct. The fact that a reader device etc. might get blown up reading the data, or the comp or peripheral thereof might blow up after executing a bad program encoded by that data is quite irrelevant, the CRM just sits there. The CRM itself might even be destroyed by the reader etc. if bad data causes the device to malfunction, but still it just sits there.
Bad software can cause real physical harm to the hardware. It can break a headdisk and break a monitor forever.
Okay, so if you have a hard disk containing instructions for breaking itself, that will get you around the printed matter doctrine.
Now, all you need is a credible utility for it.
Is that your understanding?
My understanding was that the perforations were also arranged differently from the prior art tickets, and that the significant feature of the invention was the ability to selectively remove one or two sections of the ticket while leaving the remaining sections attached to the ticket book.
The Sixth Circuit considered that the invention “clearly involves physical structure”, which I assume means the perforations.
>>No, it can cause the computer to fail to make proper use of the disk or the monitor. The disk and the monitor are still perfectly capable of performing their functions,
Sorry, chum. I don’t think you have an education in computer science/EE. Bad software can cause real physical harm to the hardware. It can break a headdisk and break a monitor forever.
Let’s get this straight. IIRC, there were already tickets with perforations and stuff printed on them. The patent was just for different stuff printed there, so that a conductor would tear perceive the ticket stub differently than previous ticket stubs. Is that your understanding?
How do you figure?
Because, as I explained yesterday, the arrangement of writing and perforations gives the ticket itself a broader range of functionalities. It makes the physical ticket usable for transfers in a way prior art tickets were not.
It’s also useful without the train. You could use it for free drink refills, exit and re-entry to amusement parks or museums or the like after having paid the admission fee, or whatever. The train doesn’t matter. The ticket has learned a new trick.
Only if you don’t mind being wrong.
How do you figure?
You could say the same about the indicia on the train ticket.
Only if you don’t mind being wrong.
Unless you’ve found a way for the poem to cool off your cocoa somehow, the only functional relationship is with the reader.
You could say the same about the indicia on the train ticket.
“Functional relationship?”
With what? Your brain?
Functional relationship?
Unless you’ve found a way for the poem to cool off your cocoa somehow, the only functional relationship is with the reader.
How about this poem on a mug:
Cocoa really hits the spot.
CAUTION contents may be HOT!
Functional relationship?
NWPA: A bad driver (software) can cause a disk to fail and a monitor to fail.
No, it can cause the computer to fail to make proper use of the disk or the monitor. The disk and the monitor are still perfectly capable of performing their functions, the computer just doesn’t know how to tell them what to do.
TINLA: The measuring cup contains and discharges milk, flour, or sugar the same way regardless of what kind of indicia are upon it. Yet Judge Rich said the indicia have a functional relationship to the measuring cup.
Yeah, I did say I thought he had got that one wrong. Judges do that sometimes. He was right about the rejection being bad, and he got a bit casual with his language.
TINLA: You keep acting like the machine that employs the instructions is just the computer, and not the combination of the computer and the disk encoded with the instructions.
Even if it is the combination of the computer and the disk, that combination is still not positively recited in a Beauregard claim. But of course it’s not. The disk is only there to deliver a string of bits, and it does that no matter what the bits are. The substrate is the disk, and the disk is not functionally affected by the data on it.
TINLA: Except maybe power. Do we have to claim the battery too?
I would say that’s inherent once you claim the computer carrying out steps. Only, you’re deliberately not actually claiming the computer, so I can see why that would bother you.
TINLA: As long as the substrate not being just any old piece of paper makes the indicia useful, as opposed just any old piece of paper, there is a functional relationship.
A computer memory is no more than a digital form of “just any old piece of paper”. The printed matter doctrine was developed for this exact situation – one where the functional relationship is not with the piece of paper itself but with the person/computer reading the piece of paper.
If you really wanted to, you could print your code on actual physical pieces of paper, and have the computer OCR it and execute the code. You’d need a lot of paper to hold the data on a single floppy or DVD, but it could be done. That paper would act as a data storage device in exactly the same way as any other computer-readable medium, and would have the exact same (absence of) functional relationship with the writing on it. So how can one medium be unpatentable printed matter and the other not, particularly when you don’t specify the type of medium in the claim?
“You keep acting like the machine that employs the instructions is just the computer, and not the combination of the computer and the disk encoded with the instructions. ”
Because it is?
“You are wrong. Even if the instructions are transferred to another memory inside the computer, the claim can be read on that memory thereafter.”
So…? That new memory doesn’t “employ” the instructions any more than the previous one did. And even if it did, how would it “employing” (said in whatever manner you’re stretching that word) the instructions have any bearing on anything?
“But at the instant the disk is inserted in the computer, you have everything you need to accomplish the machine.”
Accomplish the machine? Machines are “accomplished”? If they are, what relevance does “accomplishing” a machine have to anything?
” Imagine if you could buy a detachable trasparent sleeve of measuring cup indicia and apply it to any measuring cup. ”
I could sell you one of those, so technically you can buy those you don’t have to imagine.
“The modularity of the device does not eliminate the functional relation ship of the indicia to the transparent sleeve substrate.”
You’re right, one never existed in the first place. Hard to eliminate something that never existed 🙁 If you think I’m wrong, go ahead, make what the functional relationship is explicit for me. Remember, it has to be between the indicia and the transparent sleeve substrate and not between the indicia and a housewife’s brain.
“As long as the substrate not being just any old piece of paper makes the indicia useful, as opposed just any old piece of paper, there is a functional relationship. ”
Says Rich 50 years ago, probably deep in dementia already. But I can see that you’re now on board with pieces of paper being patentable too, so long as some software that makes a computer useful is thereupon.
“The problem is that you guys just don’t understand the printed matter exception properly, that’s all. Break open Chisum and bone up on it.”
Nah, I don’t personally care to apply it in any event, but it should apply to such situations. The fact that it doesn’t is a failure of the courts. I personally don’t mind it enough to take such a thing to the supremes, there are so many ways to accomplish what I desire I hardly need it.
But let’s see what IANAE has to say.
The measuring cup contains and discharges milk, flour, or sugar the same way regardless of what kind of indicia are upon it. Yet Judge Rich said the indicia have a functional relationship to the measuring cup.
You keep acting like the machine that employs the instructions is just the computer, and not the combination of the computer and the disk encoded with the instructions. You are wrong. Even if the instructions are transferred to another memory inside the computer, the claim can be read on that memory thereafter. But at the instant the disk is inserted in the computer, you have everything you need to accomplish the machine. Except maybe power. Do we have to claim the battery too?
Imagine if measuring cups were sold with detachable bottoms, and you could buy the measuring cup without the botttom and then combine it with a bottom. Imagine if you could buy a detachable trasparent sleeve of measuring cup indicia and apply it to any measuring cup. The modularity of the device does not eliminate the functional relation ship of the indicia to the transparent sleeve substrate.
As long as the substrate not being just any old piece of paper makes the indicia useful, as opposed just any old piece of paper, there is a functional relationship. The problem is that you guys just don’t understand the printed matter exception properly, that’s all. Break open Chisum and bone up on it.
>>Godel sentence on a disk can’t cause the disk to fail.
A bad driver (software) can cause a disk to fail and a monitor to fail.
Even putting the computer’s Godel sentence on a disk can’t cause the disk to fail. The most it can do is cause the computer to fail when it checks what’s on the disk.
Well that cinches it. Now we know that Beauregard claims are invalid.
This is one of the stoopider tangents on this thread that will not die.
In my opinion, that is.
That’s something which you would know if you had friends in the printer AU’s that deal with printer cartridges and their relationships with the ink therein.
Or even if you’ve ever owned a printer. The OEMs will all tell you that refilling their cartridges with third-party ink may cause the cartridge to jam or otherwise fail.
Even putting the computer’s Godel sentence on a disk can’t cause the disk to fail. The most it can do is cause the computer to fail when it checks what’s on the disk.
And pinger stop yer doodlin’ in the thread already.
“”When an ink jet cartridge is inserted in an ink jet printer, the cartridge behaves exactly the same no matter what ink it happens to be containing at the time. It sits there until the printer actuates its piezoelectric element, and then it outputs its ink without any regard at all for what the ink is”
^^^FIXT^^^
”
Actually that’s not technically true, at least in some cases. It might be true in some few cases. That’s something which you would know if you had friends in the printer AU’s that deal with printer cartridges and their relationships with the ink therein. It is a good bit more complicated than you might think, at least sometimes.
“When an ink jet cartridge is inserted in an ink jet printer, the cartridge behaves exactly the same no matter what ink it happens to be containing at the time. It sits there until the printer actuates its piezoelectric element, and then it outputs its ink without any regard at all for what the ink is”
^^^FIXT^^^
I have a question for you MM: when is functional language used in the chemical arts? And why?
“What is today’s PMD?”
me quoting me.
6,
Ya might also ask yourself what caselaw controls today’s PMD. Feel free to tag Sunshine to help ya out, but I wouldn’t go to Ned, as he not be too reliable these days – he be two homework assignments behind.
Dear AI
Thank you. I’ll leave you alone now, none the wiser (me? you? both of us? You choose!)
Posted by: Ah Pook | Sep 23, 2010 at 05:26 AM
_______
Ah Pook, ( I only call Ping Dear) I would love to continue to post the facts and law as to why business methods are legal, useful, and the bedrock of our society. But quite frankly I have already won that debate. No one, and I mean NO ONE, can or will answer the questions I posed or refute any of the facts, logic and law I have posted in this thread.
You simply say, you don’t understand while others just cut and run. In either case its a win for Actual Inventors everywhere.
We always win. 😉
6,
What is today’s PMD?
Of course this is an obvious attempt at keeping this wonderful string alive and kickin.
Not until it is inserted in an ink jet printer.
When it is inserted in the ink jet printer, the cartridge itself functions differently depending on what kind of ink is inside it. In principle, you could replicate that difference in function without the printer by simply causing the cartridge to deliver ink, you’d just have no real reason to do it. The point isn’t whether the cartridge needs the printer to function. The point is whether the functionality of the cartridge itself is affected.
When a computer-readable medium is inserted in a computer, the medium behaves exactly the same no matter what data it happens to be storing at the time. It sits there until the computer asks for its data, and then it outputs its data without any regard at all for what the data is, maybe it stores some new data that is written back to the medium, again without any regard to the data itself, and that’s it.
The reason you should claim the computer is because the computer is the only thing that functions differently because of the software.
And some new ink compositions just make the ink dry faster or whatever, No change in the way the cartridge functions there, even when inserted in an ink jet printer.
Well then, you can claim that ink by itself. Adding a cartridge around the ink doesn’t change the patentability of the ink, but the claim to the ink alone is broader anyway.
The difference was what was printed near the perforation preventing ticket stub reuse.
Yes, but the perforations happened to be structural, and they interacted with the location of the printed matter (or probably could have been used even without the printed matter) to permit different ticket functionality. The ticket itself could be used in ways a prior art ticket could not, because of the way the perforated sections were oriented and ordered.
It’s because of the functional relationship between the printed matter and the substrate.
Funny, I seem to recall some sockpuppet who called him/herself WIDFTL going on and on about how the printed matter doctrine was irrelevant to the patentability of Beauregard claims. Everything seemed to hang on this ridiculous CCPA case called Bernhart and an even less comprehensible case called In re Lowry.