The work of the Board must go on . . . . In several recent decisions, the Board of Patent Appeals (BPAI or Board) has continued to affirm rejections of claims on patentable subject matter eligibility grounds under 35 U.S.C. § 101.
In Ex parte Kelkar, App. No. 2009–004635 (BPAI, September 24 ,2010), the applicant had claimed a method of determining the similarity between two genetic profiles and a computer program stored on a recordable medium for accomplishing the method. The method involves the broad steps of iteratively matching gene expression profile pairs in clusters until a best match is found. Because the method neither recites any particular machinery nor transforms an article into a different state or thing, the Board held that it failed the machine-or-transformation test. Citing Flook (1978), the Board then held that the claim was improperly directed to an abstract algorithm because the underlying innovation was the unpatentable mathematical algorithm. Some of the method claims included a preamble statement that the method occurred “in a computer.” The Board found that limitation at most a “a field-of-use limitation that is insufficient to render the otherwise ineligible process . . . patent eligible.”
The Board went on to affirm the rejection of the computer program claims that were “stored on a recordable medium.” The Board agreed with the examiner that those the storage medium limitation was broad enough to encompass unpatentable “carrier wave storage.” (See Nuijten (Fed. Cir. 2007)). The Board wrote:
When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering nonstatutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter). See also, Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
In Ex parte MacKenzie, App. No. 2009–-7332 (BPAI, October 4, 2010), the Board issued a new grounds of rejection under Section 101 because the claimed method was directed to an abstract process under Bilski. MacKenzie's rejected claim 1 reads as follows:
1. A method for use in a device associated with a first party for performing a signature operation on a message substantially based on the digital signature algorithm (DSA), the method comprising the steps of:
generating in the first party device a first component associated with the signature operation based on assistance from a device associated with a second party, wherein the assistance from the second party device is received as a first message from the second party device;
transmitting the first component to the second party device;
generating in the first party device a second component associated with the signature operation based on further assistance from the second party device, wherein the further assistance from the second party device is received as a second message from the second party device, wherein the second message comprises results generated using the transmitted first component; and
outputting a form of the first component and the second component as a result of the DSA signature operation.
Although MacKenzie's claim does recite various devices, the Board saw these as “nominal” limitations to “generic devices.” The Board wrote:
As the unpatentability of abstract ideas was reaffirmed by the U.S. Supreme Court in Bilski (2010), clever claim drafting involving the nominal addition of generic structures cannot circumvent the principles articulated by the Court. That is, even when a claim appears to apply an idea or concept in combination with a nominal claim to generic structure(s), one must ensure that it does not in reality seek patent protection for that idea in the abstract.
In Ex parte Venkata, App. No. 2009–007302 (BPAI, October 5, 2010), the Board held that “the claim’s body recites nothing more than software [and therefore] lacks statutory subject matter.” Venkata's claim was directed to a “system” that included two “discovery agents” that operate either via a local network or via an Internet host.
Kelkar's patent application is owned by IBM and prosecuted by its in-house patent department. MacKenzie's patent application is owned by Lucent and prosecuted by the small firm of Ryan, Mason & Lewis. Venkata's patent application is owned by Nokia and prosecuted by the small firm of Hollingsworth & Funk.
Notes:
The USPTO's January 2010 guidance on the Subject Matter Eligibility of Computer Readable Media is repeated as follows. I would argue that the Nuijten decision – if read to categorically exclude transitory embodiments, is no longer good law post-Bilski.
The United States Patent and Trademark Office (USPTO) is obliged to give claims their broadest reasonable interpretation consistent with the specification during proceedings before the USPTO. See In re Zletz, 893 F.2d 319 (Fed. Cir. 1989) (during patent examination the pending claims must be interpreted as broadly as their terms reasonably allow). The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. See MPEP 2111.01. When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to
statutory subject matter) and Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2.The USPTO recognizes that applicants may have claims directed to computer readable media that cover signals per se, which the USPTO must reject under 35 U.S.C. § 101 as covering both non-statutory subject matter and statutory subject matter. In an effort to assist the patent community in overcoming a rejection or potential rejection under 35 U.S.C. § 101 in this situation, the USPTO suggests the following approach. A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the limitation "non-transitory" to the claim. Cf. Animals – Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (suggesting that applicants add the limitation "non-human" to a claim covering a multi-cellular organism to avoid a rejection under 35 U.S.C. § 101). Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se. The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure. See, e.g., Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998).
DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
[url=http://www.iknowben.com/%5Dpropecia prix[/url]
When ur 350$ an hour 25 yr exp man can’t get the job done then you can call my hotline and pay my prices. It’s for important emergencies not your everyday nonsense.
Posted by: 6 | Oct 18, 2010 at 02:59 PM
________
Naahh. I will take care of the likes of you myself. I will save my Patent Attorney for dealing with real lawyers at the BPAI, CAFC and the Supreme Court.
I was glad to read the Board’s comments regarding “clever claim drafting” in the MacKenzie case. Some have pointed out that Bilski‘s vagueness could permit many “inventions” to become patented by the use of such verbal tricks. And now, even though the Board’s determination indicates that some judges may be hip to this fact, I suspect that much patent litigation will revolve around questions as to how “nominal” the machines involved are.
“Guess I should have just said: lulz, yes.”
Yes.
“so the other three years were what? totally screwing around?”
Living my life without dreams of being an attorney, or intending to become one anytime soon is “totally screwing around”? Some people aren’t jumping up and down with excitement at the idea of being despised by your avg man.
Although I will admit that there was quite a bit of screwing around that did take place. And I enjoyed most every minute of it.
Guess I should have just said: lulz, yes.
“WTH? I wonder if this has anything to do with the reason why my patent attorney with 25 years experience told me today his fee is now $345.00 an hour. ”
When ur 350$ an hour 25 yr exp man can’t get the job done then you can call my hotline and pay my prices. It’s for important emergencies not your everyday nonsense.
AI,
The amount, like 6, was a joke.
6 just be in his own special dream-dream land. It gonna be a hard night the morning he wake up.
It really is quite something,
You’s thought you had it all.
Shysters and a Pi@@ Ant,
Now let’s play some Hardball.
He’s your Lawyer
DT it’s going up
Malcolm,
Were the “consultants” paid $500 per half hour? Cause that be what 6 gonna be making.
He just one tub O chuckles, that he be.
Posted by: ping | Oct 14, 2010 at 10:12 PM
__________
WTH? I wonder if this has anything to do with the reason why my patent attorney with 25 years experience told me today his fee is now $345.00 an hour.
“No, it’s been 1 year”
…so the other three years were what? totally screwing around? getting ready to take the practice exams? trying to figure out how to get off the short bus?
6, That’s really really sad.
“Ya mean the next time ya take the exam?”
No, I mean the first time, I haven’t taken it, only practice tests (basically just old tests from previous years) under test conditions. Getting only ~half the questions on the logic games really drags down your score. I could fill them out randomly and get half as many as I get now. O well f em.
“So its been four years and ya still haven’t even gotten a 160 yet?”
No, it’s been 1 year and I’ve gotten only slightly over 160 on practice tests delivered under the same test conditions. Doesn’t matter. I need 167, and that’s 5 more points than what I have on my best go. I haven’t been fing around with practicing though anymore. Probably should have, meh, not that concerned. Guess I’ll have to put a little effort into it soon enough though.
The only thing about the test that really ticks me off? Them getting rid of the ez section a decade or so ago. Map reading etc. is roflbabycakes points.
I guess they got rid of it because they felt it was discriminatory towards women.
AI: “Well,it all depends on which Bilski case now, doesn’t it?”
Um no, tard, it does not.
Posted by: 6 | Oct 14, 2010 at 07:32 PM
______
6, I know you are the ball in the Ping Pong match right now, but when the lawyers tire of smacking you around rub your boo boo a bit, and try and look at it this way.
The CAFC Enbanc decision of Bilski set a strict machine or transformation test which made it easy for examiners to reject process inventions like 7,065,495.
The Supreme Courts Bilski decision struck down the MOT as the sole test and went further by deciding the case based on a concept and application analysis that was referenced back to Diehr.
That leaves open the door for additional analysis and arguments that an examiner would not have needed to worry about if MOT had been upheld as the law of the land. Even you have to admit things just got harder for rejecting so called business methods and process inventions in general.
Bottom line, inventors of inventions like patent 7,065,495 now have the legal high ground.
Get your lawyers everyone!
Game on baby!!
AI: “You should just leave the Office now before you become another disgruntled public sector union hack with a chip on your shoulder.”
6. “You’re mostly failures, the whole lot of you. (which is probably what led to the decline in the law over the decade preceding this last one) ”
AI: Opps..too late!
Youth is not opened the book on the multicolored, life is not on the head, love is thrown out put back bets.
Malcolm,
Were the “consultants” paid $500 per half hour? Cause that be what 6 gonna be making.
He just one tub O chuckles, that he be.
we know that Malcolm won’t be heading North of the border now.
Way too cold.
Might start mah own. Or maybe I should start the “6 emergency patent prosecution hotline, for when your patent attorney is incompetent”.
During the boom I recall there were a few non-attorneys with paralegal experience who somehow acquired the position of being a go-between small start-up type clients and the law firm. Basically the job of these folks was to look over the law firm’s bills and find “issues” that merited an annoying phone call (e.g.: “Couldn’t a paralegal have done that?”) I think they called themselves “consultants” or something.
Not sure exactly how this relationship actually saved the client any money, unless these consultant were paid on some sort of contingency basis.
OT – but from the link at my pal Pete Zura’s blog: Canada says business methods (as a category) are patentable.
link to decisions.fct-cf.gc.ca
Well, we know that Malcolm won’t be heading North of the border now.
See 6, right there ya still fail.
Context – try to think while you read – try to understand what the context is on the subject ya be reading.
Of course the LSAT is not pass/fail. But if you do not reach that certain level, you will fail to be accepted at that particular school.
“and are the reason I’ll get ~160.”
Ya mean the next time ya take the exam? I LOLz ya sunshine. So its been four years and ya still haven’t even gotten a 160 yet? Pretty damm pathetic. Tell us what you got the last time. Didya FAIL to get what ya wanted?
“I need make no “excuse” for not becoming an evil lawlyer tardface”
bein an evil examiner tardface is good enough for ya, I see.
Oh and btw, I’m hardly a wannabe, and you’re hardly a playa. lolz.
“and your tinny excuses as to why it took you so long to get through law shcool is all it will take.”
I need make no “excuse” for not becoming an evil lawlyer tardface. I’m telling you what happened, its not an “excuse” for anything.
Maybe if you weren’t such a re tard you’d know that.
“6, ya couldn’t even make it through the LSAT, truth be told.”
You know that it is impossible to fail that test right?
“Ya went and blabbed about how the reading portion wasn’t fair”
You have that around arsebackwards there bud, the reading section is ez, it’s logic games that are bogus nonsense and are the reason I’ll get ~160.
“During recession I was struggling with deciding to go to a 2nd rate school 🙁”
Nothin like a little creative recating O history.
6, ya couldn’t even make it through the LSAT, truth be told.
Ya went and blabbed about how the reading portion wasn’t fair (truth be told – your reading skillz be horrible) and then bragged how you was gonna smash the logic problems.
Turns out ya didn’t do so well on those neither (no surprise, really).
Have you passed the LSAT’s yet?
“At first it takes you awhile to realize how badly the system is setup. (it is less so now I might add) Pre-recession they were promising to pay for this outrageously expensive lawlschool thing that you might have heard of. During recession I was struggling with deciding to go to a 2nd rate school 🙁 and the job seemed like it’d be ok to keep during lawlschool. Need one of those if I don’t want to be in the poorhouse the whole time 🙁 And they may be ready to pay for a bit more lawlschool now, or at least that was the rumor.”
Tell that story to the partner thinking of hiring you and your resume will be quickly hitting the circular file. In our field, we don’t look for reasons to hire people, we look for reasons not to, and your tinny excuses as to why it took you so long to get through law shcool is all it will take.
There are playahs and wannabees — you sir are a wannabee and it appears you will always be one.
“Well,it all depends on which Bilski case now, doesn’t it?”
Um no, tard, it does not.
“That doesn’t explain why you’re still there, four years later…”
At first it takes you awhile to realize how badly the system is setup. (it is less so now I might add) Pre-recession they were promising to pay for this outrageously expensive lawlschool thing that you might have heard of. During recession I was struggling with deciding to go to a 2nd rate school 🙁 and the job seemed like it’d be ok to keep during lawlschool. Need one of those if I don’t want to be in the poorhouse the whole time 🙁 And they may be ready to pay for a bit more lawlschool now, or at least that was the rumor.
“Which is why anyone other than the government would prefer not to hire you.”
lulz, from what I understand, even the very best of you clowns spend hours doing things that take me literally 30 minutes. And then you still fail to be persuasive. You’re mostly failures, the whole lot of you. (which is probably what led to the decline in the law over the decade preceding this last one) There’s just nothing better so people still come to you. Remember, I’ve seen you guys work. I doubt if you’re one of the competent ones yourself, but if you are, you probably lack the vision to see the incompetence of your peers. I see no reason to worry about the pathetic competition I’d face, at least in a non-recession econ where there are at least some jobs to be had.
Sure partners at billable hour firms might not like me, but clients will love me. Especially with my relatable way of explaining, people skillz, and no-nonsense but laid back attitude. Partners at non-billable hour firms might like me a lot more. I’ve heard they’re starting to get more popular lately, but I haven’t heard about whether or not they’re popular in the patent sphere yet.
Might start mah own. Or maybe I should start the “6 emergency patent prosecution hotline, for when your patent attorney is incompetent”. I should expect business to be booming. 30 minutes on the phone with me for, meh, 500$, I tell you how to get your patent, you get it and are happy. I wonder if that is legal.
Your interpretations don’t threaten anybody. You have to bow down to whatever your primary, your SPE, the BPAI, and the Federal Circuit tells you to do. You are just a bump in the road … and informality that needs to be addressed before somebody with real legal acumen can look at the issues.
The reason you aren’t a patent attorney or an APJ on the BPAI is because you don’t have the chops to get a law degree. You are the annoying fly that keeps buzzing around. However, you shouldn’t take the fact that someone swats you away as being an indication that your opinions matter. You are just any easy foil through which we can express our opinions.
Posted by: Very Curious | Oct 14, 2010 at 03:48 PM
________________
Wow! 6 just got smacked down big time!
6:
“5,608,620 ”
Just because the poor examiners back in the day didn’t have Bilski to help guide their hand on apps like that one doesn’t mean that those apps will make it through court today sonny boy.
_____
Well,it all depends on which Bilski case now, doesn’t it? Sure the CAFC Bilski ruling creating MOT as the sole test might have made it difficult but with the Supremes Bilski ruling striking down MOT and reaffirming concept and application, DCAT, inventions like this will sail thru today!
As would …7,065,495
No computer even needed here!
Face it 6, your days are over. You should just leave the Office now before you become another disgruntled public sector union hack with a chip on your shoulder.
6:
“5,608,620 ”
Just because the poor examiners back in the day didn’t have Bilski to help guide their hand on apps like that one doesn’t mean that those apps will make it through court today sonny boy.
_____
Well,it all depends on which Bilski case now, doesn’t it? Sure the CAFC Bilski ruling creating MOT as the sole test might have made it difficult but with the Supremes Bilski ruling striking down MOT and reaffirming concept and application, DCAT, inventions like this will sail thru today!
As would …7,065,495
No computer even needed here!
Face it 6, your days over. You should just leave the Office now before you become another disgruntled public sector union hack with a chip on your shoulder.
The only reason I’m even here is because they con us into accepting the job before we realize what it will entail.
That doesn’t explain why you’re still there, four years later…
And because as a general rule I prefer to not stress about things, or rush.
Which is why anyone other than the government would prefer not to hire you.
Broje I’ve been over this concept in depth, like very deep, in previous posts. If u missed those threads I’m sorry. I’m not in the mood to do it all again today.
“course, you can refuse, but that would be the brightest idea if furthering your career at the PTO was a goal of yours — then again, you are a pretty dim bulb.”
What makes you think I want to further my career at the PTO? Look tard, I kno ur ignorant of most everything about me since you’re new but I have no intention of going over all the basics with you.
The only reason I’m even here is because they con us into accepting the job before we realize what it will entail.
“Because you don’t want to miss out on all that great experience that being at the USPTO provides …. LOL …. ”
Um no, because my motivation to become an evil lawlyer like u is rather low. And make no mistake, I will be an evil lawyer. And because as a general rule I prefer to not stress about things, or rush.
“FYI, the longer you take, the less desirable you are”
I’ll always be more desirable than people like yourself so I’m not particularly concerned.
“it means you aren’t motivated”
Bingo. But, actually it only means I’m not motivated to get a JD from any ol’ university and only found out about and was in the least attracted to becoming a lawlyer around age 24 or 25. The career path of “patent attorney” isn’t all that well known or understood by your average young person. And the other law disciplines just about make me puke, save perhaps criminal defense.
“One last thing, overcoming 101 rejections has been easier now than it has been for years”
Your dealings with the rank and file do not concern me in the slightest.
“Still, I wonder if there can ever be SIGNIFICANT post solution activity.”
Sure, happens all the time. Literally every day, thousands of times.
I looked at Diehr again, and apparently they just don’t allow dissecting of claims into old and new elements, but dissecting a claim into an algorithmsand activity applying the mathematical solution produced by the algorithm is fine. Still, I wonder if there can ever be SIGNIFICANT post solution activity.
“I won’t be signing anything where it does not subjectively appear to me that applicant is entitled to a patent under the law.”
Quite naive this one. If your boss tells you to sign something, you are going to sign it. Of course, you can refuse, but that would be the brightest idea if furthering your career at the PTO was a goal of yours — then again, you are a pretty dim bulb.
“I’ll be through ur schoolin’ soon enough. I never was in all that big a hurry even though everyone always assumes I am and was.”
Because you don’t want to miss out on all that great experience that being at the USPTO provides …. LOL …. FYI, the longer you take, the less desirable you are. First, if you take a long time to get your JD, it means you aren’t motivated. Second, if you spend too much time at the USPTO, the amount of time it will take to reprogram you will take too long. Sure, you may get a job at a 2 or 3 person sweatshop, but no associate aspires for those jobs.
One last thing, overcoming 101 rejections has been easier now than it has been for years. The USPTO hasn’t made many significant changes to their 101 policies du jour in awhile, so whatever amendments we submit today are typically sufficient.
“I would go along with that but you’ll be hard pressed to find a claim that such a rare circumstancial “rule” will apply to.”
This is one of the rare moments when I think we are in agreement.
I was thinking about the “field of use” limitation too. I mean, that’s basically all that Flook stands for anymore, since claim dissection is prevented by Diehr. In Flook, you have a patent claim that allegedly covers:
“any use of respondent’s formula for updating the value of an alarm limit on any process variable involved in a process comprising the catalytic chemical conversion of hydrocarbons. Since there are numerous processes of that kind in the petrochemical and oil-refining industries (e.g., examples mentioned in the abstract of disclosure include naphtha reforming, petroleum distillate and petroleum residuum cracking, hydrocracking and desulfurization, aromatic hydrocarbon and paraffin isomerization and disproportionation, paraffin-olefin alkylation, and the like), the claims cover a broad range of potential uses of the method. They do not, however, cover every conceivable application of the formula.
…
The notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance. A competent draftsman could attach some form of post-solution activity to almost any mathematical formula; the Pythagorean theorem would not have been patentable, or partially patentable, because a patent application contained a final step indicating that the formula, when solved, could be usefully applied to existing surveying techniques.”
It’s interesting to me that neither Flook nor Diehr use the phrase “field of use” anywhere in the text. It’s just a buzzword that has been borrowed from patent licensing to be used now with respect to this concept. It’s really “insiginificant post-solution activity” that is being talked about. But doesn’t “post solution” require claim dissection? Aren’t you dissecting the claim into the algorithm and discounting (for 101 analysis) a limiting use made of the mathematical solution produced by the algorithm? Isn’t that sort of claim dissection prohibited by Diehr? But then Diehr also says:
“insignificant postsolution activity will not transform [450 U.S. 175, 192] an unpatentable principle into a patentable process. Ibid. 14 To hold otherwise would allow a competent draftsman to evade the recognized limitations on the type of subject matter eligible for patent protection.”
I just don’t know what to make of theis “field of use” limitation business. What does “field of use” mean to you? Does it only apply when the claim contains a mathematical algorithm?
“5,608,620 ”
Well AI, as I explained above, the hardest part about the abstract idea analysis is finding the abstract idea that is being preempt.
Looking at this patent however, it takes me little time to generate a short list.
1. The abstract idea of the mathematical formula which is used, along with a field of use limitations to the field of computer determined wheather forecaster payments.
and
2. The abstract idea of paying wheather forcasters based on their marginal contribution as computer calculated by the formula put forth.
Just because the poor examiners back in the day didn’t have Bilski to help guide their hand on apps like that one doesn’t mean that those apps will make it through court today sonny boy.
Too bad that this application is so worthless as to never have a chance to be litigated.
It is also too bad that this is not a purple squirrel like we’re looking for since it uses a computer, at the very least.
And just fyi, this application did not “start it all”, this issue has been around since the 1800’s at least.
“, that means you better get you but in gear and be ready to apply it when and if you get such claims that follow the rule.”
Ok AI, I’ll be sure to keep my eye out for this purple squirrel.
“I would not call a Supreme Court ruling a a rare circumstancial “rule”.”
That’s because you don’t know what we’re talking about AI. Sorry bucko.
“You have to bow down to whatever your primary, your SPE, the BPAI, and the Federal Circuit tells you to do. ”
Lulz, hardly. They can do as they please, I won’t be signing anything where it does not subjectively appear to me that applicant is entitled to a patent under the law.
“The reason you aren’t a patent attorney or an APJ on the BPAI is because you don’t have the chops to get a law degree.”
Lulz, chops. I’ll be through ur schoolin’ soon enough. I never was in all that big a hurry even though everyone always assumes I am and was.
” However, you shouldn’t take the fact that someone swats you away as being an indication that your opinions matter.”
Lulz, so ur business model is hurting and is going to be hurting more here soon. I almost feel sorry for you. If you weren’t a scamster then I would, but since you are, meh.
‘since your disdain for the Pre-Appeals process indicates all too well that ya be overturned by your colleauges quite often (Yep them be quality dings coming your way).”
Lulz, hardly and hardly. Your making up what your supposed knowledge of the results of my appeals indicates doesn’t mean squat. But nice ignorant conjecturing. And also nice ignorant conjecturing on what will constitute a quality “ding”.
I’m strapping on my lulzerskates and skating a few circles around you pingerdoodle. But nice try.
“If a process claim is not directed to an abstract idea, then a limiting hardware implementation or limiting transformation is not required.”
I would go along with that but you’ll be hard pressed to find a claim that such a rare circumstancial “rule” will apply to.
Posted by: 6 | Oct 14, 2010 at 01:51 PM
_____________
I would not call a Supreme Court ruling a a rare circumstancial “rule”. I call it the law of the land . 6, that means you better get you but in gear and be ready to apply it when and if you get such claims that follow the rule.
The fact that there may not be many such claims right now is because the Office has been willfully violating the law and it took 30 years to get a case to the Supreme Court to set the record straight.
But now that we have the Bilski case settled I expect to see the floodgates open for new, useful, novel, and non obvious processes, without machine or transformation limitations.
And if you want a prime example of such an invention, just go read the Lundgren patent. Thats the case that started it all.
FYI:
“A Method of Motivating Unbiased Human Predictions,” Serial No. 07/495,772, filed on March 19, 1990. Retitled “Method of Eliciting Unbiased Forecasts by Relating a Forecaster’s Pay to the Forecaster’s Contribution to a Collective Forecast” in Continuation-in-Part application (containing both old and new material), Serial No. 08/008,340, filed on January 25, 1993.
History:
Series of continuing applications, including one continuation-in-part application listed above. Until 1996, the patent examiners consistently rejected the application on subject matter grounds.
These subject matter grounds claim that the invention cannot be patented because it constitutes a “mathematical algorithm” and/or a “method of doing business.” No patent examiner has stated that the invention is old, obvious, useless, not clearly disclosed, or otherwise lacking in merit.
Current Status: All 21 claims allowed.
The patent was issued as U.S. Patent 5,608,620 on March 4, 1997.
“because you, and probably your business model, are threatened by my interpretations.”
Your interpretations don’t threaten anybody. You have to bow down to whatever your primary, your SPE, the BPAI, and the Federal Circuit tells you to do. You are just a bump in the road … and informality that needs to be addressed before somebody with real legal acumen can look at the issues.
The reason you aren’t a patent attorney or an APJ on the BPAI is because you don’t have the chops to get a law degree. You are the annoying fly that keeps buzzing around. However, you shouldn’t take the fact that someone swats you away as being an indication that your opinions matter. You are just any easy foil through which we can express our opinions.
Let’s see if I’ve grasped your summary. Concepts are abstract but applications are not. So, never think of your invention as an inventive “concept”. Rather, think of your invention as an inventive “application” and you should then be OK. Is that it?
Posted by: MaxDrei | Oct 14, 2010 at 07:01 AM
Maxie, that makes no sense whatsoever. If you are trying to be clever, you are only sounding dum. If you are trying to be snarky, please leave that to the professional SNARKS and SNERTS on this blog. They at least give you something to chuckle at.
“By which you mean”
No. By which I mean what I say – not the opposite of what I say (Geesh, there’s that reading prowess).
“threatened by my interpretations.”
No. Your interpretations threaten no one. Not even the hapless souls that you get to be an examiner for, since your disdain for the Pre-Appeals process indicates all too well that ya be overturned by your colleauges quite often (Yep them be quality dings coming your way).
“Sorry”
Oh you be sorry all right, just not for what you think.
“As usual”
By which you mean I’m right and you just want to try to say something against what I say because you, and probably your business model, are threatened by my interpretations.
Sorry that your inability to make a valid point leaves you without anything of substance to say against my interpretations.
6,
You are wrong.
As usual.
6 falls from his horse, snagging his foot in the stirrup. Here comes the galloping hoofs.
“Come let us see your reading and deduction skills.”
I just read what you wrote and deduced that you have a penchant for producing irrelevant questions. As usual.
“Is there any useful context in which the abstract idea can be applied without infringing the claim? If so, then the claim is not directed to an abstract idea. Otherwise, the claim is directed to an abstract idea.”
That is a beginning broje. You almost have a workable inquiry. I assume you cribbed off my earlier writings. Be sure to finish up. Now figure out a way to work in that one, two or a few applications that can be done without infringing likely will not save a hugely broad claim. And then figure out a way to work in that a field of use limitation being the only thing standing between determining the claim to be an abstract idea under your analysis is insufficient to have the claim deemed not directed to an abstract idea.
Then you’re golden. Unless I’m forgetting something.
“The problem, for me, is identifying exactly what is the abstract idea”
That’s usually the only hard part about the abstract idea analysis.
“and reasonable people can disagree about what abstract idea is or is not being preempted by the claim.”
Not really. At least not usually. It is a factual question that is usually very simple. If you’re having that much of a problem on a regular basis you’re probably doing it wrong.
“If a process claim is not directed to an abstract idea, then a limiting hardware implementation or limiting transformation is not required.”
I would go along with that but you’ll be hard pressed to find a claim that such a rare circumstancial “rule” will apply to.
A propos “transformation” and “abstract”, perhaps there is something at the concept/application interface, like there is between pure and applied mathematics. Thus, a mathematical “transform” of abstract symbols is abstract and not patent-eligible, but a method of transforming data collected from the surrounding real world and representative of, say, oil-bearing geological strata would be eligible. But which side of the line lies “transformations” of data about business transactions between humans? How much more “abstract” are “applications” that involve those “transformations” of real data?
6,
As to reaffirming, where was Stevens on Benson? on Diehr?
Come let us see your reading and deduction skills.
“Truly, this would be to eat up the rule under the guise of an exception.”
Um not really. Maybe u should try reading Diehr sometime. It reaffirms Benson and provides an exception.
Ned Heller,
I will add to Ben’s admonition.
When I (and when I say “I” here, I intone the majority) stated that “Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.“, I was clearly making Diehr the controlling case. The principles (by the way championed by that loser Stevens) articulated in Benson and Flook do not control. It is the principles in Diehr that control. The limitation is not an exception – it always applies.
“Bilski gave no analysis as to why its claims were abstract.”
For now, I am trying to apply the preemption analysis to determine if the claim is abstract. It goes something like this:
Is there any useful context in which the abstract idea can be applied without infringing the claim? If so, then the claim is not directed to an abstract idea. Otherwise, the claim is directed to an abstract idea.
The problem, for me, is identifying exactly what is the abstract idea. In many cases, it seems to be a moving target, and reasonable people can disagree about what abstract idea is or is not being preempted by the claim.
Following up on IANAE’s characterization of Benson and Diehr:
“As for Benson, it basically says that an abstract idea plus a non-limiting hardware implementation is still an abstract idea. Its scope was limited by Diehr, which held that a limiting hardware implementation makes an abstract idea non-abstract …”
that’s not too bad a characterization. But I must quibble slightly with this:
“All Bilski really says is that abstract ideas aren’t patentable (which we already knew), and Bilski’s claims are an example of such.”
In stating that MOT is not the sole test, I think it fair to say that Bilski also stands for:
If a process claim is not directed to an abstract idea, then a limiting hardware implementation or limiting transformation is not required.
Of course, they did not give us any examples of process claims that would not be abstract and still fail MOT, and Breyer went on to say that they don’t think there would be many such claims. But, there you go.
Shame on you, Ned Heller, for your mournful and wayward view of:
“The controlling law is Benson and Diehr provides an exception.”
Truly, this would be to eat up the rule under the guise of an exception.
Oh I forgot to add:
IANAE, nice one!
I forgive him too. Even his ad Hominem style. So long as he gives readers a laugh each time he excretes something on to the moving thread. So far so good today ping.
Pang, I am confident, that ping will take much comfort from his being judged by you to be “forgivable”. You know, the older I get, the more I find that things are not as “easy to understand” as I used to think they were when I was a little boy.
Hey, let’s have some entertainment here today, shall we?
Ping,
Your mistake is forgivable, as it is easy to understand that less of both 6 and MaxDrei would be a good thing.
Waitress, Better make that a double and change “less” to “more.”
More morning LOL’s
Maxie – “whether the CAFC agrees with the “no-nonsense” approach advocated by 6 in these columns)”
If there is anyone on these boards with less nonsense than 6, it’d be Maxie.
Rather, think of your invention as an inventive “application” and you should then be OK. Is that it?
The next step in his logic will surely be “and everything filed at the PTO is an ‘application’, so Actual Inventors win again”.
This leads me to conclude that the recitation of a computer in the Bilski claims would not make them patentable for the same reason that the recitation of a computer in the Benson claims did not render those claims patentable.
That’s as it should be, isn’t it? We shouldn’t have magic words that get claims allowed. The invention itself, properly set out in a claim, should be either statutory or not. Software and methods of using computers inherently use computers, whether or not they’re in the spec, so unless the recitation of a computer is required for 112 somehow it shouldn’t tip the balance.
I don’t think Bilski necessarily rules out all methods of balancing financial risk, but that’s certainly a very likely outcome. Some day, someone is going to come up with the “best possible” software claim (maybe data compression or encryption – something that actually transforms the data itself), and someone else is going to come up with the “best possible” financial method (whatever that is, probably requiring physical possession of commodities), and then we’ll really see what’s what. Right now there’s only one end of the 101 spectrum (Benson, Flook, Bilski), and we have no idea what’s on the other end or where the middle is.
Let’s see if I’ve grasped your summary. Concepts are abstract but applications are not. So, never think of your invention as an inventive “concept”. Rather, think of your invention as an inventive “application” and you should then be OK. Is that it?
Maxie: As a European outsider, looking in, I’m grateful for the IANAE summary at 10.46pm. It renders the current status on patent-eligibility in the USA very simple and straight forward.
_________
Yes, in an IANAE fantasy world where there MOT is still the sole test for 101. You anti patent peeps are still in such denial about the outcome in Bilski that you can’t accept the clear and convincing language of the most important Supreme Court 101 case in the last 30 years. Here, lemme beat you over the head with it..umm I mean explain it for the umpteenth time.
MOT is NOT the sole test.
Concepts are considered abstract ideas.
Applications of concepts are not abstract ideas.
Claims that read on concepts and applications are abstract ideas.
And that is all there is to it.
As a European outsider, looking in, I’m grateful for the IANAE summary at 10.46pm. It renders the current status on patent-eligibility in the USA very simple and straighforward.
As individual claims come up to the CAFC, we will find out what “abstract” means (and, if the PTO takes a robust line on 101, whether the CAFC agrees with the “no-nonsense” approach advocated by 6 in these columns).
Actual inventor, I think you got it backwards. The controlling law is Benson and Diehr provides an exception. Diehr also clarified Flook to the extent that one cannot dissect a claim into pieces for §101 purposes. But otherwise Flook is still good law.
IANAE, I agree that Bilski gave no analysis as to why its claims were abstract. I took this to mean that the Supremes meant to say that the claims in Bilski – claims to methods of balancing financial risk, including the claimed mathematics – were abstract in principle just as mathematical algorithms are abstract in principle. This leads me to conclude that the recitation of a computer in the Bilski claims would not make them patentable for the same reason that the recitation of a computer in the Benson claims did not render those claims patentable.
Actually, AI, I have said many times that I think Benson was wrongly decided and even in my post above I expressed disagreement with Bilski. However, I now have to accept both cases as carved in stone, because it will take an act of Congress to overturn them now.
Posted by: Ned Heller | Oct 13, 2010 at 09:15 PM
___________
OMG, this is insane!!!
You continue talking about Benson when the controlling case law is Diehr.
Can you even acknowledge the Supreme Court decided Diehr?
Can you even type the word Diehr on your keyboard without shaking and foaming at the mouth?
Do you even know what Bilski 14 is in reference to?
This is by far the most irrational act I have seen on this blog. And that’s saying a lot with the likes of Mooney and 6 among the commenters here.
I now have to accept both cases as carved in stone, because it will take an act of Congress to overturn them now.
You have to accept them, but the important thing is how they are applied in future cases, and Bilski in particular leaves a fair amount of leeway.
All Bilski really says is that abstract ideas aren’t patentable (which we already knew), and Bilski’s claims are an example of such. There’s absolutely no useful guidance for determining whether the next claim up for examination is abstract, or whether/how abstraction differs from MOT. It’s all in the application, and the application is far from carved in stone.
As for Benson, it basically says that an abstract idea plus a non-limiting hardware implementation is still an abstract idea. I’m okay with that. Its scope was limited by Diehr, which held that a limiting hardware implementation makes an abstract idea non-abstract, and I’m okay with that too.
There’s not much to accept in Bilski. It’s only the beginning. The actual law is yet to be decided, and it won’t be decided by act of Congress.
“I think the Supremes were saying the concept of hedging and the particular mathematics disclosed and claimed were abstract per se. Since they relied on Benson”
cf
“I think Benson was wrongly decided”
W
T
F
Actually, AI, I have said many times that I think Benson was wrongly decided and even in my post above I expressed disagreement with Bilski. However, I now have to accept both cases as carved in stone, because it will take an act of Congress to overturn them now.
Ned: “AI, I think the Supremes were saying the concept of hedging and the particular mathematics disclosed and claimed were abstract per se. Since they relied on Benson, I would assume that they would FURTHER hold that the claims would remain “abstract” even if the claims recited a GP computer for calculation of the mathematics.”
AI: Ned you “think” wrong. At least when it comes to what the Supreme Court said. Stopping making assumptions and read the Courts exact words.
” Petitioners seek to patent both the concept of hedging risk and the application of that concept to energy markets. Under Benson, Flook, and Diehr, how- ever, these are not patentable processes but attempts to patent ab- stract ideas. ”
And thats it Ned!
Stop reading more into it because there is no more.
Just accept the ruling of the Court as the current law of the land.
We all know that you have a not so hidden agenda to do away with business methods and most software patents.
But guess what? You LOST at the Supreme Court!
What’s important to note here is that Diehr cabined Flook and Benson. As AI’s Dear Diehrist has explained to you a thousand times.
Bilski 14 !
Heck, Broge even posted the entire Bilski 14 text!!!
So why can’t you get this??????
It’s Diehrs concept and application test AKA DCAT that allowed Diehr his patent and denied Bilski his.
DCAT is the reigning Supreme court precedent.
Just accept it already.
Geeez.
Ned,
you cannot quote to Benson without quoting to Diehr. That is what the Supremes have mandated.
Bilski 14 !
“Since they relied on Benson,”
No, no, no – a thousand times no.
Bilski 14 !
Read it again! Your assumptions are incorrect. They are not based in either logic or precedent. The proper precedent is given at:
Bilski 14 !
AI, I think the Supremes were saying the concept of hedging and the particular mathematics disclosed and claimed were abstract per se. Since they relied on Benson, I would assume that they would FURTHER hold that the claims would remain “abstract” even if the claims recited a GP computer for calculation of the mathematics.
Now, this holding does not rely on logic, just precedent. I personally would think that if an invention is useful and claimed in one of the four categories, it should be patentable. But the Supremes were unanimous that the Bilski claims were not patentable, but only disagreed on why.
If we really believe that Bilski should have prevailed, we will need a statutory fix.
Please educate us on why the Bilski claims were abstract.
Posted by: Ned Heller | Oct 11, 2010 at 08:20 PM
______________
Because Bilski’s invention covered both the concept of the invention and the application of that concept.
BTW, you can’t determine the concept of an invention by merely reading the claims. You have to read the specification.
Which is why it’s sheer folly for posters like Malcolm and 6 to post claims on here, whether hypothetical or real, then make judgements as to their 101 eligibility.
Class Dismissed
::Bell Rings::
“I can expect near-unanimous agreement from now on!”
OUCH !
Malcolm, that’s a pretty clear indictment of your integrity.
Posted by: Very curious | Oct 11, 2010 at 08:33 PM: If an abstract idea is unpatentable, and an invention is, at one point, an abstract idea, and the claims cover the invention, don’t the claims also cover the abstract idea of the invention?
AI: Yes
Very curious: If so, how do these claims overcome 35 USC 101?
I’m very curious to read someone’s honest attempt to answer those questions.
AI: By constricting the reduction to practice of the invention,
For, example, If as it was argued that teaching Bilski’s hedging method as a case study at the Havard School of Business, or even discussing it on this blog would infringe the broadest claim of his invention, then the invention is going to be considered an abstract idea, and thus covering both the concept and the application of that concept.
In other words, if just communicating the concept, whether verbally or on paper, infringes your invention, it’s considered abstract by the courts.
Now, before the anti software crusaders get too excited, writing code for a program is not the same as merely communicating, whether verbally or on paper about the concept for the program.
I have many concepts and ideas for software programs but I can’t construct the code. I can communicate my idea to a software designer and they can build the actual program for me.
The design and construction of the program and system is the reduction of the concept to practice, its application, and thus why software is patent eligible subject matter.
Just thought I would solve that little problem for the patent community while I was here.
😉
Looks like broje’s fillings are talking to him again.
You have to admit that it’s a pretty cool approach: If someone says something that I disagree with, I’ll just assume that it’s actually Malcolm, in disguise. I can expect near-unanimous agreement from now on!
The PTO should get out of the business of determining patent eligibility of claimed subject matter, and stick to a “man made and useful” standard.
Let the courts tell patent owners they can’t sue infringers who are practicing their invention via mental process or purely mathematical algorithm. Practicing via mental process can be an affirmative defense. If the accused infringer is using a machine, then they are actually infringing. How hard is that?
I don’t see the point of the Office spending so much effort on this.
LB, if you’d been around awhile, you’d know that’s not Ned. I’m convinced that someone (obviously Malcolm Mooney imho) is impersonating Ned. He basically admits it up thread
Looks like broje’s fillings are talking to him again. The eagle barks at midnight. 22330AZbbgr00O#2
******************
“Ned, do you have evidence that Mr. Kappos is taking directions from his former employer in exchange for future benefits, or are you just defaming him for fun?”
Posted by: Little Blue | Oct 12, 2010 at 05:00 PM
******************
LB, if you’d been around awhile, you’d know that’s not Ned. I’m convinced that someone (obviously Malcolm Mooney imho) is impersonating Ned. He basically admits it up thread. I’m not sure why Ned isn’t around to defend himself right now, but Ned posts under his real name here, and his comments are thoughtful, insightful, and fair. I doubt very much that he would make any comments even remotely resembling the ones above in this thread.
Getting back to the big D post at hand, the posting crowd hear should also keep in mind that the BPAI is only a judiciary-lite body, who is under the control (literally) of one of the parties before it.
Part of your dilemma here is that the BPAI gotsa toe the line of what the Office says because the Office is still the Bossman, but the BPAI also wants to at least try to appear to be fair and impartial adjucating body.
Just an observation.
“Whenever Beauregard claims have been discussed in court dicta as they were In re Nuitjen, the courts have been skeptical. They recognize the bootstrapping.”
That’s a big negatory big Ned. You’ve confused the majority opinion with the dissent. The majority opinion makes no substantive mention of the Beauregard claim (i.e., the “storage medium” claim 15). Instead, it merely noted that this rejection of the Beauregard claim was reversed by the BPAI. What is interesting in reading the dissent of Nuitjen is that the Patent Office relied heavily upon Lowry in their oral argument. Moreover, in oral argument, the Patent Office took the position that while claims directed to signals were not patentable, claims directed a storage medium were patentable. It was the dissent that took issue with the PTO’s position as being inconsistent.
Let’s see – the USPTO relies heavily on Lowry within Nuitjen, and the USPTO argues, before the Federal Circuit, that a storage medium is different than a signal such that a storage medium is statutory subject matter under 101 while a signal is not. On this basis, I think it is quite disingenuous for the USPTO to cite Nuitjen against a claim directed to a storage medium when it argued the opposite in the same case.