Patentable Subject Matter at the Board of Patent Appeals

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

187 thoughts on “Patentable Subject Matter at the Board of Patent Appeals

  1. “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.

  2. 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?

  3. “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.

  4. “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.

  5. 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. 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.

  7. 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.

  8. 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.

  9. 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.

  10. “Still, I wonder if there can ever be SIGNIFICANT post solution activity.”

    Sure, happens all the time. Literally every day, thousands of times.

  11. 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.

  12. “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.

  13. “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?

  14. “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.

  15. “, 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.

  16. “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.

  17. “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.

  18. “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.

  19. “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.

  20. 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.

  21. 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.

  22. “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.

  23. 6,

    You are wrong.
    As usual.

    6 falls from his horse, snagging his foot in the stirrup. Here comes the galloping hoofs.

  24. “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.

  25. “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.

  26. 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?

  27. “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.

  28. 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.

  29. “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.

  30. 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.

  31. 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.

  32. 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?

  33. Ping,

    Your mistake is forgivable, as it is easy to understand that less of both 6 and MaxDrei would be a good thing.

  34. 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.

  35. 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”.

  36. 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.

  37. 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?

  38. 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.

  39. 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).

  40. 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.

  41. 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.

  42. 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.

  43. 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

  44. 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.

  45. 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.

  46. 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 !

  47. 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.

  48. 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::

  49. I can expect near-unanimous agreement from now on!

    OUCH !

    Malcolm, that’s a pretty clear indictment of your integrity.

  50. 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. ;-)

  51. 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!

  52. 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.

  53. 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

  54. ******************
    “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.

  55. 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.

  56. “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.

  57. He will not betray his former master if he wants a future when the leaves his current position. Therefore, the good folks of IBM would have to give Kappos a green light for him to move on this issue.

    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?

  58. A mathematical algorithm is unpatentable as an abstract idea. Having the mathematical algorithm calculated on an existing machine remains a claim to the mathematical algorithm per Benson. Reciting that the mathematical algorithm is stored on a computer readable medium is not patentable for two reasons: First, the mathematical algorithm has no functional relationship to the medium – it is mere decoration as in a claim to a computer of a different color. Second, when executed on the computer, the computer merely calculates the mathematical algorithm and is unpatentable per Benson. To hold that the mathematical algorithm was patentable subject matter simply by reciting its presence in a computer readable medium would be bootstrapping its most obvious form.

    The difference between Bilski and Benson, and Diehr is that the mathematical algorithm in Diehr had a functional relationship to the other elements in the claim so that they, as a whole, were transformed. They did something new.

    Similarly, the Flook algorithm had no physical inputs or physical outputs and transformed nothing. The Flook claim did no more than recite a mathematical algorithm, but limited to a field of use.

    Whenever Beauregard claims have been discussed in court dicta as they were In re Nuitjen, the courts have been skeptical. They recognize the bootstrapping.

    Because of their dubious validity, it is high time for the patent office to bring Beauregard claims back to the Federal Circuit. However, the current director is ex of IBM, the creator of Beauregard claims. He will not betray his former master if he wants a future when the leaves his current position. Therefore, the good folks of IBM would have to give Kappos a green light for him to move on this issue.

  59. There you go again.

    When the Actual Inventor is away the Anti Patent Crowd will play.

    Well, I have to actually work but I will back to use Diehr and Bilski to wipe the floor with Mooney/IANAE and 6 as usual.

    Enjoy yourself while you can.

    ::Inserts The Three Stooges Theme Song ::

  60. “This is the real reason why we continually strive to get software protected by whatever language the office and the courts will entertain (and why such as MM increasingly annoy me).”

    So because you made the conscious decision to not invent anything and instead implement a new abstract idea on someone else’s pre-existing invention that has proved better than your alternatives is somehow a justification for calling not giving you a patent on your non-inventions inequitable?

    I stand not convinced. Try inventing something next time.

  61. “It would be inequitable to deny patent protection to that which once would have been done by circuits and at one time perhaps even by cogs and levers.”

    Lulz, not really. Tell it to congress and ask them for your own little statute. Maybe 36 USC is available? lol.

    Tbh, that’s what you’ve needed for a long time now. There should be more req’s in place for software “protection” that is being jury rigged by the patent system today. Special req’s along the lines of 112, and special req’s along the lines of 102/103. But instead of our old friend the obviousness inquiry, there’s room for something along the lines of “is this idea one that a 12 year old coding would be liable to produce?” to be added.

    And, look on the bright side. You’d never have to put up with all this 101 nonsense because your new 36 USC 101 will read “Whoever writes any software, may obtain a [software protection] therefor, subject to the conditions and requirements of this title.”

    Oh, and you might want to get them to amend the constitution as well.

  62. “5. The product of claim 4.”

    112 4th paragraph.

    Otherwise known as:

    Claim [1] objected to under 37 CFR 1.75(c), as being of improper dependent form for failing to further limit the subject matter of a previous claim. Applicant is required to cancel the claim(s), or amend the claim(s) to place the claim(s) in proper dependent form, or rewrite the claim(s) in independent form. [2].

    Don’t fall in that trap MM, I am ending that practice. Your attempt to make reference to the previously existing implicit limitation that there be a product created is noted and your failure to further limit the claim what so ever is also noted.

  63. “and start paying attention to what the purpose of the statute is.”

    To understand what is claimed and make sure that what is claimed satisfies the statutory requirements for patentability, surely.

    There’s a difference between “performing a method on a plane” and “a plane configured/equipped/structured to perform a method”. If in the latter case the plane has a sign on the tray table describing how to use the washroom queue, that’s printed matter on a statutory plane.

    We shouldn’t reward gratuitous wordplay, but sometimes changing the words does change the scope of the claim, and the scope of the claim is the only thing that really matters.

  64. Nuitjen was an absurd decision. There is no good reason why signals should not be patentable. If you think signals are abstract and have no real existence, good luck with watching your TV or chatting on your mobile.

    Was the holding in Nuitjen based on a finding that signals were “abstract”? I don’t remember that.

    It’s true that you couldn’t watch TV or chat on your mobile without signals, as the light from the TV is a signal along with the sounds from your mouth. What a pity we can’t patent reflected light and sound waves. Art and music would be so much better than it is now with our repressed patent system. LOL.

  65. Not because it mentions paper. Because it claims a piece of paper having certain properties.

    1. A poem written on a piece of paper.
    2. A piece of paper with a poem written on it.
    3. A method of composing a poem, comprising conceiving of a poem. wherein said poem is about a plastic ant with sparrow’s wings.
    4. The method of 3, further comprising writing the poem down.
    5. The product of claim 4.

    So 2 and 5 are eligible subject matter but 1 and 3 are not? What about 4?

    Since when do we understand patent claims based on what we think is the clever bit of the invention described in the spec?

    Since we stop pretending that 101 is just a tiny technical hurdle and start paying attention to what the purpose of the statute is.

  66. Software is gradually replacing hardware in many contexts. It would be inequitable to deny patent protection to that which once would have been done by circuits and at one time perhaps even by cogs and levers. This is the real reason why we continually strive to get software protected by whatever language the office and the courts will entertain (and why such as MM increasingly annoy me).

    Moreover, Nuitjen was an absurd decision. There is no good reason why signals should not be patentable. If you think signals are abstract and have no real existence, good luck with watching your TV or chatting on your mobile. Only a technical ignoramus (i.e. a judge, for example) could reach that conclusion.

  67. “This is eligible subject matter? Really? Because it mentions ‘paper’?”

    Not because it mentions paper. Because it claims a piece of paper having certain properties.

    Since when do we understand patent claims based on what we think is the clever bit of the invention described in the spec? The claim is to what is claimed. A piece of paper is statutory. If the writing on the piece of paper is functionally linked to the paper itself, the inventor can rely on the writing in support of novelty and inventiveness.

  68. IANAE By which I presume you mean “ancillary to the claim”.

    No, I meant ancillary to the invention. You know, the “instructions” that were actually allegedly invented, as opposed to the thing that the instructions are written on which is admittedly old.

    1. A piece of paper with a poem written on it, wherein said poem is about a plastic ant with sparrow’s wings.

    This is eligible subject matter? Really? Because it mentions “paper”?

  69. and the instructions as printed matter.

    Sigh. Back to Middle Earth for my main man IANAE.

    Don’t try to pet the Nazgul, my friend.

  70. “In other words, you can read the eligible subject matter out of the claim if it is ancillary to the invention.”

    By which I presume you mean “ancillary to the claim”. If the claim were directed to “software comprising instructions for (steps), wherein the software is written on a medium”, I’d say the medium was as ancillary to the invention as “on a plane”. But when the claim is clearly to the medium itself – as Beauregard claims are intended to be, I believe it’s more appropriate to treat the medium as the statutory heart of the claim and the instructions as printed matter. A Beauregard claim can’t really exist without the medium.

  71. It doesn’t take genius since a mere Examiner could answer that question. It is directed to statutory subject matter – See, e.g., In re Lowery, Ex parte Boyce, Ex parte Dureau, and Ex parte Goldberg.

    I disagree. The invention is an abstraction and the reference to a computer or a computer-readable medium does not change that. Also, whether the number is “outtputted” to a user or for what reason shouldn’t matter.

  72. if you want a quote from Bilski, I’ll give you a quote from the en banc decision: “the [Supreme] Court has made clear that it is inappropriate to determine the patent-eligibility of a claim as a whole based on whether selected limitations constitute patent-eligible subject matter.”

    Patent eligibility of claim can not be determined merely by pointing to the existence of patent eligibile subject matter within the claim. I agree. In other words, you can read the eligible subject matter out of the claim if it is ancillary to the invention.

    How long have you been predicting the demise of Beauregard claims?

    Three or four years.

    Regardless of how long, the USPTO keeps issuing them by the hundreds every Tuesday (over 150 today) – so much for the value of “the comments section of blogs.”

    Let’s see those Beauregard claims asserted in court. If anyone is stoopit enough to license such a claim in 2010, I pity the f o o l. They need to get online and educate themselves.

    I waited five years for product-by-process claims to be disemboweled. Even longer for something to be done about preamble case law. The trend points in one direction, my friend. Bilski did not help Beauregard claims (and frankly is not terribly relevant; we are discussing it now because of the odd contradictions in the logic of the Kelkar decision).

    computer program stored on a computer readable storage medium is no longer an abstract idea – it is an implementation of that abstract idea. The equation E=MC^2 is an abstract idea, but a nuclear power plant is an implementation of that abstract idea. One is patentable, and one is not.

    1. A computer readable storage medium comprising a relationship, wherein said relationship is E=MC2.

    You think this is eligible subject matter?

  73. “The implementation is what transforms an abstract idea from non-statutory subject matter to statutory subject matter.”

    For patentability purposes, an implementation that preempts the entire abstract idea is the same as a claim to the abstract idea itself. The implementation has to be limiting in some way. See, e.g., Benson.

  74. IANAE writes: “Do you expect a 101 rejection on that claim?”
    Not based upon the claim not being directed to statutory subject matter. This rejection is based upon lack of utility. See, e.g., MPEP 706.03(a)

    Malcolm Mooney writes “I’d be interested to see ‘very curious’ and ‘Clarice’ apply their genius to addressing the questions.”
    It doesn’t take genius since a mere Examiner could answer that question. It is directed to statutory subject matter – See, e.g., In re Lowery, Ex parte Boyce, Ex parte Dureau, and Ex parte Goldberg. Whether or not the claims could be rejected under 102/103 is a different story, which I’ll decline to speculate on.

    IANAE writes “I’d be happy to reject a Beauregard claim under 101 as non-stautory for being a mixed-class claim – an apparatus comprising (only) method steps.”
    Same rejection for a “an automobile comprising an axle, wherein the axle is configured for rotating wheels of the automobile and transmitting power from a transmission to the wheels”? Based upon your prior statement, you believe the terms “rotating wheels …” and “transmitting power …” are method steps. Is this true?

    PS writes: “the computer is statutory subject matter but alterations to the physical state of the computer by the program are only transitory and this isn’t enough to disguise the abstractness of the.” For some, but I don’t buy that logic. The term “transitory” means different things in different contexts. 99.9+% of all machines that existed prior to year 1900 likely don’t exist. Therefore, should machines be considered “transitory” and, thus, not eligible for patent protection because they cease to exist over a certain period of time?

    Your analysis, however, makes the distinction between “abstract ideas,” which are not patentable and “abstract ideas implemented as ….” The implementation is what transforms an abstract idea from non-statutory subject matter to statutory subject matter. A computer program stored on a computer readable storage medium is no longer an abstract idea – it is an implementation of that abstract idea. The equation E=MC^2 is an abstract idea, but a nuclear power plant is an implementation of that abstract idea. One is patentable, and one is not.

    Mooney writes: “Because it’s impossible to predict and nobody discusses these things, particularly not in the comments section of blogs.”
    How long have you been predicting the demise of Beauregard claims? Regardless of how long, the USPTO keeps issuing them by the hundreds every Tuesday (over 150 today) – so much for the value of “the comments section of blogs.”

    Mooney writes: “The method claims in Kelkar were implemented ‘in a computer’ and were deemed abstract by the Board, and correctly so.”
    You didn’t read my first post – the BPAI is a mash-mash of opinions that go both ways on the topic.

    Mooney writes: ” Is there a passage I missed in Bilski where this sort of game-playing is sanctioned?”
    You just need to go to the language of 35 USC 101 itself where it says that machines are statutory subject matter. Regardless, if you want a quote from Bilski, I’ll give you a quote from the en banc decision: “the [Supreme] Court has made clear that it is inappropriate to determine the patent-eligibility of a claim as a whole based on whether selected limitations constitute patent-eligible subject matter.” — Ouch, that one has to hurt.

  75. Bilski at pp 14-15 says:

    “… in Diehr, the Court established a limitation on the principles articulated in Benson and Flook. The application in Diehr claimed a previously unknown method for “molding raw, uncured synthetic rubber into cured precision products,” using a mathematical formula to complete some of its several steps by way of a computer. 450 U. S., at 177. Diehr explained that while an abstract idea, law of nature, or mathematical formula could not be patented,“an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.” Id., at 187. Diehr emphasized the need to consider the invention as a whole, rather than “dissect[ing] the claims into old and new elements and then . . . ignor[ing] the presence of the old elements in the analysis.” Id., at 188. Finally, the Court concluded that because the claim was not “an attempt to patent a mathematical formula, but rather [was] an industrial process for the molding of rubber products,” it fell within §101’s patentable subject matter. Id., at 192–193.”

    Considering the claim to the computer program product as a whole, is it attempting to patent a mathematical formula?

  76. Repeated. Still waiting for one of the usual “defenders of patents” to opine. Wonder what the problem could be?

    1. A computer program product comprising a computer readable storage medium for determining a virtual Lipernerg number comprising the steps of

    determining a first number between 1 and 233,333,325 and wherein said first number is multiplied by 150.75 and

    and determining a second number wherein said second number is less than the first number but greater than 250,000;

    determining a third number, wherein said third number is a virtual Lipernerg number obtained by dividing said first number by said second number.

    Eligible subject matter? Does your answer change if a Lipernerg number is outputted to a user interested in Lipernerg numbers? Does it matter what the reason for the user’s interest in the number is?

  77. Of course IANAE, you and Malcolm Mooney have purposely missed a lot of what Bilski has said.

    Let me give you the passage:

    BILSKI 14 !

    Right there in black and white – right there is where Diehr cabins Benson. While not quite overruling Benson, the shenangins that the anti-patent folk wanted (and which Stevens failed to deliver) are plain enough.

    BILSKI 14 !

    Read it (again) and weep (again).

  78. “Now I am really offended, TINLA.”

    Just wait until he starts impersonating you. It’s only a matter of time.

  79. “Is there a passage I missed in Bilski where this sort of game-playing is sanctioned?”

    I guess you missed the bit where Bilski overruled Benson? I must have missed that too.

  80. and those of your other sock puppet du jour, ping’s.

    Now I am really offended, TINLA.

    Unless ya think that Malcolm is gonna call himself paranoid and a coward.

    Um, let’s scratch that.

    Weza better go with Unless ya think that Malcolm is entertaining enough to please the masses like that ping fella can.

  81. I believe it was AI who was always arguing (pre-Bilski) that as long as claim referred to something tangible, it was statutory subject matter. Hence, the longstanding joke about performing an otherwise unpatentable method “on an airplane.”

    Now ping et al. want us believe that the airplane trick actually works, but you have to be really really really clever about it and write your claim as a composition, e.g., “An airplane, in which a system is implemented, wherein said system comprises [insert ineligible subject matter here].”

    Is there a passage I missed in Bilski where this sort of game-playing is sanctioned?

  82. the fact that the computer program is implemented means that the idea is no longer abstract. See Very Curious’s posts above.

    The method claims in Kelkar were implemented “in a computer” and were deemed abstract by the Board, and correctly so.

    I’ve read Very Curious’ posts and responded to them. They aren’t persuasive.

  83. IANAE – ya need some tutoring on that there printed matter doctrine. Ya lookin all Middle Earth on this subject.

    Ned, hurry up man with those case cites.

  84. Moonpie, that was a much better Nedpersonation, at least in writing style. Still obvious, however, due to content and personality.

    If you really want to fool us, you should slowly “convince” Ned over time to reluctantly admit that your point of view is correct, instead of having him lick your boots and those of your other sock puppet du jour, ping’s.

  85. For some reason, trolls aren’t very interested in that boring stuff.

    Yeah, like that response isn’t trollish in itself – fulla ‘integrity’ arentcha today, Malcolm?

    Maybe because the laws are not so limiting, being as they apply to claims as a whole and the nitpicking by PS is ultra vires (and obviously done by someone who don’t get patent law). Gee, whata surprise that Malcolm likey.

    Not to mention that “Abstract ideas implemented as a computer program may now also start being considered as non-patentable subject matter” is full of huuey as the fact that the computer program is implemented means that the idea is no longer abstract. See Very Curious’s posts above.

    Oh lookie, another windmill.

  86. PS: “Perhaps the same should be applied to the interaction between the “subject matter” and “novelty” requirements of a patent claim. For a claim of a computer program residing on a storage medium, the claim contains statutory subject matter and novelty. However, the aspects that are novel (the program) aren’t statutory subject matter, whereas the aspects that are statutory subject matter (the medium) aren’t novel (being a purely mechanical signal-to-storage translation of the program’s in-memory representation without any novelty to the translation process itself).”

    Sounds suspiciously like what the printed matter doctrine already does.

  87. Repeated. I’d be interested to see “very curious” and “Clarice” apply their genius to addressing the questions.

    1. A computer program product comprising a computer readable storage medium for determining a virtual Lipernerg number comprising the steps of

    determining a first number between 1 and 233,333,325 and wherein said first number is multiplied by 150.75 and

    and determining a second number wherein said second number is less than the first number but greater than 250,000;

    determining a third number, wherein said third number is a virtual Lipernerg number obtained by dividing said first number by said second number.

    Eligible subject matter? Does your answer change if a Lipernerg number is outputted to a user interested in Lipernerg numbers? Does it matter what the reason for the user’s interest in the number is?

  88. By contrast, a claim where the program is stored in a novel way upon the storage medium, such as by manufacturing the medium with a more optimal layout of semiconductor material or magnetic particles or optical substrate or whatever, would have simultaneous novelty and statutory subject matter.

    For some reason, trolls aren’t very interested in that boring stuff.

  89. “”transitory” is a bogus reason for denying patentability”

    You speak sacrilege, as the chief defender of the faith you are hereby sentenced to death.
    —–
    Oh oh 6, you disappoint me so. My experiment of planting one of our own in the PTO has gone haywire. Well, the rule of Zaius is but a mere 1900 years away, and our efforts in India among the macaque monkeys are making significant inroads that will lead to worldwide ape revolution.

  90. very curious Maybe you’ll luck out an foresee where the law is going

    Because it’s impossible to predict and nobody discusses these things, particularly not in the comments section of blogs.

  91. I see many commenters dancing around the following seemingly paradoxical reasoning:

    1. Abstract ideas are not patentable subject matter.

    2. Abstract ideas implemented as a computer program may now also start being considered as non-patentable subject matter: the computer is statutory subject matter but alterations to the physical state of the computer by the program are only transitory and this isn’t enough to disguise the abstractness of the claim.

    3. A storage medium (CD-ROM, etc.) is “clearly” statutory subject matter which is altered in a non-transitory way by the storage of a computer program upon it.

    4. Thus a “program fixed into a storage medium” should be patentable even if the “program running on a computer” is not. This seems self-contradictory.

    I am reminded of the story of the teacher commenting on a student’s work: “Your paper has some very good ideas and some very original material. Unfortunately, the parts that are original are not good, and the parts that are good are not original.”

    Perhaps the same should be applied to the interaction between the “subject matter” and “novelty” requirements of a patent claim. For a claim of a computer program residing on a storage medium, the claim contains statutory subject matter and novelty. However, the aspects that are novel (the program) aren’t statutory subject matter, whereas the aspects that are statutory subject matter (the medium) aren’t novel (being a purely mechanical signal-to-storage translation of the program’s in-memory representation without any novelty to the translation process itself).

    By contrast, a claim where the program is stored in a novel way upon the storage medium, such as by manufacturing the medium with a more optimal layout of semiconductor material or magnetic particles or optical substrate or whatever, would have simultaneous novelty and statutory subject matter.

  92. “I get the impression you guys have it easy, dealing with the likes of 6.”

    Lulz, what makes you think I get a lot of b claims? And furthermore what makes you think I go ez on them?

  93. “just wants to destroy anything he doesn’t understand,”

    Do you find Malcolm complains mostly about patents that are harder than average to understand?

  94. It’s no surprise that the nuances of computer related inventions continues to elude Mooney. He is like a xenophobic cretin that just wants to destroy anything he doesn’t understand, like patents, especially EE patents, wealth, and happiness – oh, and homeownership. It’s quire evident that the damp confines of mother’s basement are closing in on him.

  95. reject that claim on the grounds of 101 for failing to recite statutory subject matter.

    Cf

    I would… though they call it lack of utility.

    Then your rejection is not “101 for statutory subject matter”, it is “101 for lack of utility”

    W

    T

    F

  96. “But let me guess, you would go ahead and reject that claim on the grounds of 101 for failing to recite statutory subject matter.”

    I would, if I were an examiner. All four classes of statutory subject matter have to be “useful”, and an inoperable device isn’t. It’s the standard rejection for perpetual motion machines, though they call it lack of utility.

    Similarly, if I were an examiner, I’d be happy to reject a Beauregard claim under 101 as non-stautory for being a mixed-class claim – an apparatus comprising (only) method steps. Of course, that’d earn it a 112 as well.

    I get the impression you guys have it easy, dealing with the likes of 6.

  97. No IANAE, I do not expect a 101 rejection based on non-statutory subject matter for that claim. But let me guess, you would go ahead and reject that claim on the grounds of 101 for failing to recite statutory subject matter.

  98. Very curious: ” Similarly, if an ‘automobile, comprising …’ is recited, it really shouldn’t matter what comes after ‘comprising …’ since an automobile is statutory subject matter.”

    … said engine comprising a perpetual motion machine.

    Do you expect a 101 rejection on that claim?

  99. I dare say that the terms “transitory” or “non-transitory” have different meanings for a particle physicist than an astrophysicist, for example.

    And I would dare say that neither “transitory” nor “non-transitory” are meaningful in the situation above.

    This is an arbitrary intrusion, introducing the inane example into every individual edifice of art.

  100. “the Board of Patent Appeals (BPAI or Board) has continued to affirm claims rejected on patentable subject matter eligibility grounds”

    The board affirmed the rejections, not the claims. Maybe you should re-write this as, “the Board of Patent Appeals (BPAI or Board) has continued to affirm the rejection of claims on patentable subject matter eligibility grounds”

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  102. “I concur. Let’s leave it to the humans to show us something not ‘transitory.’”

    This raises a good point about claim construction, which is that language is to be given its broadest, reasonable claim construction consistent with the meaning given to that term by one skilled in the art.

    I dare say that the terms “transitory” or “non-transitory” have different meanings for a particle physicist than an astrophysicist, for example. All good patent analysis should start with rigorous claim constructions of the terms at issue — this, however, is rarely performed.

  103. Dr. Zaius,

    I concur. Let’s leave it to the humans to show us something not “transitory.”

    Everything they touch turns to dust. It’s their destiny.

  104. “Show me the dolla dolla bills yo.”

    Two whole posts of blah, blah, blah when all you had to do was write “I don’t know.”

    Don’t feel bad, I’ve asked the same question to REAL examiners many times. None have been able to come up with an answer either.

  105. “”transitory” is a bogus reason for denying patentability”

    You speak sacrilege, as the chief defender of the faith you are hereby sentenced to death.

    “Nice punt — I knew you couldn’t answer it.”

    The whole point of that piece was that I could answer it if I was so inclined. You apparently can’t understand the answer because you have no technical background.

    “Instead, you appeal to the well-worn answer from the USPTO when they don’t have substantial evidence to back an assertion –> “everybody knows X means Y.””

    This is a blog and I’m not under obligation to teach you EGRE 101. People pay money for that you know. If you’d like to pay me, I’ll consider your request.

    “with FACTS”

    The definition of the word storage depends on “FACTS”?

    Silly attorney.

    “I don’t expect you to argue as eloquently as an attorney, but at least try to act like an engineer when making a technical point.”

    Show me the dolla dolla bills yo.

  106. “I suppose in your defense it is a rather loose use of the term.”
    No — it is an incorrect use of the term.

    “Your friendly neighborhood POSITA can”
    Nice punt — I knew you couldn’t answer it. Instead, you appeal to the well-worn answer from the USPTO when they don’t have substantial evidence to back an assertion –> “everybody knows X means Y.”

    Honestly, I don’t know why you even bothered to answer my question. You would have not lost any credibility by not answering the question. Instead, you made yourself look foolish by attempting to answer my question with nothing more than Examiner-speak — i.e., factually-unsupported BS. Next time, act like an engineer and answer the question like an REAL examiner would answer the question — with FACTS.

    I don’t expect you to argue as eloquently as an attorney, but at least try to act like an engineer when making a technical point.

  107. “Explain to me how a signal is used for storage?”

    If you don’t understand this, I suggest you enroll in your local university for a program in engineering or physics as I’m not inclined to teach you EGRE 101 which you’ll probably have to take no matter which track you go down. I suppose in your defense it is a rather loose use of the term.

    “A signal is transitory, which is why Kappos’ guidelines suggest the use of “non-transitory” in the claims”

    So it’s transitory storage… so wut?

    “How can a transitory signal be considered a storage medium?”

    It is kind of a term of art. That much your attorney brain should understand even if you’re incompetent technically.

    “Can anyone answer those questions?”

    Your friendly neighborhood POSITA can.

  108. Please educate us on why the Bilski claims were abstract

    Why? Why this non-sequitur? Sides which dontcha know – Homey don’t do answers.

    “A chair or an airplane exists as an abstract idea”

    Idk about that. You’re simply stretching the term. And reading out of context in your next line.

    Been there. Done that. Weza already touched upon this back when 6 first made his silly input-output machine (input an abstract to get an abstract). He never answered this point back then neither.

    If the claims prevent someone from thinking about “the invention”, they are surely abstract.

    Now that’s one windmill fulla straw. Nothing like adding the condition ya want, huh donk ey?

    More importantly, Bilski certainly did not say that all manufactured articles are statutory subject matter. Please notify the ACLU if you find a passage that proves me wrong

    Wow, and I thought the first windmill fulla straw was a lotta straw. It aint nothn to this second strawmill.

    LOL. I wonder why the applicant in Kelkar didn’t think of this genius strategy?

    Maybe the same reason Bilski didn’t. Let’s ask Ned.

    are easy once the law has been clearly defined.

    Whoops we don’t havta ask Ned – curious gots the answer.

  109. “LOL. I wonder why the applicant in Kelkar didn’t think of this genius strategy?”

    How the USPTO treats claims under 35 USC 101 has changed several times a year over the past 5 or 6 years. I don’t doubt all these applications were briefed at least 2 years ago.

    When the USPTO takes a consistent position as to what is statutory under 35 USC 101, it may take a couple years to weed out the stragglers, but 101 rejections will go away except for applicants with incompetent attorneys.

    As with any law, the attoneys react to law as it currently stands — it isn’t good for your malpractice premiums to make decisions on (case or statutory) law that does not exist at the time the decisions was made. Maybe you’ll luck out an foresee where the law is going, but if you don’t and it adversely affects the client, then I wouldn’t want to be you.

    Fixing claims to address 101 issues are easy once the law has been clearly defined.

  110. “First, of what relevance is a signal being a storage medium? Sure it belongs to that genus. What of it?”
    Explain to me how a signal is used for storage? A signal is transitory, which is why Kappos’ guidelines suggest the use of “non-transitory” in the claims. Storage is something into which something is stored and subsequently retrieved. How can a transitory signal be considered a storage medium?

    Can anyone answer those questions?

    As for your other points, it appears your reading skills are lacking because I already wrote “Regardless, Kappos and the BPAI have little say in whether or not Beauregard claims ultimately live or die. That decision rests with Congress or the Federal Circuit (assuming SCOTUS doesn’t want to get involved).”

  111. Put the “computer” in the body of the claim instead of the preamble — problem solved. I have yet to see an examiner reject a claim under 35 USC 101 after that has been performed.

    LOL. I wonder why the applicant in Kelkar didn’t think of this genius strategy?

  112. “That a signal is not a storage medium? That Kappos’ intent not to kill Beauregard claims is evident from his guidelines?”

    Oh and lest I forget, I could address these as well. First, of what relevance is a signal being a storage medium? Sure it belongs to that genus. What of it? I have no issue with that.

    As to Davi K, he simply doesn’t have the power to decide one way or another. The courts have the power and I don’t worry about him either way. And I surely do not concern myself with “guidelines” more than reading them and hearing what they have to say. I’ve read the law, and I’ve read the caselaw. His attempt to boil it down to bullet points for the rank and file who haven’t bothered to read it are quite irrelevant to me when the rubber meets the road. If they want to pontificate about what their view is, fine, I’ll read it. If they want me to make a determination counter to the law as established by the USSC (especially) and the statute then they can forget it. My SPE/director/undersec is perfectly capable of sending out an allowance etc. for a case which I have not been persuaded to sign.

  113. “You’re simply stretching the term. And reading out of context in your next line”
    Wow … frequently, that is what I think when I read these BPAI decisions.

    “They might, but the claims are not attempting to patent the abstract idea of an airplane or chair”
    Maybe we can make a patent attorney out of you yet. However, that type of argument oftentimes falls on deaf ears at the BPAI.

    Under the broadest, (un)reasable, interpretation standard, the claim language does not limit the claimed invention to statutory embodiments. Therefore, the rejection of the claims under 35 USC 101 are affirmed. <– That is the BPAI’s response. However, the BPAI could present that same analysis with regard to a claim directed to a chair or an airplane.

    Applicants never worried about writing claims that excluded signals because the USPTO, in the MPEP, once endorsed the use of claims directed to signal-bearing mediums.

    “by putting a facade of non-abstractness upon them.”
    One person’s facade is another person’s taking an abstract idea and transforming it into something concrete and tangible. Everything starts out as an “abstract idea” — the question is where do we draw the line as to what is directed to an abstract idea and what is not and what does it take to transform a claim from being directed to an abstract idea to a claim directed to statutory subject matter.

    “It was once believed that you can get around this problem by tossing in the word ‘computer’ and nothing more.”
    Put the “computer” in the body of the claim instead of the preamble — problem solved. I have yet to see an examiner reject a claim under 35 USC 101 after that has been performed.

  114. very curious A computer program product comprisng a computer readable storage medium is a machine (e.g., memory or a hard drive) or a manufacture (e.g., a DVD or CD-ROM). This isn’t rocket science and is directly out of the statute — unless it is unconstitutional, the plain language of the statute controls. BTW, In re Lowery is always a good cite.

    In re Lowry is a deeply flawed and self-contradictory opinion resting almost entirely on a CCPA decision (In re Bernhart) which rests on nothing but its own self-serving and unsupported conclusion.

    More importantly, Bilski certainly did not say that all manufactured articles are statutory subject matter. Please notify the ACLU if you find a passage that proves me wrong.

    And lastly, please consider:

    1. A computer program product comprising a computer readable storage medium for determining a virtual Lipernerg number comprising the steps of

    determining a first number between 1 and 233,333,325 and wherein said first number is multiplied by 150.75 and

    and determining a second number wherein said second number is less than the first number but greater than 250,000;

    determining a third number, wherein said third number is a virtual Lipernerg number obtained by dividing said first number by said second number.

    Eligible subject matter? Does your answer change if a Lipernerg number is outputted to a user interested in Lipernerg numbers? Does it matter what the reason for the user’s interest in the number is?

  115. “What about it is wrong? That a computer readable storage medium covers CD-ROM, a memory device, a hard drive? That these are unquestionably statutory subject matter? That a signal is not a storage medium? That Kappos’ intent not to kill Beauregard claims is evident from his guidelines?”

    What is wrong about it is: “All are unquestionably statutory subject matter under 35 USC 101. What gets recited after that introductory phrase should not change whether or not it is statutory.”

    They are not “unquestionably” stat subject matter. They are products. Guess what? Bilski’s claim was a method. However, the fact of the matter is that his claim was an attempt to capture an abstract idea by putting a facade of a method onto it. And the fact of the matter is also that many, if not all, B claims are an attempt to capture an abstract idea by putting a facade of a product onto it.

    If you’re attempting something fraudulent, don’t be surprised when the USSC et al. sees through your nonsense.

    Also, what comes after the intro is known as the “body” and it is arguably what is most important about a claim. Sorry to burst on your bubble nublet.

  116. very curious Thus, all inventions are, at one point, an abstract idea. 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?

    If the claims prevent someone from thinking about “the invention”, they are surely abstract.

    And that’s what you had with Bilski, effectively. I’m picking up the phone and reciting some numbers into the phone to my stockbroker. If infringement depends on my prior thoughts leading up to those numbers, the claim is toast.

    It was once believed that you can get around this problem by tossing in the word “computer” and nothing more. That belief has been challenged and lies in the middle of the street, crippled and waiting for a truck.

  117. “Statutory … unless you can find me the case law that says machines aren’t statutory subject matter under 35 USC 101.”

    You say that, but caselaw has got to be generated sometime bucko.

  118. “A chair or an airplane exists as an abstract idea”

    Idk about that. You’re simply stretching the term. And reading out of context in your next line.

    “and the claims cover the invention, don’t the claims also cover the abstract idea of the invention?”

    They might, but the claims are not attempting to patent the abstract idea of an airplane or chair, they are simply trying to capture the actual manufactures, chair and airplane respectively. On the other hand, we have people trying to obtain claims to entire abstract ideas by putting a facade of non-abstractness upon them.

  119. “Please educate us on why the Bilski claims were abstract.”

    If SCOTUS did their job correctly, we wouldn’t be having this conversation.

    A chair or an airplane exists as an abstract idea — so why can a claim drected a chair or an airplane overcome 35 USC 101?

    From MPEP 2138.04:
    Conception has been defined as “the complete performance of the mental part of the inventive act” and it is “the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice..” Townsend v. Smith, 36 F.2d 292, 295, 4 USPQ 269, 271 (CCPA 1930).

    Thus, all inventions are, at one point, an abstract idea. 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? If so, how do these claims overcome 35 USC 101?

    I’m very curious to read someone’s honest attempt to answer those questions.

  120. “Which brings into focus whether there is something fundamentally wrong with Beuregard claims. They are whole-cloth. Nothing in prior Fed. Circuit or Supreme Court jurisprudence justifies them.”

    The Federal Circuit and SCOTUS has a say as to what is not described in 35 USC 101 (i.e., the exceptions). A computer program product comprisng a computer readable storage medium is a machine (e.g., memory or a hard drive) or a manufacture (e.g., a DVD or CD-ROM). This isn’t rocket science and is directly out of the statute — unless it is unconstitutional, the plain language of the statute controls. BTW, In re Lowery is always a good cite.

    “You’re probably wrong about what the rest of what you say though”
    What about it is wrong? That a computer readable storage medium covers CD-ROM, a memory device, a hard drive? That these are unquestionably statutory subject matter? That a signal is not a storage medium? That Kappos’ intent not to kill Beauregard claims is evident from his guidelines?

    You raised the issue, now support your ‘findings’ with substantial evidence. You talk a big game but can you produce?

    “a 2001 ford explorer and instructions for punching very curious in the face. Statutory?”
    Statutory … unless you can find me the case law that says machines aren’t statutory subject matter under 35 USC 101.

  121. the Bilski claims would have been patentable if they were claimed as computer encoded medium

    If wishes were fishes…

    Ned, the plain facts is that the Bilski claims were not claimed as computer encoded medium, so your hypotheticalizing here is akin to angels on the tops of pinheads.

    But, if I understand Bilski correctly, the claims there were abstract regardless of whether they cited a computer for the same reasons the claims in Benson and Flook were abstract.

    You don’t understand correctly (cue to the mad one’s Diehrist). Ya can’t get to the computer issue from Bilski.

    Nothing in prior Fed. Circuit or Supreme Court jurisprudence justifies them.

    Obviously ya aint never done the homework assignment I gave ya back when Malcolm was on his Cookbook windmill. It’s not too late for ya to do an exposition on the parameters defining the edges of the Printed Matter Doctrine – plenty O good cases for you to cite (some even in the time frame of your lu cid days).

  122. very curious: “The issue of whether or not a “computer program product comprising a computer usable storage medium …” is statutory subject matter is easy to deal with. This language covers such things as a CD-ROM, a memory device, a hard drive. All are unquestionably statutory subject matter under 35 USC 101. What gets recited after that introductory phrase should not change whether or not it is statutory. Similarly, if an “automobile, comprising …” is recited, it really shouldn’t matter what comes after “comprising …” since an automobile is statutory subject matter.”

    Now this is where it gets interesting. Assuming the above is correct, the Bilski claims would have been patentable if they were claimed as computer encoded medium. But, if I understand Bilski correctly, the claims there were abstract regardless of whether they cited a computer for the same reasons the claims in Benson and Flook were abstract.

    However, the current position of the PTO is that casting claims such as Bilski in Beauregard form is enough to make them patentable under 101. That was the position they argued to the Supreme Court in Bilski. But, it makes no sense, IMHO; and it has been heavily criticized by the Feds themselves in cases such as In re Nuijten.

    Which brings into focus whether there is something fundamentally wrong with Beuregard claims. They are whole-cloth. Nothing in prior Fed. Circuit or Supreme Court jurisprudence justifies them.

    In my view, the are a house of cards waiting the push.

  123. “Similarly, if an “automobile, comprising …” is recited, it really shouldn’t matter what comes after “comprising …” since an automobile is statutory subject matter.”

    An automobile comprising:

    a 2001 ford explorer and instructions for punching very curious in the face.

    Statutory? Mmmmm, idk.

  124. ” is statutory subject matter is easy to deal with”

    Well you’re right about one thing. It is easy to deal with. You’re probably wrong about what the rest of what you say though :(

  125. “To echo a request of an earlier posters, I would very much like to get your thoughts on why you believe In re Nuitjen is not good law after Bilski. If I find them convincing, I’ll be presenting them to the PTO and the BPAI within days (if not earlier).”

    Be sure to let us know when they get smacked down alright? These are lulz I don’t want to miss out on.

  126. Dennis:

    To echo a request of an earlier posters, I would very much like to get your thoughts on why you believe In re Nuitjen is not good law after Bilski. If I find them convincing, I’ll be presenting them to the PTO and the BPAI within days (if not earlier).

    As for the BPAI, the phrase “the left hand doesn’t know what the right hand is doing” comes to mind. The following decisions all refer to some type of storage medium (i.e., a Beauregard claim) in which a 101 rejection was reversed.

    Appeal 2009-004654, Ex parte Boyce *
    Appeal 2009-007211, Ex parte Dureau
    Appeal 2009-011732, Ex parte Goldberg

    * Vice Chief Administrative Patent Judge Allen MacDonald signed on to this decision.
    In Appeal 2009-012192, Ex parte Estrada, a decision out of the 3600 group, the BPAI reversed all the rejections but entered a new ground of rejection as to the method claims under 35 USC 101. However, they declined to enter a new ground of rejection as to the Beauregard claims.

    FYI – all these cases were decided in the last few months.

    The issue of whether or not a “computer program product comprising a computer usable storage medium …” is statutory subject matter is easy to deal with. This language covers such things as a CD-ROM, a memory device, a hard drive. All are unquestionably statutory subject matter under 35 USC 101. What gets recited after that introductory phrase should not change whether or not it is statutory. Similarly, if an “automobile, comprising …” is recited, it really shouldn’t matter what comes after “comprising …” since an automobile is statutory subject matter.

    Frequently, one of the “findings” made in the Decisions by the BPAI in which the 101 rejection is upheld is that a storage medium encompasses a signal. A signal is not a storage medium. Instead, a signal (as that term is used within Nuitjen) is information encoded on a transmission medium. I won’t get into all the distinctions, as I’ll save them for my responses to the PTO.

    If Kappos ever intended to kill Beauregard claims, he wouldn’t have issued his guidelines in January of 2010. Regardless, Kappos and the BPAI have little say in whether or not Beauregard claims ultimately live or die. That decision rests with Congress or the Federal Circuit (assuming SCOTUS doesn’t want to get involved).

  127. Looks like the Hardy Boys have returned from their secret clubhouse, all sweaty and agitated as usual.

  128. Malcolm, your impersonation of Ned above

    Major LOLz – wasn’t Malcolm just all baby-wa-wa and whining to the big D that someone was impersonating him? Now he turns around and does the same thing? Watch him deny it now like a coward. Maybe even a paranoid coward.

    That’s on par with his integrity of sex with dead presidents bit.

    Ooh, lookie – windmills.

  129. “Really? Can anyone give an example of a signal that would now be eligible for patenting?”

    This setup is just too easy.

    FYI, Malcolm, your impersonation of Ned above is completely transparent. It’s obviously you from the writing style alone. And then there’s the content. Try harder.

  130. I wonder if any of the banksters have filed applications on “methods of foreclosure” that are “more efficient” than those described in the prior art?

  131. From one of the Responses filed by Applicant in Ex parte Kelkar: “To require applicants to limit their claims to recited outputs is to require unnecessary limitations that can be easily avoided by potential infringers.”

    Boo hoo hoo. That was back in 2007, when “nobody could have predicted” that the failure to include such a limitation would be fatal.

  132. Just for clarity sake, claim 13 in Kelkar is as follows:

    13. A program product having computer-readable code stored on a recordable media for determining similarity between portions of gene expression profiles comprising the steps of:

    programmed means for processing a number of gene expression profiles with a similar sequences algorithm that is a time and intensity invariant correlation function to obtain a data set of gene expression pairs and a match fraction for each pair;

    programmed means for choosing a threshold match fraction;

    programmed means for listing gene expression pairs in clusters by their match fractions above the threshold;

    pgorammed means for adding each gene not already in a cluster to a cluster having blah blah blah;

    programmed means for removing a first gene from a cluster when blah blah blah;

    programmed means for repeating the removing step until all genes are listed in only one cluster.

    Ned: Beauregard claims were invented by IBM.

    Kappos was there at the time and rose to head IBM’s IP department.

    Will Kappos reverse the PTO-IBM position on Beuregard claims?

    For what it’s worth, the application at issue in Ex parte Kelkar is also owned by IBM.

  133. How is “in a computer” a “field of use” limitation?

    It may be a meaningless implementation detail with regard to patentability, but “in a computer” is not a field of use for a technology that determines similarity between two genetic profiles. Something like, “to determine susceptibility to ” would be a field of use.

    And why does the Office consistently drop “in light of the specification” when citing “broadest reasonable interpetation?”

  134. I think it worth a mention:

    Beauregard claims were invented by IBM.

    Kappos was there at the time and rose to head IBM’s IP department.

    Will Kappos reverse the PTO-IBM position on Beuregard claims?

    Possibly. IBM was seriously upset that the PTO withdrew the appeal. Perhaps he would like a second shot.

  135. “Question: is there really anything to be scared about, as prosecuting attorneys, from cases like MacKenzie? That is, cases where the BPAI issues the Section 101 rejection as a new ground of rejection?”

    Yes. Search the BPAI decisions for the words “barred at the threshold.” You’ll usually find it in scare quotes with a cite to Comiskey. It means the BPAI refused to hear any other issue on appeal and instead rejected the claims on 101 alone. You might have thought you were briefing and appealling a complex 103 rejection, but the board instead rejected your claim under 101 and did not address the 103 issue at all. Start over.

  136. I fully endorse the views expressed by Mooney.

    If an invention claimed as a method or system is abstract despite reciting a computer, why does it become patentable when is claimed as a tangible recorded computer readable medium? It makes no sense.

    The Feds in In re Nuitjen were higly critical of the PTO’s position on this. But, since the PTO will not reject such claims, but will instead allow them, the issue will not reach the Feds from the PTO. Someone will have to raise the issue in court.

    The PTO went off the rails when it began to allow Beauregard claims without the sanction of the Feds. It is high time that it reverses itself because their position seems illogical and absurd. They need to take such claims to the Federal Circuit ASAP.

  137. Question: is there really anything to be scared about, as prosecuting attorneys, from cases like MacKenzie? That is, cases where the BPAI issues the Section 101 rejection as a new ground of rejection?

    The way I see it, the Board can throw any kind of Section 101 reasoning it wants to up there, since it hasn’t ever been challenged. The appellant hasn’t ever had a chance to respond to the reasoning, and hasn’t had a chance to try to amend the claims to address it.

    In many of the appeals like this that have come down after Bilski, it seems like the appellant will still be able to make significant progress with amendments after reopening prosecution.

  138. ” Nuijten decision – if read to categorically exclude transitory embodiments, is no longer good law post-Bilski.”

    I agree.

  139. I’d say it’s fair that the BPAI gave the Applicant the option to reopen prosecution. They also handed the Applicant a road map to how to amend the claim to overcome the rejection. Who thinks the claim will not issue? Show of hands?

    If a method claim reciting a series of steps to be carried out by a computer is deemed too abstract to pass 101, then a set of instructions that merely reiterates those same steps on a “computer readable” medium can not, as a matter of law, be eligible for patenting.

    Take it to the bank.

  140. After having glanced at the decisions it appears they’re applying the law properly. Funny enough, that happens to be the exact fashion which I’ve been preaching.

  141. “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).”

    And actually I’m not 100% proof posivite sure that Davi K is familiar with 112 1sts in those situations. I hear his reasoning, but it is flimsy and rejections over just those situations are quite common and proper. Reciting the genus is not a recitation of the “two species” he wants it to be.

    Nice try but I doubt it’ll fly in the courts Davi.

  142. I’m riding around on my lulzerskates.

    “Only 13 BPAI decisions citing Bilski since September 1 – out of almost 1000 decisions in that time? Seems pretty low.”

    Claims that it is applicable to often went unrejected by the examiner corps at the time appeals decided now were sent up and thus they never got to the board I would imagine. Hardly passe, they’re coming into their own.

    “What is truly bizarre about the reasoning (not the result) in the Kelkar decision is that the Board reaches for a different theory to destroy the composition claims. Why? If a method “practiced in a computer” is deemed unpatentably abstract, then how can it be that a claim describing a “product” which merely stores instructions for carrying out the identical method on a computer could remain patentable under 101?”

    That is true MM, but, on the other hand, remember it’s always best to go with the safest grounds. If it included a signal, it’s toast end of story.

    “I would argue that the Nuijten decision – if read to categorically exclude transitory embodiments, is no longer good law post-Bilski.”

    Lulzerskates. So, which stat category does it fit into? How about the paradigm claim? Which stat category for that?

  143. What is truly bizarre about the reasoning (not the result) in the Kelkar decision is that the Board reaches for a different theory to destroy the composition claims. Why? If a method “practiced in a computer” is deemed unpatentably abstract, then how can it be that a claim describing a “product” which merely stores instructions for carrying out the identical method on a computer could remain patentable under 101? Put another way, why is adding the reference to a computer in the preamble of a method claim deemed insufficient to render the abstract method eligible, but apparently sufficient when dumped into the preamble of a claim to a set of otherwise statutorily ineligible “instructions”?

    I don’t think there’s a rational legally-consistent answer to the question. Yet another reason to hasten the demise of the Beauregard claim. Get it done, Kappy. Get it done.

  144. Since the Applciant did not have an opportunity to comply with that “requirement” previously, I’d say it’s fair that the BPAI gave the Applicant the option to reopen prosecution.

    Are you telling me that “until a few months ago” it could not have been predicted that a Beauregard claim which covered a signal would be rejected by the PTO?

    And by the way: note again Kappy reaching out to those hapless software applicants with a generous interpretation of what constitutes new matter so they can amend to include “non-transitory” without clear written description support for that class of computer readable media. Of course, such an amendment still wouldn’t turn a Beauregard claim into a valid composition claim because the problem with Beauregard claims is a fundamental one.

    Dennis: I would argue that the Nuijten decision – if read to categorically exclude transitory embodiments, is no longer good law post-Bilski.

    Really? Can anyone give an example of a signal that would now be eligible for patenting?

  145. ” … before you get too excited over the Beauregard claim nixed here, the claim failed because it didn’t contain the magic word of the moment at the patent office — ‘non-transitory.’”

    QFT. And I think it should be noted that this new word of the day became a “requirement” being enforced by the PTO only a few months ago. Since the Applciant did not have an opportunity to comply with that “requirement” previously, I’d say it’s fair that the BPAI gave the Applicant the option to reopen prosecution. They also handed the Applicant a road map to how to amend the claim to overcome the rejection. Who thinks the claim will not issue? Show of hands?

  146. Malcolm, before you get too excited over the Beauregard claim nixed here, the claim failed because it didn’t contain the magic word of the moment at the patent office — “non-transitory.”

  147. I would argue that the Nuijten decision – if read to categorically exclude transitory embodiments, is no longer good law post-Bilski.

    Hmmmm.

  148. Dennis,

    I’d like to hear more regarding your argument that Bilski overrules Nuijten. In particular, I though Bilski was limited to addressing what qualifies as a process under 101, while Nuijten specifically addresses whether a signal claim qualifies as an article of manufacture under 101. Will you please conenct a few more dots for me?

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