Correcting Patents at the District Court

CBT v. Return Path and Cisco (Fed. Cir. 2011)

CBT’s Patent No 6,587,550 covers a system of charging an “advertising fee in return for allowing” e-mail from an authorized sender to pass through an ISP.  Return Path’s Bonded Sender program (developed by Cisco) is very similar, except that the program has no advertising fee but rather charges an annual license fee.

On summary judgment, the N.D. Georgia District Court held the asserted claim 13 invalid as indefinite based upon what the court characterized as a “drafting error” made during prosecution.  The claim reads as follows:

13. An apparatus for determining whether a sending party sending an electronic mail communication directed to an intended receiving party is an authorized sending party, the apparatus comprising:

a computer in communication with a network, the computer being programmed to detect analyze the electronic mail communication sent by the sending party to determine whether or not the sending party is an authorized sending party or an unauthorized sending party, and

wherein authorized sending parties are parties for whom an agreement to pay an advertising fee in return for allowing an electronic mail communication sent by the sending party to be forwarded over the network to an electronic mail address associated with the intended receiving party has been made.

The claim indicates that the computer is programmed to “detect analyze the electronic mail” and the district court could not determine the meaning of “detect analyze” and therefore held the claim indefinite under 35 U.S.C. § 112.

On appeal, the Federal Circuit has reversed — holding that there is an obvious and correctable drafting error in the claim and that the district court has the power and obligation to correct that error in the claim construction process.

Correcting Drafting Errors in Court: The common law allows district courts to correct obvious errors in patent claims. However, that correction can only apply where “the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.” Novo Industries L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003). Here, the court goes on to hold that this correction process must be done as part of the claim construction and must take into account how the correction impacts the scope of the claim.

As a claim construction issue, the Federal Circuit reviewed the District Court’s analysis de novo and held that the error was not problematic. In particular, because “detect” and “analyze” are such synonyms in this context that the particular correction made did not make much of a difference, but that the best correction is to add an “and” between the two limiting words.

Certificates of Correction: The patentee could have corrected this by filing a request for a certificate of correction with the USPTO. The chart below shows the number of certificates of correction issued by the USPTO each year since 1995. I include an estimate for the rest of 2011.

330 thoughts on “Correcting Patents at the District Court

  1. “Simple mental experiments have been repeatedly posted on this topic. If the view that ignores the printed matter exception were true, two different discs with different programs would be completely interchangable and the loading in a computer would not matter on which disc was presented.”

    Technically speaking, they are, depending on how you change the computer in each scenario. Which is perfectly fine since B claims don’t recite the computer. Indeed, this same argument was made in a paper that just came out this year attacking B claims on 112 2nd grounds for a failure to properly put the public on notice since the function of a given disc will change depending on the computer, which is of course unrecited in the claim.

  2. what happens when you put a patentable process onto a computer-readable medium

    With respect to the “process”, absolutely nothing happens. With respect to the medium, it’s changed in exactly the same way that a piece of paper is changed when instructions for a process are written on it.

  3. Beautfully written. If Patel’s reasoning is adopted by the CAFC it will get rid of a good chunk of cxxxp currently churning at the USPTO.

  4. … two different discs with different programs would be completely interchangable and the loading in a computer would not matter on which disc was presented.

    I never said that the two discs are completely interchangeble. In fact, they are clearly distinguishable by the code that is “printed” on them. What I said was that BY ITSELF, an encoded disk functions exactly like a blank one – it just sits there. When you talk about loading the disk into a computer, you’re now introducing a computer into the mix, and the claimed object is no longer BY ITSELF. Now, the distinctive functionality that is at the heart of the claim depends on the computer, as well as the program printed on the disk. I think that’s a problem, because it makes it impossible to tell whether a given disk infringes a claim until you match it to a computer that is not specified in the claim.

    Please don’t rewrite my arguments and then accuse me of lacking sense. Thank you.

  5. The Shill: If the view that ignores the printed matter exception were true, two different discs with different programs would be completely interchangable and the loading in a computer would not matter on which disc was presented.

    Use some common sense!

    The Shill sure likes to spin ’round and ’round, doesn’t it? Easily the most aptly named commenter here. And to make matters worse, The Shill writes terribly so everything has to be translated into English first. “Loading in a computer would not matter on which disc was presented”? Just as bad as the worse PTO Examiners that certain commenters here love to whine about.

    But back to the “substance” of The Shill’s comment, such as it is. The Shill’s plea to use “common sense” really says it all here. How about just applying the patent laws? We’re talking about composition claims, not method claims. Nobody denies that software allows computers to carry out different methods. The issue (is it really so hard to remember this?) is that the law requires new compositions of matter to be distinguished from old compositions on the basis of structural differences, not by how those new compositions are made and not by what those compositions are capable of doing. This isn’t a 101 issue, although there may be 101 issues lurking around the corner depending on how hard you twist the other patent laws in your favor.

    This is a long-term battle and constant vigilance is required.

    And you believe this, obviously, because you are a self-interested shill. What other exceptions in the patent law would benefit you personally? Why not shill for those as well? That’s a rhetorical question. I know that you already do shill for those exceptions, tirelessly, before the USPTO. That’s why 50% of your appeals are pure shxt.

  6. The shilling, you keep citing something to the effect that there does not have to be a functional relationship between the elements of a claim. Please explain this a little more, give some examples and cite a case or two. I am not following you.

  7. I must admit some amusement that Malcolm finds Archer a “thing of beauty” when Archer destroys the last half decade of Malcolm’s tirades with “Furthermore, the statute does not support a simple “structure” test. 35 U.S.C. Section 101 plainly refers to several classes of subject matter having longstanding usage in the patent law and requires that the applicant have “invent[ed] or discover [ed]” a new and useful one of them. “Structure” is not one of these classes. Nor does Section 101 simply require a claim that recites structure.”

    I have no idea why you think this quote “destroys” anything that I have said in this thread, or elsewhere.

    This is a habit of yours. I could do the same thing I suppose. How about it? “Phillips destroys your position. Nyah nyah nyah.” Convincing? I didn’t think so.

  8. The encoded floppy disk, on the other hand, by itself functions just like any other floppy disk.

    Most definitely not. It suffers from the same flawed “House” argument as does the programmed computer.

    In some respects the disc does have the same functions (transfer mechanism) but in other, equally functionally-related respects, it does not. Even absent the differences, the printed matter exception simply does not require a different or novel functional relationship.

    Simple mental experiments have been repeatedly posted on this topic. If the view that ignores the printed matter exception were true, two different discs with different programs would be completely interchangable and the loading in a computer would not matter on which disc was presented.

    Use some common sense!

    The mistake (over and over and over) being made is somehow requiring that the functional relationship be a specific, distinct and completely determinative functional relationship.

    It does not need to be so.

    Ignore the smoke and mirrors put forth by those who ha_ te the critical exception to the printed matter doctrine. That doctrine in its entirity must be understood, and like it or not, accepted.

    All else is purposeful obfuscation.

    Bilski says no, or at least suggests it.

    Bilski was not a software or computer case. Stop (over)reaching. It is completely separate whether the APPLIED math on a machine is just a trick to claim the math itself (PURE MATH).

    This is not as difficult as it is being made. The only reason why all the dust is being kicked up is because some people want to pound the table and rule out software and computer related inventions. The very real thr_eat is the same as it ever was – the repeating over and over and over a message attempting to make the perception a reality.

    Critical-minded people see right through that message, but overlook the effect of forceful repetition. This is a long-term battle and constant vigilance is required.

  9. Leo, so long as we are clear here that simply because a computer or a disk (CD-ROM, etc.) with a new program is structurally different from the prior art, that structural difference by itself is not sufficient to determine whether the claimed subject matter is patentable under section 101.  I see your post as conceding this fact.  If so, we are in agreement.

    I refer to Archer's dissent as explaining why the majority opinion was wrong when it seemed to find patentability of the claim in the structural differences of the computer without more.  The dissent would have ignored the utility of the data being output by the claimed rasterizer, the smoothing of a display waveform, as justification a patentability of the claim, because the claim itself did not actually require the smoothing of a
    display waveform.  It only outputted data, data that was intended for such use in such a display.   Clearly, if a claim to a programmed machine actually requires that the claim itself actually do something physical to be patent eligible, it would be almost impossible to claim a programmed computer per se as a machine, because one cannot add process steps to an apparatus claim.  That renders them indefinite.

    But this issue seems to be sidestepped by the Federal Circuit in subsequent cases such as State Street Bank.  I expect at some time in the future that the issue will again be raised because of recent case law by the Federal Circuit that holds that process steps in apparatus claims render them in definite.

  10. Ned,

    STOP.

    Once again you chafe with incorrect legal applications.

    Opinions in dissent do not carry the force of law. Just because you choose to be persuaded means nothing.

    Benson was rejected as a process claim, not an apparatus. The missing of the apparatus aspect was a substantial error in that judgement. Regardless, Benson has been modified by the trilogy of cases, and merely quoting Benson alone on this point is irresponsible.

    I politely suggest that if you offer a truce and violate the terms of that truce repeatedly, then your word is even more diminished.

    If that is possible.

  11. Ned, you’re manufacturing law from a dissent and a holding from State Street that was expressly not adopted by the Supreme Court. That’s a shaky foundation you’ve got there.

    In any case, you’re making it way too complicated. A computer is a machine and is generally patentable subject matter under Section 101. The judicially-created prohibition against patenting of abstract ideas applies if your claim to a machine is nothing more than a computer programmed to implement an abstract idea.

    This approach doesn’t require any special treatment of computer-implemented inventions other than an alertness to the possibility that the computer isn’t doing anything practical. This approach doesn’t render Benson’s principles meaningless, because the Benson court held that the claims were merely to an abstract algorithm. (I think the Benson court was wrong on the application of its holding to the facts, but I’m ok with the holding.)

  12. Leo, but it is worse than you described because all that the claim requires, by inference, is that the program be physically read from the disk. There is no functional relationship between the claimed subject matter of the program and the computer that normally has anything to do with the mere act of reading the subject matter of the disk into the computer.

    However consider if the claims required that the program be executed when read. Then there would be a functional relationship between the claimed subject matter and the computer. I think this would render the claims entirely patentable, and not indefinite. However the computer industry such as IBM will be up in arms because the whole point of Beauregard claims is not the have the programs execute from the disk or CD-ROM, but the simply have the programs be carried to the computer.

    With the latter functionality for the disk or CD-ROM, there is no functional relationship between the functions of the claimed program and the CD-ROM or with the computer when the computer reads the contents of the CD-ROM. To hold that these claims are patentable tends to undermine patent law generally.

    New point, I have to recall that IBM persuaded the patent office to reverse course on Beauregard claims when they demonstrated that a computer operated differently when a disk with a different program was inserted. It seemed to me that IBM had rigged a demonstration so that programs in some fashion executed directly from the disk or CD-ROM. So while the demonstration showed that the disk or CD-ROM “could” be a component of a computer that make the computer function differently upon insertion into the computer, such is not generally true of programs carried to the computer on the computer readable medium.

  13. Leo, the short answer is this, the new structure is irrelevant. See Judge Archer’s dissent in Alappat. To hold otherwise would render meaningless Benson, which did have new structure.

    The majority opinion in Alappat held the claims patentable because the rasterizer smoothed the waveform of the display. It provided a new, concrete, tangible result. This new result was emphasized in State Street Bank when it referred to its holding in Alappat as the reason the court there found the claims to be patent eligible.

    Machine do not ordinarily require a new, concrete, tangible result to be patentable. Processes do. That is why the courts treat claims to program machines as processes and analyze the cases the same way.

    I politely suggest that you read Judge Archer’s dissent. It is eloquent and persuasive.

  14. Similarly, I am confused by the posted notion that a disc is not patentable subject matter. Clearly a disc is a manufacture and is likewise one of the things expressly stated as patentable subject matter.

    I know that I and others have been sloppy in discussing this, so I’m not surprised you’re confused. Yes, a general purpose computer and a disc are both patentable subject matter in the first instance. The issue with Beauregard claims is whether the program on the disk provides any patentable distinction over an empty disk, or whether the program should just be treated as printed matter and ignored, since it does not have a function that is related to the disk. The issue with a general purpose computer vs. a programmed, special-purpose, computer is again whether the addition of the program makes the programmed computer patentably distinct (assuming novelty and non-obviousness), i.e., a “new computer.” I think the two cases are quite different, since the programmed computer unquestionably functions differently, so the programming has a functional relationship to the substrate (the machine). The encoded floppy disk, on the other hand, by itself functions just like any other floppy disk.

    A completely SEPARATE issue is whether putting a non-patentable method, like a pure, unapplied, mathematical algorithm, on a computer will give you a statutory machine. Bilski says no, or at least suggests it. But this is a special case – unpatentable methods on otherwise patentable machines. Much of the sturm and drang on this website is focused on a largely pointless argument about whether computers programmed to perform patentable processes are properly the subject of patent. It’s pointless, in my view, because the courts pretty clearly say they are, and I’m not aware of any real threat to this position.

  15. new anon, the attitude you express is somewhat of the same as the attitude expressed by dissent in Diamond v. Diehr. I suggest you read that opinion first, then read the majority opinion in that case.

  16. Maybe it is a nomenclature or term of art thing, but I am having trouble understanding how a general purpose computer is not considered to be a patentable subject matter in the first instance.

    Is this like a phone is not considered to be patentable subject matter?

    Is this because “general purpose computer” is like “a person having ordinary skill in the art”, a legal abstraction?

    Am I conflating “patentable subject matter” with “patentable”?

    To me, “patentable” is what is decided by everything other than Section 101 and “patentable subject matter” is decided by Section 101, with “subject matter” turning “patentable” to mean “patent eligible.”

    I do not understand what concept of law would treat a general purpose computer into a non-machine. To me it is clear that “machine” is one of the express categories and it is equally clear that computers are machines.

    Similarly, I am confused by the posted notion that a disc is not patentable subject matter. Clearly a disc is a manufacture and is likewise one of the things expressly stated as patentable subject matter.

  17. Sorry 6, official PTO policy is that B claims are statutory because the encoded program is functionally related to the substrate, i.e., the storage medium. I think that is incorrect – the program has no functional relationship to anything until the medium is coupled to a processor that can interpret the instructions. Until that time, a CD or a magnetic disk is just a thing with 1′s and 0′s on it. As IANAE has explained, the functionality of the medium is defined by the processor, which isn’t defined in the claim. It’s theoretically possible to start with a list of functions that you want accomplished, take any disk, with arbitrary data on it, and then design a computer that will read that disk and perform those functions in response to that arbitrary data. All I have to do is define the instruction set on this external computer to match the arbitrary data.

    But your hands are tied. You have to follow official policy, don’t you?

  18. Lulz.

    “I don’t like it, therefore it is cr_ap”

    [says Malcolm as he pounds the table yet again]

    My turn for a rant. Buckle up and enjoy the ride.

    Alappat has arranged known circuit elements to accomplish nothing other than the solving of a particular mathematical equation represented in the mind of the reader of his patent application

    That’s your idea of “a thing of beauty”? Not knowing the difference between pure math and applied math?

    the majority today holds that any claim reciting a precise arrangement of structure satisfies 35 U.S.C. Section 101

    Start with a false premise and then blow it over (can you say strawman?)

    As has been noted several times of late (and wonderfully by A New Light), there is no such thing as a “pure structure claim = patent” rule of law. That simply is a false premise now, just as it was a false premise when Judge Archer built his “thing of beauty” dissent.

    the discovery of mathematic functions, relationships, operations, or algorithms does not entitle a person to a patent therefor. Diehr, 450 U.S. at 191, 209 USPQ at 10 (“a mathematical formula as such is not accorded the protection of our patent laws”); see Walter, 618 F.2d at 770, 205 USPQ at 409 (pure mathematics is not an <31 USPQ2d 1567> art or technology).

    Too much “legal argument” here is passed off by misquoting law and held up as “things of beauty” – here the misquote relays on obfuscating the difference between pure math and applied math. As A New Light eloquently stated, when pure math is applied, it crosses over and:

    I think that math, pure math, and music are similar, yet different. The similarity comes from the pursuit of each not being a useful art. Each is pursued to the delight of the human mind, rather than in any type of functionality. The difference comes from when pure math is applied to a useful end. When this happens, the math is no longer merely a delight of the human mind, but has become a tool and a building block. In fact, it has become just as much a building block as carbon, hydrogen and oxygen atoms, just as much a building block as transitors (virtual or actual) and just as much a building block as nuts and bolts.

    Archer deftly overstates his position and understates (after mistating same) his opponents:
    On the other hand, an invention or discovery of a process or product in which a mathematic operation is practically applied may be statutory subject matter.

    That would be wrong. Not may be statutory, but is statutory, for that test. As with anything else, such must still pass all all other tests.

    Even given structure and circuit diagrams, Archer goes overboard when he sees applied math. “Oh no, data is being stored in a Great Computer Brain”

    The presence of structure on the face of the claims does not ipso facto make the claimed invention or discovery one of statutory subject matter.

    That would be wrong. Not may be statutory, but is statutory for that test. As with anything else, such must still pass all all other tests.

    However, the Supreme Court expressly reversed… in Parker..accord Diehr

    Misquoting law yet again – accord simply is not the right legal phrase. Diehr did not merely accord Parker.

    I must admit some amusement that Malcolm finds Archer a “thing of beauty” when Archer destroys the last half decade of Malcolm’s tirades with “Furthermore, the statute does not support a simple “structure” test. 35 U.S.C. Section 101 plainly refers to several classes of subject matter having longstanding usage in the patent law and requires that the applicant have “invent[ed] or discover [ed]” a new and useful one of them. “Structure” is not one of these classes. Nor does Section 101 simply require a claim that recites structure.” The remaining portion of Archer’s quote is superbly handled by A New Light’s views (above).

    Archer would strip out applied math. It is Archer that seeks to expand the Supreme Court exception. He is not the first judge to so think and will not be the last. But as we have seen with Stevens, trying to push something back over the line that has been rightfully crossed over is not easy to do. And it clearly is not meant for a Judge to do at all.

    And to answer a possible further question, yes I think Benson was wrongly decided.

    This is not to say that digital circuitry cannot be an element in an otherwise statutory <31 USPQ2d 1575> machine. Under Diehr, it can

    Another legal misquote – it was not circuitry that was an element that Diehr focused on – circuitry (and as A New Light suggests, this includs virtual circuitry) has always been understood as a statutory element. Archer is twisting Diehr’s discussion of applied math.

    Thus it is only with a faulty strawman premise and a twisted final trick that Archer arrives at his conclusion: Thus unlike the rubber curing process in Diehr, the claimed rasterizer here is not an application of mathematics in an otherwise statutory process or product

    A thing of beauty? No. More like a very bad abomination of law in attempt to achieve a pure policy standpoint to unnaturally disqualify what is clearly understood to be a new machine.

    Further, we see Malcolm’s love of dissection repeated:
    But standing alone, “the novelty of the mathematical algorithm is not a determining factor at all.” Flook, 437 U.S. at 591, 198 USPQ at 198.
    Fortunately, there is no “standing alone” allowed. Flook is expressly overruled in this regard.

    Again, the beauty of A New Light’s thoughts show the error of Archer: “Getting back to the music analogy, Alappat is like a composer who claims his song on a compact disc, and then argues that the compact disc is equivalent to a player piano or a music box with the song on a roll or even sheet music because they all represent the same song. The composer is thus clearly asking for (and getting from the majority) a patent for the discovery of a song and a patent covering every physical manifestation of the song.” This cannard should be permanently retired because it is a direct obfuscation of something that simply does not belong in a patent arena discussion and would be rejected on other grounds (the whole Delight of Mind versus Purposeful Use).

    So we see, point after point of this dissent can be seen for what it is – pounding the table, strawman set ups and twisted application of law. It is the dissent that is meritless.

    Let the actual law stand as is. Let the actual facts stand as is. I will leave the table pounding to you.

  19. That is a shame.

    Also, maybe someone should point out that it is impossible to put a method on a CRM. Methods are intangible.

  20. “the computer-readable medium alone is NOT properly the subject of a patent, for the reasons that IANAE and Malcolm have proposed.)”

    Well that’s interesting. You seem like a pretty decent lawlyer, could you perhaps elaborate in a better way? I have before me my first B claim going out with a whole load of rejections. One more couldn’t hurt.

  21. Thanks, 6, that’s great. Judge Patel is right on the money, based on my 2.5 minute read. I don’t think we’re going to get an answer to the Beauregard question, however. Judge Patel said only that putting an unpatentable process onto a computer-readable medium won’t cut it. That doesn’t tell us anything about what happens when you put a patentable process onto a computer-readable medium. Since she’s right that the process itself is unpatentable, the Federal Circuit doesn’t need to reach the question of whether Beauregard claims are valid in general.

  22. There is language in Alappat that suggests the Federal Circuit believes that the circuits themselves are somehow altered by the program.

    And the Federal Circuit is absolutely correct. When the program is stored on a magnetic medium that is coupled to a processor, the little magnetically re-oriented thingies on that medium are just as much a part of the circuits as the doped semiconductor material in the processor or the tantalum in the power supply decoupling capacitors. The same is true for the pits in a CD, when the program is stored on it. Sure, a six-year-old can alter those aspects of the circuit, sometimes in meaningful ways, but so what?

    The computer system, which INCLUDES the storage medium for the software, is physically altered when you load a new program on it. I’m totally perplexed by the denials of this, just as I am by the silly statements that software is “equivalent” to structure or that software is a “substitute” for structure. (Hint: when all you’ve got is an argument by analogy you’ve probably already lost.) WHEN IT’S INSTALLED ON PHYSICAL MEDIUM THAT IS OPERATIVELY CONNECTED TO A PROCESSING CIRCUIT THAT IS ITSELF CONFIGURED TO EXECUTE THE SOFTWARE, THE INSTALLED SOFTWARE IS PART OF THE COMPUTER SYSTEM’S STRUCTURE.

    A computer with a new program installed on it is physically different from the same computer without that program, in a way that can be directly observed, measured, characterized, etc., using pretty simple instruments. In the case of optical storage, those physical differences can be observed with the human eye (through a microscope, of course). The STRUCTURAL differences seem to me to be undeniable, and I’d love to see a contrary argument that doesn’t reduce to “computer-related claims s*ck” or “beauregard claims s*ck.” Those arguments might be correct, but they have nothing to do with whether a programmed computer has structural differences from the unprogrammed computer.

    The next question is whether the STRUCTURAL differences in the programmed computer are functional, so as to put this structurally different new machine into the realm of patents as opposed to the domain of copyright. The answer is pretty straightforward – YES, when the program is installed on a media that is physically and operatively coupled to the processor that is configured to execute it. (Side point – the computer-readable medium alone is NOT properly the subject of a patent, for the reasons that IANAE and Malcolm have proposed.)

    The final question is whether it’s proper to claim a computer-readable medium in functional terms. Malcolm pretends that computer-implemented claims are always in the form of “black box programmed to do X.” In fact, they typically recite a “computer” or “processing circuit,” which both ARE structure and which both have a very definite and limiting meaning to the skilled person. (“Black box” or “utensil” do not convey structure.) The functional limitations that follow tell the skilled person how MY computer or MY processing circuit are different than others. As far as I can tell, this approach to claiming is EXACTLY the same as “the nucleic acid that encodes X, Y, Z,” which is the example I gave above. The term “nucleic acid” tells the skilled person what general structure we’re talking about, while the functional limitation “encodes X, Y, or Z” distinguishes MY nucleic acid from what you’ve seen before. There is no “special treatment” for computer-implemented inventions.

    Malcolm is correct that many computer-implemented claims should never have been granted. IANAE is correct that Beauregard claims are based on extremely questionable logic. But I’ve yet to see a persuasive argument that a properly written computer-implemented claim is invalid simply because it relies on a computer program and the functions encoded in that program to distinguish over the prior art.

    Whew. I’ve said my piece; sorry for yelling. And I still haven’t finished that provisional application. Carry on…

  23. I’ll address your good specifics later, but there is some confusion–I was talking about a B-claim, and not a claim to a programmed computer.

  24. Compare:

    “but has nothing to do with claims to novel, structurally defined compositions of matter”

    and

    “Nobody here is saying that a functional limitation renders a composition claim ineligible or unpatentable.”

    LULZ

  25. I recall that both interpretations of heating were actually described in the specification such that it was not only the claim that was ambiguous, but the specification. You might want to check that out.

  26. I think Paul Morgan raises a good point. I am perplexed as to why Chef America was not distinguished or even mentioned in this case. My recollection from a couple years ago on finding related Chef America case law was that there was none. The Chef America case appears to be one of those silent Fed Cir anomalies. The way I see it, the error in this case of forgetting to insert “and” (or “or” as one commenter put it), is no less obvious than the error in Chef America of heating the dough rather than the oven, resulting in obviously unintended burnt buns. Had the court in Chef America relied on the specification as much as the court in this case, the error in Chef America should have been deemed obvious and should have been corrected. And what about the Chef America holding that “courts are not to engage in rewriting claims for patent practitioners”? The Lourie panel in this case should have at least distinguished this aspect of Chef America.

  27. I have no doubt that the corresponding structure to MPF elements directed to program steps would include the computer elements that carry out the program. But, when the question is what is the “new structure,” the proper answer is “only the program.” The hardware itself is unchanged. Indeed, when asserting infringement, one does not want to get into the weeds about whether the particular computer was the same or equivalent to the computer disclosed. One only wants to demonstrate that the accused programmed computer operates the same way.

    When considering the patentablity of a programmed computer, one can almost ignore the computer entirely and simply ask whether the claimed “process” achieves a new, physical result. See, e.g., Archer’s dissent in Alappat for a full explanation what I mean; but this is also the critical inquiry in Benson, Flook, Diehr, and Bilski.

    Given Bilski, both en banc Federal Circuit and Supreme Court, it is becoming clear that State Street Bank and the Alappat majority are in severe disrepute. I believe, as apparently does Malcolm, that when considered next again by the Federal Circuit, they will flatly overrule both cases, and follow Archer’s dissent in Alappat.

    This said, if the novelty is not in the program, but in the new computer architecture, a claim to the improved computer will be patentable as a machine without regard to any new result. It will be assumed that the machine has the same overall utility as the old, but with an new efficiency.

  28. Ned–

    I think they’re treated more like combination claims with “means for” clauses under 112p6.

    When you said “only if the machine does something new”, I assume you mean to say something different than it did BEFORE it was programmed, as opposed to something not previously done by any other machine…

    It’s not the “doing of something new” that is the clue to patent-eligibility, it is the STRUCTURE THAT ENABLES the doing of something new–the key is how to describe the structure, and what kind of description the PTO an the courts will find acceptable.

    They have deemed acceptable, essentially, a statement of the function and a means for achieving the function, combined with a medium–and under 112p6, such B-claims are “…construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

  29. Further note that the quote refers to a process, not a composition of matter.

    Sort of a big deal. Nice try, though.

  30. To wit, the most recent CAFC decision after Bilski Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), has moved such that the direct quote is now assumed law, and rather discusses the matter thus: “and
    invention which is not so manifestly abstract as to override the statutory language of 35 U.S.C.S. § 101 may nonetheless lack sufficient concrete disclosure to warrant a patent. In 35 U.S.C.S. § 112, the Patent Act provides powerful tools to weed out claims that may present a vague or indefinite disclosure of the invention. Thus, a patent that presents a process sufficient to pass the coarse eligibility filter may nonetheless be invalid as indefinite where the invention would not provide sufficient particularity and clarity to inform skilled artisans of the bounds of the claim.

    Note that this is not limited to a 112 Para 6 tool, and further note that sufficient particularity and clarity to skilled artisans of the bounds of the claim is what is required. The applied math in this invention is implemented by software, software which must be programmed into a computer.

    The perpetual nonsense about exacting structure is just that: perpetual nonsense.

  31. Anon, good point there on firmware.

    Regarding post State Street Federal Circuit cases, while they may cite to some novel structure in programmed computers, they cannot simply hold that a programmed computer without more is a new machine.  That clearly would violate both Alappat itself and State Street Bank, both en banc cases.  They would have to find that the programmed machine did something concrete and tangible, etc.

  32. like the software=firmware=hardware equivalency better as it is more accurate to what the technology actually is

    Technology? LOL.

    determine whether or not the sending party is an authorized sending party or an unauthorized sending party, and

    wherein authorized sending parties are parties for whom an agreement …. has been made

    Where’s the “technology”? And let’s face it: there’s nothing unusually stxxxpxt about this claim. It’s par for the course.

  33. In essence, the Federal Circuit treats claims to a programmed computer as a process

    Correct. For 112 purposes, claims to programmed computers are examined *exactly* as if they were method claims. The fact that the apparati are structurally indistinguishable (at least based on the disclosure and claims) is ignored.

    This exception exists for computer apparati only, because … of some laughable self-serving dicta in an old, terribly written Federal Circuit case.

  34. I like the software=firmware=hardware equivalency better as it is more accurate to what the technology actually is.

    Further, I think your claim that the courts do not cite to the “new machine” language is baseless.

    Defining the terms should not be done preemptively by you. Let’s let the terms mean what they actually mean. Those not willing to learn what those terms mean should not be preaching on the topic anyway.

  35. The majority opinion in Alappat is one of the worst written opinions in the history of the Federal Circuit. Archer’s dissent, on the other hand, is a thing of beauty. Eventually that dissent will become the law. That’s how the law works: meritless, crxp decisions are eventually overturned.

    More importantly, Alappat is a 101 case. I’m not talking about 101. And even if I were, the majority opinion in Alappat is such a huge pile of unpersuasive bxllshxt that I couldn’t possibly care less.

  36. by taking things to their logical extreme

    The problem, Ned, is that you show no appreciation of what logical extreme means. You consistently blow by any type of reason that is not your own, and repeatedly apply “reason” to case law that no reasonable person would hold.

    You insult Kant by labeling what you do a method of testing propositions and logic for two reasons: 1) you never apply the tests to your own views (this shows up in your repeated ducking of any point that you don’t like); and 2) you apply what you think is reason as the standard for reason and this standard is unbelievably biased by your existing views.

    Far too many times I see you embrace your bias as gospel. Far too many times, you need to be far more humble.

    You are not interested in any type of debate. You merely want to preach.

    Why should I accept any type of “truce” from you, when you continue to do the things that chafe? Have you bothered at all to read any of my posts, or to contemplate the criticms that attaches to you so readily (rather than merely being rude and labeling anyone with a different view “a cretin”)?

    You are only too quick to judge others as to form of commenting, while your form is possibly the worst possible and most insulting form I read. Granted, I typically do not read the filth-strewn form of those whom you claim I am wrong about. It is easy to see why you think more highly of Malcolm and 6 – you think they agree with what the mighty Ned thinks, so they must be doing a good job (the exchange on appeals and runaway legal application with no respect for settled law comes to mind).

    Do you really expect me to accept such an apology as you offer with such a meaningless truce? You offer no real change in your posting, and even defend your style. You expect far too much goodwill from your name, as that account has been massively overdrawn.

    Put your ego on check, evaluate the limits of reason, stop distorting holdings and discuss law as a gentleman. Then, I might have reason to accept your apology and truce.

  37. Malcolm, Leo, 6, Lionel,

    Regarding computer structure.

    To some extent, I think we are talking past each other because we do not define “structure” in the same way when we think of how a programmed computer is altered structurally by its program. Malcolm, I believe, is thinking of the computer architecture. I believe the Federal Circuit itself believes that it is the a program which is the new structure. After all, when faced with a means plus function clause directed to a program element, the corresponding structure it looks for is the program.

    There is language in Alappat that suggests the Federal Circuit believes that the circuits themselves are somehow altered by the program. But it is clear that the Federal Circuit itself no longer cites Alappat for this proposition. Rather it emphasizes that aspect of Alappat where the claimed rasterizer provides for a smoothed display.

    While there appears to be many here do do not agree with the following, I believe that a computer having new computer architecture is patentable as new a machine without regard to the use to which it is put. In contrast, a new “programmed computer” that varies from the prior art only by its program is patentable as machine only if the machine does something new. See the State Street’s interpretation of its Alappat holding. In essence, the Federal Circuit treats claims to a programmed computer as a process, regardless of its denial of such construction in Alappat.

    I hope this is useful to a least place context our discussions concerning “novel structure” when talking about computers.

  38. you were busted upthread

    That’s funny.

    “programmed to” is all the structural description necessary.

    Cite the case and the passage where the reasoning for this rule is explained. Otherwise, just keep sxckin’ your lollipop, son.

  39. As I noted upthread, when you say “class of apparatus” you are referring to a class of apparati defined only by what the apparati are capable of doing.

    Actually you were busted upthread for trying to say this and you were corrected.

    that no structural descriptions at all are necessary

    Not true – “programmed to” is all the structural description necessary.

  40. Leo: The law says that defining structure by function is OK, so long as you meet the requirements of Section 112.

    Are you referring to 112P6? There must still be a reference to definite structure as any abuser of means plus function claims will tell you.

    If you’re asking whether I could give you a comprehensive structural definition of some infringing computers, then the answer is yes. (At least, the theoretical me could.)

    The theoretical “you” is truly theoretical. I’m not aware of a single application or patent with claims similar to those at issue here where the computer with “new” functions was described in such a way as to distinguish it structurally from otherwise identical old computers. Not in the claims, nor in the specification.

    A properly written computer-based apparatus claim defines a class of apparatus that is readily distinguishable from all other apparatus in the world and enables those skilled in the art to build as many different embodiments as they wish.

    If granted, it also prevents every one those apparati from being built without taking a license, which is one of the problems. As I noted upthread, when you say “class of apparatus” you are referring to a class of apparati defined only by what the apparati are capable of doing. Your argument boils down to “that’s okay because programming is incredibly easy.” Modifying a computer (or computer-readable media) is apparently so easy that you get a free pass from the requirement applied to every other composition claim in ever other field of endeavor. It’s so easy that no structural descriptions at all are necessary to distinguish these compositions from those in the prior art.

    At the same time, you will argue to the USPTO that these incredibly broad “classes” of apparati are non-obvious in view of thousands of years of recorded human history in activities such as advertising, charging fees, introducing people with similar interests to each other, etc.

    Sorry, but I ain’t buying the “legal arguments.”

    On the other hand, turning the law upside down (or ignoring it) because it makes a wealthy, whiny group of constituents happy? Yes, I can certainly see that happening.

    The fact that the defined class of apparatus potentially includes an infinite number of embodiments should make it easier for you to invalidate it, I suppose. But it doesn’t make it unpatentable, per se.

    This isn’t the issue. The issue is composition claims that are devoid of distinguishing structures.

    Let’s say I invent a utensil that allows me to selectively pick up white rice from a mixture of white rice and brown rice. There are surely an infinite number of distinct embodiments of that utensil and some of them are straightforward to make. Assume there is no such utensil in the prior art. Can I get a claim that covers *every* such utensil with that function without describing how the utensil differs structurally from prior art utensils? Of course not, unless the laws applying to computers are applied to my utensil. Then I’m golden.

  41. I repeat,

    Note that Benson was not “reaffirmed” as you indicate here.

    Your understanding is so extremely flawed as to be an insult to not only any reader, but to every reader.

    You take the statement including the “no categorical rule/narrow resolution” and you attempt to make a broad categorical rule.

    Dante has a special place for the likes of you.

  42. It’s the patentee’s own problem if he claimed an infringement he can’t detect.

    Except that this requirement that you detect infringement exclusively by structural analysis is your requirement. The law says that defining structure by function is OK, so long as you meet the requirements of Section 112.

    And more to the point, if all you had in front of you was the claim, could you give a structural description of the set of infringing computers?

    If you’re asking whether I could give you a comprehensive structural definition of some infringing computers, then the answer is yes. (At least, the theoretical me could.) On the other hand, if you’re asking whether I can give you a comprehensive structural description of every possible programmed computer that meets the terms of the claim, then the answer is no, of course not. It’s an infinite set. But the law is OK with that, too, so long as that particular infinite set is distinguishable from other (non-infringing) instances. Finiteness and definiteness are not the same thing. The law requires that your claims be definite, but it certainly doesn’t require that they be limited to a finite set of discrete embodiments. I think it’s wonderful that claims to molecules cover a small, finite, set of readily identifiable structures. But that’s not a legal requirement.

    A properly written computer-based apparatus claim defines a class of apparatus that is readily distinguishable from all other apparatus in the world and enables those skilled in the art to build as many different embodiments as they wish. The fact that the defined class of apparatus potentially includes an infinite number of embodiments should make it easier for you to invalidate it, I suppose. But it doesn’t make it unpatentable, per se.

    I’m looking forward to your response, but please don’t be offended when I don’t participate further. I really have to get this application done…

  43. I didn’t say it would be easy, and I would need some tools, just as I presume IANAE/Sauron would to “look” at nucleic acids.

    Okay, so it’s difficult and expensive in practice. No problem. It’s the patentee’s own problem if he claimed an infringement he can’t detect.

    The question I’m really interested in is what structure you’d look at to determine whether a “programmed computer configured to do X” claim is infringed, without the computer actually running any software. And more to the point, if all you had in front of you was the claim, could you give a structural description of the set of infringing computers?

    I know what structure you’d look at to determine infringement of a DNA claim. You’re looking for a specific sequence of atoms (arranged as nucleotides), and probably the easiest way to find it would be to use the complementary sequence that can only physically bind to the sequence you’re looking for. But you can’t do that with the programmed computer unless you can describe what structure you’re looking for.

  44. “Focusing on one element and trying to determine whether it is wholly preempted, i.e., does not seem to ask the right questions. ”

    Tell it to the USSC.

    “If the claim as a whole is doing something new, physically, and the algorithm is contributing functionally to that result, it is patentable. ”

    So long as you are not simultaneously preempting the entire judicially excepted subject matter.

    Remeber Ned, there is no rule that something IS patentable in this context, there is only a rule against certain things being patentable, all else is considered patentable. That’s why it is a judical exception.

  45. 6, excellent post.

    Even if one would consider every programmed computer to be different from every other programmed computer with a different program, the programmed computer remains non statory if, considered as a whole, it is not directed to statutory subject matter, i.e., not doing something within the MOT or some other test that the Feds have yet to devise.

    Thus, a programmed computer that is part of another system and that system is modified functionally to do something new, as in Alappat, the programmed computer claimed in that context is patentable. Claimed withou any new, patentable use, but just calculating numbers from numbers, the programmed computer remains non statutory.

  46. So what?

    Wow. So deep. So penetrating.

    Must be more of that reduction ad absurdum Kantian categorical imperative stuff.

  47. I’m sorry, that’s what I thought you were claiming to be able to do personally. Apparently you were claiming that you (or some other entity, perhaps go d himself) could theoretically accomplish that? I gotcha.

    This is the interwebz. For all you know I am g od himself.

    I’ve got to finish drafting a provisional. See ya.

  48. “Oh, so now we’re talking about whether I personally could do it, rather than whether it’s theoretically achievable, is that it? ”

    I’m sorry, that’s what I thought you were claiming to be able to do personally. Apparently you were claiming that you (or some other entity, perhaps go d himself) could theoretically accomplish that? I gotcha.

    “Since I’m busy and since your parents probably won’t let me into their basement to crack open “your” computer, I’m afraid you’ll have to take my idle boast for exactly what it was, an idle boast. :)”

    Lulz.

    “That looks like a trick question to me. You have to give me the computer it’s installed in, too.”

    So then the functionality of the cd with a 1 on it isn’t set? It depends on something outside of itself? Aka the computer which you’ve placed the cd into?

    Well, you weren’t defending B claims so I’m going to just let this issue die down. I’m still drafting a rejection for several atm.

  49. Thank you for correcting

    Lulz – when wrong, just claim victory.

    The point here was that the claim provided did not explicitly recite structure, but rather by th efunction it performs.

    Encoding is a function – perhaps that was too subtle for you.

    Now we have the weasel effect of “modestly redudant” and “one can [note, not does, but "can"] trivially specify” and “every adult should“… affecting the rather simple and straight forward analyis here.

    But but but – F A C E D

    That’s how it seems to work here.

    Oh so true – just not in the manner you may have intended.

  50. Lulz, you sure think you could, but I doubt if you ever have, and I also doubt that you could in fact accomplish the task.

    Oh, so now we’re talking about whether I personally could do it, rather than whether it’s theoretically achievable, is that it? Since I’m busy and since your parents probably won’t let me into their basement to crack open “your” computer, I’m afraid you’ll have to take my idle boast for exactly what it was, an idle boast. :)

    I’m curious, what would you peg as the functionality of a cd with a single 1 thereon?

    That looks like a trick question to me. You have to give me the computer it’s installed in, too.

  51. 6, however you slice it, the real question is whether the claim as a whole is directed to statutory subject matter.  Statutory subject matter requires that the machine or process, normally, do something new, and after Bilski, its seems clear that what it does has to be physical.  If it does not actually do something new, the claim as a whole is non statutory.  The claim cannot just calculate a new number from a number.  

    Focusing on one element and trying to determine whether it is wholly preempted, i.e., does not seem to ask the right questions.  If the claim as a whole is doing something new, physically, and the algorithm is contributing functionally to that result, it is patentable.  If the claim as a whole is not doing something new
    physically, it is not patentable subject matter.  The MOT, while not the exclusive test, is, per Breyer, the best test out there.  

     

  52. Lulz, you sure think you could, but I doubt if you ever have, and I also doubt that you could in fact accomplish the task.

    I’m curious, what would you peg as the functionality of a cd with a single 1 thereon?

  53. When someone deals in Lasers and tells you not to abandon your Application. And the other one is bought and paid for so it is a done deal… Then why would He? Boy he just ought to stick to making Bird Houses. Because as I see it, what he did was for the birds.

  54. Wouldn’t you rather I just observe the computer from the outside, to see what it does?

    This is an apparatus claim, not a method claim.

    My new black box with stuff inside “does something different” than that old black box with stuff inside. Is merely reciting that fact in the claim enough to get a composition claim granted?

    It wasn’t, the last time I checked.

  55. I’ve had my nose so deep in other cases I can’t hardly remember anything else atm.

    I understand. If you’re open to some advice, I suggest starting with Gordon v Steele, Vaughan v Menlove, and R v Latimer, and then work from there. In 2-3 years you’ll be slinging case law with the best of them.

  56. I didn’t say it would be easy, and I would need some tools, just as I presume IANAE/Sauron would to “look” at nucleic acids.

    My hourly rate for infringement analysis is kinda steep, though. Wouldn’t you rather I just observe the computer from the outside, to see what it does? It would save you a few hundred grand, at least.

  57. “I can “look” at a programmed computer and know from its structure whether it anticipates or infringes the claim, without needing to see what it actually does. ”

    I lulzed. Sure you can. Maybe one “programmed” by adjusting it’s hardware. FPGA?

    You can’t crack my computer open here in my house, look inside and tell me if it infringes i4i’s patents.

    There is no fing way.

  58. “I have to yield, since I somehow managed to get through over 22 years of school without ever taking a biology class”

    Man, not even a HS class? No intro class in college? Crazy man.

  59. What, sire, is your expertise? Does it even come close to my own?

    Since when is mangling law (sorry, applying the Kantian categorical imperative) and being too full of oneself considered an area to be labeled an “expertise?”

  60. Is that right? I could have sworn that it was relying on that, it’s been awhile. I’ve had my nose so deep in other cases I can’t hardly remember anything else atm.

  61. “You now seem to agree that any kind of preemption is sufficient.”

    Idk what you mean by “any kind of preemption”. In Benson they said look to whether the claim is wholly preempting. In Flook they came along and said, look to whether it would be wholly preempting if not for the drafter having tacked a few features on to stop it from wholly preempting.

    Idk why you want to draw my attention to that part in Bilski, of course you can consider any algorithm to be a principle in the abstract. That’s what they are.

  62. Thank you for correcting The Shill, IANAE.

    I’m guessing you’ll need to do it again the next time the subject comes up. That’s how it seems to work here.

    Once again, folks: the genetic code is modestly redundant but the structural relationship(s) between the three nucleotide codons and the amino acids they encode is straightforward (there is some weirdness at the margins, e.g., the coding for selenocysteine incorporation is baroque, but doesn’t affect the analysis here).

    Every adult should know this stuff, by the way. It’s about as fundamental as understanding why the sun rises and sets every day, and why our planet has seasons (hint: this stuff doesn’t depend on some decider living on Mt. Olympus). What’s amazing to consider is that the code was only determined a half-century ago. Revolutionary stuff.

  63. Don’t be rude to Ned, even if he is sloppy with his verb tenses.

    Unless of course, you were merely using the categorical imperative as a way of testing Ned’s propositions and logic.

    Did Ned pass?

  64. software can take the place of structure

    Yes, that is a “legal argument.”

    The statement has the bonus of also being a “factual argument.”

    That leaves only the table-pounding to you.

  65. I’d like to attend that meeting as well.

    I can “look” at a programmed computer and know from its structure whether it anticipates or infringes the claim, without needing to see what it actually does.

    That’s a bold claim, LB.

  66. We can talk after class. Meet at your tower? :)

    Sure. It’s the one with the glowing orange eye at the top. I’ll give you a ring when I’m free.

  67. I think I’m going to need to ask what you mean by “structure” in that context.

    We can talk after class. Meet at your tower? :)

  68. So those SEQ IDs define the nucleic acid structure itself and not some proteins that are expressed by it?

    The SEQ IDs could define either the sequence of nucleotides or the sequence of amino acids, but there’s a well-known correspondence between three-nucleotide codons and the amino acids they encode. It’s a many-to-one substitution cipher. Either type of sequence contains the same information.

    I can “look” at a programmed computer and know from its structure whether it anticipates or infringes the claim, without needing to see what it actually does.

    I think I’m going to need to ask what you mean by “structure” in that context.

  69. The SEQ ID convenient forms are the prodcuts of the action that is claimed – not the distinguishing structure.

    Given the product, one can trivially specify exactly what arrangements of carbon, nitrogen, oxygen, hydrogen, and phosphorous would encode any particular SEQ ID. It doesn’t even take a biology degree – just the standard table of codons off Wikipedia and the known structure of the four (or five, I guess) nucleotides.

    So, yes, the “function” does unambiguously specify a particular structure. In much the same way that a mechanical tab that fits into and mates with a very well-defined slot is itself structurally well-defined.

    Good luck inferring that level of structure from a computer-readable medium based on what it does to an unspecified computer.

  70. I have to yield, since I somehow managed to get through over 22 years of school without ever taking a biology class. So those SEQ IDs define the nucleic acid structure itself and not some proteins that are expressed by it? It appeared to me that “encode” was an action/functional word.

    You can “look” at a molecule and know from its structure whether it anticipates or infringes the claim, without needing to see what the molecule actually does. Try doing that with a computer-readable medium, in the absence of a computer.

    I’m not defending computer-readable medium claims. I can “look” at a programmed computer and know from its structure whether it anticipates or infringes the claim, without needing to see what it actually does.

  71. An isolated nucleic acid, that encodes

    that encodes

    The SEQ ID convenient forms are the prodcuts of the action that is claimed – not the distinguishing structure.

    Back to the tower with you, you academic.

  72. isn’t the following thing defined entirely by its function?

    No, it’s defined by a very specific arrangement of atoms that is conveniently abbreviated in SEQ ID form.

    It’s no more “defined entirely by its function” than a claim to “polymerized tetrafluoroethylene” (claim 1 of US Patent No. 2,230,654 in its entirety). Does that sequence of carbon and fluorine atoms have a function? Sure it does. But the claim is explicitly a specific structural arrangement of those atoms.

    You can “look” at a molecule and know from its structure whether it anticipates or infringes the claim, without needing to see what the molecule actually does. Try doing that with a computer-readable medium, in the absence of a computer.

  73. IANAE outed himself as an academic with his spring break leave

    Great detective work, Sherlock. You discovered the only possible reason why anybody would take a week off at that time of year.

    It’s exhausting, balancing academia with my other jobs as a PTO examiner, PTO non-examiner, and EPO examiner. That week off came at just the right time for me.

  74. Can you identify for me one claim to any other type of apparatus in any field of endeavor that can only be distinguished from prior art apparati by the function it performs when it is turned on and operating?

    An interesting question. I’m kinda busy, and way out of my field, but isn’t the following thing defined entirely by its function?

    1. An isolated nucleic acid, that encodes a) the light chain variable region of SEQ ID NO:40, or b) the heavy chain variable region of SEQ ID NO:38, or c) the light chain variable region of SEQ ID NO:40 and the heavy chain variable region of SEQ ID NO: 38, or d) the light chain CDR1, CDR2, and CDR3 sequences of SEQ ID NO:40 as shown in Table 20 and the heavy chain CDR1, CDR2, and CDR3 sequences of SEQ ID NO:38 as shown in Table 18, or e) the light chain variable region of SEQ ID NO:52, or f) the heavy chain variable region of SEQ ID NO:50, or g) the light chain variable region of SEQ ID NO:52 and the heavy chain variable region of SEQ ID NO: 50, or h) the light chain CDR1, CDR2, and CDR3 sequences of SEQ ID NO:52 as shown in Table 20 and the heavy chain CDR1, CDR2, and CDR3 sequences of SEQ ID NO:50 as shown in Table 18, or i) the full complement of any of the encoding nucleic acids of a) through h).

  75. One comes to believe whatever one repeats to oneself sufficiently often, whether the statement be true of false. It comes to be dominating thought in one’s mind.

  76. Human beings, who are almost unique in having the ability to learn from the experience of others, are also remarkable for their apparent disinclination to do so.

  77. Looking glass, did you know that it takes more than a month on average to get a printed COC after it has been approved?  My god, you guys, whoever you are,  are beyond belief.  Way beyond.

  78. Leo, also consider, if you will, what the Feds themselves said about Alappat, en banc, in State Street Bank:

    “Unpatentable mathematical algorithms are identifiable by showing they are merely abstract ideas constituting disembodied concepts or truths that are not “useful.” From a practical standpoint, this means that to be patentable an algorithm must be applied in a “useful” way. In Alappat, we held that data, transformed by a machine through a series of mathematical calculations to produce a smooth waveform display on a rasterizer monitor, constituted a practical application of an abstract idea (a mathematical algorithm, formula, or calculation), because it produced “a useful, concrete and tangible result”—the smooth waveform.”

    And,

    “We note that, for the purposes of a § 101 analysis, it is of little relevance whether claim 1 is
    directed to a “machine” or a “process,” ….”

  79. You don’t seem to understand that software can take the place of structure. So perhaps you are simply a slow learner.

  80. Yes I do. It was the test itself. See, Breyer’s summary.

    “Fourth, although the machine-or-transformation test is not the only test for patentability, this by no means indicates that anything which produces a “ ‘useful, concrete, and tangible result,’ ” State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F. 3d 1368, 1373 (CA
    Fed. 1998), is patentable. “[T]his Court has never made such a statement and, if taken literally, the statement would cover instances where this Court has held the contrary.” Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., 548 U. S. 124, 136 (2006) (BREYER, J., dissenting from dismissal of certiorari as improvidently
    granted); see also, e.g., O’Reilly v. Morse, 15 How. 62, 117 (1854); Flook, supra, at 590. Indeed, the introduction of the “useful, concrete, and tangible result” approach to patentability, associated with the Federal Circuit’s State
    Street decision, preceded the granting of patents that “ranged from the somewhat ridiculous to the truly absurd.” In re Bilski, 545 F. 3d 943, 1004 (CA Fed. 2008) (Mayer, J., dissenting) (citing patents on, inter alia, a “method of training janitors to dust and vacuum using
    video displays,” a “system for toilet reservations,” and a “method of using color-coded bracelets to designate dating status in order to limit ‘the embarrassment of rejection’ ”);
    see also Brief for Respondent 40–41, and n. 20 (listing dubious patents). To the extent that the Federal Circuit’s decision in this case rejected that approach, nothing in today’s decision should be taken as disapproving of that determination. See ante, at 16; ante, at 2, n. 1 (STEVENS,
    J., concurring in judgment). In sum, it is my view that, in reemphasizing that the “machine-or-transformation” test is not necessarily the
    sole test of patentability, the Court intends neither to deemphasize the test’s usefulness nor to suggest that many patentable processes lie beyond its reach.”

  81. And I love how you can attack apparently obvious process claims, yet defend completely brainless claims to existing gene sequences.

  82. That worked.

    but

    but still I do not have the certificate of correction in hand.

    W

    T

    F

    Must be more of that famous Ned Heller “catagorical imperative.”

  83. A bunch, you must think that I called the patent office in response to Malcolm's suggestion.  No, I have been calling them for some time, but still I do not have the certificate of correction in hand. 

     I will say, that when you do call, they are responsive, helpful, and prompt.  However if you do not call, your certificate of correction may take some time.  

  84. Um no, I think you are wrong about Malcolm and 6. 

    Regarding what you might think ridiculous, I do not.  What I'm trying to do is drill down below the surface of the law to understand its principles by taking things to their logical extreme.  This is a way of testing propositions and logic.  I suggest you read up on Immanuel Kant and his so-called "categorical imperative."

    Regarding science, I readily admit that I am not a biologist.  Some of the things I might say in this field may seem to a biologist to be a bit funny.  My field is computers and computer technology.  I have a great deal of experience in this.

    I hope your comments here were good faith.  I will take it that way, because I offered you a truce an
    apology.  I have yet to hear back from you as to whether you accepted.

  85. Because your analysis, at least with respect to the “capable” part, is essentially identical to the BPAI’s reasoning in In re Alappat and in In re Freeman.

    Malcolm is an Office stooge.

    The outing is evident from the lack of posts on the same subject in the previous thread (vacation? “No, I just don’t want to post on the subject” and the proliferation of posting on the subject when he returned from vacation.

    Just as IANAE outed himself as an academic with his spring break leave, so too Malcolm’s habits give a hint to who he is (and why he believes as he does).

  86. 6, thanks for your post.  

    I think we are agreed then that Flook did clarify Benson to the extent that one could interpret Benson to require that a claim "wholly" preempt nonstatutory subject matter before it was deemed unpatentable.  You now seem to agree that any kind of preemption is sufficient.

    I would also like to refer you to the Bilski discussion of Benson where it interpreted Benson as well.  There the Bilski court found that the claim in Benson was "abstract" because it was only manipulating numbers, numbers in an numbers out:

    "Rather than adopting categorical rules that might have wide-ranging
    and unforeseen impacts, the Court resolves this case
    narrowly on the basis of this Court’s decisions in Benson, 
    Flook, and Diehr, which show that petitioners’ claims are
    not patentable processes because they are attempts to
    patent abstract ideas.  Indeed, all members  of  the  Court 
    agree that the patent application at issue here falls outside of §101 because it claims an
    abstract idea. 
    In Benson, the Court considered whether a patent application for  an algorithm to  convert binary-coded decimal numerals into pure binary code was a “process” under 
    §101.  409 U. S., at 64–67.  The Court first explained that 
    “ ‘[a] principle, in the abstract, is a fundamental truth; an
    original cause; a motive; these cannot be patented, as no
    one can claim in either of them an exclusive right.’ ” 

  87. Ron, true that Benson did not acquire the MOT test.  But it did hold, as described in the Bilski majority, the claimed algorithm unpatentable because it only processed numbers. I quoted the relevant passage in the prior post.

    Regarding the process for determining whether to deliver an e-mail, this is purely an abstract idea within the holding of Bilski, Diehr, Flook and Benson because it deals only with numbers.  There is nothing in the claim that requires the modification of any structure, nor does it appear to "do" anything physical.

    Now I would agree that if a business utility was statutory, that the production of a concrete business result might be sufficient by itself to render a business method claim
    patentable per State Street Bank.  However, State Street Bank after Bilski is in severe stress.

  88. Ned states that he is still waiting for critical corrections to issue at 8:49 PM.

    Malcolm tells Ned to get on the phone at 8:59 PM.

    Ned reports back that he did and Malcolm’s advise works at 5:33 AM.

    I did not know that the Patent Office had a graveyard shift working with the corrections people.

    T O O L S

  89. Ron, I agree with you on the whole about the Bilski opinion – it is not clear.  I think, however, you can read between the lines to determine that the Bilski claim was abstract because it was "numbers in and numbers out."  See the discussion of the Benson case, particularly on this point.

    "The Court then held [in Benson] the application at issue was not a “process,” but an
    unpatentable abstract idea.  “It is conceded that one may not patent an idea.  But in practical effect that would be the
    result if the formula for converting  .  . . numerals to pure binary numerals were patented in this case.”  409 U. S., at 71. "

  90. Anne der Mouse

    "All you rely on is highly discredited Federal Circuit law."
    You do realize that portions of a decision can be discredited and
    other portions remain fully in tact. Seriously.
    Overreaching and making up your own law on technology that you are clueless with is just plain sad."

    Do you deny that the Diehr dissent heavily criticized the Federal Circuit decisions that held that a program computer without more was a patentable; and that those same decisions were heavily criticized in Bilski when a majority of the judges heavily criticized State Street Bank which relied heavily on those discredited decisions.  Indeed, the majority of Bilski, in the passage I quoted in a prior post,
    noted that almost no computer program could pass the traditional test for patentable subject matter without having been claimed as part of otherwise statutory process as in Diehr.

    Regarding your final point, your assumption that I am clueless on this law and technology is beyond insulting.  I hope you realize this, cretin, that your form of commenting to me, and probably to others, is beyond acceptable.  

    Because you post anonymously, I did not know who you were.  But I will never again respond to you to the extent that you are identifiable.  

  91. Who the F are you to ask me this question in this fashion?

    My guess is that this attitude comes from your own rudeness and arrogance, Ned.

    That and the ridiculous treatment of the subject from both scientific and legal perspectives.

    And for good measure, the company you keep (and your apparent disregard for their rudeness and arrogance). Not that such a measure is needed, but one only has to take a small step back and read these threads to see that you reap what you sow.

  92. Anne der Mouse

    "See the discussion of this issue in Diehr, albeit in dissent."
    You cannot be trying to make a legal argument from a dissenting opinion. Seriously?"

    The Diehr dissent is quoted in the Bilski majority.

  93. Anne Mouse:

    "You cannot seriously believe that a programmed computer without more is patentable subject matter"
    You cannot seriously be making a statement on a subject you clearly know nothing about. Do you know what "programmed" even means?"

    Who the F are you to ask me this question in this fashion?  

    For your information, I worked as an engineer/systems analyst for four years prior to going to law school.  I have worked as a patent attorney in the computer field for over 30 years.  I know a lot about computers, systems, all their components, and about programming.
     

    What, sire, is your expertise?  Does it even come close to my own?  

  94. Anne der Mouse

    ""but the Supreme Court just reaffirmed Benson that said that a computer with new software was not new a new machine"

    Cite please. Note that Benson was not "reaffirmed" as you indicate here."

    From Bilksi:

    "It is true that patents for inventions that did not satisfy
    the machine-or-transformation test were rarely granted in 
    earlier eras, especially in the Industrial Age, as explained 
    by Judge Dyk’s thoughtful historical review.   See 545 
    F. 3d, at 966–976 (concurring opinion).  But times change.
    Technology and other innovations progress in unexpected 
    ways.  For example, it was once forcefully argued that 
    until recent times, “well-established principles of patent
    law probably would have prevented the issuance of a valid 
    patent on  almost any conceivable computer program.” 
    Diehr, 450  U. S., at 195 (STEVENS, J., dissenting).
     But 
    this fact does not mean that unforeseen innovations such 
    as computer programs are always unpatentable.  See  id., 
    at 192–193 (majority opinion) (holding a procedure for 
    molding rubber that  included a computer program  is
    within patentable subject matter).  "

    The cited passage from Diehr:

    "Prior to 1968, well-established principles of patent law probably would have prevented the issuance of a valid patent on almost any conceivable computer program. Under the "mental steps" doctrine, processes involving mental operations were considered unpatentable. See, e.g., In re Heritage, 32 C.C.P.A. (Pat.) 1170, 1173-1177, 150 F.2d 554, 556-558 (1945); In re Shao Wen Yuan, 38 C.C.P.A. (Pat.) 967, 972-976, 188 F.2d 377, 380-383 (1951). The mental steps doctrine was based upon the familiar principle that a scientific concept or mere idea cannot be the subject of a valid patent. See In re Bolongaro, 20 C.C.P.A. (Pat.) 845, 846-847, 62 F.2d 1059, 1060 (1933). [Footnote 2/5] The doctrine was regularly invoked to deny patents to inventions consisting primarily of mathematical formulae or methods of computation. [Footnote 2/6] It was also applied against patent claims in which a mental operation or mathematical computation was the sole novel element or inventive contribution; it was clear that patentability

    Page 450 U. S. 196
    could not be predicated upon a mental step. [Footnote 2/7] Under the "function of a machine" doctrine, a process which amounted to nothing more than a description of the function of a machine was unpatentable. This doctrine had its origin in several 19th-century decisions of this Court, [Footnote 2/8] and it had been consistently followed thereafter by the lower federal courts. [Footnote 2/9]"

    Note, Diehr was not about a programmed computer, but about a molding process that employed a programmed computer as a component.   Also see Alappat where the raterizer was a component of a display.   Benson however only worked on numbers.

    Continuing from Bilski,

    "Rather than adopting categorical rules that might have
    wide-ranging
    and unforeseen impacts, the Court resolves this case
    narrowly on the basis of this Court’s decisions in Benson, 
    Flook, and Diehr, which show that petitioners’ claims are
    not patentable processes because they are attempts to
    patent abstract ideas.  Indeed, all members  of  the  Court 
    agree that the patent application at issue here falls outside of §101 because it claims an abstract idea. 
    In Benson,
    the Court considered whether a patent application for  an algorithm to  convert binary-coded decimal numerals into pure binary code was a “process” under 
    §101.  409 U. S., at 64–67.  The Court first explained that 
    “ ‘[a] principle, in the abstract, is a fundamental truth; an
    original cause; a motive; these cannot be patented, as no
    one can claim in either of them an exclusive right.’ ”  Id., at 
    67 (quoting Le Roy, 14 How., at 175).  The Court then
    held 
    the application at issue was not a “process,” but an unpatentable abstract idea.  “It is conceded that one may not patent an idea.  But in practical effect that would be the
    result if the formula for converting  .  . . numerals to pure
    binary numerals were patented in this case.”  409 U. S., at 
    71."

    Note the final passage discussing why the Benson claim was not a process, but an abstract idea –
     numbers to numbers.  

    A programmed computer by itself only calculates numbers.  It is unpatentable (as a matter of law?) per Benson, Flook, Diehr and Bilski.

    When a programmed computer, however, is used as part of another machine (Alappat or Diehr) it may be patentable.

  95. case law discussed here from Leopold Bloom to help you out on how the legal argument works for how “configuring” creates a new machine

    I have yet to read a case that was even modestly persuasive on the subject I’m discussing, specifically: how can an allegedly modified apparatus be patentably distinguished from an old apparatus in the absence of any structural differences between the two apparati?

    I recall that there is some horribly written case that says, essentially, that the instructions carried out by the computer *are* the structure. Is that what you call a legal “argument”? Sounds like a self-serving tautology to me.

    Can you identify for me one claim to any other type of apparatus in any field of endeavor that can only be distinguished from prior art apparati by the function it performs when it is turned on and operating?

    Actually, HW, these questions aren’t for you because I know you are incapable of a reasonable discussion about the topic. Maybe Mr. Bloom or someone else would like to take a stab at the questions.

    An admission that exceptions for computer-related inventions were judicially (and crudely) carved out by the courts purely for policy reasons is a perfectly acceptable answer, by the way. Then we can discuss whether those exceptions have done more harm than good to our patent system and whether those exception have resulted in the creation of jobs for anyone other than lawyers and wannabe patent trolls (also known as “start-ups” or “small businesses” in some circles).

  96. HW If it is “impossible” for you, then maybe you need to understand a little about computers.

    I started programming in the 70s. How about you?

  97. I gotcha, that’s pretty much what I thought.

    So, if you don’t mind terribly much, and if it won’t terribly put you through much bother, how much did Allappat depend on State Street?

  98. “Do you even realize that programming modifies a machine structurally? Seriously!”

    Lulz, does the USSC even realize that?

    Here’s the deal bucko, both me and Ned, as well as the USSC know that in some embodiments of various claims programming does modify a machine structurally (although it is entirely possible to make embodiments that do not).

    But, both me and Ned, as well as the USSC know that unknown structural modifications are quite irrelevant to the patentability determination. Indeed, the only people who didn’t get the memo on this are the patent protectionists sitting on the Federal Circuit and those that follow their misguided caselaw that they base on even more misguided caselaw.

  99. Ned, if you will bother to read in context then you will notice that FN 11 is not saying what you believe it to be saying. But, of course, that’s probably too difficult for you I suppose.

    Here’s a brief explanation for you, what he is saying is that all claims which are unpatentable because of preempting judicial excepted subject matter are “more or less patentable” because they preempt judicially except subject matter AND NOT FOR ANY OTHER REASON. SPECIFICALLY ONE REASON THAT CLAIMS ARE NOT MORE OR LESS PATENTABLE is that the specific end use contemplated is the only one for which the algorithm has any practical application. That is a mere situation that arises sometimes. Claims do not benefit any more or less if that is the situation in a given claim. Likewise they are not harmed any more or less if that is the situation in a given claim. YOU ALWAYS LOOK FOR ONE THING. AND ONE THING ONLY. Which is what I’ve been trying to pound into your numbskull for quite awhile now.

    I know this is hard for you to grasp because his language is quite confusing.

    Regardless, even if it had been unclear to the man who wrote Benson some years after he wrote it why a process claim is any more or less patentable because the specific end use contemplated is the only one for which the algorithm has any practical application (note how I just used that quote OUT of the context of rescuing a claim with post-solution activity where it was orignally used) then that doesn’t change the decision one little bit. And that you should be sure of as a lawltard.

    “Flook noted to be patentable, the use of a law of nature or abstract idea in a claim must be directed to an otherwise statutory process or machine, referencing, among other cases, the Eibel Process case involving a claim to a machine where the novel feature involved the used of gravity by raising one end of a “wire” so that the flow of pulp paper eliminated tears and the like”

    Sort of, yes it did. And note who the author is. And then note that the only reason that author did not concur with the majority in Diehr, which held practically exactly what you just recited, a few years later was because of his wierd claim construction.

    “The claim did not include or modify an otherwise statutory process or machine.”

    Exactly, and if it had, then he would have said it was ok. Just like the court in Diehr did for a different claim a few years later.

  100. Compare:

    It seems impossible to me… can patentably distinguish one computer from another.

    and from link to patentlyo.com :

    “Compare:

    but has nothing to do with claims to novel, structurally defined compositions of matter

    and

    Nobody here is saying that a functional limitation renders a composition claim ineligible or unpatentable.” ”

    Oops.

    If it is “impossible” for you, then maybe you need to understand a little about computers. There are plenty of classes out there that you can learn about the equivalence of hardware, firmware and software. You even have the case law discussed here from Leopold Bloom to help you out on how the legal argument works for how “configuring” creates a new machine.

    If you actually want to learn, that is. But if you want to turn a blind eye to any understanding, then even US 8,000,000 won’t help you.

    As for the “every new CD” dilemma you face, didn’t you understand the missive posted by A New Light? Are you still trying to find Ned in the dark so that you two can comfort each other and find your way to the “light?”

    Maybe if you paid attention to the legal logic, you would not spend so much of your time over the past half decade saying the same impotent stuff, wasting so much of your energy on legally flacid conclusory arm-waiving. Such may convince those wanting to be so convinced, but true gentlemen with critical minds simply see your conflated and misguided views for what they are: pointless hot air.

    No wonder you like to give out balloons…

  101. LB Because your analysis, at least with respect to the “capable” part, is essentially identical to the BPAI’s reasoning in In re Alappat and in In re Freeman.

    Understood.

    The reason I used the term “capable” is that the claims here are apparatus claims, not method claims. There are no recited “steps” or “actions”.

    The claim literally describes a computer hooked up to a network. The only recited difference between that computer (and network) and the millions of prior computers is that this computer is programmed in such a way that it is (allegedly) capable of doing something new and non-obvious. It seems impossible to me that the generic recitation of “detecting and analyzing” previously unclaimed (but also pre-existing) types of information and then responding to that determination in some ancient manner (“charge a fee”) can patentably distinguish one computer from another. How is it any more inventive than a CD “configured” to play a new piece of music when a button is pushed, then stopping when it “determines” that the disc has ended? Seriously. What is the fxxxxxxxg difference? The fact that money is involved? OK, make it a CD jukebox. Can I get a separate patent for every new CD?

  102. i think that your reference to benson is incorrect. this case is not like benson. in benson you had an attempt to patent an algorithm for bcd to binary number conversion on a digital computer. here, the claim is not concern with a mere manipulation of the contents of an email message but rather it is concerned with a process for determining whether to deliver a given email message.

    furthermore, benson did not require a transformation test, in fact, it expressly stated the opposite. in benson the scotus merely stated that the transformation test is an important clue for determining statutory subject matter.

  103. I have no idea why you are bringing up Alappat. Did I say anything about patent eligibility?

    Because your analysis, at least with respect to the “capable” part, is essentially identical to the BPAI’s reasoning in In re Alappat and in In re Freeman. In both cases, the Federal Circuit smacked that reasoning down, explaining that a programmed computer is a new machine, relative to the previously unprogrammed computer.

    Whether that new machine is obvious is another question. But it’s not true that the distinction in the present case is with respect to the type or source of the information, but with what it specifically does with a given type of information and how it responds to it.

    That said, the claim quoted above is pretty poor. In re Hyatt (1983) is almost never applied properly by the Office, and doesn’t really apply here, but there has to be something wrong (under Section 112 paragraph 2, maybe under paragraph 6) with a claim directed to an apparatus for achieving X comprising a computer configured to achieve X. Give me two steps (jeez, I’m channeling Lynyrd Skynyrd) carried out by the thingy; give me another device; give me something else, please.

  104. i’m not sure that i agree with your interpretation of bilski. from what i can tell, the only definite thing that you got out of biliski was a disposition of the bilski application, but you don’t really get a clear idea of why bilski was declared to be an “abstract” idea…a point which stevens noted in his (imho, much better written) concurring opinion.

    bilski just says that the machine or transformation test is not the only test for statutory subject matter, but gives no further guidance on how you determine what is statutory subject matter.

  105. Bilski was not about software patents or even computers.

    Do you even understand the aspect of State Street Bank that was criticized?

    Seriously!

  106. This aspect of Benson was dismissed at fn. 11.

    And yet, you just got done cherry picking and making an overreaching statement about how Benson was just “reaffirmed.”

    Note in Eibel Process, the machine was modified structurally.

    Do you even realize that programming modifies a machine structurally? Seriously!

    You are either ignorant or duplicitous, but either way, enough from you!

  107. but the Supreme Court just reaffirmed Benson that said that a computer with new software was not new a new machine

    Cite please. Note that Benson was not “reaffirmed” as you indicate here.

    You cannot seriously believe that a programmed computer without more is patentable subject matter

    You cannot seriously be making a statement on a subject you clearly know nothing about. Do you know what “programmed” even means?

    See the discussion of this issue in Diehr, albeit in dissent.

    You cannot be trying to make a legal argument from a dissenting opinion. Seriously?

    All you rely on is highly discredited Federal Circuit law.

    You do realize that portions of a decision can be discredited and other portions remain fully in tact. Seriously.

    Overreaching and making up your own law on technology that you are clueless with is just plain sad.

  108. Diehr’s dissent heavily criticized the very cases relied upon by Alappat for their crabbed view of Benson and that a programmed computer was a new machine.

    None of those cases are good law especially in light of Bilski’s heavy heavy criticism of State Street Bank that repeated that heresy.

  109. when interpreting claim language you do a phillips analysis from the standpoint of a phosita.

    in the first instance – delete the word “detect”, you are left with analyzing an email message. but the court inferred that some degree of detection was inherent in analyzing since you would have to detect that email message before analyzing it.

    in the second instance – delete “analyze”, the court relied upon an analysis of the claim as a whole. in that case, you would have a detection step but also a determination of whether or not the sending party was an authorized sender. referring to the specification, the court concluded that analysis was inherent in the “determination” step.

    in the third instance, the court relied on the specification which presented an embodiment in which both detection and analysis were performed.

    consequently, even though there were 3 possible corrections to the claim language, each possibility comprised the same claim scope.

  110. Your terminology is a little loose, so I’m not sure I understand your question. Nothing happens to the middle decision, at least in the sense that the result remains the same. The loser is still the loser, and there is not usually any basis for a “do-over” of that particular case.

    If your question is how much value that middle decision has as precedent in a new case, then the answer is that it depends on how much that middle decision really depended on the earlier, overturned holding. (A holding is not the same as a result. For that matter, a decision is not quite the same as either, if you view, as I do, a decision as an application of law to the specific facts of a case. A court doesn’t quite rely on an earlier decision; it relies on an earlier holding as to the content of the law, and then applies that holding to the new facts.) If the rationale for the holding in the intermediate case is really undermined by the over-turning of the original holding, then the intermediate case is probably worthless. But, there is no simple formula, and it’s not always entirely predictable. On the other hand, it’s not nearly as arbitrary and chaotic as some of the posters at this site suggest.

    I hope this helps.

  111. Malcolm, maybe they did file it and were still waiting years later for it to issue. I am still waiting for corrections to issue that were filed in 2007 that are critical. I joke not.

  112. If wholly preempt is understood to require that all uses of the abstract idea be foreclosed by the claim in order for the claim to be unpatentable, that is not good law and has not been since Parker v. Flook. This aspect of Benson was dismissed at fn. 11.

      * fn11 “It should be noted that, in Benson, there was a specific end use contemplated for the algorithm — utilization of the algorithm in computer programming. See In re Chatfield, 545 F.2d 152, 161 (CCPA 1976) (Rich, J., dissenting). Of course, as the Court pointed out, the formula had no other practical application; but it is not entirely clear why a process claim is any more or less patentable because the specific end use contemplated is the only one for which the algorithm has any practical application.”

    Flook held, specifically held, that even limitations to a field of use would not save an otherwise unpatentable claim. Then they again clarified Benson:

      “First, respondent incorrectly assumes that, if a process application implements a principle in some specific fashion, it automatically falls within the patentable subject matter of § 101 and the substantive patentability of the particular process can then be determined by the conditions of §§ 102 and 103. This assumption is based on respondent’s narrow reading of Benson, and is as untenable in the context of § 101 as it is in the context of that case.

    Flook noted to be patentable, the use of a law of nature or abstract idea in a claim must be directed to an otherwise statutory process or machine, referencing, among other cases, the Eibel Process case involving a claim to a machine where the novel feature involved the used of gravity by raising one end of a “wire” so that the flow of pulp paper eliminated tears and the like. link to supreme.justia.com

      Our approach to respondent’s application is, however, not at all inconsistent with the view that a patent claim must be considered as a whole. Respondent’s process is unpatentable under § 101 not because it contains a mathematical algorithm as one component, but because, once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention. Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application.

    Note in Eibel Process, the machine was modified structurally. In contrast, in Flook, the claim merely calculated a number that was useful in catalytic chemical conversion of hydrocarbons. The claim did not include or modify an otherwise statutory process or machine.

  113. I have no idea why you are bringing up Alappat. Did I say anything about patent eligibility?

    Lots of inventions, in many fields, are based on old materials that are “capable” of being modified to yield the claimed invention.

    Show me an apparatus claim in any other field where the invention is distinguished over the prior art solely by its functionality (i.e., by what it achieves), without any reference to novel structure.

    You choose to believe that the modification of a general purpose computer is somehow not real, or is of lesser value than other modifications.

    Nope. Just really obvious, especially if the claim just recites some generic “determining” steps in a “programmed to” or a “wherein” clause.

    As I said, that’s what computers do: they process information. Everybody knows this. The type of information or the source of information that the “new” computer apparatus processes can not possibly make a difference for 103 purposes unless ordinary skilled artisans believed that such information could not be processed. And if that’s the case, the claims need to recite the solution to that problem in detail, including new structure if they are composition claims. Otherwise it’s just six of one kind and half a dozen of the other.

    David “my amplifier goes to 11″ St. Hubbins is a genius compared to most software appplicants and the PTO employees who examine their claims.

  114. Leo, let me ask you something legal if you don’t mind. If, for instance, a court at the appeals level decides something. And if that same court then relies upon that decision to decide a slightly different but similar issue then what happens when the original decision is expressely overruled? Legally speaking, what happens to the decision in the middle?

  115. Leo, but the Supreme Court just reaffirmed Benson that said that a computer with new software was not new a new machine. All you rely on is highly discredited Federal Circuit law. See the discussion of this issue in Diehr, albeit in dissent. That line of cases culminated in State Street Bank. A majority of the Bilski court heavily criticized State Street Bank.

    You cannot seriously believe that a programmed computer without more is patentable subject matter?????

    Now, if the PTO is still granting such patents, shame, shame on them. Seriously.

  116. Oh, come on, Malcolm, we’ve been here before. The claim doesn’t recite a computer that is “capable” of being programmed in a particular way. Alappat (spelling?) made it crystal clear that there is a difference between the unprogrammed “general purpose” computer, which is certainly capable of being programmed to do many things, and the programmed “special purpose” computer, which actually is programmed to do something particular.

    Lots of inventions, in many fields, are based on old materials that are “capable” of being modified to yield the claimed invention. You choose to believe that the modification of a general purpose computer is somehow not real, or is of lesser value than other modifications. That’s certainly your right, but I don’t think you’re likely to see the law go down this route.

  117. Re: Certificates of Correction. Yes, it may seem that way. But note that a certificate issued to correct a USPTO printing error has been held by the Fed. Cir. to not be retroactive in effect and to only be effective in suits filed AFTER the correction – Southwest Software, Inc. v. Harlequin Inc.

  118. Certificates of Correction: The patentee could have corrected this by filing a request for a certificate of correction with the USPTO.

    A terrible and incredibly costly mistake was made by whoever decided against filing the Cert of Cor.

  119. I’m not talking to backsliders like you Ned. Go and review my literature on the subject until you repeat the same learning process you went through a month ago. I wrote it specifically for you. Don’t let it go to waste due to backsliding.

    You must emerge triumphant and realize that “the reason” that the claim in Benson WAS considered drawn to an abstract idea was because, gasp, it was preempting all uses of the abstract idea (JUST LIKE A CLAIM RECITING THE ABSTRACT IDEA BY ITSELF WOULD DO LULZ). And you must also realize that there is no other reason.

    When you emerge triumphant do let me know.

  120. don’t think the inventors are relying on the content of the e-mails to distinguish their claim from the prior art. Rather, the distinction, assuming it exists, is in the configuration of the computer

    Computers couldn’t detect emails prior to this patent?

  121. Did I say there was anything abstract about an email travelling between a sending party and a recieving party? No I did not. I recited an abstract idea that includes mere determining. The abstract idea does not involve an email travelling between a sending party and a receiving party.

    Although, if you’d like to discuss the abstractness of an email travelling between parties we can do that at a later date with you footing my usual fee.

  122. Nope I haven’t yet.

    And no I don’t think two computers programmed to detect and analyse RESPECTIVELY is equivalent to one computer programmed to accomplish both tasks. And I also wish you gl making your doctrine of equivalents argument after they make this correction and then the accused device is two distinct devices.

  123. You must have missed my point. I don’t want to give them any benefit. I want to not give them any modification even if there is a blatant error because of the first mentioned condition in D’s post.

    Of course, I have not read the entire spec and claims and so it could be very reasonable to make their “and”. But in this context that’s about as likely as a snowflake surviving in he ll.

  124. Ned, I don’t begin to understand what you’re saying about Benson, but never mind that. In this case, I don’t think the inventors are relying on the content of the e-mails to distinguish their claim from the prior art. Rather, the distinction, assuming it exists, is in the configuration of the computer. I really don’t want to re-hash the arguments about whether a computer programmed to do X is structurally different from a computer programmed to do Y. As of today, the law says that it is.

  125. 6: I cannot go along with them in saying that the correction will not be a big deal. It could become a very big deal, especially if we adopt their proposed change

    I don’t see what possible difference it could make given the other (gag) “limitations” in the claim.

  126. Indeed, all these claims are highly suspect under Benson, Flook, Diehr and Bilski, but not, under any number of overruled Federal Circuit decisions, including those all-but overrule such as State Street Bank.

    Alappat is at least defensible because the claimed rasterized did smoothe a display waveform, a new result that is different in kind that a new business utility.

  127. Put another way: as of the priority date of this application, computers and computer networks were old and it was well-known that computers are capable of analyzing any type of computer-readable information, for any purpose.

    What possible difference could it make when determining obviousness of a computer-network “apparatus” whether the information is sent by an “advertiser”, an “authorized user”, a grandmother, a dog with a nose-activated keyboard, or five hundred rabbis? Or whether the information in the message is an offer to buy a house, a request for more Alpo, a suicide note, a terrorist plot, or an invitation to an orgy?

    Unless there’s a special reason that a computer wouldn’t be able to process the information, then the information should be treated equal to any other generic information and ignored for patentability purposes. Of course, if there is something “special” about the information that would present a special problem to the computer in terms of processing the information, then the detailed structure-based solution to that problem should appear in the claims (as opposed to some hand-waving about the result achieved).

  128. So, I claim an e-mail over the internet, where the e-mail varies from prior e-mails in content, and the internet is unchanged.

    Look to Benson. Did the algorithm modify the computer? No. The computer did its thing, calculate the algorithm. The algorithm varied from prior algorithms only in its information.

    The e-mail on the internet is the same in substance as the algorithm in Benson. Since it varies only in content, the claim is on the e-mail content. That is unpatentable information, unless, that is, State Street Bank remains good law. But I doubt that.

  129. What is abstract about an e-mail traveling between a sending party and a receiving party over a communication network?

  130. anon, MM is on the warpath about the PTO issuing patents that seem on their face obvious to even two year olds with average skill in dealing with life. I think he is right to raise the concerns he does, because obvious patents are something that we can all agree are not good for anyone but the patentee, granting a monopoly in exchange for nothing in return. But in addition, these laughable patents bring disrepute to the patent system as a whole. It is a wonder that you yourself do not see that and support Malcolm’s well-founded criticisms.

  131. You didn’t read the case, did you?

    Besides, don’t you think two computers programmed to detect and analyze is equivalent to one computer programmed to accomplish both tasks? I do.

  132. 13. An apparatus for determining whether a sending party sending an electronic mail communication directed to an intended receiving party is an authorized sending party, the apparatus comprising:

    a computer in communication with a network, the computer being programmed to

    How can it be that the patentability of an apparatus can hinge on what indisputably OLD elements in the art are “capable” of doing, without recitation in the claim of any structure that would distinguish that old element from the prior art?

    I’m not aware of any other field of endeavor where such laziness in claim drafting is endorsed by the PTO or the courts. One could argue that computers are “different” and warrant an exception, but the “differences” would seem to me to favor even more strict prohibitions against such claims.

  133. Paul, I think the difference there, at least in part, was that the scope of the claim was dependent upon the correction. Here, regardless of choice, the scope was the same.

  134. I note that this CAFC panel fails to even cite its prior notorious “burn the buns” decision, Chef America, Inc. v. Lamb-Weston, Inc., where that prior panel REFUSED to allow fixing of a REALLY obvious drafting error that made the claim read illogically and inoperatively.

  135. Putting a missing “and” rather than an “or” between the two words seems highly appropriate – why give the party creating the ambiguity any benefit from it by broadening the claim?

  136. 6, see my post on Benson below.

    I will agree with you that the abstract idea does not appear to modify a statutory machine or process in any way. The statutory part of the claim is unmodified, old. As a whole, the claim varies from the prior art only in information.

    Now, such might be patentable under State Street Bank because it produces a new business result that is “concrete,” but I find it hard to reconcile with Bilski because that case seem to throw State Street into the trash.

  137. 6, I’ve been thinking about our discussion regarding 101. When we consider Benson’s claim to calculating a new math algorithm on an old computer, the “reason” that the claim can be considered to be drawn to the algorithm, per se, is that the algorithm does not modify the computer in any way to make it different, i.e., new, or to use the computer to do something different in kind. It does the same thing it always did, execute programs, numbers in, numbers out.

    No functional modification.

    For the same reason a claim to an old piano player with new music can be considered to be drawn to the music is because the music does not modify the piano player to make it different or new, and the piano player with the new music doesn’t do anything different in kind from that which it did before.

    In contrast, the molding claim of Diehr did modify the molding process functionally.

    Turning to Flook, there was no process actually claimed other than calculating a number, and that is not a statutory process. There was nothing there to functionally modify.

  138. Also, aren’t abstract ideas a little more at play here then potential 112 issues?

    Is this not an attempt to preempt every use of the abstract idea of:

    determining whether a sending party sending an electronic mail communication directed to an intended receiving party is an authorized sending party by detect analyze the electronic mail communication sent by the sending party to determine whether or not the sending party is an authorized sending party or an unauthorized sending party wherein the authorized sending parties are parties for whom an agreement to pay an advertising fee in return for allowing an electronic mail communication sent by the sending party to be forwarded over the network to an electronic mail address associated with the intended receiving party has been made.

    I mean, I’m not saying the claim is valid or invalid as validity is a question for a court. But that’s an abstract idea written above. And it appears their claim to an apparatus including a computer covers all uses of that abstract idea.

  139. ” but that the best correction is to add an “and” between the two limiting words. ”

    Why not an “or” or simply deleting one of the words? I should think that putting an “and” between them would be the worst possible way to resolve the matter. By putting “and” then you have to have both detection and analysing for either prior art or infringement. This in distinction to the simplistic “or” or striking one word or the other, which would require only one thing to be found.

    I mean, for instance, perhaps the accused system uses one computer for detection and another computer for analysing, bam all of a sudden no infringement.

    In either event, as much as I’d like to agree with the feds on this one, in so far as there is a blatant drafting error, I cannot go along with them in saying that the correction will not be a big deal. It could become a very big deal, especially if we adopt their proposed change, perhaps the most impactful way of changing the wording that is immaginable.

  140. Yes, that’s almost as pathetic as allowing a small piece of a big piece of biological material to be patented. Who would have ever thought to cut something big into something small??? Oh wait, at least a computer brain cutting something big into something small recites, you know, structure, which is patentable…

    But wait, since the PTO has been making the mistake of allowing patents on big things cut into small things for a long time, that’s okay…

    Pathetic indeed.

  141. It seems obvious in hindsight that if the variation in claim language does not affect the scope of the claim, one can essentially ignore the error.

  142. CBT’s Patent No 6,587,550 covers a system of charging an “advertising fee in return for allowing” e-mail from an authorized sender to pass through an ISP.

    Because nobody ever thought of making money by charging people fees when they engage in certain activities.

    But wait! This method uses a POWERFUL COMPUTER BRAIN to determine who gets charged.

    Good gxd, our PTO is pathetic.

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