Software Patents: 50 Years of Circuitous Artifices

By Dennis Crouch

I recently asked the courts for a decision on whether software is patentable. In my short essay, I argued that we have a de facto system that allows the issuance of software patents, but only after the innovative software elements are "hidden by innuendo and obfuscation." This makes software patents "harder to find, harder to examine, harder to understand, and thus much more problematic than they need to be."

In response, I received a nice note from longtime patent attorney Michael Rackman of Gottlieb Rackman in NYC. Rackman highlighted his 50-year-old article on the topic published as a student note in the 1963 volume of New York University Law Review. It turns out that my suggestions are simply a refrain echoing his thoughts from so long ago. Rackman's 1963 article concluded:

It is theoretically and practically possible to secure effective patent protection for computer programs. The patents issuing as a result of first attempts probably will obscure, or already have obscured, the true nature of the claimed inventions.

Perhaps naïve at the time, Rackman was hopeful that the intentional obfuscation would end soon. He wrote:

Perhaps in the future it will be common practice to seek and secure program patent protection without resort to circuitous artifices.

I guess that future is still ahead of us.

Notes:

  • Michael Rakman, Note, The Patentability of Computer Programs, 38 N.Y.U. L. Rev. 891 (1963).
  • See also, Orin Kerr, Computers and the Patent System: The Problem of the Second Step, 28 Rutgers Computer and Technology Law Journal 47 (2002) ("After almost forty years of debate and case law development, we seem no closer to a consensus than when we started.").

236 thoughts on “Software Patents: 50 Years of Circuitous Artifices

  1. “There will never be a 101 rejection.”

    That depends, in all cases, not just a certain hypothetical one that doesn’t exist, on whom the examiner is. There actually is some physical structure recited in a hypothetical claim, the pad though that likely will not save it as it is no different than reciting a gp computer.

    Just to be clear MM, in a hypothetical context that doesn’t exist “integrated circuit” may as well read “a processor”. The “modules” are not necessarily even physically distinct parts. They could be, but they aren’t necessarily. And the “pads” are just the same as any other pads with an attached intended use limitation.

    Also note that the ta rd that drafted this hypothetical pos that doesn’t exist lacks antecedent basis:
    “operatively coupled to the controller module”

    “the controller module” hasn’t even been introduced yet.

    I could go on with shizzle. Hypothetical claims which don’t exist are rather easy to invalidate because of the office’s bad work :(

    Bottom line though MM, all they did was claim a codec (aka some software) in conjunction with a control interface (aka a touchscreen control/touchscreen) and a pad (aka the means by which all? processors talk to the outside world). In other words, they claim a codec (some software or some hardware) on a mobile phone.

  2. > Invalid under 112.

    But we’re not talking about 112. Whether or not the stated functionality is sufficiently clear for the purpose of 112 – and I will grant you, it may not be – is immaterial.

    The question is whether configuring an off-the-shelf component with novel functionality, irrespective of physical structure, is sufficient for 101.

    I believe that it is. I believe that thousands of patents across every field – chemical, mechanical, and electrical – evidence that validity. And I believe that, given enough examples, even Malcolm can be forced to concede that point.

    Finally, I believe that the exact same principle applies in the field of software: that a software invention, implemented as instructions executing off-the-shelf components with no novel *physical* structure but novel *functionality* provided by those instructions, is patent-eligible under 101.

    ===

    To reinforce this point, here are some more IC claims that provide no physical structure, and that claim off-the-shelf components with novel functionality:

    • U.S. Patent No. 8,208,876

      1. A power amplifier controller circuit for controlling a power amplifier, the power amplifier coupled to receive and amplify an input signal to generate an output signal, the power amplifier controller circuit comprising:

      an amplitude control loop to determine an amplitude correction signal indicative of an amplitude difference between an amplitude of the input signal and an attenuated amplitude of the output signal;

      a variable gain amplifier to adjust the amplitude of the input signal based upon the amplitude correction signal;

      a control block to generate a supply control signal by combining at least a portion of the amplitude correction signal and at least a portion of a signal indicative of the level of gain in the variable gain amplifier; and a power supply to adjust a supply voltage or bias to the power amplifier responsive to the supply control signal.

    • U.S. Patent No. 7,171,597

      1. An I/O compression test circuit for compression testing data loaded on a plurality of global I/O lines, comprising:

      a plurality of test blocks for testing a plurality of global I/O line groups depending on a test block enable signal synchronously with a first strobe signal, wherein the plurality of global I/O lines are divided into the plurality of global I/O line groups;

      a decision block for deciding a test result in response to output signals from the plurality of test blocks;

      a driving block for driving a decision signal outputted from the decision block synchronously with a second strobe signal; and

      a control block for generating the first strobe signal, a reset signal, and the second strobe signal depending on a compression test enable signal and a global I/O line strobe signal, wherein the reset signal initializes an input terminal of the decision block, wherein the global I/O line strobe signal is activated when data are loaded on the global I/O lines.

    • U.S. Patent No. 7,187,195

      1. A compression test circuit of a memory device, comprising:

      a plurality of banks each comprising a plurality of bit line sense amplifiers for sensing and amplifying data in bit lines;

      a plurality of input/output amplifiers to amplify data which is amplified by the bit line sense amplifier and is loaded in input/output lines;

      a plurality of compression comparators for compressing and comparing data amplified by the plurality of input/output amplifiers in each bank;

      a plurality of global input/output drivers for driving each data amplified by the plurality of input/output amplifiers or for driving each of a plurality of comparison signals outputted from the plurality of compression comparators;

      a plurality of output drivers for driving data driven by the global input/output driving unit to an external pin; and

      an input/output amplification control unit for generating a plurality of first control signals to activate the plurality of input/output amplifiers in each bank at different timings in a test mode.

    …etc. This took three minutes of searching. I can find dozens more – including in every other field.

  3. From strawman to insults, but still no analysis of my actual comment.

    Too tired of self-defeating when you stray to items of substance MM?

  4. It reminds me of people calling Ron Katznelson and Dave Boundy names because they took on the illegal activities of the Patent Office.

  5. Sure. I have no problem with applying the law as it is to root out abuse. But you haven’t re read my post nor commented on the fact that the behavior you first deplored is exactly the type of behavior the law aims to achieve. You don’t seem to recognize the critical importance of forcing design around.

    What you deem “burden” is a design feature of the patent system that should NOT be fixed.

    Don’t like it? INVENT a way around it.

  6. “You calling 101 Integration Expert a jerk is neither accurate nor professional,”

    Thanks Anon. Apparently if you challenge Mr. Heller to provide proper pin cites, he calls you names.

  7. MM: “All methods do not include mental steps.”
    That’s not what you said before. You said the opposite. ”

    101 Integration Expert: Provide an exact quote and citation of what you think I said and we can look at it in context. Otherwise let’s get back to “Integration Analysis”.

    MM: Did the claimed process in Diehr require a “human operator”?

    101 Integration Expert: Yes. How else do you begin, moniter, and end a rubber curing process? I don’t recall the specification disclosing robots doing the work.

    MM: The whole point was that it was automated, was it not? Where is the mental step in Diehr that must be carried out to infringe Diehr? Opening the device? Or turning it on?

    101 Integration Expert: I believe ALL the steps must be performed in Diehr’s claims to infringe. But that is a different question/topic from “Integration Analysis”. Any step performed by a human being requires mental processes. This was proven In the late 80′s early 90′s by Neuroscientist using Positron Emission Tomography ( P.E.T.) on healthy subjects playing a video game called Tetris. This research under the titled Brain Efficiency was required reading in my Neuro Science graduate course. Please forgive me for not having all the details at hand as it was decades ago while I worked on my PhD. But make no mistake BE was pioneering research at the time and to this day it remains a fact that all human activity/behavior requires mental processes that can be measured and objectively proven with brain imaging technology. As far as Diehr, I believe the whole point was an improved ( more efficient) way to cure rubber. And yes the automation of the old and conventional steps traditionally performed by human beings was greatly beneficial and attributed to the claims being an inventive application of the formula integrated in the process as a whole. See [ Diehr & Prometheus for authority. ]

    MM: Recall how this conversation began: you refused to acknowledge that claims in the form [oldstep]+[newthought] are ineligible per se after Prometheus.

    101 Integration Expert: Yes, and I challenged you to quote the exact passage in Prometheus of that holding, with a proper pin cite and you failed to do. And apparently still can’t do it. And I also recall how this conversation ended, with you having to face the fact that the Prometheus Court upheld Diehr’s claims as a whole approach, relied on Diehr’s Integration Analysis , and called Diehr the case most on point for what is patent eligible subject matter, 9-0. Followed by the USPTO adopting “Integration Analysis” in it’s official guidelines while totally ignoring your mental steps test/dissection theories.

  8. As you note, David, the claim has components sitting there with not obvious functional relationship to other components.

    The output module, for example, has no obvious function.

    Invalid under 112.

    The claim is directed to an integrated circuit, but also defines separate mute switch of an audio output.

    Huh?

    We have a mute signal and a mute switch. These seem to be physical, the one being a output from the IC to the switch.

    We have as an input, a rules enable signal.

    We have status conditions. What they are responsive to is not stated. What they are is uncertain.

    We have sets of disconnect rules. What they are is unstated. But a first rule is defined: if the first condition is met, turn mute on; if not, turn it off.

    We have a mechanism responsive to the rules enable signal to enable one set of set of rules.

    I would think this claim is so ambiguous as to be invalid. What is being claimed is as clear as mud.

  9. a computer was useful

    Are you saying that it is not?

    a programmed computer was a new machine

    So it is, in fact and in law.

    Just how do the so-called exceptions apply in such a case?

    Just like in any case.

    Ned, do you have a point to make?

  10. 1) yet again, I am not Mr. Wheeler.

    2) what you issue is not under discussion – your logic (or lack thereof) is.

    3) Square your logic as it has been exposed.

    You will not because you cannot.

  11. MM Said: “Your position, 101 (and anon’s position) was that Dierhr prevented any such analysis about “effective” claiming of ineligible subject matter because the mere presence of eligible subject matter in the claim ended the analysis.”

    Those are not my words. I don’t even know what the point is you are making. Like I suspected you are just making stuff up to distract from the success of “Integration Analysis” and the total destruction of your various pet dissection theories.

  12. What is frustrating is expecting honesty (intellectual or otherwise) from you on the new Patently-O.

    Yet all I see are the mounting bodies of dead prisoners.

  13. Even better than that 101 Integration Expert, I expose his duplicity with “effectively.”

    All of a sudden he now remembers what the word means – but on the previous threads, when that very same word threatened his backyard, he could not understand what the term meant, or how to apply it to Products of Nature.

    Feeling “safe” now that the remand has duplicated the previouos Myriad decision, he is all “internet-brave” once again.

    The level of MM’s intellectual dishonesty is truly appalling.

  14. “Even if “cancelling .
    . . acoustic feedback” was enabled, however, the record
    does not show that “cancellation” or “reduction” of feedback,
    as disclosed by Graupe, is the same as the “substantial
    reduction” claimed in the ’850 Patent.”

    LOL WUT? English major say WUT?

    “The
    comparison of cancellation with substantial reduction was
    a fact question for the jury, which made the implicit
    finding that Graupe does not disclose “substantial reduction”
    of acoustic feedback.”

    The jury strikes error into our patent system once again.

    “Mr. Matzen testified that Graupe’s failure to
    account for the effect of the signal through the transmission
    channel results in “so much error” that “it would not
    be able to really effect substantial reduction of acoustic
    feedback.””

    Now Mr. Matzen overrules the explicit language of the prior art /facepalm.

    “On appeal, Defendants argue that acoustic feedback
    originates from the speaker, not the transmission channel.”

    Naw, really? You don’t say.

    “He then agreed, without elaboration, that the Graupe
    process would “reduce the effect of acoustic feedback in
    both amplitude and phase.””

    Just how much frakin elaboration does this need?

    “Defendants have
    not pointed to any discussion by Dr. Soli of the importance
    (or lack thereof) of determining filter coefficients
    based on a signal that passed through the entire transmission
    channel.”

    Because apparently we really on experts to tell us about things which are wholly irrelevant to the discussion while we ignore what they plainly just got through stating and the implications thereof.

    Absolutely preposterous! Get the easily confuzzled English major off the court already.

  15. Ned,

    Re read my post.

    What you consider “outside the putpose” – does my description fit your purpose?

    How is your suggestion make things any clearer? You don’t seem to get even the most basic fundamental aspect of patent law as it now exists. Why not first come to understand and accept what is before you charge forward to try to change it?

  16. Malcolm,

    You have not said ANYTHING new, game changing, or of significance here. All you have done is in effect try to create some obfuscatory semantics with the word “Effectively”, or as anon would say, kick up some dust. All to cover your embarrassing self defeats on the subject of “Integration Analysis.” Let’s break it down now. We begin with what Prometheus actually said,

    “ For these reasons, we conclude that the patent claims at issue here effectively claim the underlying laws of nature themselves.”
    /media/docs/2012/03/10-1150.pdf

    And that’s it! The word “effectively” stands for no more than it’s contemporary dictionary meaning which is: “ effectively• [ sentence adverb ] the real fact or implication is that; in practice : effectively, this means that companies will be able to avoid regulations.”
    American Heritage

    So the Prometheus Court simply held you can’t get claim a LoN or natural phenomena itself. That LoN being, the correlations between thiopurine metabolite levels and the toxicity and efficacy of thiopurine drugs. I have never argued differently on this board, nor do I believe Anon has either, but Anon does not need my help in putting you in your place so let’s move on.

    You said, “A claim can’t effectively cover an ineligible fact or abstract concept of any kind, because claims that recite only ineligible facts or abstract concepts are ineligible.”

    It is true that if a claim is simply stating an abstract concept then applying it by reducing it to a series of steps, the claim is not a patent eligible application of the abstract concept. However what you fail to acknowledge from Prometheus is that before you make that determination you must perform “Integration Analysis” to see if the claim is an inventive application of the abstract concept, LoN/Natural phenomenon.

    The MPEP 2106.01 which instructs you how to perform the “Integration Analysis” sums it up this way: “In other words, the claim cannot cover the [ Judicial Exception ] itself such that it is effectively standing alone.”

    Effectively standing alone, means that when it’s applied, it stands alone, by itself, nothing added/integrated, in combination. Or as the MPEP instructs, “a bare statement of a naturally occurring correlation”, as example.

    Prometheus started with a correlation between thiopurine metabolite levels and thats all it was, plain and simple.

    Diehr, started with a process for curing rubber and “Integrated” The Arrhenius Equation, with all the other steps in the process as a WHOLE. And as the Prometheus Court told you, this “transformed the process into an inventive application of the formula.”

    And forget about all your theories for cherry picking words, elements, or steps to ignore. You MUST take the claims as a whole.

    So in the end, AAA JJ, who originally schooled you in this thread is still right. Your OWN hypothetical is an inventive application and patent eligible subject matter. This all according to Prometheus relying on Dier for “Integration Analysis”

    9-0. Baby!

    As for your straw man accusations. I will burn them in a separate post!

  17. ” and compare your arguments to Martin’s.”

    I make no argument here. I noted that a question arises. I will further note that it is the question the supremes will be interested in down the road should we get there. And it is a question that “martin” doesn’t like to answer though he may have done so on occasion under his other name NWPA.

  18. “Basically 6 you have admitted that you do not believe patents should cover electronic devices (circuits) ”

    I literally issue such on a regular basis without complaint. Shut your pie hole Mr. Wheeler.

  19. “Conceded, but not part of the Court’s reasoning on patentability.”

    The court reasoned based on the facts before it, of which they were abundantly aware and which are reviewable after the fact. They don’t have to point out to everyone every single fact of every single case.

    “Obviously, one does not need a “computer” to cure natural or synthetic rubber, but if the computer use incorporated in the process patent significantly lessens the possibility of “overcuring” or “undercuring,” the process as a whole does not thereby become unpatentable subject matter.”

    And I will concur with them, a method for curing rubber is eligible. Period. There’s a big ol transformation involved for those people that like the MOT even. It has been since the beginning of the patent statutes and it won’t stop being anytime soon.

    “The holding is that that the steps that are performed by the computer (calculating progress using the Arrhenius equation and opening the mold) do not disqualify it under 101. ”

    Mhmmm.

    “The holding is not that that an otherwise unpatentable invention is saved by the inclusion of a pre-calculation “constantly measuring” step.”

    Mhmmm.

    So was there some point to your pointing out the blatantly obvious about that case? Or were you just posting to display your mastery of the obvious?

  20. Perhaps MM, but this case may be cited by applicants in the future to justify relying on unclaimed subject matter to distinguish prior art.

    But perhaps the failure here could possibly also be placed on the attorneys involved in this case, whether trial or appellate, who allowed such evidence to be introduced in the first place?

    I would think that Rader should clarify his opinion that the real problem here is was that legally incompetent evidence was allowed to go to the jury in first place without apparent objection by the attorneys for the defendant.

  21. > My argument is that you shouldn’t be able to claim “new” compositions of matter by referring only to a new desired function of that composition that isn’t disclosed as being a function of a prior art composition.

    So, for the third time, I present to you U.S. Patent No. 7,930,046:

      A codec integrated circuit comprising:

      an output module for converting a digital input signal into an analog output signal;

      an output pad for coupling a mute signal to an output mute switch that is external to the codec integrated circuit;

      a control interface, operatively coupled to the controller module, for receiving a rules enable signal; and

      a controller module, operatively coupled to the output module and the output pad, for monitoring a plurality of status conditions including a first condition, for selectively enabling or disabling selected ones of a plurality of disconnect rules in response to the rules enable signal, the plurality of disconnect rules comprising a first disconnect rule, the controller module to: when the first disconnect rule is enabled, setting an output mute switch to mute an audio output in response to determining that the first condition is met; when the first disconnect rule is enabled, setting the output mute switch such that the audio output is not muted in response to determining that the first condition is not met; and when the first disconnect rule is disabled, setting the output mute switch such that the audio output is not muted both when the first condition is met and when the first condition is not met.

    The claim does not indicate any physical connections between these components. It is a jumble of off-the-shelf circuit components, where each one is specially configured with a specific function. Could be through fixed hardware (logic gates), flexible hardware (FPGA), or purely software (instructions stored in a memory and executed by a processor). The “switches” might even be software themselves – data stored in memory.

    So you tell me: Since this integrated circuit fails to disclose any NOVEL PHYSICAL CONFIGURATION, was it wrongly granted?

    If so, how about the thousands of other circuit patents with claims drafted the same way? Should the 101 issues plaguing the USPTO’s software art units spill over into the EE art units?

  22. Lol – you mean like the self-defeating Prometheus 9-0 Integration direction, the Diehr-and-Business-Methods-are-not-destroyed Bilski direction or the completely ignore the court and decide exactly as you did before remand invitation to be smacked down yet again direction?

    Your capacity for self-delusion nearly matches your actuality of self-defeat.

  23. Care to explain your inconsistency?

    LOL. I didn’t make an inconsistent statement, anon. My statements were entirely consistent.

    However, if it makes you happy to believe that my statements somehow require a finding that Myriad’s composition claims are ineligible subject matter, then go right ahead and believe that.

    My belief is that Myriad’s composition claims do not “effectively” cover any “product of nature”. If you can show me the “product of nature” that is covered by Myriad’s composition claims and explain exactly how that product is covered by the claims, then we have the beginning of a rational conversation. But you’ve been asked to provide that information before and failed miserably. It’s anyone’s guess as to why you’d choose to bring Myriad up now. On the other hand, it’s a useful reminder of your position on the case which (once again) is wrong.

    You’re wrong quite a bit, anon. It must be frustrating for you.

  24. Ned,

    I think the problem is a “you” problem importing a policy view not found in the law.

    By this I mean that the US law has no working requirement and thus any notion of inequity because a patent holder is not “using” (using in quotes as the fully legitimate use in licensing is probably outside the use you may be thinking of) is ultra vires and improper grounds to base your position on.

    In other words, imposing costs on others is a fully legitimate exercise of the patent right.

    That’s a feature, not a bug. What you deem “burden” is a design feature of the patent system that should NOT be fixed.

    Don’t like it? INVENT a way around it.

  25. NWPA,

    I agree with Ned on this point, as correcting Reimer on the faulty understanding need not descend to the labeling at the personal level. I know it can be difficult (especially with those that show disdain for the lives of prisoners), but can you try to upgrade the conversation by tempering your response to the subject as opposed to the person?

    (Mea culpa for the appearance of throwing stones from my own glass house in regards to MM, but his absolute disdain is exceptional)

  26. Ned,

    It has been pointed out to you that the “Point of Novelty” in Diehr was (of necessity) the computer program that controlled the (all else old in the art items in the) process.

    You calling 101 Integration Expert a jerk is neither accurate nor professional, and further such behavior on your part is not germane to the discussion. It is quite beside the point, and is but a retreat to the game of “indignation” that belongs only on the old Patently-O.

    Please don’t stoop to that level.

  27. Upset? Not at all. Just loving showing how you do what you accuse others.

    Care to explain your inconsistency?

    Care to still want to thank 101 Integration Expert for reminding you of the term “effectively,” the same term that you choked on in your Myriad arguments?

    Maybe it is you that wants to “walk it back.” Or maybe this is yet another self-defeat by you.

  28. anon, “‘Still, if software is patentable without regard to what it does, the possibilities are endless in what we could patent.’

    Like any other thing (exactly like any other thing), you still need to pass 102/103/112 and the judicial (expressly tied to an implicit reading of Congress’ statutory 101) exceptions at the claim level.”

    anon, we seem to go in circles. I think Rich was of the view that a computer was useful and a programmed computer was a new machine. Just how do the so-called exceptions apply in such a case? (Let’s keep 102/103/112 out of this for the time being.)

  29. that is essentially was Rader did today when he upheld a claim that read on the prior art based on a method of calculation of the coefficients of a filter, where neither the methods nor the coefficient were claimed.

    What are we to make of this case?

    The actual language in the claims is less important than the identity of the Federal Circuit panel hearing your appeal.

  30. A claim can’t effectively cover a product of nature, because claims that recite products of nature alone are ineligible.

    *yawn*

    Still upset about Myriad, anon? Poor baby.

  31. Malcolm, but, I don’t consider “mental steps,” laws of nature or abstract ideas to be subject matter categories like business methods, software, pharmaceuticals, and the like. When I made my statement concerning categorical inclusions or exclusions, I was considering the latter examples when I suggested that the Supreme Court does not want to make categorical inclusions or exclusions.

    I got it. I guess it depends on how you define “category”. ;) Maybe a better term would be “poorly defined field-related subject matter exclusions”. I agree that the Supreme Court isn’t going to go there.

    I also agree that there no “one size fits all” test for 101 eligibility. But a few (four or five?) distinct broad strokes will suffice to get rid of most of the worst claims out there. Prometheus was certainly not limited to any field, for example, but handily addresses the ineligibility of a giant swath of c r x p.

  32. Ugh!

    We all know that one cannot distinguish a claim from the prior art by referencing unclaimed subject matter described in the specification. But, that is essentially was Rader did today when he upheld a claim that read on the prior art based on a method of calculation of the coefficients of a filter, where neither the methods nor the coefficient were claimed.

    What are we to make of this case?

    ENERGY TRANSPORT v. WILLIAM DEMANT
    link to cafc.uscourts.gov

  33. the damage you inflict upon yourself in these exchanges.

    LOL. All I know is that (1) I’m getting the cases I want before the Supreme Court and (2) the results are moving steadily in the desired direction.

    Even Myriad came out exactly as I predicted and hoped (Supremes are going to put a nice pretty bow on that result, guaranteed), further cementing my views of how 101 is properly applied to both method and composition claims.

    So I have no idea what you refer to when you speak of “damage”, anon. When the law is moving in the direction I am espousing and for the very same reasons that I am espousing those changes, I don’t feel very “damaged” at all.

    Vindicated is more like it. I do understand that this must make you feel very bitter, especially after you put some effort into the puppetry and after you continue to put so much effort (pathetically) into creating confusion where there need not be any.

  34. Must this “configuration” involve a physical arrangement, or is a purely functional configuration also suitable?

    How can a configuration of objects NOT be physical, David?

    I’m not arguing that it’s theoretically impossible to desscribe something by reference to a desired function.

    My argument is that you shouldn’t be able to claim “new” compositions of matter by referring only to a new desired function of that composition that isn’t disclosed as being a function of a prior art composition. That’s a perfectly reasonable proposition and consistent with all of our patent laws. I’m not at all surprised that you can find granted claims that offend this principle but that doesn’t make the principle any less sound. If such claims are asserted, they will be properly challenged and in nearly all contexts they are guaranteed to fall under one or more sections of the patent act.

    The major offender by far of this principle is B-claims because, as you know, there is no (none, nada, zilcho) correlation between ANY objectively determinable physical structure and the espoused function. You seem to believe that claims to chemical “mixtures” which recite the contents of the mixtures by unambiguous objectively determined physical properties of the mixtures are somehow similar to B-claims. That’s absurd. There might be gxrbxge mixture claims out there that are similarly bereft of distinguishing structure as B-claims. The fact that everyone and every court in the country would trash such claims in an instant does not help your “argument.”

    Not to belabor the point, David, but ultimately we are looking at a policy decision. The decision boils down to this: is the value to the patent system (and to the country) of making an EXCEPTION to the patent laws for B-claims (at least) so great that it justifies creating that exception?

  35. anon, I think there may be a problem when companies amass piles of patents but do not use them to protect products or markets but instead use them to impose costs on others by simply counting the number of patents in a field in determining a balancing payment.

    It is quite apparent that once one company in a field starts doing this, every other company has to follow suit simply as a matter of defense.  When this phenomena happens, and it happens quite a bit, I think the patent system burdens society greatly.  Something really has to be done in my personal opinion.  The problem is not trolls.  The problem is IBM and companies like IBM.

  36. Malcolm, but, I don't consider "mental steps," laws of nature or abstract ideas to be subject matter categories like business methods, software, pharmaceuticals, and the like.  When I made my statement concerning categorical inclusions or exclusions, I was considering the latter examples when I suggested that the Supreme Court does not want to make categorical inclusions or exclusions.

  37. the actual comment I did make.

    I guess, then, that the actual comment you made was an irrelevant non-sequitur. Yes, claims that are eligible are “integrated” (whatever that means) and likewise “integrated” claims (whatever those are) are eligible. Wonderful.

    We (as in AAA JJ and I) were talking about the fact that merely “identifying” an object/person X as [insert identifier here] is an “abstraction.” For example, I can imagine five categories of commenters and call those categories 1-5. You are a 5. I’m a 1. That’s an abstraction. Nothing is changed except maybe my brain (when I think about the categories) or someone else’s brain (when they think about the categories). There is no physical transformation. There is no new composition created.

    My point (irrefutable, and therefore a great starting point for discussing a certain class of beloved claimm) is that the mere recitation of the term “process” or a description of this abstraction as a “method” does not render it eligible for patenting. The hypothetical claims I’ve provided would *never* be upheld as eligible by the Federal Circuit or the Supreme Court because (quite plainly) they are not. Yet it’s very easy to confuse people into believing otherwise.

    Would adding reference to a “computer” turn the methohd into an eligible method? I certainly don’t believe that it should. That’s what the courts are going to be determining in the near future.

    Exciting, isn’t it? And what’s at stake: whether patents will be available as tools to control not only HOW information is stored and shared (a perfectly valid goal, when claimed as a new device or a method comprising a new device) but also the information content itself and/or the abstract processing of that information.

    Make no mistake: when we grant patents on methods and compositions that differ from the prior are only in the terms of the content of the information being manipulated or the abstract manipulation of that information (e.g., “categorizing” or “processing” into another type of information without any *new*, substantial physical transformation of the information), then the information itself (or the abstraction)
    is effectively what is being claimed.

    And thanks to 101 IE for highlighting that key term (“effectively”) once again.

  38. Typo correction:

    explain to everyone how a new mental step could be “integrated” into a prior conventional step to become ineligible.

    Should say “eligible” at the end there. Sorry.

  39. explain to everyone how a new mental step could be “integrated” into a prior conventional step to become ineligible.

    Should be “eligible” at the end there – sorry.

  40. All methods do not include mental steps.

    That’s not what you said before. You said the opposite. Thanks for walking it back. I know you will never admit your error because you are pathologically incapable of doing that.

    all processes that require human operators do have an integration of mental processes

    LOL. Did the claimed process in Diehr require a “human operator”? The whole point was that it was automated, was it not?

    Where is the mental step in Diehr that must be carried out to infringe Diehr? Opening the device? Or turning it on?

    Recall how this conversation began: you refused to acknowledge that claims in the form [oldstep]+[newthought] are ineligible per se after Prometheus. I suspected that your refusal was based in ignorance and so I asked a simple question: explain to everyone how a new mental step could be “integrated” into a prior conventional step to become ineligible.

    You pointed to Diehr as an example of such a claim. Then you were asked to show everyone where the mental step is in Diehr, the mental step that must be carried out in order to infringe Diehr.

    You were incapable of doing that. You are still incapable of providing that information. There is a very good reason why you are incapable of providing that information but you are too immature to acknowledge that reason.

  41. > Ordinary components plus configurations = structure.

    Just answer one more question for me, MM: Must this “configuration” involve a physical arrangement, or is a purely functional configuration also suitable?

  42. MM: “101 Integration’s Expert’s position (which you evidently share) is that all methods include a mental step.”

    All methods do not include mental steps. For example, a complete automated self renewing, self correcting system would not include any mental steps.

    But all processes that require human operators do have an integration of mental processes in order to achieve the result.

    In layman’s terms, in order to perform any behavior/physical act, you need to use your brain.

  43. Here: black and white and consistent with anything I have ever posted, yet MM insists on posting what can only be considered lies about my position.

    I thought lieing was not allowed on the new Patently-O.

    Dead prisoner.

  44. “I am sure even a non-lawyer like 101 Integration Expert can explain that to you.”

    I have provided the proper pin cites countless times in this thread and the next and still he continues to self inflict.

    I think at this point what he really needs metaphorically is a protective helmut and a straightjacket.

  45. “Do you need a cite for why an “abstract” step integrated into a claim cannot make the claim fail 101?”

    MM: Nope.

    Then, do you need a remedial course on reading and comprehension?

    Because the exact passages have been quoted and the sources cited for “Integration Analysis” countless times and still you do not read and/or comprehend,

  46. Since 101 Integration Expert’s “mental step” post is brand new, and your shame in regards to Prometheus is plainly related instead to integration, your attempted strawman here is unusually pathetic.

    I suggest that you rest a bit. Actually, I suggest that you grow up and interact like an adult and realize that your views are just not defensible.

  47. MM: “No, that’s not a fact. The mere recitation of a “process step” will not turn an ineligible abstraction or law of nature or any other excluded category into ineligible subject matter.”

    Anon did not say a recitation of a “process step” .

    Anon said an “abstract” step integrated into a claim.

    I suggest you go read the law on “Integration” and stop creating strawman arguments.

  48. These “facts” are not well known and quite miss the point. You don’t even have to go to archive pages because my post above is quite clear (and quite consistent).

    It appears that you want to kick up dust and obfuscate the category/single claim difference.

    Also, let’s compare what you post now with an obvious variant:

    A claim can’t effectively cover a law of nature, because claims that recite laws of nature alone are ineligible.

    and

    A claim can’t effectively cover a product of nature, because claims that recite products of nature alone are ineligible.

    More glorious self-defeat.

    I see why you prefer to post in ad hominym, smoke screens and insults. Dealing with substantive matters wrecks your positions.

  49. And yet again with your tactic of accusing others of what you do.

    Do you not realize how pathetic that makes you look?

    If you cared at all about “the cause” for which you flail (at least as much as it appears that you care to grandstand your theories), you would try to step back and objectively assess the damage you inflict upon yourself in these exchanges.

  50. Nice try at a strawman MM, but I did not say “mere recitation.”

    Now go back and address the actual comment I did make.

  51. What happened to that government proposal?

    That’s right, it was REJECTED 9-0.

    Another glorious Prometheus MM self-defeat.

  52. Ordinary components plus configurations = structure.

    Lol – exactly what we have been telling you for years.

    Massive self-defeat MM.

    I love when you try to add substance.

  53. Malcolm, true.

    Thanks. I just wanted to correct the inaccurate statement you made. The Supreme Court has and will continue to categorically exclude particular subject matter IN ADDITION to claims that effectively protect such subject matter.

  54. AAA JJ I saw the claim you drafted and I know it’s not abstract.

    Is it patent eligible, in your opinion? As drafted it’s a purely mental process.

  55. This circuit patent – and thousands more – do not provide a physical “structure.” They recite a jumble of ordinary components with functional configurations

    Ordinary components plus configurations = structure. If those configurations are objectively discernable to the skilled artisan and if those discerned configurations can be compared and distinguished from the prior art on the basis of their configurations, then you’ve got a new invention.

    If not, then you are likely attempting to claim the new function itself, in which case the claim falls under arguably multiple sections of the statute.

  56. the fact of the matter is that the process step (a particular step in the integrated claim presented) is a removal of a layer of abstraction

    No, that’s not a fact. The mere recitation of a “process step” will not turn an ineligible abstraction or law of nature or any other excluded category into ineligible subject matter.

    Secondly, the assumed denial of the cl

    There you go again. Bad assumption. You really need to learn how to read and address the points that are raised instead of kicking up dust and attacking strawmen.

    Do you need a cite for why an “abstract” step integrated into a claim cannot make the claim fail 101?

    Nope.

  57. I am pretty sure that Breyer took the opposite of the Whatever approach.

    Indeed. Because he felt that ignoring the ineligible subject matter recited in Prometheus’ claims during the 102/103 analysis was insufficiently legally supported! But there is no question that the end result would be the same (and desirable), or why the USPTO was proposing that the ineligible steps be ignored during the 102/103 analysis.

  58. the claim cannot cover the [ Judicial Exception ] itself such that it is effectively standing alone.

    A claim cannot effectively cover a mental step, because claims that are mental steps alone are ineligible.

    A claim can’t effectively cover a law of nature, because claims that recite laws of nature alone are ineligible.

    A claim can’t effectively cover an ineligible fact or abstract concept of any kind, because claims that recite only ineligible facts or abstract concepts are ineligible.

    This is exactly what I said for years prior to the Prometheus decision and it’s what Prometheus itself said.

    Your position, 101 (and anon’s position) was that Dierhr prevented any such analysis about “effective” claiming of ineligible subject matter because the mere presence of eligible subject matter in the claim ended the analysis.

    The threads are all archived. These facts are well-known.

  59. anon 101 Integration Expert’s position?

    101 Integration’s Expert’s position (which you evidently share) is that all methods include a mental step.

    That’s insane.

    But feel free to walk it back or, more likely, pretend that you “meant” something else, anon. That’s how you roll.

  60. I love the way you crazies just say “the thicket problem” as if it is a rock in the road you can point to.

    Ned, you are totally ignorant of modern interface design. You are totally ignorant of the resources companies are putting into interface design. You are totally ignorant of what interface design was before patents.

  61. Reiner, somewhat agree.

    Solutions?

    The interface problem can be an antitrust issue if imposed by single company.

    If a standard interface is being developed, the companies participating in the development have to agree to license their patents on a nondiscriminatory basis.

    The problem of so many patents in an area is caused by companies that patent every single iteration. This behavior is caused in turn by not knowing in advance which patents are important, and because other companies price cross licenses not on the value of the patents, but on the size of the pile.

    The thicket problem is also caused by vague and indefinite claims.

    Of course, none of this really has anything to do with software patents per se.

  62. These are really good posts David. I just can’t get over how this group of people think that inventions that can drive a car are abstract, ideas, laws of nature, insert magic word.

    The problem is that they want to try and ram information processing into old schemas. It will not work.

    Just always fall back to there is a machine doing something useful. How is it abstract?

    There are claims you say are abstract. OK. Then find a machine that the claims read on and tell me how the spec did not enable the making of that machine.

    Patent Law. Not Bensondoo.

  63. 6, this is probably one of the most incoherent pieces of text I’ve yet encountered on the internet.

    I don’t think that you really have a point here, beyond “there is a class of patents that I label ‘software in effect’ that shouldn’t be allowed.” I’m trying to understand and clarify this category that you’re identifying, and compare your arguments to Martin’s.

    I interpret your incoherent response as a refusal to have that kind of conversation. I will oblige you, but note that this makes me less inclined to engage your comments in the future.

  64. Does this pass 101, anon?

    It’s nice to see your attempt at Trainwrecking my initial post be stopped in its tracks by David Stein and AAA JJ (of course gentlemen, you now run the risk of being told to shut up – odd that MM is never told that he should just shut up).

    Perhaps MM you have a substantive comment that could move the conversation forward? Please, take your time.

  65. the fact (admitted by you) that the “identification” is an abstraction.

    Actually, the fact of the matter is that the process step (a particular step in the integrated claim presented) is a removal of a layer of abstraction.

    Secondly, the assumed denial of the claim based on any single element’s “status” as abstract or not is a clear violation of the law.

    Do you need a cite for why an “abstract” step integrated into a claim cannot make the claim fail 101? I am sure even a non-lawyer like 101 Integration Expert can explain that to you.

  66. And, Reinier, I have a question for you. You are obviously completely ignorant of modern interface development or the resources that are being put into interface development due to the patent system. Why then do you think you should give us your “opinion”?

    Go, and investigate how many resources Microsoft is putting into interface development. I can tell you too that it is very easy with hindsight to think the interface on the iphone or droid is just easy to do, but if you ever actually do real work and do real inventing you will find that such developments are extremely hard at the time. Once someone figures it out, then it get easy.

    The question is: What is to come? Right now billions and billions of dollars are being poured into development of interfaces in the hopes of getting a big prize of a patent on a great interface that people want. Without patents all of that will evaporate.

    That is reality babies. I have to say that the people on this blog disgust me.

  67. Interfaces are perhaps one of the most difficult areas of development and are not arbitrary except by the copiers. Corporations invest billions in developing interfaces and it is hard and complicated work that includes scientific methodology including psychological experiments. In fact, the science of building interfaces is one of them most interesting areas of computer science and cognitive psychology. And by this investment have the interfaces vastly improved.

    Without patents, you have copy and no hiring of researchers.

    I have done such work. And, even when I was doing it (20 years ago), guess who copied our work? Samsung and LG.

  68. Needless to say, in this situation patents do not contribute to their constitutional purpose of promoting the development of technology

    Actually Reiner, it is needed to say that you are (again) fundamentally incorrect in your patent views.

    You are pointing out a feature, not a bug of patent law.

    That feature is the impetus to design around. It is a critical feature intimately wed to the very exclusive right of the patent.

    Patents on interfaces are mostly not justified

    Justified? That very word betrays a “policy” view that is ultra vires to the law itself.

    or even inferior

    More very basic misconception of patent law. Improvement is not the only way of promoting the progress. Enrichment is on equal footing. Innovation is not linear.

    Patents just are no means for the appropriation of any useful knowledge.

    If that knowledge is captured in the claim as outlined by the law, you are completely wrong.

    Please reset your understanding of patents.

  69. Basically 6 you have admitted that you do not believe patents should cover electronic devices (circuits) because those same things could be embodied as software.

    I hope you take a step back and realize that you have no legal basis for denying patentability to hardware circuits – NONE (assuming of course, that we are only discussing the 101 issue and not 102/103/112 etc).

    Once you understand that maybe you can see that your bias against software has polluted your basic understanding of patents in general. Or maybe you never had a basic understanding of patents…

  70. It is the wrong question to ask whether software is patentable. An invention is basically a “trick”, and it may be possible to implement this trick in software. or in hardware. Or both. The applicant does not have to disclose whether he intends a software implementation, nor should he disclose the code to implement the “trick”.

    Yes, “software patents” are a problem to some extent. But not all swpats are problematic, nor are all non-swpats non-problematic.

    The true problem are patents for minute parts of so-called complex products, often without a true disclosure. They are virtually only usable for strategic patenting “games”. Firms obtain large patent portfolios not because they contain helpful information, but solely in order to be prepared for patent wars.

    Hall & Ham found that similar problems exist in the field of
    semiconductor hardware: see Bronwyn H. Hall & Rosemarie Ham Ziedonis, ‘The Patent Paradox Revisited: An Empirical Study of Patenting in the U.S. Semiconductor Industry, 1979-1995′, 32 The RAND Journal of Economics 2001, p. 101-128.

    Teece explained that careful patent management is required to obtain (regain) “design freedom”. Needless to say, in this situation patents do not contribute to their constitutional purpose of promoting the development of technology: Peter C. Grindley & David J. Teece, ‘Managing Intellectual Capital: Licensing And Cross-Licensing In Semiconductors And Electronics’, 39 California Management Review 1997, p. 8-41.

    Patents on interfaces are mostly not justified. Often interfaces are arbitrary choices, and if they are not, they are often technologically irrelevant, or even inferior (non-obvious in a negative sense!) Often their sole value is due to “network effects”. Even obsolete technologies may have value due to network effects. Another concern is that interface patents do not just protect products but also complementary products.

    Patents just are no means for the appropriation of any useful knowledge.

  71. MM Said: Why not?

    Because it is a practical application, and “integrated” into the process as a whole, and therefore does not start with nor seek to claim a bare statement of an abstract idea or any Court created judicial exception.

    Remember in “Integration Analysis” there only needs to be one extra element or combination to transform a judicially created exception into an patent eligible inventive application.

    “It is not necessary that every recited element or step “integrate” or relate to the natural principle as long as it is applied in some practical manner. However, there must be at least one additional element or step that applies, relies on or uses the natural principle { Read as Judicial Exception ] so that the claim amounts to significantly more than the natural principle { Read as Judicial Exception ] itself. MPEP 2106.01
    [ Note the substitution of "natural principle" for Judicial Exception" ]

    Honestly Malcolm we are not making this stuff up.

    Please go read…
    ( See Prometheus, Official USPTO Guidelines and MPEP 2106.01 )

  72. So, if such a patent exist on pure software, without a machine embodiment, and someone illegally copies the software, without ever executing the code on any device, would the person infringe the patent, or just be a pirate of copyrighted software?

    And, if your answer is yes to patent infringement, then would that make people who read my process patent claims and spec ( non software), but never actually execute the steps, infringers of my patent?

  73. I read this thread and have to agree with AAA JJ, the claim passes 101. Why?

    Because the method for advertising has first been applied and second, the identification process is not subjective ( abstract) but concrete and “integrated” into the process as a whole.

    And as AAA JJ astutely points out, there is no bare statement of a judicial exception here, so right away we do not have extra solution activity, which “Integration” is sufficient for overcoming away.

    See MPEP 2106.01 ** > Subject Matter Eligibility Analysis of Process Claims ….

    To show “integration”, the additional elements or steps must relate to the [ Judicial Exception] in a significant way to impose a meaningful limit on the claim scope. The analysis turns on whether the claim has added enough to show a practical application. See id. at 1968. In other words, the claim cannot cover the [ Judicial Exception ] itself such that it is effectively standing alone. A bare statement of a naturally occurring correlation, albeit a newly discovered natural correlation or very narrowly confined correlation, would fail this inquiry. See id. at 1965, 1971.

  74. “I doubt that it’s grunt work to a computer scientist, but it probably is to a liberal arts major.”

    We have a plenty of those in the ranks of lawlyers who work for congress and the courts.

  75. And just as a reminder, such a patent could arise, even under your oddball way of thinking, if the patentee simply chooses not to claim the hardware embodiments (which they do often) or assert it against such in a court. That is how it can become “effectively” a patent on the software alone, even under your oddball way of thinking.

  76. “gain, I believe that you are misunderstanding (or just avoiding) Martin’s point so that you can keep making your own”

    I know his point better than he himself does. Be very clear on that much.

    “You are trying to draw a distinction between patents that are “‘in effect’ just software,” vs. those that “can be software or can be hardware” and/or that explicitly recite hardware.”

    No, I’m trying to tell you that I acknowledge that there are such monsters, and that I was really talking about both such categories of monsters in my original question. If it pleases you, you can pretend that I was referring only to the later, just so that we can avoid the whole discussion about whether they exist or not. But both the former you mention and the later that you mention both, in the end, effectively cover a software embodiment and that is what I am concerned about. Whether or not it does so along with a (usually unknown) hardware embodiment is quite irrelevant to me. And it is also what the supremes are going to be concerned about nearly a year from now.

    “Martin’s point – and mine – is that the first class does not exist.”

    You state that, but it is an immaterial point EVEN IF YOU WERE RIGHT. I say it exists, contrary to what you say, because it is trivial to come up with an example, but even if it doesn’t, the second category to which you like to make reference to is likewise just as much of a problem as the former category.

    Not only is it an immaterial point, but it is likely nothing more than paltry semantics in the end because whether we refer to them by your language or mine the question is still raises up. And why you would waste my time discussing such semantic nonsense is indeed wearying.

    “There is no invention that can be implemented as software, but not as pure hardware or a hardware/software hybrid. ”

    Regardless of whether I call this out as being false or not “so wut”? It does not impact, at all, anything, so why do guys insist on wasting our time talking about it?

    I mean seriously, I don’t want to be all AI and sht up ins, but are you just dead set on kicking up some dust?

    “That is, your latter category – patents that “are ‘in effect’ just software and that are not also hardware patents” – does not actually exist in the realm of computing technologies.”

    Even granted that, do you have an answer to the question? Yes/no? Maybe, in a few years, perhaps after you can stop running down rabbit holes?

  77. “Same guy who kept on pushing Prometheus 9-0 baby, until he self defeated himself so badly by playing right into 101 Integration Expert’s position?”

    Yup, the Honey Boo Boo Child of the blog, was on here crowing 9-0 suc kie without even reading the Prometheus decision close enough to realize …

    1. Diehr remains the case most of point for what is patent eligible subject matter.

    2. Prometheus use of “Integration Analysis” decimated ALL his dissection theories.

    And if that wasn’t enough, he was the first to post the Official USPTO Guidelines link that completely ignored ALL his mental step tests and dissection theories while completely incorporating the very “Integration Analysis” I was first to point out and describe on this blog.

    And now he has to face “Integration” being inscribed in the new MPEP is such clear and concise detail that it crushes all his whacky anti patent arguments into dust.

    2106.01 ** > Subject Matter Eligibility Analysis of Process Claims ….

    To show “integration”, the additional elements or steps must relate to the [ Judicial Exception] in a significant way to impose a meaningful limit on the claim scope. The analysis turns on whether the claim has added enough to show a practical application. See id. at 1968. In other words, the claim cannot cover the [ Judicial Exception ] itself such that it is effectively standing alone. A bare statement of a naturally occurring correlation, albeit a newly discovered natural correlation or very narrowly confined correlation, would fail this inquiry. See id. at 1965, 1971.

  78. “Professors will so patent the fundamental equations of the universe, executed on a computer.”

    Yes, as long as the equations are improving a process and integrated into the process a whole, the good professor’s pass the threshold at 101. See, the MPEP on “Integration”.

    2106.01 ** > Subject Matter Eligibility Analysis of Process Claims ….[R-9]

    A claim that focuses on use of a [ equation ] must also include additional elements or steps to show that the inventor has practically applied, or added something significant to, the [ equation ] itself. See Mayo, 101 USPQ2d at 1966.

    To show “integration”, the additional elements or steps must relate to the [ equation ] in a significant way to impose a meaningful limit on the claim scope. The analysis turns on whether the claim has added enough to show a practical application. See id. at 1968. In other words, the claim cannot cover the [ equation ] itself such that it is effectively standing alone. A bare statement of a naturally occurring correlation, albeit a newly discovered natural correlation or very narrowly confined correlation, would fail this inquiry. See id. at 1965, 1971.

    It is not necessary that every recited element or step “integrate” or relate to the [ equation ] as long as it is applied in some practical manner. However, there must be at least one additional element or step that applies, relies on or uses the [ equation ] so that the claim amounts to significantly more than the [ equation ] itself.

    Elements or steps that do not “integrate” the [ equation ] and are merely appended to it would not be sufficient. In other words, the additional elements or steps must not simply amount to insignificant extra-solution activity that imposes no meaningful limit on the performance of the claimed invention. See id. at 1966. For example, a claim to diagnosing an infection that recites the step of correlating the presence of a certain bacterium in a person’s blood with a particular type of bacterial infection with the additional step of recording the diagnosis on a chart would not be eligible because the step of recording the diagnosis on the chart is extra-solution activity that is unrelated to the correlation and does not “integrate” the correlation into the invention.

    Along with “integration”, the additional steps must be sufficient to ensure that the claim amounts to significantly more than the [ equation ] itself by including one or more elements or steps that limit the scope of the claim and do more than generally describe the [ equation ] with generalized instructions to “apply it.” See id. at 1965, 1968. The additional elements or steps must narrow the scope of the claim such that others are not foreclosed from using the [ equation ] (a basic tool of scientific and technological work) for future innovation.”

    NOTE: (I substituted term “natural principle” with “equation” for teaching purposes, keeping in mind that the new MPEP is using the Integration Analysis from Prometheus LoN case which itself used Diehr’s Arrhenius equation case, as a template)

  79. “The holding is that that the steps that are performed by the computer (calculating progress using the Arrhenius equation and opening the mold) do not disqualify it under 101. ”

    Exactly! That’s what I have been repeating for some time now. This whole presumption that the mere presence of a programed computer in a process claim suddenly makes a claim suspect if not outright unpatentable subject matter has no basis in law, or reality.

  80. > But then the question arises: why should there be patents that are “in effect” just software patents IN SOME CASES ALONG WITH HARDWARE PATENTS OR NOT IN OTHERS, or if you like, “a patent on software”?

    Again, I believe that you are misunderstanding (or just avoiding) Martin’s point so that you can keep making your own.

    You are trying to draw a distinction between patents that are “‘in effect’ just software,” vs. those that “can be software or can be hardware” and/or that explicitly recite hardware.

    Martin’s point – and mine – is that the first class does not exist. There is no invention that can be implemented as software, but not as pure hardware or a hardware/software hybrid. This is a basic and fundamental fact of computer science since the days of Turing.

    That is, your latter category – patents that “are ‘in effect’ just software and that are not also hardware patents” – does not actually exist in the realm of computing technologies.

  81. I doubt that it’s grunt work to a computer scientist, but it probably is to a liberal arts major. ;-D

    In any event, the term “software” probably conveys some notion of machine instructions (e.g., zeros and ones). But that begs the question, what machine? And that’s where the fun begins:

    link to en.wikipedia.org

    link to en.wikipedia.org

  82. Still, if software is patentable without regard to what it does, the possibilities are endless in what we could patent.

    Like any other thing (exactly like any other thing), you still need to pass 102/103/112 and the judicial (expressly tied to an implicit reading of Congress’ statutory 101) exceptions at the claim level.

  83. My broken link is to Kappos’ memo on “Subject Matter Eligibility of Computer Readable Media” (January 26, 2010). The link works in a browser. So I have to assume it is a TypePad bug,e.g. adding my period at the end of the sentence to the URL. If you copy my link, leaving off the period, the URL seems to work.(Fix this TypePad!)

  84. the equivalence part is taken out of context

    Actually, the equivalence is the context. As has often been said, software is equivalent to firmware is equivalent to hardware. Analogies to ability to patent hardware components have been plentiful, including bullets and tires.

    And thank you for liking my post above. I think it adds substantial clarity and helps explain why no one seems happy with the current situation, and how putting the issue in a more clear (and objective) stance highlights the real issue and separates out the agendas.

    As Alfred Lanning once said, “My responses are limited. You must ask the right questions.

  85. “Diehr is about whether an automatic rubber molding device comprising a computer is statutory subject matter.”

    You are wrong, as usual. Diehr was not about , nor did it turn on any type of device, or particular instrumentalities whatsoever. Diehr was about a process. Specifically, a process for curing rubber. That a computer was used, or an algorithm stored on the computer, or used to calculate temperature did not suddenly make the process as a whole non statutory subject matter. Which underscores the ridicules nature of people like yourself that immediately suspect a process like Ultramercial, or a system like Alice is not patent eligible because it has the use of a programmed computer in the claims. But don’t take my word for it. I will just let the Diehr Court explain to you for themselves.

    “In contrast, the respondents here do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of curing synthetic rubber. Their process admittedly employs a well-known mathematical equation, but they do not seek to preempt the use of that equation. Rather, they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process. These include installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly recalculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time. Obviously, one does not need a “computer” to cure natural or synthetic rubber, but if the computer use incorporated in the process patent significantly lessens the possibility of “overcuring” or “undercuring,” the process as a whole does not thereby become unpatentable subject matter.”

    Diamond V Diehr “437 U.S. at 437 U. S. 586.

  86. “And as he noted above, there is no invention that recites “just software,” because of:”

    /facepalm. Since you’re so stu pid as to go off on a tangent as you are, allow me to rephrase for your brain to understand the question.

    But then the question arises: why should there be patents that are “in effect” just software patents IN SOME CASES ALONG WITH HARDWARE PATENTS OR NOT IN OTHERS, or if you like, “a patent on software”?

  87. Malcolm, true.  

    But, according to Rich, if a claim can be executed either by a machine or by a human, it is patentable.  In other words,

    I claim: A BCD->Binary process.  Rich would allow the claim because it "could" be executed on a computer.

  88. anon, why do you keep doing this. If you have a definition, just tell us.

    I frankly do not recall you ever giving us a definition. But if you have, that would be interesting and might provide food for further discussion.

    By the way, I liked your opening post quite a bit.

  89. I am not sure what you mean by no one as I answered that long ago as part of my three steps to understanding software challenge to you.

    Oh wait, you probably didn’t see it because you refused to take the second step when you realized where the path leads.

  90. Same guy who kept on pushing Prometheus 9-0 baby, until he self defeated himself so badly by playing right into 101 Integration Expert’s position?

    That guy who now also grabs his popcorn and throws it into the blender too?

  91. David, The link is broken. It leads nowhere.

    However I” fully agree with your statement that the term “software is a nebulous term. When asked to define what software means, no one will take the bait. I have been asking that question repeatedly for a very long time.

  92. Martin, “Fact 4. Software and electronic circuits (hardware) are interchangeable. As noted in “Hardware/Software Tradeoffs: A General Design Principle?” the decision to implement an invention — and to provide the disclosure — as hardware circuitry, software or a combination of hardware/software is based on such factors as cost, speed, reliability and frequency of change.”

    The invention is distinct from the means. “Implement an invention” cannot be divorced from the phrase “are equivalent.” As most often phrased by many here, and by some on the Federal Circuit, the equivalence part is taken out of context implying that a programmed computer is patentable per se.

    Thus, the programmed computer in Diehr was part of the overall invention. Ditto the programmed computer (the hypothetical equivalent of the disclosed hardware) in Alappat.

  93. Justice Breyer in the Prometheus opinion

    I am pretty sure that Breyer took the opposite of the Whatever approach.

    Nice self defeat (again) on Prometheus.

  94. MM,

    Please provide a suitable definition of structure so that no one has to guess. This shouldn’t take you long as you seem to indicate that every jurist should know this and the law is crystal clear. In fact, why don’t you throw in a few pincites so we can check the veracity of your statements.

    Thanks.

  95. > But then the question arises: why should there be patents that are “in effect” just software patents, or if you like, “a patent on software”?

    And as he noted above, there is no invention that recites “just software,” because of:

      “Fact 4. Software and electronic circuits (hardware) are interchangeable. As noted in “Hardware/Software Tradeoffs: A General Design Principle?” the decision to implement an invention — and to provide the disclosure — as hardware circuitry, software or a combination of hardware/software is based on such factors as cost, speed, reliability and frequency of change.”
  96. given that the Supreme Court will neither categorically include or exclude particular subject matter

    Purely mental processes are categorically excluded.

  97. Malcolm, you got that right. The PTO seemed to have become “user friendly” after Manbeck left as commissioner. I think, “user friendly” included not fighting about things like Beauregard claims.

    But it is not entirely the PTO’s fault. The Federal Circuit, lead by Rich, gave us cases like State Street Bank.

    Still, if software is patentable without regard to what it does, the possibilities are endless in what we could patent. Professors will so patent the fundamental equations of the universe, executed on a computer.

  98. Diehr is about whether an automatic rubber molding device comprising a computer is statutory subject matter.

    Diehr does not hold that the programming of that computer is itself eligible for patenting, nor does Diehr hold that otherwise ineligible subject matter becomes eligible per se merely because “a computer” or the use thereof is recited.

    But keep pushing on Diehr, by all means. I remember this guy in college who loved opening beer bottles with his teeth. Now he uses a blender to eat a hamburger.

  99. Based on the following memo, I’m pretty sure that Director Kappos knows what “software” is: /media/docs/2012/06/101_crm_20100127.pdf. I’m not sure that you do though. The currently accepted preamble for method claims is wholly consistent with the concept of a “process”, which is a term of art in the field of operating systems. Similarly, the currently accepted preamble for computer-readable media is wholly consistent with the concept of an “executable file”, which again is a term of art in the field of operating systems. By contrast, the term “software” is somewhat nebulous and imprecise. Does it include firmware, reconfigurable computing, biological computing, quantum computing, etc.? I suspect the currently accepted format for system claims would exclude biological computing and quantum computing.

  100. David, look at Perkins Glue.
    Holland Furniture Co. v. Perkins Glue Co., 277 US 245 – Supreme Court 1928

    The inventors discovered that using a old process with a particular starch produced a certain kind of glue. 277 US at 245.

    They claimed a starch glue of that kind, not limited to the old process and the particular starch. Others produced starch glue of similar properties, but did not use the process.

    The SC had this to say,

    “But an inventor may not describe a particular starch glue which will perform the function of animal glue and then claim all starch glues which have those functions, or even all starch glues made with three parts of water and alkali, since starch glues may be made with three parts of water and alkali that do not have those properties. 257*257 See The Incandescent Lamp Patent, 159 U.S. 465, 472.

    Revised Stat., § 4888, requires that the patent shall contain a description of the invention “and of the manner and process of making, constructing, compounding, and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same.” One attempting to use or avoid the use of Perkins’ discovery as so claimed and described functionally could do so only after elaborate experimentation. Respondents say that laboratory tests would be insufficient and that “the best and probably the only satisfactory test is to try it out on a large scale in a furniture or veneering gluing factory.” A claim so broad, if allowed, would operate to enable the inventor who has discovered that a defined type of starch answers the required purpose to exclude others from all other types of starch and so foreclose efforts to discover other and better types. The patent monopoly would thus be extended beyond the discovery and would discourage rather than promote invention….”

  101. What else was in claim 1 of Diehr? Do you recall? Might it have something to do with some measuring?

    Conceded, but not part of the Court’s reasoning on patentability.

    Here’s the most critical part of the majority holding:

      Obviously, one does not need a “computer” to cure natural or synthetic rubber, but if the computer use incorporated in the process patent significantly lessens the possibility of “overcuring” or “undercuring,” the process as a whole does not thereby become unpatentable subject matter.

    The holding is that that the steps that are performed by the computer (calculating progress using the Arrhenius equation and opening the mold) do not disqualify it under 101. The holding is not that that an otherwise unpatentable invention is saved by the inclusion of a pre-calculation “constantly measuring” step.

  102. “I’d be happy to hear from my many critics as to why my conclusion —- that there really is no such entity as a “software patent” — there are only inventions in a great many Patent Office Classes that incorporate software as part of its disclosure.”

    I can’t tell you “why your conclusion” because that is not a fully formed question. But I can tell you “why your conclusion is meaningless/a red herring”. It is because of your false premise at the outset. Specifically your definition of “software patent”.

  103. Martin posting as himself? Craziness!

    “There should never be software patents, per se”

    At least we are agreed on one thing. I presume you believe those would be ineligible subject matter.

    But then the question arises: why should there be patents that are “in effect” just software patents, or if you like, “a patent on software”?

    It seems that the USSC answered whether or not claims which are “in effect” a claim to ineligible subject matter are eligible themselves in benson.

  104. anon, you and I appear to be sensitive to categorical inclusions. There are no such things, as you correctly point out.

    And, as we have discussed frequently, Benson stated that it was not intending to categorically exclude programmed computers.

    So, given that the Supreme Court will neither categorically include or exclude particular subject matter, Dennis’s recent posts calling for such categorical treatment seem a bit misplaced.

  105. “rejection, right?”

    What else was in claim 1 of Diehr? Do you recall? Might it have something to do with some measuring?

    All elements bro, all elements.

  106. > If the only different between a claim and the prior art is that the subject matter of the claim is performed by a computer then it is likely invalid under Section 103.

    Mostly true. There’s also the set of patentable inventions involving techniques that were known, but where using a computer provides some advantages.

    Exhibit A: Diamond v. Diehr, of course:

    “Determining when rubber was fully cured according to the Arrhenius equation” was also known.

    “Opening a mold when rubber curing was complete” was known.

    “Using a computer to control the opening of the mold” was a trivial step.

    That is, an engineer could certainly (1) use the Arrhenius equation by hand to evaluate the progress of a rubber curing process; (2) decide to open the mold when the rubber curing process was complete; and (3) open the mold by using a computer. 103 rejection, right?

    The difference was that doing all of this by hand was imprecise, while using a computer to perform these steps vastly improved the precision and the quality of cured rubber. Hence, patent-eligible subject matter.

  107. Mr. Rackman your dream was answered In 1981 when the Supreme Court of the United States said a software program using the Arrhenius Equation to determine temperature and automatically cause a lid to open on a rubber curing mold, was patent eligible subject matter. That has been the gold standard for 101 for over 30 years. Twice the Supreme Court has upheld the Diehr case which is the foundation for this standard. And while there has been much grumbling and dissatisfaction from anti software patent factions to change, there can be no dispute that as of today Software is and remains patentable subject matter!

  108. If the only different between a claim and the prior art is that the subject matter of the claim is performed by a computer then it is likely invalid under Section 103.

  109. “Please explain the distinction between my claim and your claim (‘A method of identifying something by an observable trait.’) that renders the former non-abstract.”

    As soon as SCOTUS tells us how to differentiate between abstract and non-abstract, I’ll get back to you. Until then, I, like they, know it when I see it. And I saw the claim you drafted and I know it’s not abstract.

  110. As for whether it recites structure, it should. As I recall (vaguely — not my field), a “circuit” defines a type of arrangement of electrically interacting components, just as the term “atom” defines a particular type of matter. and thousands more – do not provide a physical “structure.” They recite a jumble of ordinary components with functional configurations and functional interrelationships. If you really want, I can cite a dozen more circuit patent claims for you with this same style.

    In the field of electrical patents, this claim form is both common and totally acceptable. There will never be a 101 rejection.

    So let me ask you, MM: Do you feel that the EE patent examiners should be issuing 101 rejections for circuits claimed in this way?

  111. > No doubt, once you decide that the word “structure” has a very peculiar meaning that is apparent only to you and which perfectly suits your rhetorical purposes.

    “Structure” = a physical organization or arrangement.

    Seems straightforward, and perfectly consistent with Wikipedia’s definition:

      A chemical structure includes molecular geometry, electronic structure and crystal structure of molecules. Molecular geometry refers to the spatial arrangement of atoms in a molecule and the chemical bonds that hold the atoms together. Molecular geometry can range from the very simple, such as diatomic oxygen or nitrogen molecules, to the very complex, such as protein or DNA molecules. Molecular geometry can be roughly represented using a structural formula. Electronic structure describes the occupation of a molecule’s molecular orbitals.

    By “structure,” you simply mean “physical,” as in: “zinc powder is a thing that I can touch/taste/see/feel.” That has no connotation of “structure.” Moreover, a combination of atoms in any imaginable order is not a “structure,” but simply an unordered mixture.

    Do you agree with that definition, or do you simply want to define “structure” as “anything that’s physical?”

  112. Was this circuit patent wrongly issued, MM

    I don’t know. As for whether it recites structure, it should. As I recall (vaguely — not my field), a “circuit” defines a type of arrangement of electrically interacting components, just as the term “atom” defines a particular type of matter.

    You seem to have a very, very peculiar idea of what constitutes physical structure, which makes discussion of this issue very difficult. I understand that this may be an intentional rhetorical strategy. In that regard, I’m less inclined to continue the discussion, with you anyway.

  113. However, that “abstraction” when applied to the criteria you set forth in your claim is not abstract.

    Why not? The “identification” of a thing where the thing is described with an adjective suddenly turns a process of identification from an abstraction into a non-abstraction? Or is it two adjectives? Is it the fact that the thing is identified as a target for retail? Please explain the distinction between my claim and your claim (” A method of identifying something by an observable trait.”) that renders the former non-abstract.

    I knew you were an examiner.

    You’re mistaken. Try to stay focused.

  114. David Your fixation with “structure” as the magic ingredient of patentable subject matter

    It’s not “my” fixation, David. It’s the proper fixation of every jurist, Examiner and every patent applicant. And it’s not a “magic ingredient” (I never said it was) because it’s certainly the case that the mere recitation of structure or the physical transformation of matter in a claim is not sufficient to render the claim eligible per se. The law in that regard is crystal clear, as are my comments. So let’s stop wasting time pretending otherwise, mkay? Thanks.

    Thousands of patents have been issued in every field where the novelty is new functionality yielded by a *logical* combination of elements. None of the elements is new, and there is no recited structure.

    The “issuance” of patents that should not have been issued lies at the heart of our discussion. Raising this fact is not relevant. As for this:

    A zinc-rich water-based paint, containing a chelating agent added in a zinc-rich water-based paint that contains an alkali silicate and zinc powders, wherein an ethylene diamine tetraacetic acid (EDTA) or its salt is used as the chelating agent,

    there’s plenty of structure there. I have no idea how you could claim otherwise with a straight face but I have seen so many bizarre statements uttered by the patent teebagger crowd (latest example: “every process contains a mental step in some form”) I am no longer surprised by anything.

    I can just keep finding more patents with absolutely no “structure,”

    No doubt, once you decide that the word “structure” has a very peculiar meaning that is apparent only to you and which perfectly suits your rhetorical purposes.

  115. > It’s paint. Not “paint configured to”, but paint having a specified material composition. Unless your argument is that liquids don’t have structure, I have no idea what you’re getting at.

    “Structure” refers to a physical arrangement.

      Chemistry is the science treating matter at the atomic to macromolecular scale, the reactions, transformations and aggregations of matter, as well as accompanying energy and entropy changes during these processes.
      The chemical structure refers to both molecular geometry and to electronic structure. The structural formula of a chemical compound is a graphical representation of the molecular structure showing how the atoms are arranged.

    Sure, liquids can have structure – layers, gradients, etc. This one doesn’t. It is simply a mixture of ingredients. As long as the components are all present somewhere in the composition, the invention is complete.

    Or are you simply using the term “structure” as a synonym for “physical?”

  116. > The nature of the thing being “identified” doesn’t change the fact (admitted by you) that the “identification” is an abstraction.

    Here’s U.S. Patent No. 7,930,046:

      15. A codec integrated circuit comprising:

      an output module for converting a digital input signal into an analog output signal;

      an output pad for coupling a mute signal to an output mute switch that is external to the codec integrated circuit;

      a control interface, operatively coupled to the controller module, for receiving a rules enable signal; and

      a controller module, operatively coupled to the output module and the output pad, for monitoring a plurality of status conditions including a first condition, for selectively enabling or disabling selected ones of a plurality of disconnect rules in response to the rules enable signal, the plurality of disconnect rules comprising a first disconnect rule, the controller module to: when the first disconnect rule is enabled, setting an output mute switch to mute an audio output in response to determining that the first condition is met; when the first disconnect rule is enabled, setting the output mute switch such that the audio output is not muted in response to determining that the first condition is not met; and when the first disconnect rule is disabled, setting the output mute switch such that the audio output is not muted both when the first condition is met and when the first condition is not met.

    This is a circuit. It recites no structure – it’s a box of components described with functional, not structural relationships. And none of the components are electronically “new”; the only difference is their functional configuration.

    Was this circuit patent wrongly issued, MM?

  117. “The nature of the thing being ‘identified’ doesn’t change the fact (admitted by you) that the ‘identification’ is an abstraction.”

    I “admitted” that? I knew you were an examiner. Lulz.

    Claim 1: A method of identifying something by an observable trait.

    I’ll “admit” that is an abstract idea that falls into the judicial exception for patent eligible subject matter. However, that “abstraction” when applied to the criteria you set forth in your claim is not abstract.

    “…try explaining to everyone exactly how you would approach analyzing this sort of claim under 102/103.”

    I would use your patented method of, “Oh jeez, come on your honor, anybody can tell this is facially invalid!!!!!” It’s worked so well for you. You should think about patenting it.

  118. “This claim has neither any type of ‘structure’ ”

    It’s paint. Not “paint configured to”, but paint having a specified material composition. Unless your argument is that liquids don’t have structure, I have no idea what you’re getting at.

    What’s the magic ingredient? I haven’t read the spec, but I’m going to guess it’s the 0.6% w/w EDTA.

  119. > It’s called information processing: receive/collect information and “convert it” into another type of information without the recitation of any new structure (or new combination of old structures).

    Your fixation with “structure” as the magic ingredient of patentable subject matter – and the differentiating factor between software and other fields of technology – is simply not supported in fact.

    Thousands of patents have been issued in every field where the novelty is new functionality yielded by a *logical* combination of elements. None of the elements is new, and there is no recited structure. As long as you have some components that together provide novel functionality, it’s patentable.

    Here’s one – U.S. Patent No. 7,252,705:

    “A zinc-rich water-based paint, containing a chelating agent added in a zinc-rich water-based paint that contains an alkali silicate and zinc powders, wherein an ethylene diamine tetraacetic acid (EDTA) or its salt is used as the chelating agent, and wherein the chelating agent is added in an amount of about 0.6% by weight or more to the zinc powders.”

    This claim has neither any type of “structure” nor any new component. It is simply a new combination of known components, operating in exactly the way that they have been known to operate for centuries. So tell us, MM: What is the magic ingredient that makes this claim patentable?

    I cited three similar patents in the earlier software thread. I can just keep finding more patents with absolutely no “structure,” providing known components that together present novel functionality, until you give up this hopeless line of reasoning.

  120. AAA JJ: I’ll grant that identifying something based on an observable trait is an abstraction, but your hypothetical claim applied that abstraction to a customer that is a female who has at least one child and that at least one child is also a parent.

    The nature of the thing being “identified” doesn’t change the fact (admitted by you) that the “identification” is an abstraction.

    So the claim isn’t looking to “preempt” the abstract idea of “identifying something by an observable trait” as you seem to suggest.

    Don’t get lost in the weeds of “pre-emption”. The point is that the “identification” is an abstraction. Try applying the machine or transformation test as the Supreme Court has advised. This is a great example of the type of subject matter which fails that test miserably. The “input” is pure observation. Definitive? No. A big clue? H— yes, unless you are simply unwilling to understand. That’s why we have the Supreme Court: for stubborn people who refuse to “get it.”

    I’m not a believer in the idea of “what difference does it make if you kill it under 101 or 103?”

    It really doesn’t matter what you “believe” when the analysis (1) reaches the same conclusion (a worthless piece of paper) and (2) reaches the same conclusion for the same reason (prevents the grant/enforcement of claims that effectively or literally cover ineligible subject matter). That was laid out fairly plainly for you (and everyone else) by Justice Breyer in the Prometheus opinion. If you’re still confused by this, perhaps try explaining to everyone exactly how you would approach analyzing this sort of claim under 102/103. In your analysis, please take into account the control that an applicant has over the timing of the dissemination of information relating to the “meaning” or “identification” of things (including abstractions).

  121. NOTE: Today (Oct. 11) I provided a Commment on Dennis’s Oct 9th blog in his Oct 9 Comments section . Since today (Oct 11) he wrote on the same subject, I am repeating it in this Comment section so my Comment may be more widely read and commented on

    THE REPEATED COMMENT…

    Dennis ends his Oct 9th blog with….

    “After fifty years of controversy; meandering administrative practice; and inconsistent Supreme Court decision making, it is time for the courts to take a stand and deliver the law in a way that is clear and precise. Finally answer the question: Is software patentable?”

    I agree with him that the Supreme Court has not been crystal clear in its review of so-called software patents. But I disagree that the question is “Is Software patentable? If anything, the question should be “If an invention contains software (a computer program) as part of its disclosure, should it be disqualified as not patentable subject matter. How the Patent Office can better review patent applications, so that they do not issue patents that are obvious, is also a very valid question.

    In my August 10, 2012 Patently-O guest post “No to Software Patents Per Se: Software is Only a Means to an End.” I tried to explain why software is only a part of a disclosure and is not the invention. There should never be software patents, per se —only inventions that may, or may not, have software as part of the inventions disclosure.

    Here’s a set of five facts that I think are indisputable.

    Fact 1. To get a patent on an invention an applicant must provide a “Proper Disclosure” in the application.

    Fact 2. When the Patent office issues a patent it is not on the Proper Disclosure, although the Disclosure must be adequate for someone “skilled in the art”. It is only on the invention which must meet the requirement of being non-obvious and contributing to prior art.

    Fact 3. The Supreme Court has said many times that an invention is not disqualified if its meets all the criteria for an invention, even if part or all of the invention uses software in its disclosure.

    Fact 4. Software and electronic circuits (hardware) are interchangeable. As noted in “Hardware/Software Tradeoffs: A General Design Principle?” the decision to implement an invention — and to provide the disclosure — as hardware circuitry, software or a combination of hardware/software is based on such factors as cost, speed, reliability and frequency of change.

    Fact 5. The US Patent Classification system has over 400 classes of patents. Patents that contain software, hardware circuitry or a combination range from classes e.g.., Class#379 Telephonic Communications to Class#704 Speech Recognition to Class#707 Data Processing. These are just a few of the many classes that could contain software as part of the disclosure. Look at IBM’s over 200 patents on Speech Recognition at link to research.ibm.com .
    Their disclosures include software and software/hardware circuitry. IBM appropriately calls them Speech Technology patents.

    I’d be happy to hear from my many critics as to why my conclusion —- that there really is no such entity as a “software patent” — there are only inventions in a great many Patent Office Classes that incorporate software as part of its disclosure.

  122. “‘Identifying’ something as a ‘recipient’ (or as an “XYRI confuger” or whatever other term you want to adopt or create from scratch) based on an observable trait or characteristic is an abstraction.”

    I’ll grant that identifying something based on an observable trait is an abstraction, but your hypothetical claim applied that abstraction to a customer that is a female who has at least one child and that at least one child is also a parent. It further applies the abstraction to a customer (meeting all of the qualifications just noted) who’s made at least 10 purchases, further that at least one of the purchases is a DVD of a movie with Nick Cage, and further applies the abstraction to targeted advertisements, coupons or rebate offers relating to products or services for the removal of back hair.

    So the claim isn’t looking to “preempt” the abstract idea of “identifying something by an observable trait” as you seem to suggest. The claim is silly, no doubt, but it is patent eligible subject matter.

    I’m not a believer in the idea of “what difference does it make if you kill it under 101 or 103?” that you advocate so tirelessly here. It matters.

  123. Look at it this way, AAA JJ:

    1. A method comprising,

    identifying the brightest object in sky,

    naming the object Frebbledock.

    Is this 101 eligible subject mattter because it irrefutably recites “a process”? That’s apparently what anon would have everyone believe (or at least that’s the logic he employed in his comment upthread).

    Does your answer to these questions change if I disclose in the specification that some people are entertained by the new name and others find it easier to remember?

    I should add that it would be a mistake to pretend that this sort of process is NOT the subject of patents being granted every Tuesday. They are tons of such patents out there. It’s called information processing: receive/collect information and “convert it” into another type of information without the recitation of any new structure (or new combination of old structures). Why the heck should it matter what type of information is being received or output in that circumstance, or how many steps there are in the “algorithm”? It’s just a computer doing what a computer does, with nothing more than an abstract concept laid on top.

    And yes everyone agrees that abstract concepts can (and often are) extremely “useful.” But there are good reasons that they aren’t eligible for patent protection. I respectfully submit that one of those reasons is the fact that if that door is opened the USPTO will be flooded with applications by people who seek to control how people use information. See, e.g., the policy discussion in the Prometheus opinion.

  124. Hey Rakman, why not get us a copy of this old article so that we may all read about these artifices? Slip it to us on the sly like.

  125. anon: 101 is not intended as a critically-minded keep out mechanism

    That ship has sailed, anon. You lost. I’m sorry. Please feel free to lobby your representatives in Congress, however. I’m sure they look forward to receiving your letters, although perhaps not for the reasons you imagine.

  126. What judicial exception to patent eligible subject matter would it fall under?

    “Identifying” something as a “recipient” (or as an “XYRI confuger” or whatever other term you want to adopt or create from scratch) based on an observable trait or characteristic is an abstraction. Also, as written, the claim reads on a mental process (a strong hint that the claim is directed to an abstract concept).

    The “artifice”, of course, would be to recite a step of “storing the information” or “using a computer”, both of which are conventional and old elements that should be ignored for 101 purposes becaues their use in the claim amounts to a trivial, insubstantial proxy for the work of the human brain.

    Or you can ignore all the other gxrbage when you do the 102/103 analysis and you end up with the same result: a worthless piece of paper. I think you know what the Supreme Court would say about this latter approach, however.

  127. “circuitous artifices” — but that is the essence of my practice

    It’s true of the practice of most prosecutors who prosecute on behalf of “inventors” in the computer-implemented realm. And the legal chicanery is enabled by the USPTO which apparently made the conscious decision to “look the other way” some time ago.

    How much patent crank do you have to inhale to look someone in the eye and with a straight face and declare that the collection and use of information becomes new and patent-worthy simply because it is performed with the aid of a computer? The USPTO behaves as if human civilization began in 1982 and prior to 1995 we all lived completely unconnected from information about anything, especially each other.

  128. “Does this pass 101, anon?”

    Sure. What judicial exception to patent eligible subject matter would it fall under?

  129. Grow up MM, or at least be seen and not heard if you are going to be childish and continue to purposefully try to use non-useful non-useful art arguments.

  130. Speaking of “circuitous artifices” that is what the courts are sometimes using to deny protection when they refer to “abstract ideas.”

  131. anon: software in any form (that is, drafted to fit in any of the enumerated categories) passes 101

    A method for advertising comprising,

    identifying at least 10 purchases by a customer from a retailer, wherein said customer is a female, wherein said female has at least one child, and wherein said child is also a parent,

    and wherein at least one of said purchases is a DVD, and wherein said DVD encodes a movie in which Nicholas Cage appears,

    wherein said customer is identified as a future recipient of targeted advertisements, coupons or rebate offers relating to products or services for the removal of back hair.

    Does this pass 101, anon?

  132. It is theoretically and practically possible to secure effective patent protection for computer programs.

    It will always be possible to secure patent protection for anything. Whether that patent is “effective” or not is certainly the key.

    I haven’t checked lately but I’m guessing if I looked back through the last couple months of grants I’d find issued claims that are indistinguishable from those which granted in Prometheus. Good enough to fool an “investor” into chucking some money into your database generating company? Probably, “at least some of the time,” as the saying goes.

  133. Prof. Crouch,

    In your series of questions on this topic, I previously pointed out that perhaps the question itself is the problem.

    You seem to be asking an individual claim type question on patentability when you (perhaps) intend to ask a class-type question on patent-eligibility.

    The confusion engendered by conflating patent eligibility and patentability will prevent an answer to either question (they are in fact, two separate questions).

    Further, conflating any discussion between class-type and individual claim evaluations under the law will provide at best a muddled and non-brightline rule.

    101 can be thought of as applicable to both class-type and individual claim evaluations. When a class-type discussion is meant as the focus, broad generalizations and the “any” wide open gate of 101 is an appropriate response. When an individual claim evaluation is meant as the focus, that claim – no matter which enumerated category – must pass the judicially created (and expressly authoritatively derived implicitly from the Congressional Statute of 101) exceptions.

    Rampant confusion (and constant posts trying to clarify the confusion) result from the (in my view) inarticulate manner of posing “the issue.”

    Finally, at the broad category level, software in any form (that is, drafted to fit in any of the enumerated categories) passes 101. As it should, since 101 is not intended as a critically-minded keep out mechanism. Attempts to use it as such run against Congressional intent (can you say Lochner?).

    At the claim level, software (again in any form), may run afoul of a judicial exception. But this is true of any type of technology drafted in any type of claim form. Thus, the overt focus on software should be seen as what it is: a policy decision driven by agendas not appropriate for Court decisions, but rather for Congress to decide. At this level, Congress has decided. “We” (the royal “we” who do not like that decision) simply have not listened. The other we, (as depicted in the 50 year old article as those who recognize that in order to claim what is rightfully ours, circumspection is prudent), would love to be direct and upfront, but also recognize that “politics” and agendas are very real and that what is objectively logical does not always carry the day.

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