USPTO: Software Composition Inventions are Unpatentable under §101 unless they Clearly Disavow that the Storage Mechanism is a Transitory Wave or Signal

By Dennis Crouch

Ex parte Mewherter (PTAB 2013)

The USPTO has recently designated Ex parte Mewherter as a precedential decision with regards to its treatment of rejections under 35 U.S.C. § 101. The opinion basically holds that standard Beauregard claims (computer readable storage media) are not patent eligible because they could encompass transitory signals that are unpatentable under the Federal Circuit’s Nuijten decision.

IBM’s Patent Application Serial No. 10/685,192 is directed to a “system for converting slide show presentations” that converts each slide into “raster imagery” and then extracts contextual data (such as titles) and places those “in proximity to the raster imagery.” The claim at issue here is claim 16, that is written as follows:

16. A machine readable storage medium having stored thereon a computer program for converting a slide show presentation for use with a non-presentation application, the computer program comprising a routine of set instructions for causing the machine to perform the steps of:

Extracting a slide title for a first slide in a slide show presentation produced by a slide show presentation application executing in memory of a computer;

Converting said first slide with said slide title into a raster image;

Disposing both said slide title and said raster image of said slide in a markup language document; and

Repeating said extracting, converting and disposing steps for a selected group of other slides in the slide show presentation.

The examiner rejected the claim under 35 U.S.C. § 101 as claiming non-statutory subject matter. In particular, the examiner indicated that the instructions could be imbedded in a signal or wave and are therefore unpatentable under In re Nuijten (Fed. Cir. 2007). In its appeal to the PTAB, IBM argued that its claimed “machine readable storage medium” is sufficiently fixed to avoid the transitory concerns expressed by the Federal Circuit in Nuijten. In the appeal, however, the PTAB affirmed the examiner’s rejection – finding that under the “broadest reasonable interpretation” a “machine readable storage medium” continues to encompass unpatentable transitory signals. Here, the specification does not particularly define the claim term and IBM did not offer any promise that the claim is limited to non-transitory signals.

In its 2012 examination training, the USPTO offered parallel guidance:

When the specification is silent (no special definition of a CRM provided in original disclosure):

– It is acceptable to amend the claims to exclude the signal embodiment by adding “non-transitory” to modify the computer readable media.

– See “Subject Matter Eligibility of Computer Readable Media” (Jan. ’10)

“Non-transitory” is not a requirement, but simply one option.

– Applicant can choose other ways to amend the claim in accordance with the original disclosure.

– Not acceptable to just add “physical” or “tangible”

– Nuijten’s ineligible signals were physical and tangible.

– Not acceptable to add “storage” absent support in original disclosure because the broadest reasonable interpretation of computer readable storage media based on common usage covers signals/carrier waves.

The bottom line here is that patent applicants must now specifically disclaim transitory waves or signals as their compositional carrier of any software claims.

416 thoughts on “USPTO: Software Composition Inventions are Unpatentable under §101 unless they Clearly Disavow that the Storage Mechanism is a Transitory Wave or Signal

  1. Tr0 llb0y: Does your comment at 8:27 actually mean anything?

    It means multiple things, Tr0 llb0y. I’ve told you what the controlling law is and I’ve always shared a wonderful idea about how to liven up a drab bathr0om.

  2. “I am not sure why you are taking a paternal tone with me. ”

    It’s on account of the mental illness you’ve been exhibiting.

    “Now you appear to be using your increased rhetorical powers for the dark side”

    Easy on the paranoia there man.

    But if your views have supposedly not changed then ok, my bad, I’ll totally take that to heart. But the next time you fly off the rails I’m going to remind you that [NWPA is] willing to give him the benefit of the doubt that he [Lemley] thinks this is the right thing to do. I base this on his history where he seems to have taken up his sword long ago. But, his methods are vile.

    Hopefully that might calm you down to recall that.

    It appears now that the only beef you seem to have left is with “his methods”, and not his subjective maliciousness. Methods which you still haven’t detailed for us, or explained why they’re so vile, even though that’s your main beef.

  3. Does your comment at 8:27 actually mean anything?

    It’s as if you have nothing to say and really don’t care that you have nothing to say.

    It’s almost too pathetic to be funny.

    Almost.

  4. As if “*click* isn’t a recycled loony comment…?

    LOL – as if your accuse-others-of-that-which-you-do mantra isn’t a recycled loony tactic…?

    Come Malcolm, your originality is as lacking as your grasp on the different protections afforded by copyright and patent law (and that’s really low).

  5. or actually probably just your other psuedonym) anon

    Nope 6 – Malcolm is the King of the svckpuppets now. With his blatant 1ies, maybe he always has been.

    But wait – you ‘know’ who I really am, right?

    LOL – how do you see over those tall weeds, 6?

  6. “Please explain how the controlling law related to the exceptions to the printed matter doctrine have been touched by the Supreme Court.”

    They said quite clearly to not elevate the art of the draftsman over the 101 exceptions. The art of the draftsman is the formalism that this fine chap I’m responding to is referring to. Discount the formalism, realize that the only purpose of B claims has only ever been to make instructions patent eligible (and with the bonus of not even saying what they are an instead saying what a compooter does) and the claims sink faster than you can say bob’s your uncle.

  7. identified a structural distinction

    LOL – a structural distinction like “configured to?”

    LOL – like you volunteered an admission to?

    The archives don’t 1ie Malcolm. No amount of attempted spin can save you from yourself.

    While we are at it, who was right in the Myriad case and why?

  8. Here’s an easy honest question for you: Who was right in the Myriad case and why?

    Here’s another easy honest question for you: Why did you QQ incessantly about svckpuppets and then go and get busted doing the exact same thing – and then blatantly 1ie about it?

    Why the dissembling? Why the hypocrisy?

  9. This was a visceral slap at the very anti-patent Supreme Court

    Personally, I sort of prefer a good medieval battle metaphor. You know, the polished armor, the arrows, the storming of the gates, the capture of the tower, the black knights, and especially the moat with the alligators.

    Congress plainly revoked the ability of the judiciary to decide ‘invention’ and purposely used obviousness instead.

    Oh, right, that’s why they put the stuff in 103 about looking at the “claims as a whole” except that you need to dissect them first to see if there’s ineligible subject matter like “printed instructions” lurking there.

  10. “A 10d nail holding up a 3 foot 2×4 functions differently than the same 10d nail holding up an engine block for a 57 Chevy.”

    That’s funny, your bro, (or actually probably just your other psuedonym) anon thinks that the same structures do not function differently. Maybe you guys should hold a conference (maybe in your mind lol) to sort out which way it really is.

  11. the rulebook for the teab-gg-rs is to never make any definitive clear statement

    LOL – says the guy who never gives clear statements himself (unless he is accidently setting his agenda on fire with his oopsie volunteered admissions).

    It took you how long Malcolm to venture forth with a first substantive attempt to square prometheus with the precedent case most on point, and what did you and your English as a first language skills do? LOL – you tossed your ‘pet theory’ on a bonfire that is still burning.

    As they say, svcks to be you.

  12. Easy Malcolm, you are denying the very modern world brought to you by software.

    And your use of expletives must make your mommy really proud.

  13. Another vacuous *click* post by Malcolm,

    @ta boy.

    (you might lay off the poor trick questions if you ever really want answers there Malcolm)

  14. LOL – Let’s check the talley on who owes the other answers…

    Yup – Malcolm way behind.

    Let’s start with a real real real easy one: Who was right in the Myriad case and why?

    LOL

    And what the H does any of ‘answers’ have to do with ‘creatard?’ Nothing like force feeding a bad punch line.

    That laughter you hear is not laughter with you.

  15. controlling law

    The “controlling law” is that you can patent a t–let seat by printing Tr0 llb0ys face on it because that “new” seat allows you to express yourself in a creative way.

    But the Supreme Court was never asked for their opinion about that. Gosh, I wonder what they’d say.

  16. Just remembered another all-time fave argument by one of the softie wofties: using a computer to determine which programs *weren’t* watched by a group of people whose TV watching habits were documented was “completely different” from using a computer to determine which programs *were* watched. This was an argument about non-obviousness, mind you.

    That’s pretty much the level of practice of the typical attorney in this exhalted area (many of whom never achieved a darn thing in the “technical” field they claim to be “experts” in). No wonder they’re so sensitive.

  17. according to the Board, in 2002 the art-recognized meaning of “storage medium” was magically transformed to include transitory, propagating signals per se. Who made this transformation and why?

    Your comrades in the greedy softie woftie community.

    You know, the same guys who told everyone for years that anybody could code once they knew what function to code for so they were entitled to merely recite in their claims whatever “new” function for a computer they could dream up (but now that there is more prior art out there they want to argue that mere recitation of the function isn’t “enabling” unless the PTO can “prove it” — go figure!).

    That’s why “identifying available real estate with a computer” is somehow patentable over “identifying available dog food on a shelf”. Only in the coddled world of the softie wofties patentistas, the ever-expanding group of technological geniuses whose great knowledge of science is never given the recognition they deserve by the “no-nothings” at the PTO. This is in spite of the fact that they are so busy working on really difficult “technology” like “telling Grandma that her robot car needs air in the tires, using a handheld device” or “making a smiley face on a touch-screen to communicate a feeling to second user, wherein the second user is notified of the communication by a signal sent by a portable device”. You know, rocket science, basically.

  18. “The computer that retrieves the computer program may operate differently but the media doesn’t.”

    Hmmm that’s quite an “admission” anon, that identical media do not function differently. I think I’ll keep it in my back pocket for now.

    It’s remarkable only because the rulebook for the teab-gg-rs is to never make any definitive clear statement about anything that could possibly undercut the softie woftie script.

    That’s why Tr0 llb0y always resorts to innuendo instead and would much rather fling insults than engage in an honest discussion about anything.

    Tr0 llb0y knows that “observer” has strayed from the script or maybe it’s the case that “observer” has a couple ounces more integrity than Tr0 llb0y (also not terribly impressive).

    So what about it, Tr0 llb0y? Did “observer” speak the truth when he noted that the “new” media in B-claims “operates” in the same way regardless of the instructions that are printed on the media? i.e., it simply stores the instructions, in the exact manner that the old media did? So that the only difference between the new media and the old media is the new instructions printed on the old meida? The instructions that we are merely told cause another generically recited device (not the claimed invention) to “function” differently, but which have no corresponding structure that either of our two “tech” geniuses are willing or capable to describe to us? The generically recited device that includes untold number of different species which (wait for it) “operate differently” and which require very specific structure to be printed on the old media that is nowhere recited in the claim or disclosed in the application?

    Get ready for these two to start kicking up a lot of dust. Again. Maybe they’ll try to tell us that coding is really easy and everyone can do it so all you need to do is recite the function and it’s enabled. Oh wait …. oops!

    (and of course watch Tr0 llb0y give his Magic Insult Wheel another spin — wheee!!! which of the re-treads will come up next? )

  19. Tr0 llb0y: Irrelevancy is a

    *click*

    Looks like Tr0 llb0y is just spinnning his Magic Tr0 llb0y Insult Wheel again. Which of the five recycled loony comments will come up next? The suspense is so thick you could cut it with a computer-controlled knife that cuts really close to exactly where you want it to cut, just like if it wasn’t controlled by a computer, except a bit more accurately than you can do without a computer because that’s a nice function to have in a knife and anybody that thought of it before didn’t enable it like I just did with my accuracy checking flowchart.

  20. Shorter “observer”: “Ha ha! You missed the moving goalpost again, silly!”

    But I’m sure the prosecution histories this guy creates are really clean and devoid of contradictory and/or fraudulent assertions. Yes, you can bet on that.

  21. Tr0 llb0y: t is you that is doing the ‘fundamentalist’ denial of reality thing here

    Summon up your best English skills, Tr0 llb0y (get help from your mommy upstairs), and articulate for everone exactly what “reality” I am “denying” in my 9:17 pm comment.

    Or just go and f*k yourself. The latter choice has the option of being very easy for you.

  22. Tr0 llb0y: It appears that even though

    *click*

    Let Ron answer the question, Tr0 llb0y. He’s a grown man and I’m sure he can handle it. Or maybe he admires you so much that he’ll emulate your raving douchiness?

    Let’s just wait and see. The ball’s in your court, Ron.

  23. Shorter Tr0 llb0y: “I can’t answer the question because the answer is not in my script.”

    Just like a creatard.

  24. he is not a neutral observer.

    Pretty funny coming from Tr0 llb0y, one of Gene “Patnet Apologist” Quinn’s favorite li’l water carriers. Better go and retrieve your cookie, Tr0 llb0y, while it’s still warm.

  25. Tr0 llb0y: it is safe to say that it is not your language that offends Leopold.

    And its safe to say that’s it not NWPA’s “language” that offends Dennis.

    It’s the pure nutball completely unjustified rantiness that offends. Of course, that raises the question why Dennis tolerates your typical contributions here, Tr0 llb0y.

    Like this one:

    check into Lemley’s connections with ‘Big Data.’

    Please tell everyone what these alleged “connections” are, Tr0 llb0y, and explain to everyone how those connections account for Lemley’s alleged habit of “telling lies”. Go ahead, Tr0 llb0y. Let’s see you back up your big talk. NWPA will give you a tasty treat if you lend him the helping hand he needs.

    Everyone is waiting for your big scoop. Make Gene Quinn proud, Tr0 llb0y. He loves you already but that doesn’t mean he can’t love you even more. And we know you want that more than anything.

  26. My position and views have not changed. I am not sure why you are taking a paternal tone with me. I liked you better when you couldn’t put together two sentences with major grammatical mistakes.

    Now you appear to be using your increased rhetorical powers for the dark side.

  27. There isn’t a software application that I have had any dealings with in the last decade that is negatively impacted by any of the decisions of SCOTUS or the Federal Circuit.

    You’re so awesome.

  28. observer: The two identical media do not function differently. They both store the media in the same way.

    If it’s an old storage media and it functions the same way then the media is surely anticipated. Why is it that you softie woftie types put so many words in the claim if you all you are claiming is the function of “storage”?

    Seriously, you’re going to have to do much better than this. Everybody knows that the media is old and it’s the recited and allegedly “new” function of the computer that will ultimately read the allegedly new information on your old media that you folks rely on to distinguish your “new” storage media from the “old media.”

    The computer that retrieves the computer program may operate differently but the media doesn’t.

    As noted above, the “media” certainly does “function” differently. We’ve been told that by you softie woftie folks for years. It’s the fact that it “functions” to “instruct” an old computer to do “new” things that makes that old media patentable. The problem, as you know, is that there is no structural distinction between that old media and the one you are trying to claim. So you wave your hands about, kick up some dust, and (when the rubber hits the road) mumble about “corresponding electronic structure” that must exist … but you can’t be bothered to describe it because that would be so unfair (meanwhile, everybody else has to describe the physical structure that distinguishes their new composition from old compostions … and everybody else manages to “progress” just fine).

    A 10d nail holding up a 3 foot 2×4 functions differently than the same 10d nail holding up an engine block for a 57 Chevy. A timer for your Christmas tree lights works differently than if the timer was used to regulate flow of electricity in a power line. I can think of hundreds of examples where the same structure performs differently in different contexts/environments.

    Right, and in every one of those examples you would never be permitted to patent the latter composition over the former unless you identified a structural distinction (as opposed to a “functional” distinction”). Now we’re on the same page! I’m glad you are following along, albeit reluctantly.

    Do you really need to be taken by the hand from this point and given an explanation as to why an old storage media is unpatentable over a new storage media merely because you recite some new “function” for the new storage media (at the same time you admit that the actual “function” of the media is old as the hills: to store information)? Seriously?

  29. My question to you is whether you believe that one should be able to obtain a patent to a medium (e.g., air, water, wire, vacuum) through which a signal is continuously propogated, wherein that signal contains new, useful and non-obvious information, wherein that information is instructions for a computer?
    I have no opinion on that. You are talking about a claim to a transmission medium, which is different than a storage medium. My comments are directed to storage mediums.

    However, I will say that anybody attempting to get a claim on a transmission medium that is distinguishable over another transmission medium solely based upon the signal propagating through it isn’t likely to have much luck at either the USPTO or the Federal Circuit.

  30. Me: Certainly things can be stored in air or water.

    Observer: We are NOT talking about generic “things” … the claims refer to storing a computer program.

    Right, but earlier you said that “Air and water were not examples of a storage medium,” period. You were mistaken. I pointed that out. I pointed that out because you act like an arrogant pr*ck commenting about how “silly” other people are and yet you say silly things yourself. Just take your time and we can avoid these digressions. Or you can choose to nitpick (that seems to be a pasttime of yours) in which case your arguments will fairly be subjected to nitpicking. See how that works?

    What does air and water being mediums have anything to do with a signal not being a medium?

    We’re talking about patent claims and what sorts of claims should be eligible or not. You seem to believe that a signal isn’t a “medium”. Okay, let’s start from that point. A signal is not a medium. But air is a medium and signals travel through air. Same with water. My question to you is whether you believe that one should be able to obtain a patent to a medium (e.g., air, water, wire, vacuum) through which a signal is continuously propogated, wherein that signal contains new, useful and non-obvious information, wherein that information is instructions for a computer?

    Let me know if the question is too difficult for you and I will try to phrase it for you using smaller words.

  31. It appears that even though you recognize the controlling law as related to the exceptions to the printed matter doctrine (one of your oopsie self volunteered admissions), you now seem intent to bungle that up and have someone else read your mind as to why you think it wrong.

    That’s some (delusional) trick.

  32. It does mean that you don’t understand the difference when you give such p1sspoor advice as you did at 8:39.

    Try again – but learn the basics first.

  33. Eligible is the wrong word.

    Patentable and eligible are different concepts – one you would do well to understand (come to think of it, that is exactly what Ron Katznelson – in one of his rare appearances – advised you to do).

    Lucky you.

  34. Ron MM: …for “automatically” collecting data and “automatically” telling you to do what anybody would do if they had immediate access to the data and a brain with the processing power of a computer.

    That sounds like a 103 obviousness argument.

    Yes, it does.

    Please do not do what some of our esteemed members of the judiciary do – conflate obviousness 103 issues with subject matter eligibility 101 issues.

    Two points, Ron: first of all, I wasn’t conflating anything. I was merely explaining why most softie woftie claims are obvious g*rb*ge.

    Second, Ron, if you’re so concerned about “conflation” of 101 and 103, then where in your extensive writings can I find you complaining about the printed matter doctrine? Or do you think that under 103 I should be entitled to a claim that recites a “new” kit that differs from an old kit only by the inclusion of new set of instructions?

    Please share with everyone your thoughtful and detailed answer to that question, Ron. I mean, I’m sure you’ve thought about it a lot because you seem really uptight about this “conflation” issue.

    Thanks in advance, Ron.

  35. you just have to know the difference between the two.

    I know the difference between copyrights and patents, Tr0 llb0y. Just because you disagree with me about patent protection for software doesn’t mean that I don’t understand patents or the difference between patents and copyright.

    try not to look like an absolute doofus

    How about you just go fk yourself?

  36. Question for Tr0 llb0y and his li’l buddy Night Wiper:

    Should old signals containing new information be eligible for patenting?

    Real simple. Yes or no. Just answer the question and explain your answer.

    I don’t think they should be eligible. I think eliminating signals from eligible subject matter was a great idea at least because holding otherwise would open the door to too much cr*p that doesn’t promote “progress” at all but merely promotes gambling at the patent casino and the granting of g*rb*ge claims that would make 99% of the modestly educated public puke their guts out.

    So … do you think old signals containing new information should be eligible for patenting?

    Or will you refuse to answer this straightforward question?

    While you’re at it, Tr0 llb0y, you can let us know what you think about patenting purely mental processes. Your fellow patent teab-gger Les thinks purely mental processes should be eligible for patenting. What about you? Last time you were asked this question, you refused to answer it. As if you were ashamed to answer it. What’s the problem, Tr0 llb0y? Too much “reality” for you?

  37. And then feel free to acknowledge the only remaining argument of ‘transitory’ is simply bogus (as well as acknowledge the ‘physical’ and ‘tangible’ arguments as withdrawn).

  38. Regarding 271(c), just for example, if party A makes the final assembly, he directly infringes. If he buys a component from B, then B may infringe as well if B supplies the component comprising the novel features of the invention — what causes exhaustion if done by the patentee — by contract (or by subcontract) with direct infringer. In parlance, this is known as “have made.” It should be considered “making” and an infringement, but the creation of 271 (a), (b) and (c) really messed that up.

    271(c) should have been an “additional” way to infringe It should have applied when placing a component into the stream of commerce, comprising a material part of the invention, when the only substantial use is the patented use. That is what 271(c) was intended to cover. But the “knowing” part was completely unnecessary and wrongly included. And, it should have been made clear that it was not intended to cover the “have made” situation of directly contracting parties.

    But the contract “have made” arrangement appears to be primary way direct infringement happens. When parties have direct contract relationships, proof of substantial non infringing used, etc., should not have been required.

    But all this was somehow lost in translation when the framers of ’52 did their thing. Now the law regarding contributory infringement is really messed up.

  39. Quite a fantasy there 6. Please explain how the controlling law related to the exceptions to the printed matter doctrine have been touched by the Supreme Court.

    (Note that even the anti-patent Malcolm recognizes the controlling law in this regard).

    Then feel free to explain why you seem to be unable to let this point go, that you seem unable to recognize the actual law here.

  40. I have gone over this before.

    Congress plainly revoked the ability of the judiciary to decide ‘invention’ and purposely used obviousness instead. This was a visceral slap at the very anti-patent Supreme Court (the only valid patent being one not yet appearing before the Court).

    Whether you are ‘persuaded’ is immaterial.

  41. It was more likely the (far, far, far) lesser of two evils.

    Stevens would have outright rewritten the law as written by Congress.

    What is a real travesty is that Stevens was able to have anyone remain with his nose-twisting opinion. Judicial activism at its worst and most egregious.

  42. Patents Invalid?

    Not really … just the Beauregard claims. The patents will also typically have machine, system or method claims as well. It is these latter claims that are asserted in court and which carry the day.

    This whole fight about Beauregard claims is about contributory infringement and the way 271(c) is phrased. It requires proofs, at least as interpreted by the courts, that really should not be there.

    In retrospect, if something needed to be done to overturn Mercoid, 271(c) was not the way to do it.

  43. “The bottom line here is that patent applicants must now specifically disclaim . . .”

    “Must now?” Seems to me to be retroactive,which would imply that a whole lotta patents claims out there are invalid and will remain so until either the Supremes reverse or everybody comes up with the cash to have all their patents reeaxamined or reissued. Given the result in Marine Polymer, I would recommend reexamination.

    – JCV

  44. “Nonetheless, I am willing to give him the benefit of the doubt that he thinks this is the right thing to do. ”

    I’m glad to hear that you’ve finally come to this conclusion. Perhaps your posts on the topic will become a bit more mild, and you can use any additional posts on the topic to detail just what his methods are and why they’re so horrendous and offensive.

  45. “Whatever you think of software patents, this is a crazy rule that plainly violates repeated comments fro mthe courts not to proceeed “overly formalistic”.”

    I agree, we should discount all the formalism present in B claims and sink the lot of them for claiming instructions, since they are plainly naked attempts to make instructions into patent-eligible subject matter. Do away with the formalism and you save yourself having to deal with the claims at all. The USSC even recently went ahead and told us to do that, but the PTO doesn’t want to go that far just yet.

  46. I agree anon that Lemley is making big money with his views. And, it is true that Lemley is the “modern” academic that uses his position to further his career outside of academia. I.e. he has consulting business and law firm. The money he gets from being a professor I am sure is a tiny fraction of the money he makes each year.

    Nonetheless, I am willing to give him the benefit of the doubt that he thinks this is the right thing to do. I base this on his history where he seems to have taken up his sword long ago. But, his methods are vile.

  47. anon, my point being that the SC in Bilski was not clear on what it meant by Abstract. This defect was pointed out by Stevens and and his co-signers as well.

    It is embarrassing that a brain such as Scalia joined with the Kennedy opinion. He must have crossed his fingers behind his back and held his nose as well.

  48. anon, “common law” and ineligible subject matter?

    You might be right, but Congress was anything but clear on this point. I would add to the codification of “invention,” the narrowing of grounds for invalidity to exclude 101. Now that combination of arguments begins to persuade.

  49. the ’52 Patent Act was intended by Congress as a codification of the prior patent acts as interpreted by the Supreme Court.

    It was mostly that, but not limited to that Ned – we both know this, so kindly do not misstate that point here.

    You are quite incorrect about addressing ineligible subject matter. The Congress revoked the Judiciary common law ability with that act.

  50. Night, let me agree with you that the Supreme Court has not made clear what it means by “abstract.” That is part of the reason everyone has an opinion on this issue and the more recent Supreme Court cases can support any view.

    Benson/Diehr, though, seem clear.

  51. LOL – not when more means better, IANAE.

    That’s a critical difference with the patent power.

    Thank you for supplying comparisons that prove my point.

  52. Night, the ’52 Patent Act was intended by Congress as a codification of the prior patent acts as interpreted by the Supreme Court.

    The Bar intended to specifically codify Hotchkiss v. Greenway (work of the skilled artisan), and overturn Cuno (Flash of Genius), Mercoid and Halliburton. Nothing in the ’52 Act was intended to address eligible subject matter. That statute continued in substantially the same form as it existed in 1790/93.

    Hope this helps.

  53. You must have missed the day they covered this in history and discussed how the founding fathers thought that patents were such a good thing that they assigned the power to have patents directly into the constitution.

    Not to mention pointless wars, crippling debt, and snail mail.

    The power to do something means that the thing can’t possibly get out of hand or outgrow its usefulness, right?

  54. sorry my language may offend you

    NWPA,

    Leopold is head cheerleader for Malcolm. There is no language you can use that compares in offensive character, so it is safe to say that it is not your language that offends Leopold.

  55. Not saying that anything untowards is to be taken from this, but check into Lemley’s connections with ‘Big Data.’

    One can safely say that he is not a neutral observer.

  56. Yeah well nobody has as of yet stood up to the bullies in the government that keep on enforcing those things called “patents”.

    You must have missed the day they covered this in history and discussed how the founding fathers thought that patents were such a good thing that they assigned the power to have patents directly into the constitution.

    Not sure why you would think this even remotely calls for the use of the word ‘bullies.’

  57. Plurality, dude you have to understand, even if you accept his new challenge he will not yeild. Just as with the rest of his deeply-held beliefs, facts about how the patent system is currently being used will not be able to change them.

  58. Oh and LB, try to answer my question in the context of the U.S. political system that recently saw the repeal of financial regulation that led to our biggest disaster since the great depression. The political maneuvering was very similar to what we are seeing with patents. Big something with money wants something and they get it despite the wise heads saying that it is a bad idea. And, they roll over people and threaten people. We see that post-disaster with the financial industry and we are seeing the same thing now with patents.

    I am sorry my language may offend you but it reflects the political reality of our society.

  59. Well that was certainly a fair characterization of my positions. (major eye roll.)

    You think I mischaracterized your “positions”?

    Here is my characterization: “Lemley-is-evil-and-Obama-is-controlled-by-Lemley-and-Stanford-and-has-appointed-anti-patent-goons-that-are-destroying-the-patent-system.”

    Below are some excerpts from your posts from just a couple of weeks ago. Go ahead, please tell me where I misunderstood you.

    Notice that this fits very well with what I have been saying about Obama. Remove Kappos and send in three henchmen. Obama is trying to cripple the patent system in his own incompetent way.

    The point is that Obama doesn’t understand the patent system. Has said nutty things. Has obviously ceded power to others because he is incapable of evaluating solutions. The “others” are using this opportunity to burn us down.

    And we have “intellectuals” like Lemley that lie in law journals and are amoral that are the intellectual foundation of the burning.

    I am dumbfounded that you and others don’t see that the three henchmen will make this happen in the next en banc case. A question for you is how in the world do you think that Newman/Rader/Moore/O’Malley are going to stop them when they are out numbered?
    The henchmen–I will bet–were appointed with the understanding that they would put patents under control.

    At this point, Obama is clearly being controlled just as he was in the financial crisis when he turned to the very people that made the problem.

    Just don’t be surprised when I say I told you so after a few “decisions” by the henchmen.

    Obama has ceded control to bought off intellectuals just like he did with the financial sector. Burn baby burn.

  60. NWPA, I am curious. Do you know why Lemley takes the positions he does? Is it his genuine belief or does it serve his economic interests? This is a genuine question, because I do not know myself. All I do know is every time I read some of his stuff I want to dig a hole and climb in.

  61. MM: …for “automatically” collecting data and “automatically” telling you to do what anybody would do if they had immediate access to the data and a brain with the processing power of a computer.

    That sounds like a 103 obviousness argument. Please do not do what some of our esteemed members of the judiciary do – conflate obviousness 103 issues with subject matter eligibility 101 issues.

  62. And, Lemley will never address the accusations unless forced to before Stanford faculty senate because he cannot address them without admitting guilt that would more than tarnish his name.

  63. Well that was certainly a fair characterization of my positions. (major eye roll.)

    Let’s see: I have stated a factual situation that if held so by his peers would mean that the SCOTUS would never ever quote from Lemley again. Fairly serious transgression and one that was calculated to remove information processing from 101. I’d say that is about as serious as it gets in the academic circles.

    Let’s see: Kappos is asked to leave because he is pro-patent (so I hear through the grape vine.) New judges are appointed that have a history of being anti-patent.

    But, nice of you to fairly characterize my positions. (Major eye roll.)

  64. Dennis, I think that you’re probably filtering the outbursts from our friend over in Tennessee. I submit that the Lemley-is-evil-and-Obama-is-controlled-by-Lemley-and-Stanford-and-has-appointed-anti-patent-goons-that-are-destroying-the-patent-system rants are only marginally more connected to reality.

    I’m just saying.

  65. Hmmm that’s quite an “admission” anon

    LOL – check again.

    Do you admit that you know how to read? You might want to do that before you put anything into any pocket.

  66. Well-said Max. Most of Section 101 nonsense we get here in the U.S. comes from those in the judiciary who have no clue on the real technology world.

  67. “The problem we have is that no one stands up to these bullies. ”

    Yeah well nobody has as of yet stood up to the bullies in the government that keep on enforcing those things called “patents”.

  68. Here’s the thing NWPA, I agree that it was once tailored to be narrowly applied. And for a long time it was. Not many people tried to patent rubbish that would get caught. But then the Fed. Circ. opened the floodgates to this narrow sectioned off portion, which was sectioned off because it is so juicy, too juicy for the contribution made, so everyone and their grandma tried to get in that narrow excepted area because the Fed. Circ. said they could. Once we’ve had a period of calming down the masses, then it will no doubt go back to being narrowly applied.

    For instance, my art is a good comparison, people there never really started a land grab into the abstract/natural phen/natural lawls because we’d shut them down immediately. And lo and behold, the exceptions are narrowly applied. If that had happened in all other arts it would still be so narrowly applied.

    I have one question for you though, why can you not just let this issue go bro? Do you wake up in the morning with this on your mind or what? Do you make a post everytime you receive a 101 from the office? What gives man?

  69. if Lemley was found to have committed the act I have described before, the SCOTUS would never quote from him again–never ever.

    All that for not citing one of their daughters? Seems a bit harsh.

  70. And, be certain 6 that if Lemley was found to have committed the act I have described before, the SCOTUS would never quote from him again–never ever.

  71. 6, a judicial exception is supposed to be created in rare circumstances to “fix” the law. It is like equity. Narrow and tailored for a specific situation. A judicial exception is not supposed substitute for the law and replace an entire act of Congress as is the case here.

    Yes, it applies to 101, but that does not change the fact that 112 was written to deal with the same issue and the SCOTUS should respect the 1952 Act.

    And, the sheer nonsense of the reasoning floors me. The 1952 Act has the concept of gateway and 112, now we think that the gateway should include 112, so we are going to negate the 1952 112 and put it into 101 with a judicial exception. Outrageous. The problem we have is that no one stands up to these bullies. Everyone is just getting their own. It is the same reason why we have “professors” post on this board about ethics, but take no interest in enforcing real world violations from notable academics (but, the bulk of its money comes from its law practice and speaking tours.)

  72. “Dear software producers, you are free to send clearly infringing executables into the United States and avoid liability for direct infringement.” (The PTAB, 2013)

  73. “that “abstract” should be used before 112?”

    Well the abstract determination is in 101, so it’s that whole gateway thing.

    But if you’re at the office, we can hit you with them all at the same time if that makes you happy.

  74. “Too bad the fed. cir. is packed with bozos.”

    Well, at least we’re agreed on something. Those are the bozos that let you get your foot in the door in the first place, remember?

  75. “The computer that retrieves the computer program may operate differently but the media doesn’t.”

    Hmmm that’s quite an “admission” anon, that identical media do not function differently. I think I’ll keep it in my back pocket for now.

    But in any event, even if, as you assert, they do not (which I’m not entirely sure I agree with just yet), you’re forgetting that the “function” at issue in the claim is actually how the compooter functions. Don’t you remember the very basis for the whole B claim regime? If I do recall correctly that was the case that talked about table clamps and how it was totally legit to specify the “structure” of a separate device (an add-on to the clamp iirc) in terms of the function ultimately produced by the clamp? I have that case faved somewhere, I’m surprised I forgot it. Wasn’t that the whole basis for the whole B claim regime? Or did you never hear about the history of B claims?

  76. Thanks for the cite. I haven’t seen that one before. However, Mewherter distinguished 3 other PTAB decisions that came out the other way. I suspect they would have done the same with Ludtke.

  77. “Air or water are storage mediums capable of storing a computer program?”

    Actually simpler than you might think. Find CD. Drop CD into a tank of water. Presto, the water is storing a computer program. Though there are more convoluted ways of doing that as well.

  78. Your request didn’t specify that the spec had to say “computer-readable *storage* medium”.
    That is what this decision is about … storage mediums. Regardless, thanks for finding so many publications that don’t support the USPTO’s position.

  79. An electromagnetic wave traveling in a vacuum through a specific area of space-time is the most transitory form of energy in the known universe.
    If the refractive index of a material in question is high enough maybe we can patent a non-transitory electromagnetic wave.

    I couldn’t resist a chance to make a physics-patent joke.

  80. Scroll up. Your request didn’t specify that the spec had to say “computer-readable *storage* medium”.

  81. 2010/0318343. “The term “machine-readable medium” shall accordingly be taken to include, but not be limited to, solid-state memories, optical and magnetic media, and electromagnetic signals.” Doesn’t refer to a storage medium, and doesn’t refer to transitory, propagating signals per se.
    2010/0318387. “Software may also be implemented as a computer program product, i.e., one or more computer programs tangibly embodied on a computer-readable medium, such as a storage device or a propagated signal.” Distinguishes between a storage medium (i.e., a storage medium) and a propagating signal per se.
    2010/0318403. “The logic, circuitry, and processing described above may be encoded in a computer-readable medium such as a CDROM, disk, flash memory, RAM or ROM, an electromagnetic signal, or other machine-readable medium as instructions for execution by a processor.” Refers to a medium – not a storage medium.
    2010/0318410. Identical to 2010/0318343
    2010/0318504. “Any of the above can be embodied on a computer readable medium, which include storage devices and signals.” Yet again, a distinction is made between a storage device (i.e., storage medium) and a signal.
    2010/0318622. “The information carrier is a computer- or machine-readable medium, such as the memory 1310, the storage device 1330, or a propagated signal.” Yet again, another distinction made between a propagated signal and storage device/medium.
    2010/0318761. “Computer readable media may include, for example and without limitation, any number of the following: magnetic storage media including disk and tape storage media; optical storage media such as compact disk media (e.g., CD-ROM, CD-R, etc.) and digital video disk storage media; nonvolatile memory storage media including semiconductor-based memory units such as FLASH memory, EEPROM, EPROM, ROM; ferromagnetic digital memories; MRAM; volatile storage media including registers, buffers or caches, main memory, RAM, etc.; and tangible media used for storage incident to data transmission via computer networks, point-to-point telecommunication equipment, and carrier waves or signals, just to name a few.” Talks about examples of computer-readable mediums – not storage mediums.
    2010/0318908. “Although the exemplary environment described herein employs a hard disk, it should be appreciated by those skilled in the art that other types of computer readable media which can store data that is accessible by a computer, such as magnetic cassettes, flash memory cards, digital versatile disks, cartridges, random access memories (RAMs), read only memory (ROM), a cable or wireless signal containing a bit stream and the like, may also be used in the exemplary operating environment.” Hey — you found one that implies a wireless signal stores data. However, it doesn’t state that a wireless signal is storage medium.
    2010/0318923. “The computer-readable medium may include a ROM, a RAM, a CD-ROM, a magnetic tape, a floppy disk, an optical data storage device, and the like. The computer-readable medium also includes implementations in the form of carrier waves or signals (e.g., transmission via the Internet).” Yet another distinction made between storage medium and signals.
    2010/0319029. “The computer-readable record media may include a hardware apparatus especially designed to store and execute the program command, for example, magnetic media such as hard disk, floppy disk and magnetic tape; optical media such as CD-ROM and DVD; magneto-optical media such as floptical disk; ROM; RAM; flash memory, and etc. In the meantime, the record media may be an optical wire, a metal wire, or a waveguide including carrier wave to transmit a signal for designating the program command and data structure.” Sloppily written but doesn’t describe either a storage medium or signal per se. Instead, it describes “a waveguide including carrier wave to transmit a signal” – definitely not a signal per se.

    While some of this boilerplate implies that signals are an example of a medium. This is incorrect. However, this is what happens when you have attorneys (not skilled in the art) putting together boilerplate language to enable a claim type (e.g., a data signal embodied in a carrier wave) that was blessed by the USPTO as late as 2004. However, what is pretty clear is that most of the boilerplate you identified is distinguishing between storage mediums and signals.

    The USPTO has latched onto poorly written boilerplate language that was intended to cover both storage mediums (e.g., hard drives, memory, disks, etc.), transmission mediums (e.g., fiber/copper cables), and “signals embodied in a carrier wave.” While many attorneys appreciated the difference between storage mediums and transmission mediums, between carrier waves and transmission mediums, and carrier waves and signals, some attorneys did not. As such, you see instances where an attorney tacked onto the boilerplate language regarding computer readable mediums the statement “… and includes signals embodied on a carrier wave” (or some variation thereof). However, this does not change the art-recognized meaning of the term “storage medium.” Instead, this poorly-written boilerplate should have created “special meanings” of the claim language (i.e., meanings that are inconsistent with how these terms are normally interpreted). However, what the USPTO has done (with their training guidelines in 2012) and in Mewherter is transform the “special meaning” into the “art-recognized meaning.” Thus, Applicants who have used the terms correctly are put into a bind because they are saddled with a “special” claim interpretation they never endorsed.

  82. The above blog discussion is the reason why I have quit reading the comments on patentlyo. I read this one becuase I thought it would be enlightening as I have numerous computer and telecom clients. HOwever only a few of the many commnets raised useful legal commentary.

    Dennis thanks for the good timely posts that identify recent case holdings to pull and read, but I no longer bear to read your blog comment section. The blog comments are worthless diatribe dominated by a few that is a waste of time to anyone of practices patent law.

  83. Leopold,

    Do you have a point or a comment that you would like to share? Perhaps you would like to help your beloved understand the different protections afforded by copyright and patent law.

    As it is, your apparent adulation of me is recognized and I offer a most humble reply of Thank You.

  84. Challenge accepted!

    2010/0318343
    2010/0318387
    2010/0318403
    2010/0318410
    2010/0318504
    2010/0318622
    2010/0318761
    2010/0318908
    2010/0318923
    2010/0319029

    I think these are all from different applicants (i.e., no continuations), and I picked out cases where the applicant made no effort to subcategorize computer-readable media into the “signal” kinds of media and the “hard drive, memory, CD-ROM, etc.” kinds of media. Keep in mind that I only had to sift through 100 or so documents manually to get these 10, whereas I had well over 100,000 hits from the pre-grant pub database that matched my text search.

  85. I know this is rude, but you should probably read the opinion before mouthing off about its stink.
    The Examiner had made a surprisingly good 101 rejection, which the PTAB fully affirmed.

    I see you didn’t read it. Page 1 — “[w]e affirm and designate our affirmance of the rejection under 35 U.S.C. 101 a new ground of rejection.” Do you see that part about “new ground of rejection.” It means that the PTAB isn’t using the Examiner’s reasoning.

    This is what the Examiner wrote in the appealed rejection: “[t]he Specification fails to express limit the recited “medium” to a statutory embodiment. Thus, the plain and ordinary meaning of the recited “medium” includes signals, carrier waves, etc.” Classic, USPTO conclusory non-analysis. The claim was to a storage medium – not a medium. Moreover, signals are not mediums. Electromagnetic signals (of the type describe in Nuijten) propagate through mediums.

    The PTAB gave the Applicant a gift by designating the affirmance as a new ground of rejection in light of their introduction of extrinsic evidence to further support the rejection. The PTAB really went out of their way to find pages worth of extrinsic evidence directly on point.
    Poorly written attorney boilerplate is extrinsic evidence of the meaning of a term to one skilled in the art? You have to be f ing joking. The Board admits (FN5) that they have no evidence of their meaning before 2002. Apparently, according to the Board, in 2002 the art-recognized meaning of “storage medium” was magically transformed to include transitory, propagating signals per se. Who made this transformation and why? The Board doesn’t say, but they point to a handful of misinterpreted published applications/patents – nearly all of which are silent as to transitory, propagating signal per se.

    The Board relies upon Nuijten for stating that a storage medium is a signal but this is what the Federal Circuit wrote in Nuijten: “Of course, such a signal could be stored for later use, but the result of such storage would be a “storage medium” containing the signal. Such a storage medium would likely be covered by allowed Claim 15 of Nuijten’s application, which is not before us on appeal.”

  86. A notion similar to this had been advanced previously (by me) as a way to help those who want to kick up the dust of ‘mental steps’ and who cannot seem to understand that awesome word: Anthropomorphication

  87. How about if we insert in the spec something like this:

    Wouldn’t it be simpler to claim “statutory subject matter, comprising:”? Or better still, “novel, inventive, statutory subject matter, comprising:”?

    It sure would save a lot of time at trial.

  88. How about if we insert in the spec something like this: “Applicant hereby expressly disclaims any interpretation the claims of this patent application or any patent issuing therefrom of subject matter that is not patent eligible under 35 USC 101?”

    That way the broadest reasonable construction must be limited to statutory subject matter and we avoid all of this sophistry.

  89. The Justices have made clear that no matter what, they will keep their fingers in the nose of wax of reading the implicit words of 101 through their exceptions which they will not allow to become dead letters (instant archive lesson recap: it was the judicial exceptions that would not be allowed to be turned into dead letters in the Prometheus decision. See 566 U.S. ____ (2012) at 21).

    You are welcome, Malcolm.

  90. And let’s not forget the 9-0 dance a jig baby Prometheus decision that declared that the WHATEVER approach of conflating 102/103/112 with 101 is not to be permitted.

  91. “For that reason, we hold that the description of one method for creating a seamless DWT does not entitle the inventor of the ’835 patent to claim any and all means for achieving that objective.”

    How can a judge use a judicial exception when there is this holding regarding 112? It is not right.

  92. NWPA,

    Do you think that we will finally see 6 defend his ‘abstraction theory’ in conjunction with the well-known engineering doctrine of the ladders of abstraction as he promised, or will he continue to run away?

  93. Your comment Red Monkey brings home the fact the courts are the ones that cause so much trouble—not the attorneys.

  94. That wouldn’t cover it Red. It would have to be statutory as of the date of the notice of allowance. They change the rules in the middle of the game all the time.

  95. Before you return to techdirt, perhaps you want to back up that statement with a factual, legally sound, and cogent reasoning.

    Or just append your blathering with some such proper clarification as ‘in my opinion, which has no factual, legally sound or cogent reasoning.’

    Thanks.

  96. As a policy making administrative ‘court’ – one would think that overturning Beauregard – would have been the most direct path to the PTO’s apparent policy goal.

    One can only surmise that PTO is keeping a low profile on the policy functions of PTAB, so as to keep up the ruse of objectivity at the court.

  97. Don’t be silly Ned. IBM’s objective was to have a claim drafted before the ridiculous decision in Nuijten allowed. Additionally, IBM would like for an infringer not to get around their patent by simply storing their software in DRAM, and then arguing that Dynamic RAM is transitory and the claim was amended to say non-transitory.

  98. Not to worry Max. The point is so good, it is worthy of a double posting.

    What part of “storage” don’t they understand?

    Moreover,the decision in Nuijten was absurd as well.

  99. The point is that “abstract” and preemption should not be used. They are ignoring our laws and our cases.

    Can any of you trol$$s make even a colorable argument that “abstract” should be used before 112?

  100. By analogy, suppose that an inventor created a particular fuel-efficient automobile engine and described the engine in such detail in the specification that a person of ordinary skill in the art would be able to build the engine. Although the specification would meet the requirements of section 112 with respect to a claim directed to that particular engine, it would not necessarily support a broad claim to every possible type of fuel-efficient engine, no matter how different in structure or operation from the inventor’s engine. The single embodiment would support such a generic claim only if the specification would “reasonably convey to a person skilled in the art that [the inventor] had possession of the claimed subject matter at the time of filing,” Bilstad v. Wakalopulos, 386 F.3d 1116, 1125 (Fed.Cir.2004), and would “enable one of ordinary skill to practice `the full scope of the claimed invention,’” Chiron Corp. v. Genentech, Inc., 363 F.3d 1247, 1253 (Fed.Cir.2004), quoting In re Wright, 999 F.2d 1557, 1561 (Fed.Cir.1993); PPG Indus., Inc. v. Guardian Indus. Corp., 75 F.3d 1558, 1564 (Fed.Cir.1996). To hold otherwise would violate the Supreme Court’s directive that “[i]t seems to us that nothing can be more just and fair, both to the patentee and the public, than that the former should understand, and correctly describe, just what he has invented, and for what he claims a patent.” Merrill v. Yeomans, 4 Otto 568, 94 U.S. 568, 573-74, 24 L.Ed. 235 (1876); see also Phillips, 415 F.3d at 1321 (“The patent system is based on the proposition that the claims cover only the invented subject matter.”); AK Steel Corp., 344 F.3d at 1244 (“as part of the quid pro quo of the patent bargain, the applicant’s specification must enable one of ordinary skill in the art to practice the full scope of the claimed invention”). Thus, a patentee cannot always satisfy the requirements of section 112, in supporting expansive claim language, merely by clearly describing one embodiment of the thing claimed. For that reason, we hold that the description of one method for creating a seamless DWT does not entitle the inventor of the ’835 patent to claim any and all means for achieving that objective.

  101. My point the other day, is that this preemption nonsense is a judicial created exception that should only be applied if in the narrowest of circumstances. The quote below makes it abundantly clear that 112 is supposed to police the scope of the claims and using “abstract” is again the SCOTUS ignoring the 1952 act and trying to govern patent law with their common law of judicial exceptions. The SCOTUS’s position is not defensible. Too bad the fed. cir. is packed with bozos.

    The trouble with allowing claim 21 to cover all ways of performing DWT-based compression processes that lead to a seamless DWT is that there is no support for such a broad claim in the specification. The specification provides only a single way of creating a seamless DWT, which is by maintaining updated sums of DWT coefficients. There is no evidence that the specification contemplates a more generic way of creating a seamless array of DWT coefficients. LizardTech, 424 F.3d 1336 (2005).

    Whether the flaw in the specification is regarded as a failure to demonstrate that the patentee possessed the full scope of the invention recited in claim 21 or a failure to enable the full breadth of that claim, the specification provides inadequate support for the claim under section 112, paragraph one.

  102. It is not as much as an affirmation as you think Michael, as the PTAB gave the designation because the case presented by the examiner was not sufficient. The PTAB arriving at the same conclusion does NOT mean that the holding was in any way a ‘gift.’

  103. given the state of the jurisprudence

    LOL – and who is to blame for that? You got it, the Supremes.

    Go ask Alice.

  104. Why not cut to the chase and have preambles that say “A computer readable medium of the type that is deemed statutory under 101 as of the filing date of this application, the medium comprising…”

    I suppose the downside is that, ironically,, given the state of the jurisprudence on this topic, that might trigger a 112 rejection for indefiniteness.

  105. I know this is rude, but you should probably read the opinion before mouthing off about its stink.

    The Examiner had made a surprisingly good 101 rejection, which the PTAB fully affirmed.

    The PTAB gave the Applicant a gift by designating the affirmance as a new ground of rejection in light of their introduction of extrinsic evidence to further support the rejection. The PTAB really went out of their way to find pages worth of extrinsic evidence directly on point.

  106. RB, from your past stance being against all patents, I summarily dismiss your implied notion of *trick*.

    But you are right in that any attempt at a distinction is merely formalistic game-playing. As clearly, a signal is a manufacture. The surrender here of ‘physical’ and ‘tangible,’ leaving only the bogus argument of ‘transitory’ hopefully will open the judiciary’s eyes.

  107. Malcolm’s observation is not completely meaningless.

    It continues to show the depths of his dissembling in order for him to pursue his anti-patent agenda.

  108. The ‘everything is transitory’ part is not even the real story.

    The real story is that the so-called transitory part that is being disallowed has greater durability than the anvils that the ‘creationist-minded’ would drop on their toes.

    Check out link to dailymail.co.uk

    Then realize that the fact that we have the picture means that the so-called ‘transitory’ medium of light (which has natural configurations that we decipher to learn about the distant bodies) has been transitory for 118,800 years – and that’s just for the immediate galaxy.

    As I posted, ‘transitory’ is a bogus argument. It is downright shameful that we allow such ignorance to be maintained as law.

  109. Whatever you think of software patents, this is a crazy rule that plainly violates repeated comments fro mthe courts not to proceeed “overly formalistic”.

    An invention basically is a *trick*, bith in case of product and process patents. Signals may not be “things”, but encoding definitely may be a “trick”.

  110. Interesting point – nothing lasts forever, so it’s all transitory. I’ve seen the PTO make a similar argument rejecting the use of the term “disposable” distinguish over the prior art, saying that everything is disposable.

  111. Irrelevancy is a speciality of Malcolm’s. He thinks that such spin, strawmen and dissembling is somehow ‘charming.’

    Maybe he got that notion from ‘Keeping It Real.’

    (Yeah, I know the inadvertent irony of his svckie is hilarious)

  112. like a creationist love to talk about the dinosaur

    Funny that – it is you that is doing the ‘fundamentalist’ denial of reality thing here Malcolm.

    Wake up to the modern world.

  113. LOL. Is it that hard for you to believe?
    Hmmm, for a guy that asks for patents or application numbers at least once a week on this blog, please let me say “PUT UP OR SHUT UP!”

    That’s because …. superbeings like you.
    Back in 2006, at least you made an attempt to engage in a real discourse.

    What’s …by email.”
    Thanks for not even attempting to respond to the comment. You have gotten quite good at that in 7 years.

    Also you can try explaining how your statement squares with the little known and very obscure fact that two identical “media” containing the exact same computer-readable information function differently depending on the computer I use to read the media
    Well, let’s just say your logic/premise is flawed from the very beginning. The two identical media do not function differently. They both store the media in the same way. The computer that retrieves the computer program may operate differently but the media doesn’t.

    What’s up that? Same structure. Different function. Doesn’t seem to be much “correspondence” there
    You live a sheltered life. A 10d nail holding up a 3 foot 2×4 functions differently than the same 10d nail holding up an engine block for a 57 Chevy. A timer for your Christmas tree lights works differently than if the timer was used to regulate flow of electricity in a power line. I can think of hundreds of examples where the same structure performs differently in different contexts/environments. Hence, your observation is MEANINGLESS.

  114. Ah, the goalpost has been moved slightly. Earlier you asserted that “a signal was not a medium”. That was the comment to which I was responding. Air and water are certainly “mediums.”
    What is your point? What does air and water being mediums have anything to do with a signal not being a medium? Are you saying air and water are signals?

    Perhaps you should Google “air as a storage medium” or “water as a storage medium” to confirm this
    Air or water are storage mediums capable of storing a computer program? Hilarious (or path etic).

    Certainly things can be stored in air or water.
    We are NOT talking about generic “things” … the claims refer to storing a computer program.

  115. You’re quite wrong about that. Prometheus was biotech. Myriad was biotech.
    Work on your logic and reading comprehension. My statement was about non-biotech things. Your thoughts about Prometheus and Myriad are not relevant to my statement.

    We’ve already seen many software patents “go somewhere”: down the t—let
    Many?????? Hardly. There isn’t a software application that I have had any dealings with in the last decade that is negatively impacted by any of the decisions of SCOTUS or the Federal Circuit.

  116. You’ve been annoyed at anything that isn’t biotech for at least 7 or 8 years now on this blog?

    You’re quite wrong about that. Prometheus was biotech. Myriad was biotech. Their claims were no less annoying and I was quite clear about that (as I will continue to be with the j*nk that Myriad continues to assert). In short, you’re very wrong about me.

    Let me clue you into something — software patents aren’t going anywhere.

    Maybe you’re right about some software patents. But I’m sure that you’re very wrong about others. We’ve already seen many software patents “go somewhere”: down the t—let, where they belong. And there’s more to come. You can take that to the bank (on State Street! LOL! <– some patent humor there). Golly, it’s been a long day.

  117. Air and water are not examples of a storage medium.

    Ah, the goalpost has been moved slightly. Earlier you asserted that “a signal was not a medium”. That was the comment to which I was responding. Air and water are certainly “mediums.” A “storage medium” is simply any medium in which something can be stored, i.e., a medium into which something can be replaced and then subsequently retrieved at any later moment in time. Certainly things can be stored in air or water. Perhaps you should Google “air as a storage medium” or “water as a storage medium” to confirm this.

    I seem to recall software applicants stating in their specifications that propagating signals expressly fell within their definition of a “computer-readable medium.”

    You recall that?

    Yes.

    Name 10 patent numbers.

    LOL. Is it that hard for you to believe? Is that because applicants of computer-implemented applications are super smart and science-y? Is that why they know so much about real estate and where Junior uses his credit card on spring break?

    your silly little rant means nothing

    Of course it means nothing to you, friend. That’s because you “know” that the “real problem” is the “no-nothings” at the PTAB who grant record numbers of computer-implemented j*nk every year but apparently it’s still not enough for technological superbeings like you.

    Nothing wrong with functional limitations so long as they correspond to a difference in structure, which is what happens when you store different programs on a storage medium.

    What’s the “structure” that corresponds to the function “Grandma needs to click twice before she can view the copyrighted video content that was forwarded to her by email” and how does it necessarily differ from the “structure” that correponds to the function “Grandma needs to click twice before she can view the non-copyrighted video content that was forwarded to her by email.”

    Also you can try explaining how your statement squares with the little known and very obscure fact that two identical “media” containing the exact same computer-readable information function differently depending on the computer I use to read the media (you know, two ordinary members of that giant computer genus that appears in all the softie woftie claims). What’s up that? Same structure. Different function. Doesn’t seem to be much “correspondence” there.

    your silly little brain

    You do realize that B-claims are construed as method claims because everybody knows there is no distinguishing “structure” there. Right? I mean, it’s just the Federal Circuit’s way of coddling the industry until they pull the plug because nobody can take the bullcr*p anymore.

  118. And I don’t think we were talking about apparatuses here. We’re talking products.
    We are talking about a component of an apparatus.

  119. I’m annoyed by those “no-nothings”, too.
    You’ve been annoyed at anything that isn’t biotech for at least 7 or 8 years now on this blog? Let me clue you into something — software patents aren’t going anywhere.

    What is sad is that Examiner 6K and Max Drei has been on this blog for just as long.

  120. “Nothing wrong with functional limitations so long as they correspond to a difference in structure, which is what happens when you store different programs on a storage medium.”

    Which is actually not what that section says. And I don’t think we were talking about apparatuses here. We’re talking products.

  121. “You recall that? Name 10 patent numbers.”

    Brosef they’re all over the place. He’s not your secretary. Have them do it.

    “Air and water are not examples of a storage medium. ”

    Unless MM specifically designates them as such in his specification for his awesome new air/water medium, which frankly I cannot wait to get my hands on. I hope it goes into production early next year!

  122. “how can applicants be claiming old mediums”

    Exactly like chemists claim things made out of old elements.

    LOL! Tr0 llb0y loves this joke so he keeps telling it, just like a creationist love to talk about the dinosaur and human footprints found side by side in a fossil.

    Maybe if Tr0 llb0y can find, say, 1000 examples of a chemist obtaining a claim to an old composition by reciting just the old composition and its new function we’ll be mildly persuaded that he’s onto something. That would, of course, still be a drop in the bucket compared to the vastly greater number of “exactly similar” claims that are rejected by the PTO with no hope of being saved or never filed in the first place because the attorney doesn’t want to waste the client’s time and money.

    we know because you made a major oops and voluntarily admitted such

    Awww, and we were all so desperately hoping that you’re s0 ci0path l y ing tendencies were on the mend.

    LOL. You know what to do, Tr0 llb0y. I think there’s a rolling donut over by the elementary school with your name on it.

  123. I seem to recall software applicants stating in their specifications that propagating signals expressly fell within their definition of a “computer-readable medium.”
    You recall that? Name 10 patent numbers.

    Whether my memory fails me or whether those applicants were incorrect, the question arises: how can applicants be claiming old mediums? Can I can claim “A new air or water medium, wherein said air or water medium comprising a propagating signal, wherein said propagating signal comprises instructions for a computer, wherein said instructions [insert new awesome kind of advertisement that you need to click through here]“? I don’t think that claim is eligible
    You need to read the case. The language was to a storage medium — not a transmission medium. Air and water are not examples of a storage medium. As such, your silly little rant means nothing.

    Because the medium is old and there isn’t any distinguishing structure recited in the claim to distinguish this new media from old media.
    From MPEP 2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). Nothing wrong with functional limitations so long as they correspond to a difference in structure, which is what happens when you store different programs on a storage medium.

    It’s quite magical, really.
    Only in your silly little brain.

  124. the no-nothings at the PTAB

    You mean the same “no-nothings” who are responsible for record numbers of thoughtlessly “examined” computer-implemented claims being granted year after year?

    The “no-nothings” who granted a claim on a method of rubbing your old finger in an old way on an old touch-screen for the old purpose of causing an old computer to perform an old task in an utterly predictable way? Those “no-nothings”?

    The guys who keep their heads as deep in the sand as possible so the PTO’s computer-implementin’ “clients” are kept as happy as possible until the Supreme Court says “Hey, you no-nothings, time to get your heads out of the sand already”?

    I’m annoyed by those “no-nothings”, too.

  125. how can applicants be claiming old mediums

    Exactly like chemists claim things made out of old elements.

    It’s called ‘configured’

    But you already knew that (and we know because you made a major oops and voluntarily admitted such).

    As they say, svcks to be you!

  126. a signal is not a medium.

    I seem to recall software applicants stating in their specifications that propagating signals expressly fell within their definition of a “computer-readable medium.”

    Whether my memory fails me or whether those applicants were incorrect, the question arises: how can applicants be claiming old mediums? Can I can claim “A new air or water medium, wherein said air or water medium comprising a propagating signal, wherein said propagating signal comprises instructions for a computer, wherein said instructions [insert new awesome kind of advertisement that you need to click through here]“? I don’t think that claim is eligible.

    But if the “medium” comprises silicon or magnetic particles and I mention that a computer exists that can “read” the media, somehow the information on the medium (i.e., the instructions for the computer) can be protected by a composition claim … or is it a method claim? Right, it’s a method claim. Because the medium is old and there isn’t any distinguishing structure recited in the claim to distinguish this new media from old media. So we pretend that it’s a method and then we don’t have to sweat these silly legal details. It’s quite magical, really.

  127. let people rely on copyright

    LOL – back to butcher the copyright/patent difference yet again, Malcolm?

    Seriously, you just have to know the difference between the two.

    Read slowly:
    C o p y r i g h t p r o t e c t s e x p r e s s i o n.
    P a t e n t s (by and large) p r o t e c t f u n c t i o n s a n d t h i n g s.

    Try again, and try not to look like an absolute doofus.

  128. Me thinks you meant non-transitory mediums rather than non-transitory signals.

    Methinks you need to reed In re Nuijten. Nuijten declares that transitory, propagating signals per se are not statutory. They say nothing about mediums. Also, a signal is not a medium. Unfortunately, the no-nothings at the PTAB never bothered to do any substantive research on the issue.

  129. What I think we need to do is to reform 271(b) and (c) to clarify that a seller is an infringer regardless that he knows of the patent.

    Or just get rid of patent claims drawn to instructions for computers and to computers running those instructions and let people rely on copyright to protect their awesome new methods for shoving advertisements in people’s faces or for “automatically” collecting data and “automatically” telling you to do what anybody would do if they had immediate access to the data and a brain with the processing power of a computer. I seem to recall the lovers of computer-implemented methods and associated products demanding very special protection from Congress and those protections were given to them, over the objections of many. Somehow that wasn’t enough, though. They want more. And if they don’t keep getting it, they threaten to take our special toys away.

    They can’t own the Internet, the computer, or the general concept of computing. So the next best thing is to control through any means necessary (patents or otherwise) who gets to use computing devices to access the Internet (or whatever you want to call the massive and exponentially growing cloud of unpatentable information), when you get to use those computers, where you get to use them, what you are allowed to see, and how many advertisements you have to wade through in order to see what you want to see. It’s not about “progress” in developing and manufacturing “new technology.” It’s about controlling information and how that information is made accessible through whatever existing “computing devices” happen to exist (be they “desktop,” “portable,” “handheld”, “wearable”, “implanted”, “mobile”, “levitating”, “disposable”, whatever). The unfortunate (but hopefully temporary) involvement of the patent system in this free-for-all is something that historians and law professors will surely continue to analyze for many years to come.

  130. FYI — the rejection was designated as a new grounds of rejection (i.e., the PTAB presented the rejection without the issues raised by the PTAB being briefed by Appellant).

    Why does the notion of the PTAB designating something as precedential without any input from Appellants smell like dead fish? Also, why does the PTAB designating an opinion as precedential on substantive law smell the same?

  131. “IBM did not offer any promise that the claim is limited to non-transitory signals”

    Me thinks you meant non-transitory mediums rather than non-transitory signals.

    P.S. Looking forward to my IBM appeals all coming back at least affirmed in part.

  132. MD Disclaim waves and signals to get within the ambit of useful arts? Because that is the line laid down by the Federal Circuit in the Nuitjen case?

    Pretty much, although the Federal Circuit’s decision had less to do with the “useful art” of developing methods for generating improved signals (still perfectly acceptable subject matter, last time I checked) than with the (poorly articulated) desire to keep greedy applicants from attempting to protect the underlying information carried by the “new” signals. In that regard, the Federal Circuit could stand to catch up with itself and do something about the endless parade of software j*nk that at least some of the judges seem increasingly desperate to defend.

    some overseeing court that makes the law on eligibility/patentability ever more needlessly complicated

    I can think of one pretty awesome solution. It has the dual effect of getting rid of a huge chunk of the PTO appeals backlog, too.

  133. 16. A machine readable storage medium having stored thereon a computer program for converting a slide show presentation for use with a non-presentation application, the computer program comprising a routine of set instructions for causing the machine to perform the steps of:

    Extracting a slide title for a first slide in a slide show presentation produced by a slide show presentation application executing in memory of a computer;

    Converting said first slide with said slide title into a raster image;

    Disposing both said slide title and said raster image of said slide in a markup language document; and

    Repeating said extracting, converting and disposing steps for a selected group of other slides in the slide show presentation.

    This is a rather quintessential piece of functionally claimed j*nk, regardless of the inherent failings of B-claims. Let’s ignore the fact that the claim recites “instructions for a computer to make the computer do something but I’m not going to ell you what the instructions are I’m just going to tell you what the computer will do after you figure out how to write the code which is something I can’t be bothered to disclose to you because, hey, I just want to own the concept after all this is America and I came up with this first unless someone else did in which case that previous description wasn’t enabled.”

    Let’s just look at the ridiculous “limitations” littering this sad mess.

    “a computer program for converting a slide show presentation for use with a non-presentation application” — what in heck difference could it make for patentability what use the converted presentation is intended for?

    For that matter what patentable difference could it possibly make whether the data being “converted” by the computer is part of a “slide show presentation” or any other type of presentation? Is “contextual” data associated with a “slide show presentation” fundamentally different from other kinds of data? Is a “slide show presentation” with one slide fundamentally different from data associated with a titled picture? Do computers struggle with rasterizing “slide show presentation” data in particular for some mysterious reason?

    Or is this yet another misguided attempt to claim the use of an old computer for processing information in a certain context, wherein the use of the computer in that particular context (converting data in a “slide show presentation” for “use” in a non-presentation” setting) is somehow “inventive” because … it’s never been described before (unless it has, in which case the applicant will simply narrow the context by reciting a more limited type of information for “conversion”)?

    Rasterization is old as the hills. Extracting data from a file to be rasterized is old as the hills. Presenting mark up documents is old as the hills. The intended use of the file or the “content” of the data (“slide show presentation”, “automobile blueprint”, “grandma’s DVD collection,” “junior’s credit card account access status”) doesn’t make a hill of beans of difference to the computer. Computers don’t care. Computers receive, store, process and transmit information — any information — that they are instructed to receive, store, process and transmit.

    How many more thousands of slices of this regurgitated pie is the PTO going to hand out before it comes to its senses?

  134. What is IBM’s objective here? They created B-claims in the first place to avoid the additional proofs required by 271(b) and (c).

    When one transmits software for use on a computer, who is the infringer? I think the end user is a direct infringer and the transmitter is an inducer or contributory infringer. So we see IBM trying to conduct another end run around 271(b) and (c).

    What I think we need to do is to reform 271(b) and (c) to clarify that a seller is an infringer regardless that he knows of the patent. He is liable in damages, or at least should be, to the same extent as the direct infringer

  135. Disclaim waves and signals to get within the ambit of useful arts? Because that is the line laid down by the Federal Circuit in the Nuitjen case? Henceforth, no carrier claim that lacks a disclaimer can go through to issue?

    What good fortune the EPO has; to be free to generate its own eligibility/patentability tests, without being told what they are by some overseeing court that makes the law on eligibility/patentability ever more needlessly complicated.

  136. Disclaim waves and signals to get within the ambit of useful arts? Because that is the line laid down by the Federal Circuit in the Nuitjen case? Henceforth, no carrier claim that lacks a disclaimer can go through to issue? Bonkers.

    What good fortune the EPO has; to be free to generate its own eligibility/patentability tests, without being told what they are by some incompetent meddling overseeing court that makes the law on eligibility/patentability ever more needlessly complicated.

    Only asking.

  137. Interesting to note the position shies away from “physical” and “tangible” and relies on “transitory.” (as I have posted in the past).

    Interesting too that “transitory’ is a bogus argument, as many things considered non-transitory have ‘shelf-lives’ far far far shorter than the ‘transitory’ things that are visibile on a clear night.

    I will add another interesting note – as shared by Hal Wegner: PTAB does not reference ANY Supreme Court cases in this decision.

  138. More form over substance jibberish. The beauracrats are overthrowing the technology people at the PTO.

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