PTO’s Current Examination Standards for Applying Bilski

DATE: January 7,2009
TO: Technology Center Directors Patent Examining Corps
FROM: John J. Love
SUBJECT: Guidance for Examining Process Claims in view of In re Bilski

Recently, the Court of Appeals for the Federal Circuit issued an opinion affirming a final decision by the Board of Patent Appeals and Interferences sustaining a rejection of claims because they were not directed to patent-eligible subject matter under 35 U.S.C. § 101. See In re Bilski, 545 F.3d 943, 88 USPQ2d 1385 (Fed. Cir. 2008). The court's opinion clarified the standards applicable in determining whether a claimed method constitutes a statutory "process" under § 101. Office policy is consistent with the court's opinion in Bilski.

We are presently studying the full ramifications of the court's clarification and other recent developments in the law. In view of the Bilski decision, the guidelines are being redrafted to reflect the most current standards for subject matter eligibility. Until the guidelines are completed, examiners should continue to follow the current patent subject matter eligibility guidelines appearing in MPEP 2106, with the following modification.

As explained in a memorandum dated May 15, 2008, entitled "Clarification of 'Processes' under 35 USC § 101", a method claim must meet a specialized, limited meaning to qualify as a patent-eligible process claim. As clarified in Bilski, the test for a method claim is whether the claimed method is (1) tied to a particular machine or apparatus, or (2) transforms a particular article to a different state or thing. This is called the "machine-or-transformation test". It should be noted that the machine-or-transformation test from Bilski is slightly different from the test explained in the May 15 Clarification memo, which was based on the Office's interpretation of the law prior to Bilski.

There are two corollaries to the machine-or-transformation test. First, a mere field-of-use limitation is generally insufficient to render an otherwise ineligible method claim patent- eligible. This means the machine or transformation must impose meaningful limits on the method claim's scope to pass the test. Second, insignificant extra-solution activity will not transform an unpatentable principle into a patentable process. This means reciting a specific machine or a particular transformation of a specific article in an insignificant step, such a data gathering or outputting, is not sufficient to pass the test.

For guidance, examiners are encouraged to consult their managers and to consult additional training materials as they are developed.

[Read the memo]

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

53 thoughts on “PTO’s Current Examination Standards for Applying Bilski

  1. Currently, writing a claim that fails the machine or transformation test in Beauregard format would allow it to pass the 101 hurdle, right?

    The Beauregard claim (claim 42) in Ex parte Bo Li is evidence of this

    This seems like complete form over substance.

    Other cases I have read after Bilski punt the Beauregard issue. The Fed. Circuit punted the question to the PTO in In re Comsiskey (Jan 09) and the BPAI punted the same issue in Ex parte Atkin (Jan. 09).

    I think everyone can agree that we do not want the law to be magic words. But isn’t that exactly where the law is today?

    I can understand the sentiment that this likely spells doom eventually for Beauregard claims. However, until then, it would be improper for an examiner at this point to reject a Beauregard claim on 101 grounds, right?

  2. Didn’t you know, Moonbeam, that according to PTO procedure a claim gets a PA search and a “fullblown patentability analysis” regardless of how the examiner sees the 101 issue? Well, kinda. I got one back last week where the examiner rejected the claim under 101 and 112 for similar reasons, and then stated that he couldn’t do a search because the claims were indefinite – despite being essentially identical to the Beauregard claims that were not indefinite or non-statutory. And then he bounced the means for systems claims as indefinite because apparently a computer executing a flow chart is not considered definite means. And then the Beauregard claims were rejected because they claimed computer instructions (read as software) embedded on the computer readable memory device, and the software was taken as descriptive matter (despite specifically claiming computer instructions executable by a processor). At least there we got the search and 103 rejection.

    My problem is that Bilski, etc. are being interpreted so broadly, and other subterfuges are being used, that it is sometimes almost impossible to get software claims allowed, regardless of their merit under 102/103.

  3. I kind of agree with Mooney here. Based on Langemyr, Tieu, and the rest of latest BPAI “trivial recitation of computer parts” rulings, I would say adding ram, or any other general/commodity storage would leave the claim patent ineligible.

    The latest trend is to get rid of magic words on a case by case basis, and the 112-6 rulings and 101 rulings are exemplary of that trend. If you’re trying to patent software that runs on a general purpose computing device, it shouldn’t matter whether you add a keyboard, a display, some ram, a hard drive, a green casing with a semi-clear window, or power cord — the additions of those physical parts are neither novel nor required for the execution of the process. They’re just trivial recitation of magic words, and if your prosecutors are adding them to your claims and happen to be getting by examiners, just wait a few years when you get sued for malpractice. Magic words are the stupidest thing to come to patent law, and I welcome their death.

  4. BB “Didn’t you know, Moonbeam, that according to PTO procedure a claim gets a PA search and a “fullblown patentability analysis” regardless of how the examiner sees the 101 issue?”

    That’s a waste of resources.

  5. Moonbeam:
    “According to the anti-Bilski pro-software crowd, such a claim MUST be treated with great respect and given the benefit of a search and full-blown patentability analysis . . .”

    Didn’t you know, Moonbeam, that according to PTO procedure a claim gets a PA search and a “fullblown patentability analysis” regardless of how the examiner sees the 101 issue?

    This is part of the compact prosecution requirements, which, I realize, a lot of examiners, like IQ=6, pretty much ignore.

    Which brings us back to Boundy’s points. Just as the PTO applies/ignores/amends the laws as they DW please, so to do the examiners apply the regulations and examining guidelines any way that suits them.

    Speaking of suits, I have long held that there ought to be causes of action for applicants against examiners personally for gross negligence so the applicants can recover their legal fees in appealing id1ot rejections and so we can weed out the worse examiners by driving them into bankruptcy. It’s the same way malpractice works against the worse lawyers. It’s only Darwinian, man.

    Posted by: Babel Boy | Mar 06, 2009 at 02:32 PM

  6. Moonbeam:
    “According to the anti-Bilski pro-software crowd, such a claim MUST be treated with great respect and given the benefit of a search and full-blown patentability analysis . . .”

    Didn’t you know, Moonbeam, that according to PTO procedure a claim gets a PA search and a “fullblown patentability analysis” regardless of how the examiner sees the 101 issue?

    This is part of the compact prosecution requirements, which, I realize, a lot of examiners, like IQ=6, pretty much ignore.

    Which brings us back to Boundy’s points. Just as the PTO applies/ignores/amends the laws as they DW please, so to do the examiners apply the regulations and examining guidelines any way that suits them.

    Speaking of suits, I have long held that there ought to be causes of action for applicants against examiners personally for gross negligence so the applicants can recover their legal fees in appealing id1ot rejections and so we can weed out the worse examiners by driving them into bankruptcy. It’s the same way malpractice works against the worse lawyers. It’s only Darwinian, man.

  7. “What David Boundy correctly points out is that John Love’s memo explicitly ignores the controlling rule and law. ”

    QQ say what?

    “very dangerous”

    Nah. You guys routinely accuse us of not following the law, and yet you feel like it is “dangerous”? If it were dangerous I would have so many women on me right now, at this very second, have you seen evil kinevil? Yet, I have no women on me right at this second. Note here that any hot lawyer chics reading can contact me at examiner6k@yahoo.com and maybe I will have a few women on me tomorrow.

    “That evidences an attitude of the “end justifies the means” which David, myself (who probably has more experience than you are old), and other attorneys find repugnant and offensive, especially when it comes from government employees.”

    It’s true, lawyers do like to qq about gov employees. I can’t argue with you there.

    “I’m not saying there aren’t problems with the current patent system, or the Rules or laws (including court cases) that govern it.”

    Of course you can’t, because there are. We account for some of these by ignoring inane qq.

    Go to the DMV, you’ll get same x1000. You MIGHT get someone in the higher ups to listen to your valid qq. Then they’ll tell you why they want to fight your valid qq anyway. Then you stand your ground and end up not having to pay a 10$ fee because they tire of dealing with you.

    “logically “flay””

    He hasn’t put forward any “logic” as to why the love memo is even covered by omb’s policy. He makes the naked assertion that it is covered when it is plainly not covered. Naked assertions are ftl, but I’d guess you might learn that after it hits you in the pocket book for the umpteeth time. Apparently all his exp that is longer than my lifetime hasn’t taught him the basics yet. He can’t point out any future effect that the doc has, and he can’t point out how it would even be covered by the stated intent of the bulletin. Because it doesn’t have one, and isn’t.

    And the number one reason that his qq fails is that he sure as heck can’t point out any good reason for anyone in the administration, who has a war to run and an economy to fix, to be worried about how memo’s are made public. I as a citizen would be appalled if such a thing were to take place, and you should be too. This stuff is apparently enforced the same way my boss enforces me filling out the little bubbles on your OA’s. He says “Come on fill out the bubbles” and I fill them out and then forget on the next case.

    Can anyone here can pop their mouth with their thumb? Insert that here. Thanks.

  8. 6,

    You’re in over your head, and you don’t even realize it. That you a need to resort to profanity also doesn’t impress me one iota.

    You remind me of the “power corrupted” cops in Magnum Force. As Harry Callaghan astutely pointed out, “a man needs to know his limitations.” You obviously don’t know yours, as David Boundy has amply demonstrated. I’m almost ready to get out my popcorn while I watch the further bloodletting.

    What David Boundy correctly points out is that John Love’s memo explicitly ignores the controlling rule and law. That evidences an attitude of the “end justifies the means” which David, myself (who probably has more experience than you are old), and other attorneys find repugnant and offensive, especially when it comes from government employees. It would also offend my dad, a former patent exampiner and patent attorney who taught me well that the “means” does matter. You obviously accept the position that the “end justifies the means.” That is a very dangerous attitude for a government employee like you to express.

    I’m not saying there aren’t problems with the current patent system, or the Rules or laws (including court cases) that govern it. But as David very correctly points out, adhering to a process governed and controlled by rules and laws matters if you want an orderly and objective resolution of issues, as opposed to one that simply ignores those rules and laws because one doesn’t like them and thus resorts to a subjective, arbitrary, and capricious process. You apparently prefer the latter. Not a good attitude for a government employee.

    I’ll leave it to David Boundy to further logically “flay” you if he chooses. Just remember I warned you.

  9. “In terms of Nobody Asked’s example claim, yes, I would give that a 101 rejection, because the determining step is the only significant step, and it doesn’t require a machine and doesn’t perform an eligible transformation.”

    What happens when the determining step is novel and non-obvious? The determining step was not claimed in the abstract it requires both a machine and transformation of matter. Therefore it is patentable subject matter. It is a waste of economic resources to provide 101 rejections such as this, focus on the “significant step” and require that it include language that describes the invention in a novel/non-obvious manner.

  10. The issue is that practitioners file method claims in apps like these for precisely the same reason that Bilski says they should be rejected under 101: because you don’t want the method to be limited by what is performing the method.

    In terms of Nobody Asked’s example claim, yes, I would give that a 101 rejection, because the determining step is the only significant step, and it doesn’t require a machine and doesn’t perform an eligible transformation.

  11. “What difference does it make? I mean, other than the fact that you have a better chance of getting a crxp claim allowed if there is one less test for weeding it out.”

    One is using the rules and law correctly and one is making a crxp rejection. You like to say the applicant and attorneys are the cause of problems, this line of (or lack of) reason shows that in response to crxp claims the PTO issues crxp rejections.

  12. The date of the memo is before the Inauguration.

  13. “instructions from the President of the United States proves my main point, doesn’t it.”

    Yes, David, it does. Except for the part about curing the backlog. If in fact we troubled with every triffling detail sent down from on high we’d have twice the backlog we do now. But that is besides the point here. To be clear, I’m not quite sure if a bulletin counts as the “rule of law” it seems more like “instructions from your boss”. Perhaps you have some further information on that?

    But yes, my “contempt for the rule of law”, rule of law that has gone horribly awry over the course of the last century or so is probably what really sticks in your craw. Maybe if we tried to make the law worthwhile then people like me wouldn’t have such contempt, then you wouldn’t have anything stuck in your craw. Get to work on making the law worthwhile before bringing up ridiculousness like you’re crying about here would you please?

    Anyway, to the issue at hand.

    “guidance document as an agency
    statement of general applicability and
    future effect, other than a regulatory
    action (as defined in Executive Order
    12866, as further amended), that sets
    forth a policy on a statutory, regulatory,
    or technical issue or an interpretation of
    a statutory or regulatory issue.”

    Love memo is not an agency statement of general applicability and future effect. What is its future effect? It has none. I don’t even think the memo sets forth an office interpretation of the statute, it sets forth the bilski courts interpretation.

    “Third, I didn’t complain about the “good faith effort” to create the document, I complained that it had not been vetted and was not made public using the procedures that the President instructed. Secret rules are unconstitutional, violate the APA, and violate the President’s instructions. Agencies have to tell the public what rules they’re applying.”

    Oh but you did complain about the effort, and that effort does in fact seem to be in good faith, so you are in effect complaining about the good faith effort. The office did not make a secret rule, the office is merely following the (bilski court’s) law. It is no secret rule, it is a very public rule/law. And it is no secret that the office is bound by the Bilski court.

    “The carve-out is for “legal advisory opinions.” The term “legal advisory opinion” is a term of art, meaning a memorandum discussing one particular set of facts. You’re not a lawyer, you wouldn’t be expected to know this. ”

    Actually I kind of figured that was something along those lines, but isn’t Love a memo discussing one particular set of facts? The facts that the Bilski court held in a certain manner and the law to be followed was in fact something that was different than what lawyers had foisted upon us after ATT/SS?

    As an aside, you are a victim of your own associates, not the office. We’re cleaning up your mess.

    “Once you put it all together, the Love memo is a “guidance document” that requires certain procedures.”

    Put all of what together? All it does is state what the Bilski court set forth. And, I might add, it has ZERO effect. I am not bound by it. It will not affect my interpretation of Bilski and I will apply Bilski as I read Bilski, not the love memo. Some examiners might find it useful as a recap, and that’s fine but it doesn’t amount to an effect of the memo, as opposed to the effect of Bilski itself.

    “That doesn’t mean unenforceable, it just means that enforcement comes from the White House instead of from a court. ”

    Actually I knew that, and that’s why everyone will ignore it. Because the White house could give less of a sht if a memo TO EXAMINERS went through a special procedure before being issued.

    Doll is a busy man of late, I don’t want to bother him with this triffling matter of inconsequence.

    Be a man David, you can do it.

  14. CPC “The sample claim fails 112. Reject it as such. Don’t use 101. Make the applicant claim the invention but don’t say the invention is not patentable subject matter because the claim is not definite.”

    What difference does it make? I mean, other than the fact that you have a better chance of getting a crxp claim allowed if there is one less test for weeding it out.

  15. 6, four comments.

    First, your comment “I wouldn’t mind one little bit if Love outright ignored” instructions from the President of the United States proves my main point, doesn’t it. Contempt for the rule of law is the fundamental problem here, isn’t it.

    Second, you misapprehended a key fact. The definition of “guidance document” is “an agency statement of general applicability and future effect” other than a CFR regulation, which the Love memo clearly is. The carve-out is for “legal advisory opinions.” The term “legal advisory opinion” is a term of art, meaning a memorandum discussing one particular set of facts. You’re not a lawyer, you wouldn’t be expected to know this. This error doesn’t show bad intent, only your willingness to boldly go beyond your competence and knowledge. Once you put it all together, the Love memo is a “guidance document” that requires certain procedures.

    Third, I didn’t complain about the “good faith effort” to create the document, I complained that it had not been vetted and was not made public using the procedures that the President instructed. Secret rules are unconstitutional, violate the APA, and violate the President’s instructions. Agencies have to tell the public what rules they’re applying.

    Fourth, you seem to misapprehend the meaning of “no judicial review.” That doesn’t mean unenforceable, it just means that enforcement comes from the White House instead of from a court. You might ask John Doll about whether he considers this Bulletin enforceable or not. Be sure to ask about events of the last two weeks.

  16. I don’t doubt “bad” claims are presented for examination. The sample claim fails 112. Reject it as such. Don’t use 101. Make the applicant claim the invention but don’t say the invention is not patentable subject matter because the claim is not definite.

    Is this a better claim:

    A method for transfering audio content comprising steps of:
    receiving a first audio file in a storage device;
    receiving a second audio file in a storage device;

    storing said first and second audio files in a memory in said storage device;

    using a novel/non-obvious algorithm to determining which of said first or second audio file is to be forwarded by said storage device to a playback device, wherein the storage device will delete the file which is not forwarded from said memory in said storage device.

  17. “YES. The claim meets 101 standards under Bilski.”

    There you have it: even though storing and deleting data are ancient processes, all you need to do is wave your hands and throw in a step exactly like this: “determining if [x] is true”. It doesn’t matter that “determining if [x] is true” is an utterly abstract step and represents the only possible contribution by the inventors. According to the anti-Bilski pro-software crowd, such a claim MUST be treated with great respect and given the benefit of a search and full-blown patentability analysis. Why? Well just because. Surely nobody expects these software prosecutors to start drafting real claims that actually describe the structural features of these inventions. After all, nobody would want to license those! BOo hooo hoo hoo hoo hoohoo.

    “Clearly the example claim is for discussion and would/should not be presented for examination”

    ROTFLMAO!!!!!! Clearly even worse claims are presented to the PTO routinely, which is why we are having this discussion.

  18. I deal with those like boundy day in and day out, he’s not super human. He may be 100% right in this specific instance. Maybe I didn’t make myself clear, even if he is I wouldn’t mind one little bit if Love outright ignored it with it fully in “effect”. Worthless legislation like that which purportedly gives OMB the authority to require other agencies to have better guildline issuance procedures is half the reason our country is in the sorry shape that it is right now. The other half is worthless court decisions. It is as if you have to go to SCOTUS to get real lawful judgement because the lower courts are intent on fing things up.

    Also, you don’t seem to understand. I laugh at his issue not only because there is a good chance that whatever he is qqing about is hogwash (just read his memo from OMB I doubt even they know wtf it says), but because his qq is woman like or, more likely, child like. An agency goes out of its way to provide some guidance on a topic and he has the bals to cry about them making a good faith effort to HELP HIM? What kind of childish bulsht is that?

    Be a man Boundy.

    Oh wait wait wait:

    “G. Judicial Review”

    That is probably why it is ignored Boundy. By everyone. Everywhere.

    There’s a million of those things in the memo.

    “Congress, and other authorities
    have emphasized that rules which do
    not merely interpret existing law or
    announce tentative policy positions but
    which establish new policy positions
    that the agency treats as binding must
    comply with the APA’s notice-andcomment
    requirements, regardless of
    how they initially are labeled.”

    That Love memo is not binding. Heck, the MPEP isn’t 100% binding though we often treat it as such.

    “Section I(4) also clarifies what is not
    a ‘‘significant guidance document’’
    under this Bulletin. For purposes of this
    Bulletin, documents that would not be
    considered significant guidance
    documents include: Legal advisory
    opinions for internal Executive Branch
    use and not for release (such as
    Department of Justice Office of Legal
    Counsel opinions)”

    Oh look. Legal opinions are not “significant guidance docs” if not intended to be released to the public. Maybe I missed the “public” in the “To: ” field of the love memo. Maybe you feel like it is a “guidance doc” instead of a “significant guidance doc”?

    Idk, but it looks like Boundy was ignored irl because his complaint has no merit. If I didn’t get such a kick out of poking holes in his laudable assertions I’d ignore them too.

  19. A method for transfering audio content comprising steps of
    receiving a first audio file in a storage device;
    receiving a second audio file in a storage device;

    storing said first and second audio files in a memory in said storage device;

    determining which of said first or second audio file is to be forwarded by said storage device to a playback device, wherein

    the storage device will delete the file which is not forwarded from said memory in said storage device.

    Would this be enough to pass Bilski?”

    YES. The claim meets 101 standards under Bilski. Mooney seems stuck in the term determining which is a 112, 102 or 103 issue. Clearly the example claim is for discussion and would/should not be presented for examination, but if it were the examiner should move past Bilski and adress the claim under 112.

  20. “I made a post about how ridiculous that memo is but PO decided it didn’t want to post it. Maybe this one will post.”

    6,

    You would be wise to realize you’re out of your league and completely outgunned by David Boundy. You can argue with David all you want, but you’re only going to look more foolish in the end. David knows exactly what he’s talking about, and far more than you do. The choice is yours whether you want to engage in a futile debate with him that you’re not going to win, especially in the eyes of those who look at this blog and know that David has far more expertise on this subject than you do. Again, the choice is entirely yours.

  21. MM,

    You still do not give any sort of guidance what would constitute patentable subject matter for 101 purposes. The only thing I can see from your analysis is your that most software/computer claims are garbage because they are embodied on a computer or software.

    What should be the bar then to distingish whether or not something should be patentable?

    Is Bilski enough in your view, or should it be expanded towards some other type of tangible test for 101 purposes?

    If so, how would you draft such a test?

  22. “Moonbeams is congenitally deformed in a way that prevents him from understanding the difference between 101 and 103 issues”

    On the contrary, Babel Boy. You and your ilk are addicted to magic words. You truly believe that “anything under the sun made by man” is patentable. That’s never been reality.

    For 101 purposes, it is perfectly acceptable to ignore claim limitations if they are nothing but window dressing and irrelevant to what everyone — including the attorney and client with their heads buried deeply in the sand — understands is the “true” alleged invention.

    You may not like this regime. That’s tough.

  23. “I need to see the claim and see what steps are recited.”

    Mooney needs it written out in claim form before he can declare it a facially invalid piece of cr#p.

  24. “A method for transfering audio content comprising steps of
    receiving a first audio file in a storage device;
    receiving a second audio file in a storage device;

    storing said first and second audio files in a memory in said storage device;

    determining which of said first or second audio file is to be forwarded by said storage device to a playback device, wherein

    the storage device will delete the file which is not forwarded from said memory in said storage device.

    Would this be enough to pass Bilski?”

    It shouldn’t be. The invention is “determining.” You can’t patent a “determination” merely by reciting the word “determining.”

    This sprt of claim perfectly embodies the laziness and arrogance of the software/computer patenting bar. Give us all a break. Learn how to draft claims or better yet find some clients that actually invent patentable subject matter instead of abstract wanking.

  25. “what if the claim was to a method of finding a target by reducing a certain kind of noise in a signal. It is just as much manipulation of numbers as the example. Is it really not patentable?”

    I need to see the claim and see what steps are recited.

  26. What David Boundy said.

    Precisely.

  27. “And that fundamental disagreement about how we all can know what the rules are is why things at the PTO are so crazy – why it’s so impossible to reach agreements, why there is a backlog, why the patent bar so distrusts so many PTO employees.”

    The courts created that mess by overly complicating the patent laws to the point where many people don’t know WTF is going on. They should correct the mess.

    Take for example your document above. Your OMB memo is ridiculous. They can’t even decide on what the definition of two simple words is. Can you point me to the actual definition of “significant guidance document”? No, because they keep redefining it and including HUGE loopholes.

    I made a post about how ridiculous that memo is but PO decided it didn’t want to post it. Maybe this one will post.

  28. Tazistan

    Man, did you hit it. Moonbeams is congenitally deformed in a way that prevents him from understanding the difference between 101 and 103 issues. It’s fascinating. I’ve been ’round and ’round with him over this issue and the best he can do is get weird. wired, and abusive.

    Now you’ve gone and rattled his cage, too. Good luck.

  29. 6, you’ve just encapsulated my fundamental observation about why the PTO is broken.

    For every other actor in the U.S. legal system, the “law” is what exists in writing, as written by the folks with authority to opine. In most cases, at the end of the day, the law is what the courts say it is, because the core of the “judicial power” of Article III of the Consitution is the power to interpret. We have mechanisms to correct courts if the courts get it wrong (legislative, constitutional amendment, appeal, overrule), but everyone recognizes that we can only proceed in an organized and efficient way if we all agree on how the law is determined, and in the U.S., that’s the courts. It’s been that way in the U.S. since Marbury in 1803, and in common law jurisdictions since the late 1100’s.

    But at the Patent Office, “the law is whatever I say it is or what I think it should be. Don’t bother me with no stinkin’ court or written rules.” You put it in your posting, and I get it in a majority of the Office Actions I respond to.

    And that fundamental disagreement about how we all can know what the rules are is why things at the PTO are so crazy – why it’s so impossible to reach agreements, why there is a backlog, why the patent bar so distrusts so many PTO employees.

    Laws exist so everyone knows what to expect of each other, so we can be efficient. The reason PTO proceedings are so protracted and inefficient is right there in your post – because PTO personnel “laugh at the judiciary.”

    6, your attitude toward the law – when multiplied by several thousand others like you, including Mr. Love – is the problem at the PTO. Fix that, and the backlog disappears in a year.

  30. MM,

    You say in view of my proposed claim, “If that is the totality of the “invention”, it is an unpatentable invention.”

    So in effect you apply a Black Swan test to a claim in order to determine whether or not it is inventive.

    A method for transfering audio content comprising steps of
    receiving a first audio file in a storage device;
    receiving a second audio file in a storage device;

    storing said first and second audio files in a memory in said storage device;

    determining which of said first or second audio file is to be forwarded by said storage device to a playback device, wherein

    the storage device will delete the file which is not forwarded from said memory in said storage device.

    Would this be enough to pass Bilski?

  31. “You want to laugh the same way you laughed when GSK filed their complaint?

    LOL”

    I’m still laughing at them. And, I’m also now laughing at the judiciary for seriously considering what the DC said.

  32. MM: “The point is that there is NO structural recitation that can save a claim that recites the steps listed in this hypothetical claim. There is no transformation other than abstract manipulations of numbers and/or information.”

    The claim was chosen to be extremely simple in order to isolate the issues. You seem to look at everything through the lens of 103, no matter what is being discussed. I bet when you read about the classic example of the pencil having an eraser you couldn’t cope at all!

    Seriously, what if the claim was to a method of finding a target by reducing a certain kind of noise in a signal. It is just as much manipulation of numbers as the example. Is it really not patentable?

  33. 6, you stopped reading the Bulletin too soon, and you asked too few questions. The Bulletin covers two classes of guidance. As you note, it does cover external guidance to the public. It also covers intra-agency internal guidance:

    Guidance documents often come in a variety of formats and names, including… manuals, circulars, memoranda, … and the like.

    Notably, the Department of Commerce has a list of guidance documents that are covered by the Bulletin – the MPEP is on that list, even though nominally only internal. A number of the provisions of the Bulletin would make no sense if they were only external, for example, the requirement that agency employees obtain “supervisory concurrence” before acting contrary to a guidance document. So I think you can rest any concerns on that issue.

    In any event, this Bilski memo would fall in your category of external guidance, wouldn’t it – it affects what I should and shouldn’t do to get a patent issued.

    Yet, surprisingly, Mr. Love’s office has made several amendments to the MPEP without following the President’s instructions for necessary procedures – this is merely one more.

    And it seems you’re arguing that because the Bulletin covered the MPEP, somehow the tank ran dry? So that other stuff, including the Bilski memo should not be covered? Please explain?

  34. What if we re-write to get:

    “A method for processing data comprising the steps of:
    receiving a first data value in a RAM;
    receiving a second data value in the RAM;
    determining by a processor which of said first and second data value is to be forwarded to a device.”

    I think that this wouldn’t survive 101 in light of by Bilski, as currently applied at the PTO.
    However, the same subject matter could be rewritten as a Beauregard claim, and apparently Beauregard is still good law (even at the PTO).

    We’re getting into a form-over-substance problem, and I think we’d be better off getting consistent.
    From a policy standpoint, I think we need a firm statement from Congress and/or the Supremes as to whether pure software is patentable subject matter.

  35. Nobody Asked: “A method for processing data comprising the steps of:
    receiving a first data value;
    receiving a second data value;
    determining which of said first and second data value is to be forwarded to a device.”

    There are no magic words that can be added to this claim to turn it into patentable subject matter. If that is the totality of the “invention”, it is an unpatentable invention.

    Period. The world moves on. Innovation continues.

  36. e8k “Thus, to qualify as a § 101 statutory process, the claim should positively recite the particular machine to which it is tied, for example by identifying the apparatus that accomplishes the method steps, or positively recite the subject matter that is being transformed, for example by identifying the material that is being changed to a different state.”

    Merely identifying an apparatus for carrying out an abstract process, or identifying a material is “changed to a different state” should not suffice to turn a claim from a pile of abstract crap into 101 matter. The relationship of the machine and/or the transformation to the **invention** needs to be significant. In other words, a “A method for obtaining data about a future event comprising obtaining a time coordinate, optimizing a future time coordinate with a coordinate window, ranking said coordinates into past, present and future coordinate, and outputing a future coordinate,” should not become patentable under 101 merely by reciting a step of “wherein said obtaining and optimizing steps are carried out by a dedicated data-obtainer comprising a computer processor.”

    The point is that there is NO structural recitation that can save a claim that recites the steps listed in this hypothetical claim. There is no transformation other than abstract manipulations of numbers and/or information.

    That’s not a transformation we can believe in, my friends.

  37. …just one more reason to keep those continuations coming.

  38. “If you think you have a case big boy, take him to court. I want to lol @ u.”

    You want to laugh the same way you laughed when GSK filed their complaint?

    LOL

  39. “David Boundy”

    Are you daft or what? What does that OMB memo have to do with issuing good guidance blah blah bullsht from the pto? We issue you a whole freaking tome of info called the MPEP. Are you complaining that it isn’t big enough or what?

    I should note that this memo at the top of the thread is not to the public and was not intended to be such. You can’t bich about his memo since it is clearly not governed by rules for guidance to the public and that is what it appears that the first omb memo concerns.

    If you think you have a case big boy, take him to court. I want to lol @ u.

  40. “John Love broke the law again.”

    David,

    Thanks for your usually astute comment. Why am I not surprised by you saying this about Love’s memo? The USPTO has become a “rogue” agency in terms of following the law (statutory or case law), it’s own Rules, or those laid down by the Executive branch. The whole fiasco now with how the BPAI applies (or more correctly, misapplies) Bilski is one clear indication of an agency out of control. We can only hope the Federal Circuit will finally bring sanity (and reason) to this area of patent law before the train completely goes off the tracks.

  41. examiner 8K,

    Being on the other side of the wall, it would be helpful for you to idenify in a set of hypothetical claims what would pass Bilski and what wouldn’t. I am not asking this question as a troll, I am asking this question as to better understand what would pass muster if I was having an application examined in front of you.

    For example, if I started with the following method claim, how could I amend it so that it would pass muster under your analysis. Note, I am making this claim up:

    A method for processing data comprising the steps of:

    receiving a first data value;
    receiving a second data value;
    determining which of said first and second data value is to be forwarded to a device.

    How would you advise the pro se applicant in this situation to overcome the 101 rejection via amendment. Lets assume that the 112, 102, and 103 issues don’t apply.

  42. “I think the office and the courts are applying Bilski too broadly”

    Can you give an example of a court decision that has applied Bilski too broadly?

  43. John Love broke the law again. I have had at least one personal conversation with Mr. Love about this instruction from the Executive Office of the President, and it has been noted in many letters –

    Executive Office of the President, “Final Bulletin for Agency Good Guidance Practices,” OMB Memorandum M-07-07, link to whitehouse.gov fy2007/m07-07.pdf (Jan. 18, 2007), 72 Fed. Reg. 3432, link to edocket.access.gpo.gov (Jan. 25, 2007)

    In that conversation, Mr. Love stated that he had done nothing to implement the President’s instructions – he chose to simply ignore it. This January 2009 memo is yet another breach of the process required by the President

    One of the biggest problems at the Patent Office has been the refusal of John Love, James Toupin, and the two legal departments of the PTO that report to them to simply follow the law (including procedural law), and to instruct PTO employees that they must follow procedural law.

    John Love retired last week. Perhaps last Friday will turn out to be a day that a page was turned, and the senior PTO officials that took oaths to “see that the laws are faithfully executed” will begin to do so.

  44. But will the new guidelines take a position on whether a general-purpose computer, when programmed such that it, a la Alappat, becomes “a new machine,” also becomes a Bilski “particular machine”? Or whether the physical transformations that occur in the transistors of a programmed processor/memory transform the computer into a “different state or thing”?

  45. The fact that the Fed Cir is likely to overturn or change Kubin has sure sped of the office’s implementation of the wrong rule (questioned by Rader from the bench)!

  46. So if cert is granted, will that halt their MPEP redrafting or speed it up? I’m guessing the latter.

  47. I think the office and the courts are applying Bilski too broadly, Bilski is really meant to overturn State Street and bad biz methods – the wording needs to be applied differently in cases where the process is biological and thus natural for different reasons than a check processing system…

  48. “Thus, to qualify as a § 101 statutory process, the claim should positively recite the particular machine to which it is tied, for example by identifying the apparatus that accomplishes the method steps, or positively recite the subject matter that is being transformed”

    Where does this repeated use of “positively” come from? It’s not used in Bilski, and it’s not used in the Jan. 7 Love memo. So who says that the method claim can’t implicitly identify the machine to which it is tied?

  49. “How does one decide whether or not a step is insignificant?”

    You could ask Mooney…

  50. “This means reciting a specific machine or a particular transformation of a specific article in an insignificant step, such a data gathering or outputting, is not sufficient to pass the test. ”

    How does one decide whether or not a step is insignificant?

  51. As an examiner, I have been applying Bilski a lot lately especially in my art.
    This is the FP I use:

    Claims () are rejected under 35 U.S.C. 101 based on Supreme Court precedent and recent Federal Circuit decisions, a 35 U.S.C § 101 process must (1) be tied to a particular machine or (2) transform underlying subject matter (such as an article or materials) to a different state or thing. In re Bilski et al, 88 USPQ 2d 1385 CAFC (2008); Diamond v. Diehr, 450 U.S. 175, 184 (1981); Parker v. Flook, 437 U.S. 584, 588 n.9 (1978); Gottschalk v. Benson, 409 U.S. 63, 70 (1972); Cochrane v. Deener, 94 U.S. 780,787-88 (1876).

    An example of a method claim that would not qualify as a statutory process would be a claim that recited purely mental steps. Thus, to qualify as a § 101 statutory process, the claim should positively recite the particular machine to which it is tied, for example by identifying the apparatus that accomplishes the method steps, or positively recite the subject matter that is being transformed, for example by identifying the material that is being changed to a different state.

    Here, applicant’s method steps are not tied to a particular machine and do not perform a transformation. Thus, the claims are non-statutory.

    The mere recitation of the machine in the preamble with an absence of a machine in the body of the claim fails to make the claim statutory under 35 USC 101. Note the Board of Patent Appeals Informative Opinion Ex parte Langemyer et al.

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