Patently-O Bits and Bytes No. 33: Supreme Court

  • Patentable Signals at the Supreme Court: In Nuijten, the CAFC held that transitory propagating signals are not patentable subject matter because they do not fit within any of the four statutory invention categories of “process, machine, manufacture, or composition of matter.” Now, Nuijten has petitioned the Supreme Court for certiorari in a case captioned Nuijten v. Dudas. The petition focuses on the CAFC’s decision that arguably requires patentable inventions be (1) tangible; (2) non-transitory; and (3) measurable without “special equipment.” [Petition][About Nuijten]
  • Design Patents at the Supreme Court: In Calmar v. Arminak, the design patent holder is asking the Supreme Court to reverse the Federal Circuit’s narrow infringement analysis. ISDA has filed an amicus brief arguing that the CAFC’s application of the “ordinary observer” test improperly excludes the most natural ordinary observer – a retail customer. [Brief][About Calmer]
  • These two pending Supreme Court petitions are both important and well argued.  The fact that they are well presented also makes it more likely that the follow–on cases of Bilski and Egyptian Goddess will receive attention from the Supreme Court.

Patent.Law077

111 thoughts on “Patently-O Bits and Bytes No. 33: Supreme Court

  1. 110

    “Btw, “http://en.wikipedia.org/wiki/Information_theory” is directed to information theory, not “information”. Innapplicable, but nice try.”

    A 60-year-old and well-developed branch of science devoted to defining and quantifying information, and that has provided the basic theory behind all modern communication systems, is “inapplicable” to a discussion about information and signals?

    Not one of your shining moments, e6k.

  2. 109

    QUOTE:””I think we can agree that the information in this example is what the BBC news announcer is saying.”

    Correct, it’s a wave emanating from his throat.”ENDQUOTE

    I see, the wave IS the information…

    If E6#K speaks in a forest and there is no-one there to hear him, is he still wrong?

  3. 108

    Well, apparently Mooney your knowledge does not extend even as far as going to the PTO website and entering “AN/Bose AND CLM/signal” into the search engine. I’m not going to keep doing your work for you.

    I urge you to flee the evils of dissembling and snarky debate team parlor tricks.

    By the way have you stopped beating your wife/girlfriend/boyfriend…

  4. 107

    Oh e#6K, you even have trouble reading accurately. No wonder, if you are “reading” patents all day.

    I simply said that you should take in more than you put out. I don’t recall saying you shouldn’t contribute anything. In your case, you could make an awesome contribution by not putting anything out until you get it together.

  5. 106

    The following is from one of pds’ comments upthread:

    “If the argument that “signals” were patentable “articles of manufacture” were as straightforward as its proponents believe, one would expect that the issue would have come up many many years ago and the PTO’s database would be filled with claims to “novel” phenomena.”

    This statement belies your ignorance as to how “signal claims” came to be popular and the extent of their current existence. It was the USPTO that popularized the use of signal claims. In a “Training Materials for the Examination Guidelines for Computer-Related Inventions” dated January 18, 1996, the following was given as an example of a statutory claim:
    A computer data signal embodied in a carrier wave comprising …

    The following is from MPEP § 2106 (Eighth edition, Rev 1, Feb. 2003):
    However, a signal claim directed to a practical application of electromagnetic energy is statutory regardless of its transitory nature. See O’Reilly, 56 U.S. at 114-19; In re Breslow, 616 F.2d 516, 519-21, 205 USPQ 221, 225-26 (CCPA 1980).

    FYI: A total of 1669 US Patent Publications are listed in which the term “data signal embodied” is found within a claim. Also, a total of 797 US Patents are listed in which the term “data signal embodied” is found with a claim. Add “carrier wave” and that 797 number drops to 661.
    The earliest issued patent having claims with both “data signal embodied” and “carrier wave” is U.S. Patent 5,802,286, issued September 1, 1998 and filed May 22, 1995.

  6. 105

    I wrote: “But nobody believes that the sound is a patentable structure, even if the tone has never been heard before.”

    CaveMan replies: “Tell that to Bose Corporation… and the makers of ultrasonic kidney stone destroyers.”

    As far as I know, neither party owns a patent reciting claims to signals (i.e., sound or ultrasound waves) per se. Do you know otherwise? I hope so. Otherwise I urge you to try harder to focus on the issue here: the patentability of signals per se.

  7. 104

    Oh and cave, let’s be honest, anyone that waits 10 years before he puts anything out already killed any great contribution he may ever be able to make according to most people. They say that if you haven’t made your contribution by 30? or so then you’ll likely never make one. I only have 5 years left. I better quit this job sooner rather than later.

  8. 103

    “Hint – ”

    Perhaps, but I’m already bringing in information at an astounding rate reading through patents every day, as well as reading yours (and MM’s) and everyone else’s postings. I’d say that I read around 200x what I put out at the present, so it can’t be that bad of a ratio. I’m sure hitting law school will up that another 50-100 times or so if not more. For example your insistance that it’s a phase change led me to further investigations that suggest you may have a ground to stand on, but overall I still am not convinced that you have a firm ground, more like an implied ground if anything. Also, I do not believe from what I do know that the migration only occurs along grain boundaries and the surface, though it surely happens there most since it would be easiest. In either case, atoms still moved through the material, thus, your statement about them not moving through it is not entirely correct.

    Btw, “http://en.wikipedia.org/wiki/Information_theory” is directed to information theory, not “information”. Innapplicable, but nice try. I know a decent bit about the history of the terms, but even by your own article the earliest mention of IT is in 1948 (that I see). Trust me, information was around a long time before we started polluting the term with new meanings that some will just chuck wholesale into the term that already existed. Let’s go back to what it means, rather than what some have made it mean in the last little span of time shall we? I’m quite sure that you, and other posters here in this thread are relying heavily on such mess that, when you break down what they say past the layers they built upon what came before will leave you right smack square back where I am asserting you should have started off. However, I don’t have time to break through all those layers so I will leave that as an exersize for you guys.

    For an in depth look at what “information” it seems like this might be better:
    link to en.wikipedia.org
    but even that is misleading because they have tried to encompass all the recent works. Still, from the whole some portions of useful knowledge can be gleaned.

    What was the earliest information represented in the context of the present discussion about signals? What is it as a base? I submit that it can only be one thing at its base: Information is a quality of a message from a sender to one or more receivers. In our context, information is the form of the signal to one or more receivers. But, in being the form, it necessarily encompases the physical medium as what is under discussion. It is the physical carrier and the form of the physical carrier all at once. In our case the information relates the method of its having been generated. It tells one party that “a party has generated a wave and by generating that wave it means “Hi, I love you””.

    From there it’s easy to see where I’m going. If you still persist in thinking they somehow are patentable as something other than a. energy/wave-particle duality or b. information or that they are patentable as one of those two (or both) then there is nothing further I can do for you. Fight the courts more, just like MM said, you’ll be told to run along home.

    “Your definition of signal appears to include the information and encoding scheme, but to exclude the physical carrier. This definition appears to contradict ordinary technical usage.”

    It does seem to contradict the ordinary technical usage because that usage has come into common use and is taken to encompass many things that it shouldn’t if it is to be specific rather than technical jargon created to simplify the life of people talking about the subject. Unfortunately, once you break past the layers of things people have built the term up to mean and get back to what it means, you’re left with signals being information.

    “I think we can agree that the information in this example is what the BBC news announcer is saying.”

    Correct, it’s a wave emanating from his throat. What happens to it then? It is transformed into an electrical signal, and then transformed into a radio signal (at transmission), transformed into an electrical signal (on recieving), transformed into a wave emanating from a speaker. You’ll notice that all along the way you did nothing but transform information (perhaps modulate, amplify, attenuate, all the transformations).

    “Instead, they are various signals that serve to transmit the BBC broadcast information.”

    There you go using “signal” again when what you’re trying to imply is “carrier waves” but what you should be saying is “transformations of information”.

    “signs, symbols, signals etc”

    They’re all information … so why would they be the broadest way of calling things capable of being understood? Think like a lawyer, give me the description of what the thing is broadly instead of more specifically. When you arrive at “information” being most likely the broadest term (there might be another) get back to me. One thing you might be trying to do is draw the line between data and information, that would be needless in this discussion.

  9. 102

    E6k:

    The definition I’m using for “information” (which is not indisputably the only view) is basically the communications theory definition (i.e., that which is measured by Shannon entropy, e.g., in bits). If I want to convey N bits of information from one place to another, I’ll need to encode that information on some kind of physical carrier and transmit the resulting physical construct. It is that physical construct that I regard as a signal.

    Your definition of signal appears to include the information and encoding scheme, but to exclude the physical carrier. This definition appears to contradict ordinary technical usage. For example, suppose I’m listening to a BBC radio broadcast.

    I think we can agree that the information in this example is what the BBC news announcer is saying.

    What then are we to call the modulated radio wave broadcast by BBC? Elaborating, what should we call the internet packets used to make this radio program available on the internet, or the modulated light in a fiber optic cable between the radio station and its antenna, or the modulated acoustic waves propagating from your radio receiver to your ears?

    Life gets very confusing for no good reason to insist that all of these physical manifestations are “just the information of the BBC broadcast”. Instead, they are various signals that serve to transmit the BBC broadcast information.

    We agree that signals must be intelligible, although I disagree with the implication that whether or not broadcast radio provides “signals” depends on the presence of a receiver.

    I would answer your question about what to call _things_ capable of being understood with “signs, symbols, signals, etc.” as opposed to “information”. For example the “2” right here in quotes is a symbol which we _understand_ to refer to the number two. If you have thought of a number, you will not be able to communicate to anyone else what this number is unless you make use of signs, symbols, signals etc. that are properly _understood_ by the other person.

  10. 101

    Sorry e#6K, even your understanding of electromigration leaves something to be desired.

    First, “em” IS a materials science phenomenon and almost by definition is can be understood in the context of phase transformation. During normal eutectic transformation, ion migration occurs quite naturally. During “em,” the migration occurs along grain boundaries and at surfaces leading to fracture and failure. One could argue that any migration, ipso facto, represents some form of a phase transformation. I’m sure if there are any material science types out there they might back me up on that.

    Sorry, but squirm as you might, “em” really has nothing to do with the dynamics of current flow although the “em” phenomenon is caused by current flow over time in a conductor. It is a gradual long term failure modality and is wholly irrelevant to signals or current flow.

    “If you make people think they’re thinking, they’ll love you; But if you make them really think, they’ll h[a]te you.” Don Marquis (1878 – 1937)

  11. 100

    To Mooney:

    “But noboby believes that the sound is a patentable structure, even if the tone has never been heard before.”

    Tell that to Bose Corporation… and the makers of ultrasonic kidney stone destroyers. Your attempt to realign the world’s thinking about what is patentable is failing miserably. Probably because you are talking out of your patootie, as usual.

    To e#6K:

    “No, the “signal” is the information that describes the manner in which the physical carrier is generated and nothing else, let me elaborate.”

    Please don’t elaborate, I think we’re all still reeling from your explanation about how atoms move in an electrical current. Information that describes the manner in which the physical carrier is generated is called the PHY layer specification, or more specifically, the technical spec for the transmitter system.

    A signal is information + carrier (not necessarily a continuous carrier) Please refer to the following link for an in depth discussion of what “information” is.

    link to en.wikipedia.org

    Happy reading.

    Hint – for AT LEAST the first 10 years or so of your career, you should spend more time reading and taking in information than putting information out. If you fail to heed this advice, then you will more than likely be doomed, like Mooney, to a lifetime of putting out garbage. Based on the quality of the information in your posts, this process may have already begun.

  12. 99

    “Actually, a signal seems to be more than “just information””

    Maybe you could expound upon this a little more without going off topic into what other things are.

    “Pure information is abstract”

    We’re not talking about pure information. We’re talking about signaled information.

    “So a signal is probably better understood as basically information + physical carrier. Since the information must be encoded somehow onto the physical carrier, this coding (i.e. modulation) is also an aspect of the signal.”

    No, the “signal” is the information that describes the manner in which the physical carrier is generated and nothing else, let me elaborate. When I send you a signal of any sort, then the only thing that concerns you is one thing, the manner in which it was generated. If you know that thing then you have recieved the “signal”, i.e. the information on the subject what the manner in which the physical carrier was generated. For instance if I shoot some light down a fiber optic cable and you see it then the information “he shot light down the tube” has reached you. In other words, the signal was “he shot light down the tube” not the light itself. If I shoot a light at a certain freq. then the signal was “he shot light of a certain freq. down the tube”. The understanding of the physical carrier (or any combination of physical carrier + information)actually BEING the signal is a fallacy of the modern understanding in the use of language created for convenience. Even saying “steam coming out of this tube is the signal it is time to cut off the heat on the other end of the system” means not that the water is the signal, but rather that the generation of conditions leading to the generation of water coming out of the tube is the signal, and that the signal itself has been transformed in several ways until it reached its observer (heat of a certain temp to hot water to steam). It is merely for convience’s sake that we have decided to discuss signals in terms of them being the actual physical carrier.

    An easy way to see this is to consider the following. If I build a radio frequency “signal” generator and turn it on you might surmise that I am generating signals. But in point of fact I am doing nothing of the sort if there is no reciever. I am generating RF waves that are not signals. Then, when someone can recieve them and understands the RF waves I have generated, and ONLY then, have I generated a signal. Now tell me something, what is the broadest designation in our whole collection of words of things that are capable of being understood? I would say “information” or something meaning nearly the same. How about you?

    In other words I say that in order for a physical carrier, modulated or not, to be a signal it must be recieved and understood. Therefore, you can never escape the designation of it being merely “information”. Also note that in so finding this, microwaves used only for cooking are a tricky case. Who says they’re signals and who says they’re not?

    “As I understand the position favoring patentability of signal claims, one is usually looking to the modulation scheme of the signal to define a patentable invention, since patentability based on the information itself is not possible, and patentability based on the physical carrier is most unlikely.”

    Correct. And that modulation scheme is a process and ONLY a process. Thus, you are limited to claiming a product (signal) made by the process (product by process), or the process itself. If the signal is not put in terms of it’s method of making then it is only information. Encoded information or not, it doesn’t matter, it’s still only information.

    “Consideration of signal claims per se in this context does not appear to be inherently ridiculous, since the signals per se are man-made, and can be distinguished from prior art signals by their modulation scheme.”

    In that context it’s not a signal claim per se, it’s a modulation scheme claim. So far as I know nobody has a problem with those.

  13. 98

    agent007:
    The kidney stone thing is a signal under Mooney’s interpretation of a signal – and I could certainly see a court saying it was as well (although I don’t consider that issue settled).

    Mooney:
    Why is “because the alternative logically leads to the patentability of everything” an argument? Surely we can’t say anything specific should be unpatentable because it’s necessary that something must be unpatentable, ie somebody has to be the unpatentable subject matter fall guy so it might as well be EM waves. The world would not collapse, or even be much different, if absolutely everything were available for patentability, but still had to be new, non-obvious, and useful. The concept of “patentable subject matter” is not a logical requirement, but rather a legal one. It allows us to punt something into the difficult-to-think-about category, but there is no logical basis for excluding the new, non-obvious, and useful from being patented.

  14. 97

    George: (for real, this time)

    I think pointing to the waves used in kidney stone treatment as examples of “signals” can be troublesome. In my view, a “signal” requires the presence of information, which is not there in the therapy example.

    However, this difficulty with the term “signal” appears to be irrelevant, since it’s hard to imagine a situation where signals modulated with information and radiation having a specific modulation to provide a specific effect should not stand or fall together in terms of patentable subject matter.

  15. 96

    George;

    I agree that usefulness of claims is irrelevant for 101 purposes.

    I didn’t actually express an opinion one way or another about whether signals as I understand them should be included in the scope of 101, because that issue is not clear to me.

  16. 95

    agent007

    I basically agree with your first three paragraphs.

    However, whether the claims are “potentially useful” should not factor into a 101 argument, but should be a consideration for the patent attorney and the inventor when deciding whether to file signal claims.

  17. 94

    agent007: “However, the usefulness of such claims seems doubtful. For example, suppose a non-US entity broadcasts infringing signals into the US from outside the US….”

    Well, I don’t think we are limiting signal claims to those broadcast over long distances.

    An example of a potentially useful “signal claim” might be a claim to a signal of a sound wave used to break up kidney stones in a patient. There might be several different ways that a machine could generate the signal and an infringer might not be infringing on the partentee’s apparatus claims but could be on his signal claims.

  18. 93

    Actually, a signal seems to be more than “just information”. Pure information is abstract, and as such could not be transmitted or received without being physically represented. So a signal is probably better understood as basically information + physical carrier. Since the information must be encoded somehow onto the physical carrier, this coding (i.e. modulation) is also an aspect of the signal.

    As I understand the position favoring patentability of signal claims, one is usually looking to the modulation scheme of the signal to define a patentable invention, since patentability based on the information itself is not possible, and patentability based on the physical carrier is most unlikely.

    Consideration of signal claims per se in this context does not appear to be inherently ridiculous, since the signals per se are man-made, and can be distinguished from prior art signals by their modulation scheme.

    However, the usefulness of such claims seems doubtful. For example, suppose a non-US entity broadcasts infringing signals into the US from outside the US. If patentee gets an injunction, what is actually accomplished? If the foreign broadcaster does not comply, what is patentee supposed to do? Stop the infringing signals at the border? Of course, patentee could still go after the US end users, but a stated purpose of the signal claim was to avoid this.

  19. 92

    “there is still no logical reason that the wave itself is per se unpatentable, except that we choose it that way”

    *sigh* It was *logically* chosen that way because the alternative logically leads to the patentability of everything.

    But go ahead: answer the question that I’ve posed several times upthread that none of the signal proponents wants to touch.

  20. 91

    * You need to buy a name

    I’ll be back for p later

    Cave, so what you’re saying is that atoms don’t move and electromigration is a myth? I’m well aware of how far, and what moves when you put electrical current through conductors of differing sizes thanks I need no primer.

    “an atom goes in one end and comes out the other”

    Hardly, I just wrote atom instead of electron likely because I have been discussing electromigration lately.

    Again, “hahahahahaha E6k types a word or two wrong in a page and a half uninterupted typing on a topic that is way beyond the scope of the one narrow subject where everyone who’s anyone knows what he is referring to, but I have nothing to say against what he is actually asserting so I should waste time and point that out” is code for he’s right, I’m dumb, but I want to pick at his mistakes instead of address what he says. Standard lawyer speak. If you think my position is laudable then give us one of your fancily languaged responses that last a few sentences at most that address the issue so well.

    Also, there is no “phase transformation” (change of the arrangement) that I’m aware of involved in electromigration, it involves high densities of moving electrons knocking atoms around in wires (but they must still land in the same arrangement) that are so small that even the “tiny distance” becomes very relavant when all of the atoms that move a small distance always move in one direction. I cited you an article so that you may remedy your base lack of knowledge on the subject, I suggest you read it and blurting on about it being irrelevant and rambling on and on about how great the basic electronics knowledge you posses is. Also, citing the difference between AC and DC doesn’t help your position any…

    Gob, so a one bit binary signal is now no longer a signal? I know what you were attempting to change the subject to, “ovens”. Nobody gives a crp, he was talking about simple signals not ones made specifically for a certain purpose and made in a certain way. So I suppose my one bit signal i just a inconvenient example of how your argument fails? You and the rest of the prosignal people need to pull your head out of your multiplexed phase shifted bounded high frequency low voltage signalified behinds and understand that a signal is a signal is a signal. You can do whatever you want to with it but it will always be just information.

  21. 90

    Mooney- so setting up a standing ultrasound wave effective to destroy kidney stones within the body is a “clearly unpatentable sound wave”. Sure, I can claim the machine and the process, but there is still no logical reason that the wave itself is per se unpatentable, except that we choose it that way.

  22. 89

    “if you can’t yet see that an information bearing signal can have a structure independent of its information content then…”

    There you go again. I can see fine. Check your reading comprehension. I granted upthread that signals can be argued to have a “structure.” A vibrating bell emits a tone that arguable has a “structure”. But noboby believes that the sound is a patentable structure, even if the tone has never been heard before.

    And surely it doesn’t become patentable simply because you rename the tone “a signal for calling children to dinner.”

    I see you are unwilling to explain to everyone the obvious difference between plainly unpatentable sound or light waves and the electromagnetic waves at issue in Nuitjen.

    So, yes: you lose. Just like the petitioner in Nuitjen loses.

  23. 88

    MM, I rest my case. And if you can’t yet see that an information bearing signal can have a structure independent of its information content then…

    E#6K, I was talking about microwave ovens and the difference between transmitting power/energy and transmitting information. Your example is a one bit binary signal. You’re so far beyond hilarious that it will take the light from hilarious centuries to reach you.

    Hasta la vista ladies

  24. 87

    And of course by “move” I mean neither of the electrons or the atoms move from one end of the wire to the other as you suggest…

  25. 86

    “If we’re going to talk about electronics you better roll up your sleeves, I will give you 2x your money’s worth.”

    Apparently 2 time nothing is still nothing, which, as best anyone can tell, is what you know about real electronics…

    Here is a small primer on Electrical Current

    link to en.wikipedia.org

    Interesting quote from the article: “For example, in AC power lines, the waves of electromagnetic energy propagate through the space between the wires, moving from a source to a distant load, even though the electrons in the wires only move back and forth over a tiny distance.”

    So, not only do the atoms not move, the electrons don’t even move in many cases…

    Sorry e#6K,

    …you can roll your sleeves down now.

  26. 85

    Actually teacup, I applaud your observation re “microwaves…not…signal….block silicon..integrated circuit”

    Just before I hit the “Post” button, I thought about disclaiming the exact situation you described, where simple microwaves are engineered to produce a result such as the heating of food in a microwave oven. But the dizzying world of high speed blog posting you have to make your choices.

    I say, BRAVO, to you my good man for pointing that out – if you are a man, and by the way, if you are a man, you may want to modify your name slightly such as teacup full of testosterone, or teacup full of kryptonite or something.

    If you are a woman, then I hope you’re not busy Friday night, because you’re my kind of gal.

  27. 84

    Sorry Mooney, no teeth marks here… you are way out of your league my white wine sipping liberal arts friend.

    A simple microwave is not a signal, nor is a simple microwave what Nuijten was claiming. In each case, the signal was embedded with encoded information.

    If you turn a simple microwave transmitter on and off a bunch of times in a particular sequence, then you might have something. If you *modulate* the microwave carrier in a particular way, you might have something. I know “modulation” is a big word, but, go ahead, try it on.

  28. 83

    #6K, the atom migration in the referenced article has nothing to do with what we were discussing. During certain phase transformations, atoms and other nucleations can “move” or migrate, but by your description, you seem to think that current flow is: “an atom goes in one end and comes out the other.” which is naive and not really right.

    Anyone can cite an article, doesn’t mean that you know what you’re talking about – classic Examiner hubris.

    Goes something like this:

    Examiner- “Oh, I put some words in a search engine, and here is an article that came up, therefore – QED”

    Applicant – “Well did you read the article?”

    Examiner – “Well, no,… but it was from Wikipedia so it must be right”

    Applicant – “Yes, but my invention was regarding electrical “current flow” in a wire, the article you cited was about the Gulf Stream”

    Examiner – “…”

  29. 82

    Having had a couple days to mull over this issue, I believe I’ve come up with a couple of unmentioned points worth throwing my two cents in over.

    1) 35 USC 101 recites four classes of statuatory subject matter: “process, machine, manufacture, or composition of matter.” Wouldn’t the doctrine of statutory differentiation require that a manufacture (or a machine for that matter) not necessarily be a composition of matter? That is, if the courts require that a manufacture be tangible, doesn’t it make the word meaningless, since anything that would qualify as a manufacture would qualify as a composition of matter?

    2) If we assume that the claim passes 101 muster and subject it to product-by-process analysis, it fails under 102 and 112.

    Nuijten’s Claim 14: “A signal with embedded supplemental data, the signal being encoded in accordance with a given encoding process and selected samples of the signal representing the supplemental data, and at least one of the samples preceding the selected samples is different from the sample corresponding to the given encoding process.”

    a) 102 rejection: “The signal being encoded in accordance with a given encoding process” can’t be given any patentable weight. Neither can “at least one of the samples … different from the sample corresponding to the given encoding process.” Thus, the only characteristic of the product is “selected samples representing the supplemental data,” which is anticipated by a packet header (the selected samples are the first samples), stegonagraphy, or applicant-admitted prior art watermark techniques. Even had they claimed “the signal being decodable in accordance with a given decoding process,” which, might arguably be given weight in product-by-process analysis, most prior art signals are decodable, but result in garbage.

    b) 112 rejection: The signal is somehow simulataneously “encoded in accordance to a given coding process” and “different from the … given coding process.” This is indefinite. It works as a method claim because the signal is first encoded, and then changed, but as a product-by-process, it fails.

    Really, I really don’t think it would matter how the applicant claimed *this* signal, since the invention really doesn’t impart novelty on characteristics of the signal itself, just the process of making it, for which the claims have been allowed.

  30. 81

    ps. when you apply don’t mention you were an examiner because they may suspect you are over qualified and lord nose you are anything but and i’m sure a nice guy.

  31. 80

    Pods (you gots to buy a vowel), here is my 2¢. I believe you meant good, but let’s face it; comparing Malcolm to Ee6k! is highly insulting to Malcolm, like comparing a mental giant to a feeble retard. Malcolm may or may not be a true mental giant (;o) the jury is still out laughing, but compared to Ee6k! even Archie Bunker is several grades above, no contest. Ee6k! plez get a life. Flipping burgers or a car wash would be suitable and rewarding, and people wouldn’t be making fun of you all the time either. I gave up car washing to flip burgers and it is very relaxing, and I get plenty of free eats and no soap in my eyes. I hope this advice has been helpful. All the best, good luck.

  32. 79

    6K.

    I’ve shared this observation before, and it is worth sharing again here. I’m sure, as a (presumable) engineer, you’ve heard someone who would otherwise be considered very intelligent (but is non-technical) describe something technical in a manner that you know isn’t even close to being correct.

    As an attorney, I have seen the same thing happen with otherwise very intelligent, but non-legal, people. They say something about the law that I know is completely wacky. It isn’t because they are weren’t smart, they just don’t understand the fundamentals and were never correctly taught. You sir, fall into that category. Although you think you are being clever and insightful and believe you “go over you guys heads,” you are, in fact, making fundamental errors that make the rest of us snicker.

    I would find it very amusing to watch your first year in law school. I’ve seen your type before. They’ve got a little prior exposure to the law, impress everybody with their abilitiy to “talk the talk,” but end up being completely lost because they were unable to ditch their prior misconceptions about certain aspects of the law.

    “My bad, I said atoms rather than electrons, probably because I was thinking about the nature of signals rather than the nature of current atm.”
    Still, unexcusable. BTW: Your attempt to explain away your comments in the immediately-following paragraphs were weak as they have little to do with signals.

    Like MM, you have a propensity to opine on topics you know little about and your ignorance clearly shows from your comments. There are many topics that I won’t add my $0.02 worth because I don’t feel the need to pretend to know more than I know.

    You could, however, take a lesson from MM. He mostly keeps his comments short, non-specific, and more opinionated than factual. This makes it very difficult to pin him down on anything because he doesn’t say much of substance. You, on the other hand, are a fount of juicy statements that are red meat to those of us who care to pounce on them. Then again, there are many times when I start reading one of your diatribes and eventually skip to the next post after wondering “is he ever going to make a point?” One last thing, MM knows when to bail on a losing position. You, on the other hand, will fight to the bitter end no matter how silly your arguments make you look.

    “So if mm has a microwave generatore and a microwave detector that is rigged to ring a bell, sets the detector in the next room and turns on his generator when he wants his wife to bring him a sandwich from the next room then the microwave, of no particular form, was not a signal?”
    There is a difference between the microwave, per se, being the signal (as in your example) and the microwave including a signal.

  33. 78

    “Energy is matter and matter is energy (according to Einstein, anyway)”

    The very instant you make that remark you basically say “let’s just throw the whole patent system out the window and start afresh”.

    “Come on, we are talking about something that they cover in high school physics. Where did he get his technical degree, some diploma mill?”

    My bad, I said atoms rather than electrons, probably because I was thinking about the nature of signals rather than the nature of current atm. Or perhaps because I’m aware of the atomic movement that actually occurs to the actual atoms (and had dealt with that very occurance in a case lately) move on a small scale which might be beyond your superficial understanding of what happens when you put electricity through a ginormous wire (>>1/64 inch?), gleaned mostly from things like

    link to need.org

    I take into account all of my knowledge when I make a statement, though you’re right pds, perhaps I should dumb it down a bit to poshita’s level when talking here so that I can’t be called out on making things more complicated than my audience can handle. omg, he just said current was the same thing as atomic movement! He’s so wrong! No, he just knows more than you do about the subject than what are the standard definitions and where all of that blurs together on a day to day basis.

    “FC allegedly suggested signals are not patentable because they require equipment to be perceived.”

    If that allegation is true, which I can’t find that it is, then I agree with them that the decision needs overturning because it was worded horribly. I’m not sure if the SC must take up the case for that to happen however, a subsequent case from the Fed might clear it up.

    “FYI, e#6K, atoms don’t “move” in a wire [with electricity passing through it], unless that wire happens to be a gas filled tube.”

    Orly? I guess you should tell that to people having such a hard time making aluminum wiring schemes. Maybe those wires are disappearing because god commanded it amirite?

    Or maybe this guy doesn’t know what he’s talking about:

    link to ieeexplore.ieee.org

    Take a big ol’ bite outta

    link to springerlink.com

    If we’re going to talk about electronics you better roll up your sleeves, I will give you 2x your money’s worth. I would dig you up the articles relating how current is of course electron excitation (of several sorts) and how it can be measured by measuring the movement of moving atoms, but it seems to be eluding me atm. In any case, electric current can be measured by the movement of the atoms as well as the movement of electrons. It’s merely one way of measuring the same thing on a certain scale. In fact, as an added bonus for you novices, you can measure the rate which certain materials have their atoms moved by certain currents (by experiments) and find out what the purity of the material you have in a later sample just by seeing how much of it moves. What’s more, if you know with some certainty the purity, and you measure how much atomic movement has occured, you can measure the current. That is just one way to utilize the movement of atoms to measure current, the more advanced ones take too long to explain. Bonus points to any of you wo can tell me how to tell how much electromigration in a wire has occured without typical inspection or electric testing.

    Oh, and fyi, all the A’s, and very few B’s, coupled with my being employed might be why I have more interviews lined up than I even want since I’m not ready to jump ship for another few months at least, who knows, maybe a year.

    Why I bother with this site is beyond me. Even the lulz get small over time. No matter how many times I go over you guys heads or say something relating to a more complicated subject that wasn’t on point. But, then again, that’s what you lawyers are paid to do right? Point out small things.

    “Malcy-boy: the word “signal” in the sense being discussed here implies the intentional conveyance of information. A signal is more than its information content but it is not a signal if it has no information content (note that the information content can be null, but that is information in itself). The microwaves of a microwave oven have no intended information content. Their purpose is to transmit energy, not information. And with that I invite you to apply your microwaves to your area of expertise – oh, oh, oh – ring of fire!”

    So if mm has a microwave generatore and a microwave detector that is rigged to ring a bell, sets the detector in the next room and turns on his generator when he wants his wife to bring him a sandwich from the next room then the microwave, of no particular form, was not a signal?

    I take it back about lulz, you guys are hilarious.

    “Am I completely wrong here?”

    Yes.

    Also, teacup, Caveman was referring to a simple (i.e. unmodulated, or otherwise tampered with) microwave signal, not the modulated ones we use for cooking etc. etc.

    Gob- Let’s be clear, a wave, or electron current (let me be specifically basic), or any other type of signal does not “contain” information, nor does it “carry” information. It IS the information. Saying that it “carries” the information is merely an informal way of designating the function and properties of a signal that has worked its way into psuedo-formality or formality. A wave? It’s a transmutation of the signal I input into the generator by pressing a button. It is what my signal has become.

    Though, that said, the court’s position on transience is the right one to have taken if they choose to buy into that a wave/particle “signal” is somehow necessarily a physical object.

    “Isn’t a signal just a modification of electrons or other particles in space?”

    Yes, but be sure and remember the “signal” is the “modification”, not the electrons or other particles themselves and you’re all straight.

    Also notice people do not, that I know of, obtain patents on clouds of electrons or particles per se that have been generated.

  34. 77

    “I’m not sure what “showing where, e.g., the CAFC’s decision causes a giant swath of previously patentable subject matter to become suddenly unpatentable if signals per se are deemed unpatentable (i.e., the status quo)” has to do with anything.”

    It has to do with providing support for your assertion that a holding that claims drawn to signals per se are unpatentable is “inconsistent with precedent and unsustainable.” I am wondering if you can suppor the assertion and I suggested one kind of support that would suffice (in theory).

    “the patentability of certain signal claims was the status quo before Nuijten”

    Examples? I don’t doubt that claims to signals per se have been issued on occasion. The PTO is only human. Is there a “signals” art unit?

  35. 76

    Malcolm,

    I doubt that I can present a “reasonable” explanation by your terms, because it appears clear that you are determined not to be convinced. And I’m not sure what “showing where, e.g., the CAFC’s decision causes a giant swath of previously patentable subject matter to become suddenly unpatentable if signals per se are deemed unpatentable (i.e., the status quo)” has to do with anything. With all due respect, that argument (if that’s what it is) looks like something e6k would write.

    I’ve never suggested that Nuijten caused a “giant swath” of patentable subject matter to become suddenly unpatentable. However, if you check your facts more carefully, you’ll determine that the patentability of certain signal claims was the status quo before Nuijten. Nuijten pushed the envelope by not requiring that the signal be a “propagated” signal, thus causing the examiner to complain that the claim encompassed abstract subject matter. The examiner was probably right.

    Your summary of the printed matter doctrine is fine. If you check my earlier posting, I said that a properly patentable signal claim (in my view) should be subject to the same rule, i.e., its patentably could not lie in the expressive content of the information carried by the signal. YOUR earlier post (“What is *in fact* being claimed in that instance — the instance at issue here — is information.”) suggested that it would be impossible for a signal claim to get past such a doctrine. Your earlier post was wrong, both on the facts (“the instance at issue here”) and with regards to its implications.

  36. 75

    For those experienced in the relevant technical art, should any significance be attributed to the “dynamic” versus “static” nature of the watermark?

  37. 74

    Addendum to above: I recognize that in some instances outside of the context of 35 USC 101 that electromagnetic transmissions may be legally equivalent to a piece of paper. So don’t be a wise-acre.

  38. 73

    “I won’t lose any sleep if the courts persist in saying that signals are per se unpatentable. But they’re drawing lines that are inconsistent with precedent and unsustainable.”

    Where’s the unsustainable inconsistency in holding that claims to signals per se are unpatentable? Please present your eminently reasonable argument showing where, e.g., the CAFC’s decision causes a giant swath of previously patentable subject matter to become suddenly unpatentable if signals per se are deemed unpatentable (i.e., the status quo). And when I say “reasonable” I mean “reasonable” and compelling on its face and not a lengthy exposition that stretches the meanings of words to their “technically correct” extremes.

    “The issue is not whether all signals should be patentable or unpatentable. We can’t say that all claims involving printed matter are unpatentable”

    That’s right, we can’t say that all claims involving printed matter are unpatentable. But of course nobody is saying that all claims *involving* signals are unpatentable.

    Claims drawn to novel printed matter per se are patentable because (drum roll) they are indisputably composition claims (note: printed *matter*). The caveat is that the novelty of the claim to printed matter per se can not lie in the information or expressive content of the print.

    If the patentability of signals resides in its functional identity to a piece of paper, I respectfully submit that any subject matter is patentable because if one can convincingly argue that a transmitted electromagnetic radiation is legally equivalent to a piece of paper then one can argue that anything is legally equivalent to a piece of paper.

    Thankfully we will never have to go there.

  39. 72

    “What is *in fact* being claimed in that instance — the instance at issue here — is information.”

    After being convinced of the unpatentability of signal claims by their advocates, Malcolm has now swung me back over the fence.

    Part of the problem, as Wasn’t Me points out, is the bickering over the meaning of the word “signal.” The issue is not whether all signals should be patentable or unpatentable. We can’t say that all claims involving printed matter are unpatentable – why should it be simpler for signals?

    Those signal claims that should be patentable subject matter are not directed to novel information, but to functional structures for conveying information. Just as with the printed matter doctrine, the novelty can’t depend on the information conveyed, but on the functional aspects of the structure.

    I’ve written propagated signal claims, but never by themselves. I won’t lose any sleep if the courts persist in saying that signals are per se unpatentable. But they’re drawing lines that are inconsistent with precedent and unsustainable.

  40. 71

    Mooney – have you fallen off your rocker? If I create a force field with a powerful electromagnetic field, there is no logical reason I couldn’t claim the force field itself, as compared to claiming a new ceramic shield with certain properties. The only reason is that this is what we’ve decided. The notion that some things out there are “signals” and that it’s inherently evident that they should be unpatentable is silly, and treats layers of legal fictions as tangible reality. The notion that we will all agree what constitutes a signal, or that there is some fundamental truth determining what constitutes a signal, is likewise silly.

  41. 70

    Calmar v. Arminak centers on the following fundamental issue: “Through whose eyes should design patent infringement be determined?”

    Quick Summary of IDSA Amicus Argument
    In Gorham v. White, the U.S. S.Ct. held that design patent infringement was to be judged through the eyes of the “ordinary observers,” and not “persons in the trade.” (e.g. merchants, dealers, designers, brokers, etc.) The graphic above illustrates the stream of commerce for the accused design, (a spoon handle), and the Gorham Court’s holding regarding who was the “ordinary observer” for determining infringement – the retailer consumer.

    In Arminak, however, the Federal Circuit held that the ordinary observer was an “Industrial Buyer.” The graphic above illustrates the stream of commerce for the accused design (a portion of a trigger sprayer) and the Arminak court’s holding regarding who was the “ordinary observer” for determining infringement – Industrial Buyer, and not the retail consumer.

    Arminak must be reversed for the following reasons:

    1) Arminak’s selection of Industrial Buyers as “Ordinary Observers” directly violates Gorham, which prohibits design patent infringement determinations based upon the perceptions of “persons in the trade.” Simply put, Industrial Buyers are “persons in the trade.” Indeed, the Gorham Court stated that a test that a design patent infringment test that uses the perceptions of persons in the trade “would destroy all the protection which the act of Congress intended to give.”

    2) Arminak’s new test for identifying “Ordinary Observers” wrongly excludes the perceptions of everyday observers, such as retail consumers and jurors. Arminak’s new test wrongly concludes that everyday observers, such as retail consumers and your average jurors, do not possess “the capability of making a reasonably discerning decision when observing the accused item’s design [to determine] whether the accused item is substantially the same as the item claimed in the design patent.” Yet, these everyday observers possess precisely the everyday perceptions and sensibilities that the Gorham Court sought to utilize with its “ordinary observer” test. Accordingly, the new Arminak test for selecting the ordinary observer also violates Gorham.

    -Chris Carani
    Counsel of record for IDSA

  42. 69

    “First off, I’m not actually in favour of signal claims, because I don’t think they serve any useful purpose over corresponding process claims, but I don’t think they should be regarded as non-statutory subject matter.”

    As a matter of course, I am also fairly ambivalent about signal claims and their patentability. However, their use in place of process claims (directed to similar subject matter) provides certain benefits, which have already been referred to above. Specifically, to infrige one needs to make, use, or sell (see 35 USC 271) the patented invention. However, when the invention can only be strictly defined as a process, then it becomes much harder to go after people who perform the process overseas and subsequently ship into the US the manufacture of the process (i.e., the signal).

    The more interesting discussion would be (and if MM actually took this line of argument, I would be far more impressed with such an argument than with what he has presented so far) would be who could be a possible infringer of a signal? Would any of the multitude of parties that exist between the creater or the signal and the actual end-user of the signal and act as a conduit of the signal be potential infringers?

    Would certain of these parties make the signal? Arguably yes.
    Would certain of these parties use the signal? Perhaps no for its ultimate purpose, but in some respects, arguably yes(??)
    Would many of the parties performing the above making/using have no idea that the signal is patented? Without a doubt.

    Exploring these questions would likely lead to much better policy arguments that could be used to limit the patentability of signals than the tired arguments already presented.

  43. 68

    Gobhicks: “the word “signal” in the sense being discussed here implies the intentional conveyance of information.””

    Me: “Then you admit that the information in the signal is the source of novelty of the signal, rendering them unpatentable under 101 just as a piece of paper with novel instructions on them is unpatentable (In re Gulack)”

    Gobhicks: “Waah! Waaah! You’re stupit! Waahh!”

    Look, upthread you wrote a long comment about what people “wanted” to do when they were claiming a signal per se. Nothing could be less relevant. The issue is not what some applicant “wants” to claim when it writes a claim beginning with “A signal for blah blah, wherein …”

    What is *in fact* being claimed in that instance — the instance at issue here — is information. If you believe it is *not* information that is being claimed, then you can address the other cans of worms (e.g. claims to a plurality of transmitted frequencies passing through a defined space).

  44. 67

    “Then you admit that the information in the signal is the source of novelty of the signal, rendering them unpatentable under 101 just as a piece of paper with novel instructions on them is unpatentable (In re Gulack).”

    – from which it is plain that you either haven’t read or choose to ignore or don’t understand 90% of what I’ve said.

    I give up. I don’t concede defeat. I just give up. It’s a waste of entropy.

  45. 66

    “A simple transmitted microwave is not a signal any more than a block of raw silicon is an integrated circuit.”

    False. Microwave cooking signals are modulated depending on the power setting. Different signal schemes optimally heat up various kinds of foods.

    The microwave oven analogy is solid, and so are many other analogies that have been mentioned up-thread, and which have strangely been avoided by the ra-ra-signal crowd.

    Signals are an expression of information. Information is known to do neato and useful stuff, but that doesn’t make it patentable. And even if signals are patentable, there is prior art stretching back to the dawn of writing that makes signal claims a massive waste of time. Cue the “Oh, but it’s EM waves thru wires not smoke signals thru the air, it’s so so so different, gimme patent” crowd, 1, 2, and 3…

  46. 65

    “Malcy-boy: the word “signal” in the sense being discussed here implies the intentional conveyance of information.”

    Then you admit that the information in the signal is the source of novelty of the signal, rendering them unpatentable under 101 just as a piece of paper with novel instructions on them is unpatentable (In re Gulack).

    You can object to this analysis because it’s “too simple.” I agree that it’s simple. Devastatingly simple. And it’s why Nuitjen’s petition is a waste of time and money.

  47. 64

    A signal is statutory subject matter based on the following reasoning:

    A signal contains information in the form of transmitted energy between an encoding unit and a decoding unit.
    Energy is matter and matter is energy (according to Einstein, anyway). The two are considered interchangeable and equivalent for the purposes of theoretical physics. In fact, particle masses are often given in terms of energy (Electron Volts).

    Therefore, the transmitted energy (which is equivalent to some amount of matter), must be a product made by man and patentable. I think that at the very least the argument could be made that such a signal is indeed a “composition of matter”, with the nature of the composition determinate on the energy and information in the signal.

    The question of novelty still remains, but I do not see why a signal could not meet the statutory requirements of 101.

    Am I completely wrong here?

  48. 63

    “Could any artificially generated electromagnetic wave be a signal? Certainly reasonable, and then Mooney is right. Could a signal be any indicia of information intentionally passed by any method? Also reasonable, and then CaveMan is right.”

    Actually I’m right either way because neither of those signals per se is patentable. Again, I’ll ask the obvious question: since novel signals of both types have existed for a long time, why are there not thousands of patents to those types of signals per se in the PTO database? What is the position of the signal proponents exactly? That until recently human beings engaged in creating highly sophisticated signal-generating and receiving equipment were too primitive to realize that they could patent the signal itself?

    And the other question is still hanging out there, as it has for the past six months (at least): “teach me why a signal carrying a digital watermark is patentable but a light signal carrying to my eyes a series of words describing a novel method for brewing beer is not patentable.”

  49. 62

    I know, I know, I know I shouldn’t rise to MM’s bait and now I’ve got E#6K on my case too.

    I come here because there are important and/or interesting issues to be discussed, and it’s deeply frustrating when contributors seem to be more interested in scoring points by juvenile obfuscation or are just blind to their own ignorance…

  50. 61

    “It was decided that the information passed, and things that only exist transiently, do not constitute patentable material. ”

    Actually what was decided was that signals per se are not patentable subject matter. The CAFC explained their reasoning. But the question before the CAFC was not whether “things that only exist transiently” are patentable. Things that exist transiently are patentable. But, as I explained above, that is just one aspect of signals and alone does not keep them from being patentable under 101.

    “A simple transmitted microwave is not a signal any more than a block of raw silicon is an integrated circuit.”

    And this is where your arrogance and penchant for name-calling comes back to bite you in your neanderthal behind, CaveMan. A simple transmitted microwave surely qualifies as a signal. All the microwave needs is something to detect it. Exactly like the transmission in Nuitjen.

  51. 60

    How do smoke signals figure in?
    Do smoke signals count?

    BTW, here on this link Jaoi mentions me!
    (I’m so happy I could take “a number two” in Malcolm’s bathroom.)
    link to patentlyo.com

  52. 59

    “FYI, e#6K, atoms don’t “move” in a wire, unless that wire happens to be a gas filled tube.”

    When I first read that, I had to double check just to make sure. Sure enough, he wrote “You can send a signal by causing atoms to move in a wire.” This wasn’t just a temporary brain freeze because he followed it up by stating “[t]he effect itself, the arrangment, the movement of atoms, or the inducment of an electromagnetic effect at a distance is not a product.” There are times when he makes the silliest of spelling errors that I typically ignore as typos. However, with comments like that, I have to reconsider my position.

    Come on, we are talking about something that they cover in high school physics. Where did he get his technical degree, some diploma mill?

  53. 58

    “On page 29, petitioner makes the ludicrous and plainly incorrect argument that the CAFC’s decision would allow the patenting of a signal per se if the signal was audible.”

    Actually, what they wrote was that “Mr. Nuitjen’s signal could be patentable,” which was written in the context that the FC allegedly suggested signals are not patentable because they require equipment to be perceived. Not quite the argument you painted it out to be.

    “Every other page of the petition contains statements that are most accurately described as wrong or misleading.”

    Classic MM … long on accusations but short on substance.

    “I forgot to take into account the tender sensibilities of the signal patent specialists.”
    I’m sure that the sensibilities of those your referred to were unharmed. However, I believe you’ve insulted their intelligence. You may, in your real life, be able to BS your way through topics you know little about, but your routine has gotten old a long time ago.

    “For decades, applicants have sought patents on microwave ovens and methods of heating food with microwaves. For some reason, they never tried to patent the novel “food heating signals” themselves, i.e., the invisible collection of “transmitted energy” trapped inside the oven’s interior.”

    As already noted in subsequent posts, you really don’t a good grasp on the differences between a signal and a particular electromagnetic wave within a specified range of wavelengths. Microwaves have probably be present, literally, since the dawn of time. A signal, as claimed by Nuitjen, has not.

    “If the argument that “signals” were patentable “articles of manufacture” were as straightforward as its proponents believe, one would expect that the issue would have come up many many years ago and the PTO’s database would be filled with claims to “novel” phenomena.”

    This statement belies your ignorance as to how “signal claims” came to be popular and the extent of their current existence. It was the USPTO that popularized the use of signal claims. In a “Training Materials for the Examination Guidelines for Computer-Related Inventions” dated January 18, 1996, the following was given as an example of a statutory claim:
    A computer data signal embodied in a carrier wave comprising …

    The following is from MPEP § 2106 (Eighth edition, Rev 1, Feb. 2003):
    However, a signal claim directed to a practical application of electromagnetic energy is statutory regardless of its transitory nature. See O’Reilly, 56 U.S. at 114-19; In re Breslow, 616 F.2d 516, 519-21, 205 USPQ 221, 225-26 (CCPA 1980).

    FYI: A total of 1669 US Patent Publications are listed in which the term “data signal embodied” is found within a claim. Also, a total of 797 US Patents are listed in which the term “data signal embodied” is found with a claim. Add “carrier wave” and that 797 number drops to 661.
    The earliest issued patent having claims with both “data signal embodied” and “carrier wave” is U.S. Patent 5,802,286, issued September 1, 1998 and filed May 22, 1995.

    Like MM, who has the distinguishing quality of posts that are long on noise and short on signal, the USPTO has the distinguishing quality of not being able to make up its mind regarding statutory subject matter despite AT&T and State Street Bank being decided 9 years ago.

    “But let’s be creative, signal-proponents! Why should only the carried message be important for the signals novelty? If the signals travel through or are reflected (partially or totally) within a novel space (defined in the claim) then why shouldn’t that novel “phenomena” comprising that space with those vibrating photons be patentable?”

    Other classic MM tactic. Make up a silly hypothetical that has little relevance to the issues at hand, point out its silliness and then use the silliness of your hypothetical to support your point. Your act is really, really old.

  54. 57

    Exasperated writes:
    “As a second career attorney, … Maybe the briefs should try to educate the judges instead of using non-sensical analogies. ”

    A couple of things in response.
    First, a great many of us had a former career in tech. You are neither alone nor special.

    Second, the word “brief” generally means you have only 25 pages in which to set out your case. Are you going to waste 24 of them explaining Schrodinger’s equation?

    Thirdly, you should recall that Jerry McGuire movie where Renée Zellweger says, “You had me at ‘yes'”. Then recall that most judges started life as the English majors in your Intro to Physics class who said, “You lost me at the spelling of Schrodinger’s name.”

    Fourthly, if you have read this far down into my comment, you have an attention span longer than most judges. We live in a world of snappy sound binds, not deep and prolonged thought. Don’t expect the latter from the young ones among today’s crop of CAFC judges. Remember what they taught you in claim drafting class: Moore is less. ;-)

  55. 56

    Thanks for the thoughts, wasn’t me.

    Please note, I’m not really preoccupied about being right like that other guy. And incidentally not sure you’ve characterized the positions quite right.

    In any event, I, too, recognize that it is an open debate, which is essentially what I originally posted. I echo your point that the signal debate does not fit into neat packages like Mooney would have us believe it does in his tidy world.

    Also, I think there are certain ignorant presumptions fomented by ignorant assertions, along the lines of what Exasperated pointed out, that get in the way of ever getting to a sensible outcome on these kind of issues.

    You also make a fairly good point that in any case we are limited by the words used by the applicant and a certain amount of extrinsic evidence. Which is also why it is useless to debate the merits of “signal claims” since the patentability really depends on the merits of the individual case.

  56. 55

    I see we’re up to our usual thread degeneration.

    A signal is a signal if the court says it is, and signals are not patentable because the court says they’re not. These are legal constructs, not principles of logic or physics. Therefore we can circle all day and never come to an answer.

    Could any artificially generated electromagnetic wave be a signal? Certainly reasonable, and then Mooney is right.
    Could a signal be any indicia of information intentionally passed by any method? Also reasonable, and then CaveMan is right.

    The world doesn’t fit into the neat little boxes that the law must. It was decided that the information passed, and things that only exist transiently, do not constitute patentable material. There are phenomenon in the real world that come close to those categories, but don’t necessarily fit the reason the courts decided thus. When one of these breaks the mold, the courts will adapt and better define what the heck they mean by “signals”. But the answer will never be found in the dictionary or the back of a physics textbook, because not only were the judges not thinking that deeply about it, they were limited to using words that were relevant to the cases at issue, and not words selected from a clean slate to convey exactly what they intended.

  57. 54

    Odd Mooney that every post you make has some sort of subterfuge or reference to alleged subterfuge. Just like the idea that all Examiner Interviews are cloak and dagger sessions, which really gets you whipped up into a frisson. I think you must be a frustrated member of a high school forensics team what with all your talk about “straw men” and the like all the time. Have you ever tried to just deal plainly with what is put in front of you?

    “However, a transmitted microwave is a signal as surely as a radio wave or a beam of light is a signal.”

    This is where your ignorance of technology is astoundingly clear.

    A simple transmitted microwave is not a signal any more than a block of raw silicon is an integrated circuit.

  58. 53

    “we end up with signals being like a microwave.”

    Odd that a comment about “educating” people begins with a strawman. Nobody here said that signals were like a microwave.

    However, a transmitted microwave is a signal as surely as a radio wave or a beam of light is a signal. Unless the patentability of a signal resides in its information content (fatal), a novel collection of microwaves of various frequencies, be they reflected and bouncing around in a defined space or simply “passing through” that space, should be as patentable as any other signal (again, I’m just taking the proponents’ position to its next step; nothing extreme here).

    “Maybe we should be trying to understand and explain the technology by first learning about the technology.”

    Okay, then you teach me why a signal carrying a digital watermark is patentable but a light signal carrying to my eyes a series of words describing a novel method for brewing beer is not patentable.

  59. 52

    “ZZZZZz ….” spoken like a true liberal arts major. Sorry this is all too hard for you to grasp Mooney. UPS is still hiring, and, speaking of tight pants, I hear that the color brown is slimming.

    I think Exasperated has a point. Poseurs like Mooney should stick with the nuances of place settings and wine selection if they can’t stay awake long enough to learn about the actual technology at issue.

  60. 51

    As a second career attorney, one thing that always distressed me about patent law is that too many lawyers try to find some analogy to understand and explain the technology instead of actually learning about the technology. So, we end up with signals being like a microwave. Or, signals are like a truck. Beep! Wrong on both counts.

    How about this for a brainstorm: technology is technical. Maybe we should be trying to understand and explain the technology by first learning about the technology. Maybe the briefs should try to educate the judges instead of using non-sensical analogies.

    Personal injury attorneys learned this a long time ago. If they are trying to collect damages for a soft tissue injury they don’t say “a soft tissue injury is like when your pants are too tight, and then you bend over, but you don’t actually rip your pants, but they get all stretched out, and then they don’t fit good anymore.” They bring in pictures and graphics and experts and they try to bring understanding of the medicine/technology behind the injury.

  61. 50

    “While DC and Daylight might be “natural” in the truest sense, and while a sensitive receiver can pick up randomly correlated energy in certain bands, and while a DC impulse and other anomalies can create in band energy, there is nothing “natural” about, for example, a continuous”

    Zzzzzzzzzz…. was that you, CaveMan? More like The Sand Man.

    You aren’t even trying to address the basic issues. The argument that you have to be a physics professor to truly understand why signals are patentable is weak at best, ridiculous at worst. I’m just taking the signal patent proponents’ arguments at face value, CaveMan, and following them where they lead. Nobody likes where those arguments lead, it seems. The signal patent proponents simply want *their* signals to be patentable because … well, ecause they’ll allegedly feel so bad that they’ll stop trying to invent the greatest signal ever.

    I doubt it.

  62. 49

    teacup, I recommend reading ATT v. Microsoft case to understand the great importance of Leopold’s comments.

  63. 48

    Mooney, as someone recommended, stay away from the technological aspects of this topic as you are embarrassing yourself. While DC and Daylight might be “natural” in the truest sense, and while a sensitive receiver can pick up randomly correlated energy in certain bands, and while a DC impulse and other anomalies can create in band energy, there is nothing “natural” about, for example, a continuous wave carrier at, say, 2.4GHz. Less natural still if you then modulate or burst that carrier signal with an information signal.

    Also here is a case study of Mooney’s dissembling:

    ” ‘Microwaves in an oven aren’t a message about heating.’

    Try to convince last night’s ravioli, my friend. ”

    Sounds like some kind of coup de grace, eh?

    Sadly, although Mooney is quite familiar with microwave Ravioli, al solo, (note for subject Mooney’s psychiatric record: the problems may be based on a nutritional and human contact deficiency) the above quote, while appearing to contradict the premise actually supports and, in any case, supports the notion that the messages ARE the heat.

  64. 47

    Now I know what e#6Ks problem is: a fundamental misunderstanding of basic science. Perhaps the PTO was a last chance at something resembling an engineering career after getting those Cs and Ds in physics and basic electronics. Aren’t we lucky?

    FYI, e#6K, atoms don’t “move” in a wire, unless that wire happens to be a gas filled tube. Even then, the movement of atoms of gas within a space, undisturbed by outside circulating influences, is generally random and relatively confined. Even atoms of gas would not just propagate past other atoms of gas in a tube.

    What is more accurate is that, for signal propagation, electromagnetic energy is transferred between particles in a substrate including air, a wire, a waveguide(optical or eletrical), or the like. Even free electrons rarely exceed their drift velocity except in a semiconductor specifically doped to have an excess of free electrons.

  65. 46

    link to usptocareers.gov

    “Is a Patent Examiner expected to work overtime, on evenings and weekends?
    No evening or weekend hours are expected of our employees, but the U.S. Patent and Trademark Office does offer paid overtime and encourages all of our employees to take advantage of it.”

    LOLOLOLOLOLOLOLOLOL

    what they mean is, “at gs5 no OT should ever be required”.

  66. 45

    Protip: When an employer offers you a recruitment incentive you should know right away the job sucks. You’ll see this especially with gov. employers trying to compete with the public sector over limited manpower resources when they know their job sucks and that people intelligent enough to do a good job don’t want to work there.

    link to usptocareers.gov

    Live and learn I suppose.

    Also, the petition sucks because of the same things MM said in his very first post in the thread iirc. Basically everything the app said was a nontruth made to look like a truth or an irrelavancy made to look like something relavant.

  67. 43

    curious, your answer lies upthread.

    scroll up — UP! — and find what you seek.

  68. 41

    “Microwaves in an oven aren’t a message about heating.”

    Try to convince last night’s ravioli, my friend.

    Seriously, so now the signal proponents are saying that it’s the *message* carried by the signal that makes signals patentable? If so, you’ve impermissibly pierced the veil to the patenting of “novel” information. Game over.

    My point in my previous comment is based upon a truly “signal-friendly” viewpoint (which I don’t hold). It doesn’t matter if microwaves (in the generic sense) were old. All electromagnetic waves in the generic sense are “old.” The natural frequency spectrum is what it is.

    But let’s be creative, signal-proponents! Why should only the carried message be important for the signals novelty? If the signals travel through or are reflected (partially or totally) within a novel space (defined in the claim) then why shouldn’t that novel “phenomena” comprising that space with those vibrating photons be patentable?

    Sure, nobody may want to patent that space with signals but since when is the fact that some industry merelyh *wants* to patent something an important consideration in determining patentability under 101 (I mean, other than in that awful petition for cert)?

  69. 40

    Leopold wrote, “If the signals are generated by machines outside of the US, using methods that are implemented outside of the US, then there is no liability.”

    Sure. And, it’s expensive to file in lots of foreign countries. But an applicant who is too stingy to file foreign and, instead, seeks to interpret 101 so that it can better cover foreign activity is hardly sympathetic.

  70. 39

    Furthermore, let me ask you this, let’s assume we’re talking about a square wave, or a sin wave, just a standard wave. Are you aware that it takes a certain special arrangement for them to show up as those kinds of waves? If I use a different arrangment of mechanical parts I could make a sin wave appear as an undulating circle, I could make the square wave appear as a circle that turns on and off. Does that change the signal? No, because the signal is merely one way of viewing something that we cannot percieve under normal conditions. When your ears interpret a noise as a “boom” you just interpreted a signal a certain way. What of when your ears interpret a high frequency noise? You can’t even tell it ever existed, but your K9 friend might be going nuts. What was the signal? It was what we have terms a high frequency signal, by having portrayed the signal on special machinery that depict the frequency of the signal’s occurance. What of a high voltage signal? All that is is a signal that we term to be high voltage because of a. it is produced by high voltage or b. it shows up on specialized machinery that depict it as having high voltage (or possibly c, we see something fried by it). I could make a machine that shows a HF signal as a triangle that has it’s top chopped off every wavelength, but did I change the signal? I could make a machine that shows a high voltage signal as a big square. Does that change what the signal was? No. In all instances you are relying on a machine that may be industry standard to depict an immaterial thing.

    In other words how would you describe a signal in a manner appropriate to actually describe what it is WITHOUT also describing the machine you used to make it, or alternatively the method used to make it (maybe using a method to make it a product by process)? Answer is, you can’t.

  71. 38

    “In response to other posts… a signal is a process? Say what?”

    Read the argument that Nuitjen made originally. They felt that the signal was a process. And it is, there is no way on gods green earth could you term the actual atoms in a wire moving the “signal” any more than you could term the particles in an em wave the actual signal, the actual signal is the arrangment of particles or the rate of movement of the atoms. The “signal” part of an em wave being used as a signaling method is still the action of causing the em wave to be a certain way, not the certain way the em wave is itself.

    Why is a signal a process? Because that’s what you have in any “signal”, performing a process. In Nuitjen they felt that since the signal had to be “encoded” then it was a process. Alas, the claim was not created as a method claim and thus the court commented that the fact that the signal had to be encoded merely meant that they should have worded the claim as a product by process (which would have been statutory as a product).

    Let’s be clear, when you say, “this tv gets signals and turns them into pictures” what do you mean? Do you mean that physical signals are plucked from the air and made into pictures? No, what you mean is that the tv is signaled to behave in a particular way by a station somewhere. In other words, when you look at the broadest definition of signal:

    1. anything that serves to indicate, warn, direct, command, or the like, as a light, a gesture, an act, etc.: a traffic signal; a signal to leave.

    What it means is that the light is used in such a fashion as to indicated, warn, direct, command or the like, it does not mean ONLY the light itself. Thus, it is the “process” of using a light to signal someone something that makes the light a signal. The light itself when “encoded” in a certain manner fails to communicate jack nor squat until it is used as a signal. Therefore, in claiming a signal as a product you are inherently attempting to mix in a process limitation (signaling using the light as a signal) into a product claim. If you do this in a normal product claim the method step will not count towards patentability. Thus, you only have two ways of claiming a signal, a process, or a product by process. But, in claiming enough of the structure/process of encoding to make it 101 compatible you end up failing under the prior art nearly every time, or else you have a statutory claim and you get a patent (or a 112, if necessary). That’s why everyone wants a signal as a product claim.

    Even if we look to the definition of signal as used in electronics:
    5. Electronics. an electrical quantity or effect, as current, voltage, or electromagnetic waves, that can be varied in such a way as to convey information.

    It is the actual Effect that can be varied. I.e. it is the actual current, voltage, or wave that can be varied. But what does it mean when we say “current”, “voltage”, or “[em] wave”? We mean either the rate of movement of atoms (current), the potential difference (voltage), or arranged particle stream/wave (em wave) that can be varied. Now, obviously a rate of movement of atoms that can be varied is not a physical thing, it is a measurement of a physical phenomena. Equally obvious, a potential difference is not a physical thing, it is a difference of an immaterial thing between to charged material things. And finally, we see that an arrangment of a particle stream/wave is not a material thing, it is an immaterial property of a material thing resulting from a specific method of making the material thing. Again, you have to claim them as processes/products by processes and nobody wants to because in so doing you do exactly as we’ve been doing for the last 50+? years or so.

    I find it difficult that a learned mind could see any differently unless it was intentionally trying to. Thankfully you lawyers haven’t convinced the court to intentionally try to make this malarky statutory as you have so many other things.

    I’m sending you a signal, when you receive it, let me know if you believe the signal was the arrangement of LCD components in your monitor, or do you think the signal was that you’re all pretending to be dumb? If you guessed the later, +1. If you guessed “c” the electricity running from my workstation to the fiber optics (or anything else technical between us) -100. If you guessed “d” hand motions (process steps, leading to process steps within my hardware and yours) to input commands into my computer to tell you you’re pretending to be dumb +100000000000000.

  72. 37

    Mooney, I agree with curious. Microwaves are a subrange of the electromagnetic spectrum and were well known prior to the invention of microwave ovens.

  73. 36

    “For some reason, they never tried to patent the novel “food heating signals” themselves, i.e., the invisible collection of “transmitted energy” trapped inside the oven’s interior.”

    They probably would not have survived a 102/103 challenge.

  74. 35

    In other news, re
    “food heating signals”

    See what I originally said about what “signal” means. Microwaves in an oven aren’t a message about heating. They are energy that cause heating.

    OK, you’ve convinced me that you really are talking out of “your area of expertise”.

  75. 34

    Malcolm

    “Exactly. Since when have “phenomena” or other novel events been deemed patentable subject matter?”

    Semantics…

    In the terms that I posited, a signal is a man made product of a man made process… “anything under the sun that is made by man”. Phenomenon schmenomenon.

    My own comment on the whole (or, if you will, hole) area of expertise thing was only that I thought it was an amusing play on words re “talking out of…” >> area of expertise = a$$.

    What do I care, I’m from Yoorp.
    (answer: I have to prosecute claims in Yoorp from PCT cases drafted by Merkins and I have to instruct prosecution in Merka of claims drafted in Yoorp)

    In response to other posts… a signal is a process? Say what?

  76. 33

    “…then you are broadcasting something that lies in the realm of copyright”

    Umm, it might be, but not necessarily. I suppose that a watermarked music file might be a derivative work of the copyrighted music file. But, encoded header data, for example, that provides information about an associated file is probably not creative expression.

    “or …your signal is affecting a device present in the USA for which the astute patent attorney drafted a claim for”

    Possibly, although the inventive concept behind the signal might have been to make an old receiver do new tricks. Besides, I’d rather have two infringers than one. And I probably don’t want to sue end users.

    “or …you cleverly found a way to evade infringement and, shucks, the patentee should have filed in the country of the signal’s origin”

    My job as a patent prosecutor is to help my client minimize clever ways to evade infringement. Of course I could also file a patent in China, or Lithuania, or both. But enforcing them is another matter. I’d much rather enforce a US patent here.

    Hey, I’m not necessarily defending signal claims – indeed, I used to be an advocate, but some of the other advocates here have just about changed my mind. I’m just explaining why a signal claim, if it were allowed, would be quite useful to a patentee. Thus it’s not just an academic exercise.

  77. 32

    Gobhicks: “Signals in the present sense are not natural phenomena (whether the electromagnetic output of a star is a “signal” is a moot point). They are artificial, man-made phenomena”

    Exactly. Since when have “phenomena” or other novel events been deemed patentable subject matter?

    For decades, applicants have sought patents on microwave ovens and methods of heating food with microwaves. For some reason, they never tried to patent the novel “food heating signals” themselves, i.e., the invisible collection of “transmitted energy” trapped inside the oven’s interior.

    I wonder why. If the argument that “signals” were patentable “articles of manufacture” were as straightforward as its proponents believe, one would expect that the issue would have come up many many years ago and the PTO’s database would be filled with claims to “novel” phenomena.

    Lastly, the comments that characterize me as “out of my area of expertise” but which fail to show a single example of a fundamental error on my part are rather pathetic.

  78. 31

    “it must be fun to go around throwing other patent specialties under the bus”

    Oh, gosh, I’m so sorry. I forgot to take into account the tender sensibilities of the signal patent specialists. Our nation weeps for them. Perhaps Congress can provide a one-time only tax break for those unlucky few.

  79. 30

    Leopold, let me help you finish that sentence.

    “If the signal claim is patentable, and you import the signal into the US …”

    …then you are broadcasting something that lies in the realm of copyright
    or
    …your signal is affecting a device present in the USA for which the astute patent attorney drafted a claim for
    or
    …you cleverly found a way to evade infringement and, shucks, the patentee should have filed in the country of the signal’s origin

    Do we really need to get all esoteric and talk about “importing” signals?

  80. 29

    “So is this whole argument academic? What exactly is wrong with the existing classes that signal claims miraculously fix?”

    Nothing, if you’re focusing simply on whether you can obtain any claim at all. Plenty, if you’re trying to enforce a patent under certain circumstances. If the signals are generated by machines outside of the US, using methods that are implemented outside of the US, then there is no liability. If the signal claim is patentable, and you import the signal into the US …

  81. 28

    “2600 — ‘novel, optimal spectrum that reduces eye fatigue’ — if the Applicant submits proof that these properties are unexpected, why shouldn’t it be patentable (I realize that many will disagree and look forward to reading their comments)”

    That would be a pretty good use for a signal claim.

    But there’s a load of prior art, namely, any painting containing that color. Then all you need is an expert to say, “Yes, that painting relaxes me.”

  82. 27

    “My point is that signals should not per se be unpatentable.”

    I can agree with that.

    However, I’ve yet to see a signal claim that doesn’t a) inferentially claim a method or device for generating the signal or b) read all over the prior art because the attorney didn’t do a).

    So is this whole argument academic? What exactly is wrong with the existing classes that signal claims miraculously fix?

  83. 26

    2600 — “novel, optimal spectrum that reduces eye fatigue” — if the Applicant submits proof that these properties are unexpected, why shouldn’t it be patentable (I realize that many will disagree and look forward to reading their comments)

  84. 25

    Suppose I invent a 7-string guitar that play really relaxing music. Guitar, patentable. Method of playing an instrument, patentable. Sound waves encoded by a 7-string encoding scheme? Sure, if I make up fancy words like packet, phase shift, and ack bit. Copyright, shmopyright.

  85. 24

    This is what i get for bothering to look at comments of this blog. I shouldn’t even bother. I apologize, I half read the above remarks, as I was trying to get work done. My point is that signals should not per se be unpatentable. However, if you are merely claiming information being transported by a medium, whether ink and paper, or data by electromagnetic signals, or information stored on a hard drive, the printed matter doctrine wins. However, if a further functional relationship exists between the two, then patentable subject matter should be found. I think I sensed an attack on software patents, and overreacted. Again, my apologies. Hence the name, “sorry”…

  86. 23

    Suppose I invent a flourescent light bulb with a novel phosphor coating that makes the light bulb produce light having a novel, optimal spectrum that reduces eye fatigue, is more natural-looking, &c. than prior art bulbs. I know the phosphor would be patentable, as would the bulb having the phosphor.

    But, should the light emitted from the bulb be patentable under 101?

  87. 22

    So little depressions on a plastic disc are patentable but scribbles on paper are not? What if my scribbles mean something and I scan them with my scanner and my computer runs some program because of them, a la bar code? Anything you can transmit with EM radiation or little dents on a CD, I can transmit with a pencil and paper and scanner. Yours is patentable and mine is not?

    I’m well aware of the bar on printed matter. All signals are patentable except those that happen to be paper/ink based. How does that make sense? CDs can be printed with ink, so maybe it’s just paper that’s taboo for some reason. Seems arbitrary.

    Anyway, if you can explain how EM waves + air and recesses + plastic are interrelated while graphite + paper are not, I’m all ears.

  88. 21

    Oh, and let me explain a little further, while modern physics teaches that there are particles making up an electromagnetic wave that does not mean that the signal portion of the electromagnetic wave is in any way the actual particles themselves, but rather the effects that are causing the particles themselves to do what they are doing. Usually the thing that caused the effect is energy iirc.

  89. 20

    You guys are nigh on out of your minds. Signals as the product “carrying the load” of information. Hardly, the signal IS the information. When you speak, you create signals in the air, these happen to be sound wave signals. Those signals are the information that is being “carried” by the medium of the air, and the energy imparted thereto by your voice. The same thing applies to every other signal, light signals, electrical signals etc etc. The signal is no more a “product” of a machine than the moving of atoms in a human being when a bullet strikes them is the “product”.

    The arrythmia research tech inc. decision cited in Nuitjen is just about as bad as all this “signals are a product” bs in this thread. There is, by definition, nothing physical about signals. The signal is the arrangement of a physical thing, not the physical thing itself. For example, you can send a signal by arranging ink on a parchment. You can send a signal by causing atoms to move in a wire. You can send a signal with radio waves by causing an electromagnetic effect to be effected on objects at a distance. The effect itself, the arrangment, the movement of atoms, or the inducment of an electromagnetic effect at a distance is not a product, it is a process if anything. Just as Nuijten has suggested in his arguments. Nuijten has opted to claim his process in a way that does not recite steps. He instead claimed it as an improperly worded product by process. Too bad, so sad. Reclaim it as a process and the case is done.

    So what we have is that signals per se are is an “effect”. Sometimes the effect created can be discerned in a meaningful way by a reciever of sorts and then the signal becomes information. In any event, in order to claim an effect it has to fit in a statutory class, in this case you would have to state the process of creating the effect or the thing that makes the effect (i.e. the machine). End of story everyone can go home now.

    All that said, the alleged holding in Nuitjen about the having to be measurable without “special equipment” is a very bad thing to say, if that’s what they said. I cannot find it in In re Nuitjen. If they actually said that all of nanotech, and half of microtech goes straight out the window. I assure you that you cannot detect nanotech without special equipment.

    Someone needs to show me that part of the holding so I can send a mail to everyone in the office that all nanotech cases are now held invalid under 101.

  90. 19

    “2. Can I still get a patent if my signal is made of graphite and my medium is made of dead trees?”

    The longstanding printed matter doctrine makes it clear that printed matter cannot be the basis for patentability. For instance, you cannot patent a document that has a novel arrangement of characters on it. I apologize, I thought everyone was aware of this. That was not the point I was making. See In re Ngai, for example. To be patentable, there must be a functional relationship between the printed matter and the substrate upon which it resides. (2) shown above is unpatentable according to longstanding patent law. As someone indicated above, for Nuijten, the functional patentable aspect is the encoding. For computer program product claims, the software code is functional descriptive material, and when recorded on a computer-readable medium, the medium and code become interrlated and thereby statutory. Anyway, as long as the signal has a functional relationship with the medium, your paper and lead argument is not relevant.

  91. 18

    1. If I generate a novel signal on a medium can I get a patent?

    2. Can I still get a patent if my signal is made of graphite and my medium is made of dead trees?

    If 1 is yes, then 2 is yes also, and there’s going to be a ton of prior art for any signal claim. Compressed data-stream signal? That’s 1940s shorthand with an obvious updating in medium. And that’s not even mentioning punchcards.

    If you’re going to use some strained reading of “manufacture” to patent signals, beware of the prior art you’re going to unleash.

  92. 17

    “Mooney is talking out of his realm of expertise again”. Well, I’ve never heard it called that before but: brilliant! Simultaneously pejorative and libellous!”

    Actually not as harsh as it seems. Far as I can tell, Mooney is a biotech or chemical patent attorney. Correct me if I’m wrong. Signals, software, are thus not in his/her realm of expertise. He/she frequently opines on the unpatentability of software, signals, etc., which are out of his realm of patent and technical expertise. Sure, you can have an opinion, and it must be fun to go around throwing other patent specialties under the bus if it is no harm to yourself, but unless you practice as an engineer, computer scientist, or attorney in these fields, your opinion means little to me. Not to mention being horribly flawed, as in this case.

    Although, can you libel a pseudonym? If so, let me know. I didn’t know libel could be so much fun.

  93. 16

    Coast:

    There was an unclear question from an audience member. I think the question was asking whether he would support doubling fees to, as you suggest, provide additional money so that the Patent Office could address the backlog (through Examiner training, retention, hiring more Examiner’s etc.).

    The Patent Office also seems to see little value in personal interviews, as many of the proposals with respect to the Examiners’ work environment (satellite offices, work at home, hoteling, no minimum time in office, etc.) do not facilitate in-person discussions.

  94. 15

    Dear Mad Prosecutor:

    Is Doll suggesting that additional monies are needed by the Patent Office to obtain the resources needed to handle the backlog?

  95. 14

    Anyone else listening to the Patent Commissioner conference. John Doll just expressed support for doubling patent office fees to address the backlog . . .

  96. 13

    Another good argument, Gobhicks. As an aside, I’ve always thought it is quite problematic that claims can be written to describe what the invention DOES rather than what it IS. (But the CAFC blesses that practice.) Your argument addresses the function/structure problem to some extent, too.

    As for myself, I’m in the chemical arts so I basically never worry about statutory subject-matter issues. It’s just intellectual curiosity for me. As some of the Bilski briefs suggest, better to use 102, 103 and 112 to deal with patentability rather than 101.

  97. 12

    PS

    Nuitjen Claim 14:

    “A signal with embedded supplemental data, the signal being encoded in accordance with a given encoding process and selected samples of the signal representing the supplemental data, and at least one of the samples preceding the selected samples is different from the sample corresponding to the given encoding process.”

    Particular and distinct?

    PPS

    “Mooney is talking out of his realm of expertise again”. Well, I’ve never heard it called that before but: brilliant! Simultaneously pejorative and libellous!

  98. 11

    Sean

    Ah, but suppose there was a precedential decision that shifted the burden of proof of novelty onto the applicant in such cases…

    Alternatively:

    112 The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

    A signal that comprises arbitrary data encoded according to an inventive encoding process is not what has been invented. The invention is the encoding process. The actual physical characteristics of the signal are arbitrarily dependent on the data to which the process is applied. A “conventional” product claim defines specific physical characteristics that can be recognised in an infringing product. A claim of this type defines a signal in terms of characteristics that are arbitrarily variable (dependent on arbitrarily variable data), and so inherently fails in “particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention”.

  99. 10

    “Thus, according to Mooney’s argument, a truck is not patentable subject matter.”

    It’s exactly the sort of credibility-stretching “logic” in the above comment that runs all through the petition and it’s why the petitioner will be patted gently on the head and told to run along.

  100. 8

    Nice argument, Gobhicks. That is something that has been nagging at me for awhile, but I haven’t articulated it.

    Unfortunately, the burden to show lack of novelty in the signal is supposed to fall on the examiner/PTO, and that burden would be impossible to meet if the problem is tackled in the ordinary way of finding “prior art.”

    On the other hand, if one could find any ordinary signal that COULD have been produced by the encoding process (in other words, backwards-mapping the signal to some other set of information) then it is shown that the process does not always produce a novel signal. Ergo, the product (and process) are not “novel” under CAFC’s rationale for product-by-process claims.

  101. 7

    Mooney is talking out of his realm of expertise again. I think everyone would agree that aspects of a truck would be patentable. A truck is tangible, no question, right? A signal is also tangible (electrons, photons), some people (e.g., Mooney) just have a problem with this, because a signal is mysterious – you can’t necesarily see or touch it. A truck is used to deliver a payload. A signal delivers a payload (information). A truck may start at point A and reach point B, and at least some of its payload may be received at point B. The truck may then continue on, driving away from point B. A signal may also start at point A and reach point B, and at least some of its payload may be received at point B. The signal then continues on, into infinity. If, in this case, the signal is transitory, then a truck is also transitory, both being transitory to the observer at point B. Thus, according to Mooney’s argument, a truck is not patentable subject matter.

    Granted, as wisely said by Caveman, the signal is not necessarily that important to patent. However, a signal should not be excluded based on subject matter grounds.

  102. 6

    Nuijten’s (“knight en”‘s ) petition is a well pleaded one.
    But then again, so was Galileo’s when he appeared before the faith based Inquisition.

  103. 5

    OK, first we need to be clear what we mean by a signal

    Merriam Webster online

    Main Entry: signal
    Function: noun
    Etymology: Middle English, from Medieval Latin signale, from Late Latin, neuter of signalis of a sign, from Latin signum
    Date: 14th century
    1: sign, indication
    2 a: an act, event, or watchword that has been agreed on as the occasion of concerted action b: something that incites to action
    3: something (as a sound, gesture, or object) that conveys notice or warning
    4 a: an object used to transmit or convey information beyond the range of human voice b: the sound or image conveyed in telegraphy, telephony, radio, radar, or television c: a detectable physical quantity or impulse (as a voltage, current, or magnetic field strength) by which messages or information can be transmitted

    For present purposes, exemplified by Nuijten, we are talking about meaning #4-b/c.

    More specifically, we are talking about information encoded according to some scheme. Generally, in cases of interest, novelty lies in the encoding scheme.

    Section 101 states:
    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    A signal in the present sense is plainly not a process or a machine or a composition of matter. If it is to be patentable it must be classifiable as a “manufacture”.

    Merriam Webster online

    Main Entry: manufacture
    Function: noun
    Etymology: Middle French, from Medieval Latin manufactura, from Latin manu factus, literally, made by hand
    Date: 1567
    1: something made from raw materials by hand or by machinery
    2 a: the process of making wares by hand or by machinery especially when carried on systematically with division of labor b: a productive industry using mechanical power and machinery
    3: the act or process of producing something

    In terms of 101, since “process” is mentioned independently of “manufacture”, we’re left with meaning #1.

    A signal in the present sense is plainly something that is “made”, usually by “machinery” (in the broadest 101 sense). “Raw materials”? – well, it’s made from raw something, be it electrons or photons or whatever.

    “Anything under the sun that is made by man”. Signals in the present sense are not natural phenomena (whether the electromagnetic output of a star is a “signal” is a moot point). They are artificial, man-made phenomena.

    Signals in the present sense are the products of processes. There is nothing controversial about the notion that a process for producing a signal is patentable subject matter, even when novelty lies only in the encoding scheme applied to the signal, nor about the notion that a machine for performing such a process is patentable.

    A product of a process will normally be patentable if the product has novel (and non-obvious) characteristics independently of the process by which it is made.

    Why should a signal which is a product of a process be treated differently from any other product of a process? I can’t see any good reason.

    Then, IF a signal encoded according to a novel encoding scheme is novel in itself, it should be patentable as a manufacture.

    BUT, for a signal claim defined by reference to an encoding scheme is to be valid, EVERY signal produced by the encoding scheme must be novel. Generally, the signal will be the result of the encoding scheme applied to some kind of data and the resultant signal will be a function of the data and the encoding scheme. If the data can vary arbitrarily then the signal can vary arbitrarily, and the probability (statistical certainty?) is that there is some combination of data and the encoding scheme that will produce a signal that is not novel.

    So, given a novel/patentable encoding process there is no basis for assuming that a signal produced by such a process is novel. Within the terms of this discussion, signal claims should be rejected as inherently lacking novelty, not as being non-statutory.

  104. 3

    You might want to ease up on the swagger Mooney. Again, if this topic was easy people like me would not get paid to do my job, and people like you would not have anything to read and comment on pretending that you have all the answers.

    All of that aside. It seems that patentability of the propagating signals in space seem to be in question, however, I agree that its not really a dire situation since, in practical terms, what you claim on either end of that expanse of space is what matters most. The method or device for forming the signal and receiving the signal and what you do with it when you receive it is most important.

    However, it’s not a slam dunk as you suggest. Here is a posit, let’s say you design a transmitting array of some kind that focusses energy in a particular spot in space for causing reception or reaction only in that spot. Is the focussed signal itself an article of manufacture if it has properties that deviate from its natural form? I would say yes since you are altering the properties of the particles in the space in the focus of the array.

    And how is this that different from allowing genetic modifications to be patentable? Since genes, like particles in space, are fairly ubiquitous and ordinarily would not be patentable in their unmodified form, how is it that particles that are modified by transmission energy any different (except for substantial detection/enforcement issues).

    What about the plasma itself in a plasma energy device? Let’s say you are focusing energy in a place in space so as to form a plasma, is the plasma itself patentable? I think you can find many claims of this type. It’s one thing if an active material such as a gas is placed in a chamber to cause the plasma formation. Clearly such a substrate itself and method for forming a plasma with it, and even the resulting plasma would be patentable.

    You can also find many claims for emitting electron beams and then doing all kinds of things with them such as confining them with magnetic fields and the like, where the beams are claimed elements.

    Isn’t a signal just a modification of electrons or other particles in space?

    Just saying.

  105. 2

    Perhaps the largest gaping hole in the petition (page 28):

    “Under Breslow, a composition of matter can be transitory; under Nuitjen, a manufacture cannot. Rather than clarifying the patent law, this decision simply adds confusion and will breed litigation.”

    First of all, the CAFC’s Nuitjen decision does not “add confusion.” There is no contradiction even in the petitioner’s own characterization of the case law. Signals are not compositions of matter. Breslow’s holding is inapplicable to signals. In Nuitjen, the CAFC says signals are unpatentable because they are not tangible articles and because they are transitory. Where’s the confusion? Exactly who is confused by what is a signal and what isn’t? Where is the evidence of this confusion? The “added confusion” is due to the wordsmithing by the petitioner, not by the CAFC.

    Likewise, the petition goes off the reservation when it discusses the “tangible” aspect of the petition : “Whole fields of technology could be excluded from patent protection just because they cannot be seen, heard, touched or smelled in the traditional sense. As a result, companies will not invest in research and development in these fields …” (page 25)

    Again, no evidence is provided to support this dire prediction. The reason no evidence is provided is because the evidence shows unequivocally the opposite of what the petitioner claims, i.e., the development of technology for sending and receiving myriad types of signal has proceeded for the past 150 years without a hitch and without the granting of patents to signals per se.

    On page 29, petitioner makes the ludicrous and plainly incorrect argument that the CAFC’s decision would allow the patenting of a signal per se if the signal was audible. This is probably the clearest example of the petitioner trying terribly hard to misread and quotemine the CAFC’s decision to turn it into something it is not. The CAFC is not saying that patents are granted only to compositions that human beings can sense without equipment. The CAFC merely pointed out (in response to the petitioner’s arguments) that describing signals to the PTO as “man-made” and “physical” is like characterizing an elephant to a landlord as “a short-haired pet.”

    Every other page of the petition contains statements that are most accurately described as wrong or misleading. Petitioner focuses relentlessly on imaginary technologies that will allegedly never be developed unless inventors are given patents to signals per se. Conspicuously absent amidst all the talk of “breeding litigation” is any discussion of the subject matter that will suddenly and necessarily become patentable *if* petitioner’s wish should come true.

  106. 1

    I agree with footnote 5 in the Nuijten petition that Bilski will not resolve the Nuijten issues.

Comments are closed.