Business System Patents

Ex Parte Simpson, Appeal 2008-0569 (BPAI 2008)

HP’s patent application focused on software used to discover networked devices. Claim 32 was rejected for lack of statutory subject matter.

32. A device discovery service stored on a computer-readable medium, the service comprising:

logic configured to discover devices directly connected to a network that are not directly connected to a computer; and

logic configured to provide a user home service accessible with a network browser with a list of at least one discovered device that is available for use on the network.

This claim is interesting because like Wasynczuk, it involves a system claim that is not patentable subject matter.

‘These claims are directed to a “service” stored on a computer-readable medium, the service comprising logic “configured” to perform functions. Logic, read with reasonable breadth, includes descriptive material indicating the algorithm or reasoning behind an operational computer program, not the program itself. As such the claims are addressed to nonfunctional descriptive material, which is non-statutory. “When nonfunctional descriptive material is recorded on some computer-readable medium, in a computer or on an electromagnetic carrier signal, it is not statutory since no requisite functionality is present to satisfy the practical application requirement.” MPEP § 2106.01.’

Similarly in Ex parte Godwin (BPAI 2008), the Board found that IBM’s “server system” claims non-statutory subject matter. In that case, the server was recited in the claim preamble and thus non-limiting.

215 thoughts on “Business System Patents

  1. 215

    Of course InHouse. I understand. Quite rightly, lawyers don’t surrender all their training and their instinct, till there’s no conceivable alternative. Meanwhile, you might like to reflect on the unique key point of PSA, that it defines a gap by two fixed points (D1 and the claim). Debate sharpens, when it is confined to argument whether jumping that gap was or was not obvious, for the disclosures of the two documents, one at each end of the gap, are inescapable. There’s only that very specific gap to debate. Hence, in oral proceedings at the EPO, argument about obviousness comes late in the day, and is usually quick and painless.

  2. 214

    Max,
    I agree with both of your primary points. I don’t know about your conclusions, but with my somewhat limited exposure with the EPO, there is much to like about the European system. Many of the flaws in the U.S. system are not so much the principles but the application, and I’m not yet ready to concede European superiority. Although searches and first actions are clearly superior there.

  3. 213

    Well, InHouse, I am sorry your experience of PSA has been so dispiriting. In your example, Inventor writes in his app that his idea to reduce gas consumption in a car, is to install two motors (hybrid) instead of the conventional single ic motor. D1, then, is the conventional car with but one motor, an ic engine. The technical effect is less gas consumed. Is there in the art a hint or suggestion that the way to reduce gas consumption in cars is to rip out the ic motor and install in its place not one engine but two. Seems unlikely to me. As you say, favourable to inventor.

    Alternatively, you write, a vindictive EPO will define the OTP as “How to install a plurality of prime mover technologies, each optimised for different driving conditions”. Your fantasy, I fear. “Less gas” really is a performance enhancement, a problem solved. But “different prime movers for different driving conditions” isn’t a performance enhancement or a technical effect, is it? Rather, it is a combination of technical features, which is a solution to the OTP of “how do I use less gas?” Now, if indeed you find yourself facing such an objection, you should firmly tell the EPO Exr that he is using impermissible hindsight knowledge of the claimed subject matter (Hybrid) to define the OTP. He will back off, for sure.

  4. 212

    “It is “verboten” (nice word, that, eh?) to rely on any knowledge of the claimed “solution” when formulating the objective problem.”

    That is just it. It is also “verboten” to rely on hindsight for a 103 rejction in the US, but I bet every prosecutor on this board has suffered from hindsight. Every legal test would work if you could guarantee that it was followed exactly without subjective influence, but you will always have that subjective influence. And as to my crude example above, both problems could be established without looking at the solution, so the Examiner/EPO board can justify whatever they want.

  5. 211

    InHouse: It is “verboten” (nice word, that, eh?) to rely on any knowledge of the claimed “solution” when formulating the objective problem. That will take care of your worry, every time. Pre-issue, you need competent EPO counsel, alert enough to object when the Exr formulates the problem wrong. After issue, in opposition proceedings, pray that counsel on the other side gets it wrong too. When you patiently explain to the tribunal what is the objective problem when following PSA correctly, you optimise your likelihood of success. When you tweak your claim, relative to D1, to fine tune the “difference” (particularly affective can be to change a single word in the preamble of the claim) you shift the “objective technical problem” too. Try that.

    PDS: Why do the courts in European countries not use PSA? Because judges in Supreme Courts are not in the business of throwing overboard a hundred years of settled jurisprudence just because some Patent Office is quietly using another approach, which must be defective because it’s so simple. And anyway, why should I bother myself to try to understand it? My fellow judges will think I’ve departed my senses, if I start to use PSA. It is indeed a hard task to sell PSA outside EPO circles. But, let’s ask experienced corporates that frequently launch or suffer oppositions at the EPO (Boeing, Procter & Gamble, Johnson & Johnson, to name but three). Ask them if PSA is 1) efficient 2) is impartial, as between inventors or opponents, and 3) is fair.

  6. 209

    “imperfect appreciation of the objective facts”

    That is a classic line, and I’m sure some litigators will make beaucoup Euros/Pounds on that line alone.

    Every analysis is objective when there is only one person involved. However, it is the addition of the second or third person, etc. that always seems to muck up the works.

    I must admit, you are definitely an attorney because few outside the attorney world can spin as good as that.

    “There are disputes post-EPO because the national courts don’t (yet) practise PSA.”
    Perhaps you should attend to convincing your own side of the pond to follow these precepts that you have so vigorously lobbied for. If your own national courts don’t apply them, why should we? Not a very convincing endorsement.

  7. 208

    Max,

    So, if the App is for the first hybrid internal combustion & electric car, and D1 is a fuel efficient internal combustion car that uses 8 cylinders for normal driving and 4 cylinders for cruising, is the OTP “how to make a more fuel efficient car” (good for the applicant) or is it “how to make a car that utilizes different power sources for different driving conditions” (not as good for the applicant)?

    I am not saying I don’t like the PSA, however the crude example above illustrates the problem in that if you get a panel that doesn’t like your invention, they can take care of it quite easily by designing the problem to point at your particular solution, which can be done for any invention. Therefore, while the PSA can work, it, like most other patentability tests, is far from perfect.

  8. 207

    InHouse: There are disputes at the EPO because there is imperfect appreciation of the objective facts, till the denouement (and because the prize is valuable enough to fight for, while there’s still any chance). There are disputes post-EPO because the national courts don’t (yet) practise PSA. The “Objective Technical Problem” emerges involuntarily (therefore NOT subjectively), as the simple, ineluctable “difference” between two docs written (committed to eternity) BEFORE the date of the claim, namely, D1 and the app.

  9. 206

    It is my suggestion that obviousness outcomes at the highest instance of the EPO are largely predictable, objective not subjective, but only because of PSA.

    If they are so predicatable, then why are there ANY disputes in this area, at the EPO during the procurement phase or in the courts at the enforcement phase? And in the end, isn’t it still subjective, in that SOMEBODY has to determine the “problem” and the “solution” and these are often disputed? You may feel that it is closer to being objective than the US system (which it may very well be), but I don’t think you can say that it is 100% objective.

  10. 205

    Wasn’t: can we agree that:

    1. Till the Supreme Court pronounces on it, we don’t know, in the ultimate, whether any claim is or is not “valid”

    2. One measure of the efficiency of a system of law is the extent to which people “know” the outcome, without having to run every issue, in every dispute, to the highest court that will admit it.

    It is my suggestion that obviousness outcomes at the highest instance of the EPO are largely predictable, objective not subjective, but only because of PSA.

  11. 204

    MaxDrei,
    It was simply suggested to point out that there is no objective correct answer on much of this. Many folks here try to apply some sort of first-principles analysis to determine whether a claim with “system” should be patentable, or they pretend that a “signal” is identifiable and clearly unpatentable.

    The truth of these things is only what we agree to, and we have agreed to let the courts have the last say. The courts are sometimes inconsistent and sometimes make undesirable choices. Therefore, not only can the patent system not be derived through first principles, it can’t even be derived consistently from court cases.

    Thus, when the courts say a system claim is patentable, or not, it is in fact patentable, or not. Staring into the statute to derive why this violates some principle of the universe is utter nonsense. Where the courts have acted, and the legislators have declined to redirect them – that is the law. Arguments may focus on why the law is unwise, but it remains nonsense to declare that (in a U.S. example) Congress interacting with the Supreme Court has come up with something that is not in fact the law.

    Looking under a rock was an analog to science and the first principle derivers here. The stone tablets were an analog to religion and the “this is what patent law means because I’m enlightened crowd” who pretend that the words signal, method, functional, structure, software, business methods, etc. have some clear and independent meaning.

  12. 203

    “and no one is going to come down from the mountain with stone tablets to tell you the meaning.”

    I can some down from my mountain if you like.

    “You’re like e6K saying that the atoms are falling out of the wires if you tip them sideways…”

    Who said that? Oh wait, that must have been you making sht up to support your ineptitude.

  13. 202

    “I just am trying to say that a particular word in a preamble cannot in itself sink a claim.”

    It doesn’t sink it, but it doesn’t necessarily float it either.

  14. 201

    Malcolm,

    In Fargo they would say, “You betcha – you got that right.”

  15. 200

    “I just am trying to say that a particular word in a preamble cannot in itself sink a claim.”

    That’s false. Need an example to prove it, or can you think of one yourself?

  16. 199

    Sorry, not the Red Queen but from Humpty Dumpty, that well-known expert on semantics. He’s right, of course. If you deprive a word of its context, it’s inevitably meaningless. But we all knew that already, didn’t we?

  17. 198

    From personal experience, the EPO will object and seek clarification if it there is any ambiguity about whether a “system” claim is defining an “apparatus” or a “process”, but there’s nothing inherently wrong with a “system” claim.

  18. 197

    I’m glad to read of your success in the EPO, Eye, and its freedom from frivolous clarity objections. And, now I come to it, neither can I find in the EPO Guidelines anything negative about categorising claimed subject matter as a “System”.

    Wasn’t: Is not your quotation is from The Red Queen, and calculated to attract scorn? If so, I don’t yet see your point.

  19. 196

    Max, I just am trying to say that a particular word in a preamble cannot in itself sink a claim. I have written and successfully prosecuted literally thousands of claims before the EPO. While they do have some different clarity requirements, I have never had much trouble with claims that were originally well drafted for U.S. prosecution.

  20. 195

    Boy do we degenerate into some BS sometimes, must be a slow week at the office.

    You guys do realize this is ALL artificial. You’re not going to discover the meaning of signals, systems, or Beauregard claims under a rock, and no one is going to come down from the mountain with stone tablets to tell you the meaning.

    “When I use a word, it means just what I choose it to mean – neither more nor less.”

  21. 194

    Eye, you confirm that the ambiguous claim category “system” is “not a problem” at the USPTO and in the US courts. Only goes to show what a gulf lies between European ideas of what it takes to satisfy the “clarity” requirement on patent applicants, and the American idea of clarity. Vive la difference.

  22. 193

    I think Looney is reaching farther than that as you can see by the 1diotic posts a few upthread where he thinks that system claims are not statutory (he must have come to this conclusion while parking a patent attorney’s car).

    Actually the term regarding the “thing” at the beginning of the claim is not as important as what comes after it. If by system you mean “method,” then method is probably a better term to use. However, by itself, the word “system” is not a problem, especially if what comes after it is clearly statutory such as a collection of devices.

  23. 192

    Eye, I think Mr Mooney is unhappy that the word “system” embraces both a process (a rote learning system) and an apparatus (a telecoms system). Are you in favour of claims that begin: “An act or a thing (process and/or apparatus) comprising….” . If so, can you tell me why.

  24. 190

    “The idea that a system claim is vague goes beyond stoopid.”

    Well, pds’ hypothetical claim at 6:38 pm is certainly vague. Take it up with him or her.

  25. 188

    Sorry Mooney, but you are a total m0r0n. The idea that a system claim is vague goes beyond stoopid. Please see the example immediately above .

    Do you really park cars for a living? Or did you say you served shrimp at IP seminars?

    I sometimes get the idea I should give you a little credit, but then something like this. You’re like e6K saying that the atoms are falling out of the wires if you tip them sideways…

  26. 187

    AllSeeingEye: “There is nothing inherently wrong with a “system” claim except that enforceability is often more difficult.”

    And possibly in the near future, “more difficult” will become “impossible.”

    That’s how the cookie is crumbling. Have some more milk.

  27. 186

    HaHa, EPO Fan. Nice one! I think the logic coming from Mr Steinbrener’s Board has pretty much seen off by now the “competition” from the English courts.

  28. 185

    Remember, Mooney doesn’t like any claims or patents for that matter because all things are obvious to Mooney according to the various file wrapper smells that he is accustomed to.

    There is nothing inherently wrong with a “system” claim except that enforceability is often more difficult. It is better to have claims directed to the individual components of the “system”

    E.g. A communication system comprising:
    a transmitter configured to transmit a signal according to a novel modulation operation that Mooney doesn’t have the slightest clue about; and
    a receiver configured to receive the modulated signal using a novel demodulation operation that Mooney has even less of a clue about.

    Better to claim separately in an independent claim to a receiver and a different independent claim to a transmitter.

  29. 184

    pds “Maybe you should stop pinning your hopes on what three members of the Supreme Court (who are frequently on the short end) referred to in dissent of a dismissal of a writ of certiorari.”

    Why? All they were doing was telling us how it would have gone down if they had heard the case on the merits that were briefed (albeit poorly).

    You speak as if there is a majority on the court that favors expanding patent protection. I don’t think that’s the case, unless it happens inevitably as a consequence of protecting states’ rights. LabCorp is a clear signal to everybody that a claim that reads on a purely mental process (whether due to an admission by the patentee or following a proper claim construction) is invalid. If you disagree with that, pds, then I’m beginning to understand why you are so lonely and angry.

  30. 183

    “are you implying that a system claim, e.g., “A system comprising …”, is per se unpatentable subject matter under 101?”

    I’m implying that it should be unpatentable subject matter under 101, the public will be no worse off for it and the PTO will be better off for it, thereby leading to a net benefit to the public.

    There are no inventions presently claimed as “systems” that could not be protected adequately as articles of manufacture or methods. It’s laziness on the part of prosecutors and it’s encouraging to see system claims being shot down by the PTO and the courts for any reason.

  31. 182

    “Is a “system” an article of manufacture, a composition, or a method?”

    Ease up malcolm they could have plunked the simpson claim into a statutory class by adding stuff in the body, but they chose not to. PDS’s system merely lacks from specificity and is want for a more thorough analysis than I’m prepared to give free time to right now.

  32. 181

    Mr. Mooney — are you implying that a system claim, e.g., “A system comprising …”, is per se unpatentable subject matter under 101?

  33. 180

    “I believe the claim below would be rejected under 103. See In re Cominsky”

    Is a “system” an article of manufacture, a composition, or a method?

    If that claim were any more foul we’d need gas masks. Which paragraph of 112 tells us how to interpret the scope of “module plus function” and “database plus function” claim language? A reasonable person would assume that it was a pathetic attempt to invoke 112P6 and look to the spec to see what structure is found there. For example, we’d expect to find at least one complete set of code for the “resolution database” to which the claim should be limited (unless additional examples are also fully explicated).

  34. 179

    Max, I haven’t been following this post, but what do you mean by “the competition?”

  35. 178

    I believe the claim below would be rejected under 103. See In re Cominsky

    PDS wrote: Hypothetical claim:

    A system for mandatory dispute resolution regarding one or more unilateral documents comprising:
    a registration module for enrolling the person in a mandatory resolution system;
    a resolution database for storing resolution language for insertion in the unilateral document wherein the resolution language provides that any challenge to the unilateral document must be presented to the mandatory resolution system for binding dispute resolution and for providing this resolution language to the enrolling person;
    a dispute resolution module for enabling a complainant to submit a request for dispute resolution; and
    a means for selecting a mediator from a mediator database to conduct a mediator resolution, for providing support to the mediator, and where the mediator determines an award or a decision that is final and binding.

    Should it be rejected under 101 or not? If so, why?

  36. 177

    More, more. Keep ’em coming folks. Up to now I was never much of a fan of the EPO’s “technical” test. Till I followed this thread and found out how much more satisfying and useful it is than the competition.

  37. 176

    “You all computer engineers? I didn’t think so. Another problem with the BPAI’s analysis, their “one of ordinary skill in the art” would ALWAYS look at this logic being computer implemented and would NEVER look at this logic being implemented any other way.”

    pds, the claim is not talking about the method of implementing the logic pds, it is referring to the logic itself. Obviously one must run logic on a computer for it to function, but this claim goes out of it’s way to make sure that there is no requirement that the logic is functioning and it also goes out of it’s way to require ONLY the logic. Both of these reasons together, make for a lethal combination. I won’t speak to the situation where only one or the other is present just yet because it would require further analysis (please insert one RCE to continue). If, IF, they were to claim this service actually being implemented by including some functional language then you would have half a leg to stand on and it might get through.

    “Really …. what is the controlling law and how does it apply? Haven’t found any cases to support your opinions?”

    Haven’t bothered to look just yet, have been a tad busy.

    “Only when the claimed invention taken as a whole is directed to a mere program listing, i.e., to only its description or expression, is it descriptive material per se and hence nonstatutory.”

    I rather like that argument, and it’s funny, because that’s the only thing that is in this claim. Something that is only the description of what the “logic” or “program” is.

    About your hypothetical, it slipped my mind whilst replying, but I cannot say without a specification, but it seems that it might make it. What are the modules etc?

    “A simple yes or no answer will suffice.”

    I’m not quite as cavalier as MM on this one, but all indications point to yes, they should be, but they currently aren’t. That is, if we’re talking only about claims to the per se computer readable medium itself. The amalgamation of the computer readable medium and functional language describing the operation of a machine controlled by the instructions on the medium is another story, but even so it would be my opinion that any limitations having to do with what is on the computer readable medium are analagous to particular written phrases being claimed.

    I.e.

    A method of telling story comprising:

    Opening a book with a machine
    Reading “Mary had a little lamb, little …” from the book
    Causing a recording machine to record “Mary …”
    Closing a book with a machine.

    The recitation of “Mary …” affords no patentable weight (or shouldn’t), even though it is the instruction for the recording machine to record a certain bit of information. Just as the recitation of reading 10100010 from a disk and making a computer store 10100010 in memory somewhere to display a blue dot shouldn’t either.

    “”Why is it not an article of manufacture”

    Simple answer is because you wouldn’t ordinarily refer to one as such. You would refer to it as a written work.

  38. 175

    “Why is it not an article of manufacture?”

    Why is a piece of paper with a recipe written on it not an article of manufacture?

  39. 174

    Anon In-House, while I’m sympathetic to your cause, is convincing Mooney, or not, going to make computer-readable medium claims more or less patentable?

  40. 173

    Care to expand Mooney, such as why it is rejectable under 101? Why is it not an article of manufacture?

  41. 172

    “Then are all computer readable medium claims rejectable under 101? A simple yes or no answer will suffice.”

    Yes.

  42. 171

    “I kind of thought that “logic” that can be run inside of browsers is limited strictly to the definitions provided by BPAI, myself, or a close approximation thereof.”

    You all computer engineers? I didn’t think so. Another problem with the BPAI’s analysis, their “one of ordinary skill in the art” would ALWAYS look at this logic being computer implemented and would NEVER look at this logic being implemented any other way. It is only in the imaginations of the USPTO and the BPAI that the logic described in the claims is implemented in anything other than a computer. Yet again … the desire of the PTO to reject more applications trumps reality.

    “They do in this type of claim, that is what the office policy is, and whether you like it or not, it’ll take the BPAI or Fed. Circ. to overrule that policy. This policy is, btw, founded on our best interpretations of the controlling law.”
    Really …. what is the controlling law and how does it apply? Haven’t found any cases to support your opinions?

    What do you think of this argument?
    When a computer program is recited as part of a claim, a determination should be made as to whether the computer program is being claimed as part of an otherwise statutory manufacture or machine. In such a case, the claim remains statutory irrespective of the fact that a computer program is included in the claim. The same result occurs when a computer program is used in a computerized process where the computer executes the instructions set forth in the computer program. Only when the claimed invention taken as a whole is directed to a mere program listing, i.e., to only its description or expression, is it descriptive material per se and hence nonstatutory.

    You also didn’t give me an opinion on my example claim. Rejectable under 101 or not? What happened to your eagerness with regard to pronouncing certain claims as directed to non-statutory subject matter?

    “LOL, doesn’t matter what we think, paper is recognized within the art as a computer readable medium. Obviously.”
    Then are all computer readable medium claims rejectable under 101? A simple yes or no answer will suffice.

  43. 170

    “in addition to 101, don’t you also lack the authority to issue a patent if the application does not comply with 102, 103, 112,?”

    You might could say it like that. But in the case of at least 102 we see specifically that you are ineligable for obtaining a patent if you fail 102. And we see in 103 that a patent may not be obtained if you fail it. 112, much like 101 seems to say what the patent/application must contain. But it seems that 101 alone amongst those are what grants the authority to grant a patent.

    “so then i see the consensus is that software is patentable, per se”

    Lol, strange things happen on this board.

    “Claims do not have to recite the actual acts (at least if they are not method claims).”

    They do in this type of claim, that is what the office policy is, and whether you like it or not, it’ll take the BPAI or Fed. Circ. to overrule that policy. This policy is, btw, founded on our best interpretations of the controlling law. If it is wrong, then the Fed. Circ. will happily set it straight. We have a new MPEP coming out soon, there’s time for us to change things if they say so. And I’m not sure how a product (door step) claim makes your point.

    “What I find funny is that arguments used against computer-implemented invention could never be used with other types of inventions.”

    I agree, but the problem is that with software you’re patenting nothing more than what amounts to written language.

    “My statutory construction is that if the claim, under the broadest reasonable construction, includes subject matter that falls within 101, then the claim is OK under 101.”

    Sounds ok, in this specific case though I take issue with your broadest reasable construction based on the spec, and perhaps more importantly, the applicant’s arguments in this case.

    “You need to look at the spec in Simpson … heck, just look at the drawings, Figs. 1-3 all show the “services” being run on computers. ”

    So then we’re talking about generic computers? Rather than the “logic”, that you’re broadly interpreting as flip flops, latches etc? Or now does “logic” include a generic computer? Remember the word they chose to use pds. The BPAI’s interpretation of “logic” is correct, and if you want to get a bit more technical I fear the best you’ll do is get the definition I provided above. You have no support for your interpretation of “logic” in this application.

    Here, a quote from the spec to end the issue.

    “This can be accomplished by moving the logic normally present in the web content 114 running within the browser 112 into the web server 150. Rather than the web content 114 accessing the services specific to the user, the web server accesses the services specific to the user. In other words, the identity technology is server side instead of client side. ”

    You’re telling me that there are flip flops, or even a generic computer that is running within a browser? I didn’t realize that computers ran inside of browsers. I kind of thought that “logic” that can be run inside of browsers is limited strictly to the definitions provided by BPAI, myself, or a close approximation thereof.

    Getting even further in we see the distinction they chose to make between “logic” and logic circuits/gates:

    “combination of the following technologies, which are each well known in the art: a discrete logic circuit(s) having logic gates for implementing logic functions upon data signals, an application specific integrated circuit (ASIC) having appropriate combinational logic gates, a programmable gate array(s) (PGA), a field programmable gate array (FPGA), etc. ”

    Sorry, this time you lose.

    As an aside, here’s a real gem. Remember some of us fighting the other day about whether paper is a computer readable medium?

    “Note that the computer-readable medium could even be paper or another suitable medium upon which the program is printed, as the program can be electronically captured, via for instance optical scanning of the paper or other medium, then compiled, interpreted or otherwise processed in a suitable manner if necessary, and then stored in a computer memory. ”

    LOL, doesn’t matter what we think, paper is recognized within the art as a computer readable medium. Obviously. Morns.

  44. 167

    “Maybe you should revisit Metabolite Labs again, pds.”

    Maybe you should stop pinning your hopes on what three members of the Supreme Court (who are frequently on the short end) referred to in dissent of a dismissal of a writ of certiorari.

    I cannot think of a better example of the expression “grasping at straws.”

    Next time you’ve got to invalidate a patent under 101, trying citing Lab Corp. v. Metabolite. ROFLMAO.

    “Now Mooney, I have tried to answer your question. I respectfully invite you to show me the errors in my analysis, and/or walk through your analysis as to why this claim is not patentable. Your claim does pose an interesting issue, but I think that you believe the claim is non-statutory (based off this thread and other threads where you call for a change to 101 to specifically exclude software), and I would like to know the reasoning behind that.”

    Good luck with that … MM doesn’t like to share his reasoning.

    Awhile I go I figured out (based upon MM’s comments) that some partner dinged him awhile back and this partner was doing a lot of software. MM, being a biotech person, is jealous that his PHD (he is the stereotypical “thinks he knows it all” with the attitude to boot) means little and that his standing in the firm is marginalized. My guess is that MM was asked to write a software patent application one time (since MM doesn’t get much work … the clients cannot stand him) and absolutely botched it. Since, then he’s been secreting bitching about software patents when he’s not doing document review.

  45. 166

    “Claim 1. A recipe, which when coupled to a recipe-reading robot, causes the robot to perform the steps recited in the recipe, where in the recipe comprises the steps A, B, and C.

    Assuming the steps in the recipe are new and non-obvious, is claim 1 patentable?”

    Mooney, I will take the bait on this, and try to walk through a reasonable analysis. Please let me know where you think I may have it wrong.

    Traditionally, recipes have not been patentable. However, they were not non-statutory subject matter, because in written form, a recipe is an article of manufacture. They were more likely unpatentable under the printed matter doctrine, which basically requires that if there is no functional relationship between the printed matter and the substrate, then the printed matter will not be given any patentable weight in determining novelty. Please note this is very similar to how the EPO treats their software/computer patent determinations, which I am sure MaxDrei can elaborate on.

    So, Mooney, looking at your claim, I would expect a 102/103 rejection of the claim, with the Examiner giving no weight to the actual recipe (under the printed matter doctrine) and alternatively under a simple design choice distinction style rejection.

    It would then be up to the prosecuting attorney to show a functional relationship between the recipe and the paper which would then allow the recipe to be given patentable weight, and therefore require the examiner to find prior art teaching the recipe. Additionally, the prosecuting attorney may have to argue that the coupling of the recipe to the robot changes the robot, thereby creating a new specific robot, the change being made at the memory level, to avoid the “manner of/intended use” rejections (sorry, it is late, and I cannot recall the proper term for this rejection, but basically it prevents you from claiming a known article to be used in a different way).

    This, I believe, is where software “medium” claims can find support for patentability, because the functional relationship is one of a traditionally limited universe of mediums that can store machine-readable code that allows a computer to automatically read the instructions, act on the instructions, and then produce a useful result. However, this is also where Mooney finds problems, because with a paper-reading robot, we are now somewhere between traditional “medium” claims which actually involve a mechanical implementation of a writing, and traditional “printed matter” claims, so where is the line drawn? Additionally, I believe his example is trying to highlight that the universe of machine-readable mediums is growing and therefor encompasses more than the law anticipates. Does this basically sum up your position?

    So, how would Mooney’s claim do today? I would think that today, if the specification did a good job of enabling the paper-reading robot and the type of paper and text of the recipe, (and assuming the end product is new and non-obvious and therefore the design choice rejection could be overcome) that this claim could be patentable. I take this position because we know that a process for making a food product is patentable, and that machine-readable medium claims are patentable, and in this hypothetical, the claims meets both of those criteria. I would also add that to avoid a possible 101 useful rejection, the addition of providing a final product might be an added benefit to the claim.

    I suspect that the bigger question is SHOULD this be patentable. THAT will always be a matter of (usually differing) opinions.

    Now Mooney, I have tried to answer your question. I respectfully invite you to show me the errors in my analysis, and/or walk through your analysis as to why this claim is not patentable. Your claim does pose an interesting issue, but I think that you believe the claim is non-statutory (based off this thread and other threads where you call for a change to 101 to specifically exclude software), and I would like to know the reasoning behind that.

  46. 165

    “My statutory construction is that if the claim, under the broadest reasonable construction, includes subject matter that falls within 101, then the claim is OK under 101. What is wrong with that?”

    Other than it flying directly in the face of case law, nothing.

    Maybe you should revisit Metabolite Labs again, pds.

  47. 164

    Is “computer program product” the preferred claim type in the EPO, asks the All Seeing Eye. Can’t answer that because I’m not clear on who is to express the preference. EPO Examiners are required to scrutinise apps, and to reject them until they meet all requirements of the Convention. You won’t get to issue until the Exrs are satisfied that every single claim is confined to subject matter having technical character (101) and is directed to the solution of a new, useful and non-obvious solution to a technical problem. The active filter here, which you don’t have, is “technical”. Lots of computer program products are patentable at the EPO, despite the EPC barring from patentability in Europe “computer programs, as such”. But not the ones that don’t solve a technical problem.

  48. 163

    “A system”

    It’s vague so you could tank it under 112 or 101 (it’s not a composition, an article of manufacture, or a process). Who cares? Such claims aren’t worth the paper they are written on. Their only value lies in their potential (occasional realized) assertability against others, much like a baseball bat with nails pounded through it.

  49. 161

    Personally, I don’t like “computer program product” for US prosecution. I still use straight up Beauregard, since the “computer readable medium” can be expansive and include recording AND communication/data transfer media.

    Some folks kind of latched on to the “computer program product” because IBM was filing cases using this claim type. Actually, computer program product is the preferred claim type in the EPO as I understand it.

    Herr Max, can you help us on this one?

  50. 159

    It is pretty clear that Mooney doesn’t know computers or software. Why does he keep trying to comment. And he keeps giving us that glib, hackneyed piece of paper analogy. It is really tiresome. Like a fat green maggot fly at a picnic – you just don’t want it around.

  51. 158

    “No function is performed anywhere in the claim.” “The body of the instant application is non-functional, there is nothing actually performed being recited.”

    Claims do not have to recite the actual acts (at least if they are not method claims). A door stop doesn’t have to recite that it prevents a door from opening/closing. An engine doesn’t have to recite that it is running.

    What I find funny is that arguments used against computer-implemented invention could never be used with other types of inventions.

    Hypothetical claim:

    A system for mandatory dispute resolution regarding one or more unilateral documents comprising:
    a registration module for enrolling the person in a mandatory resolution system;
    a resolution database for storing resolution language for insertion in the unilateral document wherein the resolution language provides that any challenge to the unilateral document must be presented to the mandatory resolution system for binding dispute resolution and for providing this resolution language to the enrolling person;
    a dispute resolution module for enabling a complainant to submit a request for dispute resolution; and
    a means for selecting a mediator from a mediator database to conduct a mediator resolution, for providing support to the mediator, and where the mediator determines an award or a decision that is final and binding.

    Should it be rejected under 101 or not? If so, why?

    “When you fail to disclose anything except things which you may not obtain a patent for under 101. Then it is kind of hard to make such a small amendment because of a little thing called 112 1st.”
    You need to look at the spec in Simpson … heck, just look at the drawings, Figs. 1-3 all show the “services” being run on computers. Just so we are clear, are you going to argue that a computer is an abstract idea, algorithm, or some other form of non-statutory subject matter?

    “Which I would like to add, contrary to pds’s statutory construction 101 is what gives us the authority to even give you a patent, if your disclosure and/or claims fail to fall within that authority we cannot issue you a patent because we lack the authority.”
    My statutory construction is that if the claim, under the broadest reasonable construction, includes subject matter that falls within 101, then the claim is OK under 101. What is wrong with that?

  52. 157

    Mr. e6k

    in addition to 101, don’t you also lack the authority to issue a patent if the application does not comply with 102, 103, 112,?

  53. 156

    BigGuy:

    That’s a great sample claim, which is what I had in mind. The gist of the argument is that, if software is novel and nonobvious, installing the novel and nonobvious software must also be novel and nonobvious. Likewise, if a device is novel and nonobvious, using it in an old method would still be novel and nonobvious so long as the claim recites the novel and nonobvious device.

  54. 155

    Which I would like to add, contrary to pds’s statutory construction 101 is what gives us the authority to even give you a patent, if your disclosure and/or claims fail to fall within that authority we cannot issue you a patent because we lack the authority.

  55. 154

    “Are there any 35 U.S.C. 101 situations where a minor amendment won’t work?”

    When you fail to disclose anything except things which you may not obtain a patent for under 101. Then it is kind of hard to make such a small amendment because of a little thing called 112 1st.

  56. 153

    Has anyone had a 101 rejection that could not be overcome by a minor amendment?

    I understand that sometimes as a matter of principle you may wish to take the 101 rejection up on appeal (Bilski, Bureaugard, the appeals board cases discussed above), but often times it is easier to overcome the 101 rejection by making a minor amendment. By minor amendment, I mean explicitly incorporating hardware into the claim, clarifying that the computer readable medium is a computer readable storage medium, adding the word ‘computer’ into the claim, converting the signal claim into another type of claim, etc.

    Are there any 35 U.S.C. 101 situations where a minor amendment won’t work?

  57. 152

    “per se”

    Already looked it up and I know why you hold your fallacious view that the software in this claim cannot be acting on it’s own. Doesn’t matter. They went out of their way to assure that it is. You notice the lack of functional language, which means the service, and the logic it is made of aren’t actually doing anything, they are merely configured to do something in the event that they should be used. That is all the claim requires. It does not require that the per se software recited actually be used OR DO ANYTHING.

    That’s kind of like here:

    “Software unconnected from hardware DOESN’T DO ANYTHING.”

    That is exactly what is going on in the claim, the software is just sitting there, unused. No function is performed anywhere in the claim.

    “Instead, software CONNECTED TO hardware makes my browser work.”

    I agree, when the claim requires the software to be put on a machine and do something then it will be related to a machine.

    “NOBODY and I mean NOBODY with any expereince claims “pure software” or “software, per se.””

    Maybe the guy that wrote it was the intern? I don’t know. And I don’t care for anecdotal evidence.

    “The claims are directed to processes (which include the steps performed by the software running on hardware)”

    You really don’t get it, the software in the claim isn’t running on any hardware.

    “computer program product, which when coupled to a computer system, causes the computer system to perform the steps embodied in the computer program product.”

    This is the only one you’ll come close to sliding through, but, alas, even the preamble shoots that theory down.

    “The only reason why the BPAI is getting upity is that the Patent Office is just one one of their new kicks to reject more patents under 101.”

    You are correct, we are enforcing it now since the developments in Bilski.

    “http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd20080343-06-18-2008-1”

    “Claim 8: 8. An apparatus for computerized trading comprising: software encoded on a computer-readable medium and capable of execution by a computer, said software including: – a first algorithm plug-in for implementing a trading strategy, – a second market plug-in for implementing a trading strategy, – an engine for providing services to said first and second plug-ins, whereby said first and second plug-ins are implemented in said engine in order to execute a trade, – a third algorithm plug-in, – a fourth market plug-in, whereby either of said third or fourth plug-ins may be substituted for either of said first plug-in or second plug-in respectively, in said engine, in order to execute a trade; wherein said second market plug-in implements a first limit on trading volume applicable in a first market and said fourth market plug-in implements a second limit on trading volume applicable in a second market, the second limit on trading volume being different from the first limit on trading volume.”

    An apparatus. Well, you’re right, obviously this case couldn’t be something that is a physical apparatus. Neglecting your HUGE oversight with respect to the call out to the statutory class in the preamble that may have been given weight just for giggles, let’s look to the body.

    “software encoded on a computer-readable medium and capable of execution by a computer, said software including:”

    Oh wait, what’s that? Software that is specifically tied to a computer readable medium, AND here’s the kicker:

    “wherein said second market plug-in implements a first limit on trading volume applicable in a first market and said fourth market plug-in implements a second limit on trading volume applicable in a second market, the second limit on trading volume being different from the first limit on trading volume.”

    FUNCTIONAL LANGUAGE. O M G. What do you know? That claim meets all the requirements that the case under discussion fails.

    Bottom line, you are incapable of understanding two things. The body of the instant application is non-functional, there is nothing actually performed being recited. And it has no direct recitation of a device etc. It is nonstatutory.

    “I would think a troll is one who just lashes out with personal attacks on others without providing any relevant input into the discussion at hand”

    You’d be wrong. Kind of like you’re wrong about pretty much everything else you’ve talked about in this thread.

    “Really, whether a rejection under 101 gets affirmed/reversed by the BPAI depends upon the panel you get.

    There are some that are toeing the PTO’s party line regarding 101, but there are others (thankfully) that actually understand the Federal Circuit case law.”

    You’re right it depends on who you get. But in the event you get “unlucky” I hope for your sake that you’re ready to go to the Fed Circ. then since I presume that is where most of the people that understand it are.

    We are cracking down it seems since the developments in Bilski, the word even “came down from on high” in a memo.

  58. 151

    ….or, one stage further:

    1. New, useful and non-obvious recipe(proposal) for a research program, which program when executed will deliver a thought, that when implemented as instructions to a robot, will cause that robot to write a protocol for the performance of a process to create a (computer-implemented invention).

    After all, the research proposal is an innovatory “thing” of commercial value, that needs protection, isn’t it?

  59. 150

    Picking up on the recipe claim a few comments above, how about (instead of a process, an apparatus or a product):

    1. A new, useful and non-obvious thought which, when reduced to material form, manifests itself as a recipe which, when coupled to a recipe-reading robot, causes the robot….(continue as above).

    I’ve heard of reach-through claims, but this is getting ridiculous.

  60. 149

    MM — instead of calling it a “recipe” refer to is as a “control mechanism”. Do you still think that it is non-statutory?

  61. 148

    “[stumbles down the hall to get a cup of coffee]”

    LOL. Must have been a bottomless cup.

  62. 147

    pds: “a computer program product, which when coupled to a computer system, causes the computer system to perform the steps embodied in the computer program product”

    Claim 1. A recipe, which when coupled to a recipe-reading robot, causes the robot to perform the steps recited in the recipe, where in the recipe comprises the steps A, B, and C.

    Assuming the steps in the recipe are new and non-obvious, is claim 1 patentable?

    I don’t think so. Does anyone think so? If so, why? I assume someone must think so because there is no difference between “a computer program product” as defined by pds and the recipe as claimed.

  63. 146

    AnonInHouse “Note: have you noticed that I have yet to personally attack you?”

    No, I hadn’t noticed because I was to busy being annoyed by your obxnious, endless requests to “restate” and “clarify” my comments. Have you noticed that I stopped doing so? Evidently not. Maybe it’ll sink in for you this time, unlike everything else.

  64. 144

    “By the way, when you change your username again out of embarassment”

    Fyi – below is your only previous response to any of my postings under my former (and only other one) handle. Oddly enough, it was on this very same subject matter (your assertion that written instruction are non-patentable subject matter and therefore software should also be unpatentable subject matter).

    “You’ll excuse me for an hour or two while I fan myself. I nearly fainted after discovering that “Also Anon” wrote a substantive response to my argument.

    Back in a bit.

    [stumbles down the hall to get a cup of coffee]”

  65. 143

    Mooney,

    I am not a troll. I would think a troll is one who just lashes out with personal attacks on others without providing any relevant input into the discussion at hand…sort of like your last post. At the end of the day, I am still trying to understand your reasoning for the following quote – “My argument is that a program written on a “computer readable medium” is non-statutory subject matter, by definition. It’s information in the form of instructions and is functionally **identical** to a new recipe written on old paper and should be an unpatentable composition for the same reasons that a new recipe written on old paper is an unpatentable composition.” – since you are apparently unable to provide such reasoning, I guess I have to assume that you can’t (even though I have asked several times in a polite manner).

    WHAT IN YOUR MIND CONSTITUTES A RECIPE, AND WHY IS IT NON-STATUTORY SUBJECT MATTER? Is that clear enough?

    Note: have you noticed that I have yet to personally attack you?

  66. 141

    “You know the “service’s” that are running on your computer in the background to make your internet work right now? Those kind of services is what they’re talking about. Pure software”

    It is your imprecision with the language that always gets you in trouble and causes you not to understand the arguments. If by “pure software,” you mean software, per se, then you are ABSOLUTELY WRONG. I keep telling you to look up the term “per se,” yet apparently that is beyond you. Software per se is unconnected from anything. Software unconnected from hardware DOESN’T DO ANYTHING. Pure software doesn’t make my internet work. Instead, software CONNECTED TO hardware makes my browser work. Such a simple concept that flies over the top of you head like you were 2 inches tall.

    NOBODY and I mean NOBODY with any expereince claims “pure software” or “software, per se.” The claims are directed to processes (which include the steps performed by the software running on hardware), devices (which allow the software, when running on the device, to actually do something), or a computer program product, which when coupled to a computer system, causes the computer system to perform the steps embodied in the computer program product.

    None of these three types of claims are directed to software, per se. Instead, all of them directly involve the use of hardware. This is the reason why there are tens of thousands of issued patents that include all of these types of claims. The only reason why the BPAI is getting upity is that the Patent Office is just one one of their new kicks to reject more patents under 101.

    However, the BPAI isn’t consistent in their analysis. Just look at the following decisions:
    link to des.uspto.gov
    link to des.uspto.gov
    link to des.uspto.gov

    These applications all appear to be ripe for 101 rejections (remember, in Simpson, the BPAI issued the 101 rejection) based upon the analysis in Simpson. However, they didn’t. Really, whether a rejection under 101 gets affirmed/reversed by the BPAI depends upon the panel you get.

    There are some that are toeing the PTO’s party line regarding 101, but there are others (thankfully) that actually understand the Federal Circuit case law.

  67. 140

    “Is this where you stand?”

    Anon-In-House, where I stand is that you’ve got some troll tendencies and one of them is playing silly games (i.e., “I’m really trying to understand but I just can’t can you please explain again?”). By the way, when you change your username again out of embarassment, try to choose something a tad more creative. Oh, and good luck patenting those pieces of paper with new non-obvious recipes written on them.

  68. 139

    “They aren’t even close. If you think this is high-quality legal analysis, then you are woefully uninformed.”

    The problem is, that was all the legal analysis required, and also that you’re a tard. You don’t understand that the claim does not require any of the functions that could be performed to be performed. Just like in your mousetrap example, EXCEPT, that the mousetrap is purely software. That’s what landed them the nonfunctional desc material 101 rejection. There is no actual function being required by the claim.

    And again, the applicant is not referring to logic as the innards of a computer PDS, read the decision and then take a glance at the arguments made to the board, and finally, take a look at the spec. You apparently don’t understand what they’re talking about by “service”. You know the “service’s” that are running on your computer in the background to make your internet work right now? Those kind of services is what they’re talking about. Pure software, that has “logic” which is configured to do something. Not logic that is implemented by flip flops or latches etc. “logic” as the board described it is precisely what they are referring to. Watch, this case will not go to the CAFC even though that claim would be VERY valuable if allowed. Almost every new computer that has wireless that is made has one of those services running it seems to me.

    Read the case before opening your mouth next time and you might not fail so horribly. At least we see why you dislike MM’s shoot first and pick up the pieces later approach to claim analysis. Because you’re horrible at it.

  69. 138

    “… as such, the installation of the software can be very complex.”

    Fine, pds – I don’t doubt that this is true. And I’m not trying to pick a fight. But I don’t think this is what SF and I are talking about. I believe SF was suggesting a method claim analogue to the Beauregard claim – where an otherwise routine installation method is rendered novel and non-obvious by the content of the software itself, not by the any unique installation process. Something like:

    A method, comprising installing Executable Module A on a general purpose computing device, wherein Executable Module A comprises computer program instructions that, when executed by said general purpose computing device:
    perform novel function X; and
    perform novel function Y.

    Note that the method actually only includes the installing step. Let’s assume that the installing step is a simple procedure that is well known. Is this method novel and non-obvious just because Executable Module A is new?

    Referring to SF’s latest post, perhaps the question is whether a known method, using new materials to produce a novel and non-obvious device, is novel?

  70. 137

    BigGuy wrote, “The computer-readable medium with the novel software is at least arguably a device with an entirely new function. An installing step is just an installing step, isn’t it? The content of the software has no functional relationship to the installation method. Have you actually seen a granted claim of the type you propose?”

    The installing method would create (to use your terms) a device with an entirely new function. Sounds useful to me: configuring a device to have a new function.

    I haven’t seen precisely a claim like mine. But I have seen method claims that didn’t recite anything new but the novel structure of a device used in the method, and those passed with flying colors.

  71. 136

    “My, but you are incredibly dense. See MaxDrei’s comment for yet another attempt to educate you.”

    Thanks MM for the professional courtesy you are displaying. MaxDrei asks a good question that nobody could take from your previous positions, and you are declaring victory? Again, I must ask you to clarify your position so that I can properly rebut.

    If I now understand your position, you can claim a process (which is the act of doing something), and the actual claim in written form is the recipe to do that process (the set of instructions for doing the process). Is this where you stand? I want to make sure before I rebut (if it is even possible to rebut). Also, it is your position that the written form of that recipe is non-statutory subject matter (as you alluded to last night) or is it your position that it is simply unpatentable under another legal theory?

    I ask these questions in earnest and would hope that you can respectfully respond.

  72. 135

    “The content of the software has no functional relationship to the installation method.”

    Not even close. How software is installed is highly dependent upon what is in the software (i.e., its content). Getting software to load properly is a much different process today than it was 25 years ago when most software were standalone applications. On the contrary, most applications are highly dependent upon other applications, and as such, the installation of the software can be very complex.

  73. 134

    AnonInHouse “Every recipe I know of has instructions on how to make something, and is therefore a process.”

    My, but you are incredibly dense. See MaxDrei’s comment for yet another attempt to educate you.

  74. 133

    “Isn’t a recipe an instruction to perform an act, and a process the act itself? How then can they be the same thing?”

    Wow, a living, breathing human being who can read and think. Is it contagious? If so, then pds and AnonInHouse may have a chance after all.

  75. 132

    Is the subject matter of a claim to a computer-implemented invention sometimes a recipe, never such, or always such? I think it’s useful to try to answer. Who thinks (like at least one contributer above) that “process” and “recipe” are synonymous, and who instead thinks that a recipe and a process are mutually exclusive things? Isn’t a recipe an instruction to perform an act, and a process the act itself? How then can they be the same thing?

  76. 131

    “Anon In-House, is there a reason trade secret protection doesn’t work for software? ”

    NSE, the short answer on this is that the useful benefit of a lot of software is what it causes the computer to do, and that software can be written in many different ways to cause the computer to do the useful benefit, so protecting one’s actual way of doing it (copyright, trade secret, etc.) often times will not adequately protect the improvement.

    As to your second point, you are basically stating that the computer that autonomously controlled a car driving across the desert is the same thing as the computer you are writing on which is the same as the calculator you used to get through engineering classes, because the only differences are in the software installed on them – they each have a display, input, processor, and memory storing instructions. As the Fed Circ has in a round-about-way recognized, the mechanical components of inventions from the last century are being replaced by the programming of computers, as that is providing the most efficient tool and component for creating new and useful products.

  77. 130

    “So, I guess what I am saying is that instead of telling us they the claims are junk, just let us know how you would counsel, and that might turn the light on for folks.”

    Posted by: Anon In-House | Jul 11, 2008 at 01:19 PM

    Anon In-House, is there a reason trade secret protection doesn’t work for software? I’m aware that DMCA might allow reverse-engineering, but my understanding is that this type of reverse-engineering is only allowed for research, not for commercial rewriting. And being allowed to reverse engineer under the DMCA does not appear to excuse misappropriation of a trade secret under most state laws. By way of (possibly poor) analogy, a minor being allowed to buy a cigarette does not excuse the vendor who sells the cigarette to the minor from violating the law. Could you enlighten me on these aspects?

    My personal feeling is that computer software can be protected by method claims, but not by product claims. As people have noted here, the significance of software is what it does, not what it is. I don’t understand how a computer running a particular program is structurally different from a computer running a different program. Saying the arrangement of electrons somewhere in the computer is different does not strike me as a very convincing argument. Thankfully, I don’t work at all on software.

  78. 129

    “it probably also doesn’t sound right that a computer-readable medium is novel and non-obvious just because the software put on it is new”

    The computer-readable medium with the novel software is at least arguably a device with an entirely new function. An installing step is just an installing step, isn’t it? The content of the software has no functional relationship to the installation method.

    Have you actually seen a granted claim of the type you propose?

  79. 128

    BigGuy wrote, “The installation method is novel and non-obvious because the content of the software is new? That doesn’t sound right…”

    If that doesn’t sound right to you, it probably also doesn’t sound right that a computer-readable medium is novel and non-obvious just because the software put on it is new.

  80. 127

    Thanks pds,

    I have changed my handle (just felt like something different today), but I have been around. I have sparred with both MM and MaxDrei before, even getting MM to concede that I was the first one to adequately address his argument (of course, then he didn’t refute my position and just moved on), and having personally argued in front of the EPO, I enjoyed sparring with MaxDrei.

    As for e6k, I rarely read his stuff because it just has never made sense and typifies what is wrong with the pto these days (and in fact, his entire generation).

  81. 126

    in-house anon

    You don’t seem to be from around these parts. Let me give you a couple of suggestions. Don’t bother asking MM questions. If he isn’t snarky and irrelevant, he is asking other people to prove their points without ever attempting to prove his own.

    My favorite phrase regarding MM is that debating MM is like wrestling with a pig … in the end, the pig enjoyed a good romp in the mud, but you are left dirty, tired, and asking yourself, “why did I do such a thing?” MM is a troll … plain and simple. If you have some biotech question to ask, you might get a decent response out of him. However, like many biotech attorneys, his knowledge of the law outside his tiny little realm is woefully inadequate, but that doesn’t prevent him from butting into conversations that he cannot keep. If you ever want his advice, my suggestion to you is to write it down his advice and then post it your office as an example of what never to do it. Anybody following his advice is certain to get better acquainted with their malpractice carrier.

    As for 6K … he is a bull in a china shop pretending to be a gymnist. He puts most equity partners in 1000 attorney law firms to shame when it comes to arrogance … and that is saying a lot, as he embodies the expression “legend in his own mind.” Of course, they make 10-100x more than he does, but 6k does not lack for hubris.

    You probably haven’t met MaxDrei (aka Mad Max or MM2) yet … if you ever want to know how great the European patent system is or how terrible the US way of doing things is, just ask, he’ll be glad to tell you all about it.

  82. 125

    “Because it’s a completely reasonable argument, whereas yours is not. And that’s assuming there isn’t mountains of caselaw supporting it, which there is.”

    You really don’t understand the law. Nobody cares about how “reasonable” the argument appears to you. Does your argument comport with the language of 35 USC 101? No. Does your argument comport with In re Comiskey? No. You lose … sorry.

    “So, which part of this claim includes a computer? The service? The logic?” Are you that computer illiterate? The logic is part of the computer.

    “Maybe something that would help to open your eyes is that the claim DOES NOT require that there actually be any devices detected.”
    So … I’ve got a mousetrap configured to catch a mouse. The claim doesn’t have to require that the mouse is caught.

    From In re Comiskey: “These claims, under the broadest reasonable interpretation, could require the use of a computer as part of Comiskey’s arbitration system.” Note the use of the word “could,” and not “require.” However, as we have already established, your capability of understanding case law is woefully inadequate.

    “If you would bother to read some caselaw (esp. bpai) every now and again you might find this out.”
    You seem to forget that the overwhelming majority of BPAI decisions are non-precedential. Try citing a BPAI decision to the Federal Circuit and see how far that gets you.

    “Otherwise the broadest reasonable interpretation means they are not required and that the logic can be”
    Not too familiar with the English language I see. Do you even know the meaning of “broad” and “broadest”? Based upon your arguments, you do not.

    “Oh, wait, taking two seconds of my time we arrive at page 9 of the decision dashing pds’s arguments to bits.
    “Logic, read with reasonable breadth, includes descriptive material indicating the algorithm or reasoning behind an operations computer program, not the program itself”.”
    Hmmmm … page 9 … what do they cite? Let’s see …. oh, it’s the MPEP!!!! What a f’ing joke. They cannot do better than a cite to the MPEP? Let’s see … what else do they state on page 9 …. oh here is a doozy … “[a]s such the claims are addressed to nonfunctional descriptive material, which is non-statutory.” Another f’ing joke. Like MM, they don’t know the difference between functional descriptive material and non-functional descriptive material. As stated in MPEP 2106.01, “‘Nonfunctional descriptive material’ includes but is not limited to music, literary works, and a compilation or mere arrangement of data.” They aren’t even close. If you think this is high-quality legal analysis, then you are woefully uninformed.

  83. 124

    Thank you pds – I am getting more and more confused by MM’s changing stances. Every recipe I know of has instructions on how to make something, and is therefore a process. Perhaps MM, you mean a listing of ingredients in not patentable (I want to be careful not to put words in your mouth), is that it?

  84. 123

    “But ‘recipes’ are not patentable.”

    A process IS a recipe. Why don’t you try to use the legal terms of art in your discussion … e.g., functional descriptive material, non-fucntional descriptive material, software per se, etc.

    “And you can’t make recipes or instructions into a patentable composition merely by putting the letters on an old medium.”

    You can when the instructions are embodied in a product and the use of the product causes a machine/computer to perform the process. The product is more than just an abstract idea or algorithm.

  85. 122

    MM writes on 7/11 10:41PM: “Funny thing, AnonInHouse, I searched this thread for the term “printed matter” and you were the first one to use the term. So now you’re putting words in my mouth. Please don’t do that.”

    MM wrote on 7/10 8:07PM: “Like a recipe book. Hence the Julia Childs claim format.” A recipe book is printed matter. MM caught sucking his thumb again.

    MM writes “I stopped reading your comment after I realized you were engaging in that behavior. It’s obnoxious and rude.” On please, that is one of your favorite tactics. What you are accusing him of doing (taking your words and changing them into something else and responding to those words) is what you do ALL THE TIME. Not only are you an ass, you are a hypocritical ass.

  86. 121

    I said what I meant to say. But I’ll do so again.

    Have you ever tried to claim a recipe in the following form: “A recipe for making X, wherein said recipe begins with Step 1 and ends with Step 2?” I assume you haven’t. That’s because “recipes” are unpatentable. Processes are patentable. Compositions are patentable. But “recipes” are not patentable.

    Likewise, you can’t claim “A set of instructions for making a burzoidion, wherein said instructions begin with a recitation of a first step, etc.”. Again, “instructions” are not patentable. Processes are patentable. Composistions are patentable. But “recipes” are not patentable.

    And you can’t make recipes or instructions into a patentable composition merely by putting the letters on an old medium.

    But you **are** allowed to do that with software at the present time. And the reason you are allowed to do so has nothing to do with any legal “reasoning” (at least not any reasoning that is consistently applied). The reason is political and because it’s political you can expect it to change.

    Look at claims to isolated DNA and amino acid that recite sequences. You used to be allowed to claim a healthy chunk of sequence space around your isolated sequence. Now you can’t. It’s not the law or technology advancements that caused the change. Rather, it’s a political decision made by the PTO that takes into account the fact that granting broader sequence claims is no longer necessary or sufficient to fuel the growth of the industry. But they were certainly helpful a couple decades ago.

    Was it ever the case with software?

  87. 120

    “My argument is that a program written on a “computer readable medium” is non-statutory subject matter, by definition. It’s information in the form of instructions and is functionally **identical** to a new recipe written on old paper and should be an unpatentable composition for the same reasons that a new recipe written on old paper is an unpatentable composition.”

    What? In this quote of your argument, you state that a program on a computer readable medium = non-statutory subject matter = new recipe written on old paper. Am I missing something? All I did was take that garbage and put it into the legal parlance you were trying to say, which is “printed matter” = non-statutory subject matter. If I missed the boat, I apologize, but would respectfully request that you point out how I completely misunderstood you and what you really meant to say.

  88. 119

    “You said printed matter is non-statutory subject matter”

    Funny thing, AnonInHouse, I searched this thread for the term “printed matter” and you were the first one to use the term. So now you’re putting words in my mouth. Please don’t do that. You’ll only make a fool out of yourself by doing so. I stopped reading your comment after I realized you were engaging in that behavior. It’s obnoxious and rude. Feel free to try again, though.

  89. 118

    “Bloom out of left field with something I have yet to say …”

    Out of left field? Earlier I was halfway between 1st and 2nd base.

    Since you seem to have forgotten, let’s review some of your gems from this thread:

    “When you say ‘software per se’ in that context you are necessarily referring to software running on a generic computer.”

    “In other words, it seems you can’t make software statutory by just running it on a generic computer.”

    “And I’m well aware that I just said that in the context of this particular patent, and specifically these claims, any discussion involving ‘the software per se’ is being associated necessarily with a generic computer. I am in other words saying that you cannot distinguish the software from the generic computer in this claim. Why? Because the software wouldn’t be performing the claim without the generic computer.”

    Care to clarify? Or does this say it all?

  90. 117

    Oh, and pds, sure, a “service” can comprise gates and flip flops and circuitry. Right. Dummb arse. Good lord, who would hire you? It’s like you just fell off the turnip wagon.

  91. 116

    Oh, wait, taking two seconds of my time we arrive at page 9 of the decision dashing pds’s arguments to bits.

    “Logic, read with reasonable breadth, includes descriptive material indicating the algorithm or reasoning behind an operations computer program, not the program itself”.

    Applicant’s didn’t even try to defind “logic” as gates etc. They are referring to a computer application, remember?

    In other words, the boards decision on page 9 just owned all of you right square in the face. If you want a more detailed explanation, send them a case.

    Now I’m out.

  92. 114

    Malcolm, if you would just be quiet for a few minutes, then perhaps e6k would come back and elaborate on his general-purpose-computers-are-indistinguishable-from-software-per-se theory. Why? “Because the software wouldn’t be performing the claim without the generic computer.”

    6 beers later and I still don’t get it.

  93. 113

    “Some examiners take the position that if the claims could be construed to not encompass hardware (i.e. the claims could be interpreted as pure software, a mix, or pure hardware), then the claims fail 101.”

    And of mo fin course this is true also, but is hardly needed. And of course he has no caselaw like that because it would be folly for any to be created.

    “logic” being the flip flops etc is fine, IF the specification shows them as being such. Otherwise the broadest reasonable interpretation means they are not required and that the logic can be:

    the system of operations performed by a computer that underlies the machine’s representation of logical operations.

    Understand that using this definition in the claim that we are talking about THE SYSTEM OF OPERATIONS and not the actual performance of them on a computer.

    pds having more points that me? Lol, he’s yet to make one except that there is an interpretation that could possibly make an argument for him, but not that it is the broadest reasonable one. Did the lawyers even make those arguments? Probably not, because they’re bs to begin with.

    I’m out for tonight.

  94. 112

    “Take all night or all weekend for all I care. In the end, you’ll be back to throwing out your legally unsupported arguments because you won’t find anything.”

    Won’t matter, because my arguement would sail right through and the judiciary would back it any day. Why? Because it’s a completely reasonable argument, whereas yours is not. And that’s assuming there isn’t mountains of caselaw supporting it, which there is.

    “Also, you seem to forget that claims are NOT required to enable the invention (i.e., recite all the necessary components).”

    WTF are you talking about? Who said they had to? Not me. This claim’s subject matter is enabled in the spec I have no doubt. Red herring perhaps? You just throw them out as a matter of habit now don’t you?

    “However, given a BROADEST reasonable claim construction, the claim includes two wheels. ”

    So, which part of this claim includes a computer? The service? The logic?

    Maybe something that would help to open your eyes is that the claim DOES NOT require that there actually be any devices detected. It only requires that there be logic present that is configured to present a list of any devices that might, at some point, be detected.

    This is not a literal interpretation, but is again to be used as an example of what is going on.

    “and logic configured to provide a user home service accessible with a network browser with a list of at least one discovered device that is available for use on the network. ”

    Becomes:

    “and logic configured to provide a program with a list of at least one discovered device that is available for use on the network.”

    That is, the claim requires there to be logic configured to do this. There is no requirement that the logic actually perform this “task” or “algorithm” of providing a list of devices available. It is only required to be configured to do the task should such a situation arise where a list would be generated.

    If you really want to break it down you get this from the claim:

    “A service comprising:
    logic configured to do something if that something should be required to be done; and logic configured to do something else if that something else is required to be done, but this claim specifically means to omit requiring that either something is ever done, kk thanks bye bye pds.”

    Oh, and fyi, while the claims are not yet issued, even up into the SC, there are many rulings that support the examiner’s interpretation amongst other perhaps reasonable interpretations because the claim can be adjusted during examination to tighten it up. If you would bother to read some caselaw (esp. bpai) every now and again you might find this out.

    “example, you construe “devices directly connected to a network” as “first things that are connected to something.”

    That’s the english translation for you to try to show you wtf is transpiring, not an actual interpretation. But you’re too stupd to see that. As always. No worries, draft up some claims like this and watch them get swatted like flies, no skin off my back. While you’re at it, admit on the record that the subject matter claimed in your deps isn’t what the client regards as his invention and/or wasn’t conceived of by him. I’ll be here rofling my ao.

    Bloom out of left field with something I have yet to say … apparently he’s hopped on the stupd train with pds tonight?

    Come on guys, I see your types be stupd in my day to day, but don’t just throw it around in your spare time.

  95. 111

    “Take all night or all weekend for all I care. In the end, you’ll be back to throwing out your legally unsupported arguments because you won’t find anything.”

    Won’t matter, because my arguement would sail right through and the judiciary would back it any day. Why? Because it’s a completely reasonable argument, whereas yours is not. And that’s assuming there isn’t mountains of caselaw supporting it, which there is.

    “Also, you seem to forget that claims are NOT required to enable the invention (i.e., recite all the necessary components).”

    WTF are you talking about? Who said they had to? Not me. This claim’s subject matter is enabled in the spec I have no doubt. Red herring perhaps? You just throw them out as a matter of habit now don’t you?

    “However, given a BROADEST reasonable claim construction, the claim includes two wheels. ”

    So, which part of this claim includes a computer? The service? The logic?

    Maybe something that would help to open your eyes is that the claim DOES NOT require that there actually be any devices detected. It only requires that there be logic present that is configured to present a list of any devices that might, at some point, be detected.

    This is not a literal interpretation, but is again to be used as an example of what is going on.

    “and logic configured to provide a user home service accessible with a network browser with a list of at least one discovered device that is available for use on the network. ”

    Becomes:

    “and logic configured to provide a program with a list of at least one discovered device that is available for use on the network.”

    That is, the claim requires there to be logic configured to do this. There is no requirement that the logic actually perform this “task” or “algorithm” of providing a list of devices available. It is only required to be configured to do the task should such a situation arise where a list would be generated.

    If you really want to break it down you get this from the claim:

    “A service comprising:
    logic configured to do something if that something should be required to be done; and logic configured to do something else if that something else is required to be done, but this claim specifically means to omit requiring that either something is ever done, kk thanks bye bye pds.”

    Oh, and fyi, while the claims are not yet issued, even up into the SC, there are many rulings that support the examiner’s interpretation amongst other perhaps reasonable interpretations because the claim can be adjusted during examination to tighten it up. If you would bother to read some caselaw (esp. bpai) every now and again you might find this out.

    “example, you construe “devices directly connected to a network” as “first things that are connected to something.”

    That’s the english translation for you to try to show you wtf is transpiring, not an actual interpretation. But you’re too stupd to see that. As always. No worries, draft up some claims like this and watch them get swatted like flies, no skin off my back. While you’re at it, admit on the record that the subject matter claimed in your deps isn’t what the client regards as his invention and/or wasn’t conceived of by him. I’ll be here rofling my ao.

    Bloom out of left field with something I have yet to say … apparently he’s hopped on the stupd train with pds tonight?

    Come on guys, I see your types be stupd in my day to day, but don’t just throw it around in your spare time.

  96. 110

    “We’re talking about compositions that are old in every respect except for the information they convey.”

    Again, wasn’t the holding in the case I cited pretty much on point here? The only novelty WAS the information conveyed in a written manner on the well-known substrate.

  97. 109

    “Go for it”

    Dust kicking? Did you read the case I cited, and your own quote? You said printed matter is non-statutory subject matter, I PROVED you wrong, and I am dust kicking? Now you change your argument?

    Why is the robot-readable recipe now not patentable? You have been clamoring about it being unpatentable under 101. THAT IS WRONG! Is it unpatentable under 103? It very well could be, but it will not be per se unpatentable, will it? I guess we would need to do the 103 analysis, which we cannot without more specifics, can we?

  98. 108

    Anon-in-house: “printed matter appears to be statutory subject matter”

    We’re not talking about compositions falling within the statutory class of “printed matter”. We’re talking about compositions that are old in every respect except for the information they convey.

    I am tempted to say “nice try” but frankly I’m disgusted by your dust-kicking. Why not try an actual argument, reciting real facts, wherein you credibly distinguish a typical software claim from an unpatentable robot-readable recipe? Go for it.

  99. 107

    PDS wrote: “Under a BROADEST reasonable claim construction consistent with applicant’s specification, the term “logic” encompasses hardware.”

    Some examiners take the position that if the claims could be construed to not encompass hardware (i.e. the claims could be interpreted as pure software, a mix, or pure hardware), then the claims fail 101.

    Is there a precedent that you would cite to overcome the examiner’s position?

  100. 106

    “you seem to forget that claims are NOT required to enable the invention (i.e., recite all the necessary components).”

    I just realized what you remind me of, pds. You remind me of a patent prosecutor that has no hope of succeeding with his/her case but who has to say **something** to make the partner and/or client momentarily happy.

    But ultimately it’s just sad and pathetic.

  101. 104

    From the McGraw-Hill Dictionary of Scientific and Technical Terms, Sixth Edition, McGraw-Hill, 2003, pg. 1230.

    Logic: 2. General term for the various types of gates, flip-flops, and other on/off circuits used to perform problem-solving functions in a digital computer.

    From link to lasp.colorado.edu
    Logic – Computer circuitry

    link to synopsys.com
    Hardware logic is made up of circuits that perform an operation.

    Under a BROADEST reasonable claim construction consistent with applicant’s specification, the term “logic” encompasses hardware.

  102. 103

    “there are certain things that are understood even by the legislative document’s silence”

    You sure just shined light upon that, e6k. You know, I’m still waiting for you to elaborate on how a general purpose computer is software per se.

  103. 102

    6K … again … learn a little something about statutory construction before you starting rambling again. Then again, you may have started your drinking for the evening.

    ” Saying that is one and the same in this context. Just like in our constitution. And a whole HOST of other laws.”
    Show me the case law. It is really simple, just show me a Federal Circuit case that supports your position. Take as much time as you want. Take all night or all weekend for all I care. In the end, you’ll be back to throwing out your legally unsupported arguments because you won’t find anything.

    “We determine the broadest reasonable interpretation and construction. Not you.”
    BS … you may be the first to provide the construction, but you don’t have the last word. Claim construction is a matter of law. Sorry Charlie, you, in your quasi-judicial capacity, may take a stab at it, but don’t think that once its goes to the BPAI or Fed. Cir. that anything you say will be given much weight. Your findings of fact (if based upon substantial evidence) will be given weight, but not your claim interpretation.

    “There is no device in this claim. If they want one there, then they can plonk it down in the body.”
    Not too good at giving a claim term its broadest reasonable construction, are you? Also, you seem to forget that claims are NOT required to enable the invention (i.e., recite all the necessary components).

    Claim 1. A bicycle comprising a banana-shaped seat.

    The claim doesn’t explicitly recite two wheels. However, given a BROADEST reasonable claim construction, the claim includes two wheels. See how “broadest” claim construction works. It works by including all possible subject matter reasonably encompassed by the claims. Your claim construction, like most claim constructions I see out of examiners are the sorriest forms of claim construction possible. You construe a couple of terms (while ignoring claim constructions for the rest), and when you construe the terms you construe any meaning out of them. For example, you construe “devices directly connected to a network” as “first things that are connected to something.” Based upon your claim construction, a butterfly’s wings attached to its body would identically disclose the limitation of “devices directly connected to a network.” Hmmmm … that doesn’t sound too reasonable or consistent with applicants’ specification. Then again, I never expected that out of you.

    Thanks, yet again, for showing the rest of us just how incompetent an examiner you are.

    BTW: The type of subject matter is a machine … pretty simple. If you asked one having ordinary skill in the art, they would say the same thing.

    “You haven’t been able to handle the caselaw in either of the previous threads we’ve been discussing, so I won’t bother with it here.”
    You mean that I and everybody else has ignored your twisted interpretation of case law? If that is what you mean, then yes, I haven’t handled it. As for you bothering with case law, don’t bother. When you start rambling about case law, I just skip those parts. You are clueless about case law, and your fiction stories make for poor reading.

  104. 101

    “Ho, Ho, Ho Chi Minh, Dependent Claims [in their current form] Are Going to Win!”

  105. 100

    “BTW: There is nothing in the Constitution that prevents the U.S. from instituting a communist system.”

    I’m aware, and I’m also aware of the one thing that you seem unable to grasp, there are certain things that are understood even by the legislative document’s silence. This is much like your vaunted used of 112 3rd to permit deps in their current form. We do it because some dude put out a piece of paper telling the courts what was supposed to be meant by the langauge, rather than what was actually written. Taking the constitution for example again, if the congress were to try to impose a hardcore communist society then the american people would revolt post haste and the gov. would be overthrown. Of course, no legislator would be even half as stupd as it would take them being to not understand what the constitution outlines is WHAT IS PERMISSIBLE, and not merely what ISN’T PERMISSIBLE. For instance, if there was no clause about congress having the power to impose taxes then the government would have no right to tax us. Any sane person can see this.

    As an aside: This is why the gov has to justify certain things the government does in some round about way under one of the parts of the constitution. Btw, these “justification”‘s are in large part responsible for a vast majority of the bad things our gov has done.

    Also as an aside: These types of interpretations are also where you fail on your fallacious interpretation of 112 2nd. But apparently it’ll take a CAFC judge spelling it out in even clearer english than the previously cited case did for you for you to completely understand this. Of course, you probably still haven’t read that case because you’re so convinced that a basic underpinning of the patent system simply doesn’t exist.

    “It doesn’t say “don’t claim non-statutory subject matter.” It says “claim statutory subject matter.”

    Saying that is one and the same in this context. Just like in our constitution. And a whole HOST of other laws.

    “Given the BROADEST reasonable construction of the Simpson claim, this claim encompasses a device, which is statutory subject matter.”

    We determine the broadest reasonable interpretation and construction. Not you. And not the applicant. That’s why we’re in the authority position. If you disagree with us, you can work your way up until perhaps someone decides to agree with you. I can garuntee you this one isn’t going to the SC because the CAFC will smack it down so hard it’ll make your head spin.

    “32. A device discovery service stored on a computer-readable medium, the service comprising:
    logic configured to discover devices directly connected to a network that are not directly connected to a computer; and logic configured to provide a user home service accessible with a network browser with a list of at least one discovered device that is available for use on the network. ”

    Becomes:

    “32. A service comprising:
    logic configured to discover devices directly connected to a network that are not directly connected to a computer; and logic configured to provide a user home service accessible with a network browser with a list of at least one discovered device that is available for use on the network.”

    Or in english, the broadest reasonable interpretation:

    “32. A service comprising:
    logic configured to discover the existance of first things that are connected to something and are not directly connected to something else; and logic configured to provide a service accessible by a second thing with a list of the existance of at least one of the first things”

    There is no device in this claim. If they want one there, then they can plonk it down in the body. All of the “thing(s)” in the claim are not recited directly, they have relationships of the “things” to other somethings recited. Maybe you can tell me which statutory class this fits into? Method? Manufacture? Composition? Machine? And improvement thereof? Maybe now that you have the broadest reasonable interpretation more or less laid out you can see for yourself the problems in the claim.

    You haven’t been able to handle the caselaw in either of the previous threads we’ve been discussing, so I won’t bother with it here.

  106. 99

    Moody, don’t get touchy, I laid out what I thought was a simple question, merely in hopes to better clarify your actual position, but you have avoided answering it. Your comment at 1:39 pm (“I’d advise them that if they absolutely need patent protection to recoup their R&D, then they are screwed.”) hardly alluded that your answer would depend on their overall business strategy. Remember, I didn’t ask how you would provide them PATENT protection, but simply how you would advise them to protect their investment and their improvement, and have since clarified that their improvement combined with a computer would be readily patentable. If you don’t want to answer, DON’t ANSWER, but don’t get all snippy about it.

    On the printed matter doctrine, have you backed away from your statement at 4:56 pm (“My argument is that a program written on a “computer readable medium” is non-statutory subject matter, by definition.”) yet, as printed matter appears to be statutory subject matter (it can be, afterall, an article of manufacture)?

  107. 98

    “how would you counsel your client if they asked how to protect their software product?”

    Honestly, I don’t have clients with “software products” nor do I ever want one. But if I did the answer would depend on quite a few different variables, including the overall business strategy (as I alluded to in my 1:39 pm answer to your question). Am I going to list all those variables for you? I don’t think so.

  108. 97

    Mooney,

    Upon checking your posts, it still appears that you haven’t answered my initial question – how would you counsel your client if they asked how to protect their software product? When I constured your answer as a “tough” you claimed that wasn’t your answer, so, what was your answer? (Hint: telling them to “be worried” really doesn’t answer the question).

  109. 96

    “The only thing you just shined light upon is your own blatant stupdity. Yet again we have a case of pds not understanding basic writen language. I can only thank my lucky stars that the Supremes aren’t as ridiculously woefully informed or we’d be living in a nation that was completely communist while still having our constitution being “enforced”. Because the constitution DOESN’T say there shall not be communism we can have it if our leaders decide to make it so right? Playing the double negative game sure is fun isn’t it PDS?”

    You don’t know a lick about statutory construction, do you 6K? If you had, you wouldn’t have stuck your foot in your mouth like just you did. Also, I see that you are learning from MM … creating useless strawman that you like to knock down. BTW: There is nothing in the Constitution that prevents the U.S. from instituting a communist system.

    You should compare how 101 is written to how 102 is written. Although they both set a requirement for patentability, they do so in very different ways.

    “Do what the statute says, fail to do so and you will not appear upon examination to be entitled to a patent. End of story.”
    What does 101 tell us to do 6K???? Come on … answer the question? You raised the question, so answer it!!!

    It doesn’t say “don’t claim non-statutory subject matter.” It says “claim statutory subject matter.” Given the BROADEST reasonable construction of the Simpson claim, this claim encompasses a device, which is statutory subject matter.

    If you want to play lawyer, cite me some case law to prove me wrong. This is what real lawyers do all the time. Are you game? or are you going to be like MM by setting up useless strawmen just so you can knock them down?

    BTW: Don’t complain to me about the use of the double negative … this is what is being done by the BPAI and the examiners. On the contrary, my interpretation is based upon the actual language of 101, and not the contrived version.

  110. 95

    Mooney,

    Since you seem to be putting an awful lot of emphasis on the printed matter doctrine (which, by the way, appears to be related to §103 and not §101), have you read In re Gulack, 703 F.2d 1381?

  111. 94

    “35 USC 101 does NOT read:

    Whoever invents or discovers any new and useful that falls outside of a process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may not obtain a patent therefor.

    Instead, 35 USC 101 reads:

    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.”

    The only thing you just shined light upon is your own blatant stupdity. Yet again we have a case of pds not understanding basic writen language. I can only thank my lucky stars that the Supremes aren’t as ridiculously woefully informed or we’d be living in a nation that was completely communist while still having our constitution being “enforced”. Because the constitution DOESN’T say there shall not be communism we can have it if our leaders decide to make it so right? Playing the double negative game sure is fun isn’t it PDS? Do what the statute says, fail to do so and you will not appear upon examination to be entitled to a patent. End of story.

  112. 93

    “Show where this can be done”

    Oh, spare me. Somebody already posted the boilerplate in the Simpson application. Computers have been able to retrieve instructions written on paper for decades. Robots have been making food for even longer.

    “I am not falling for your straw-man arguments.”

    My argument is that a program written on a “computer readable medium” is non-statutory subject matter, by definition. It’s information in the form of instructions and is functionally **identical** to a new recipe written on old paper and should be an unpatentable composition for the same reasons that a new recipe written on old paper is an unpatentable composition.

    The reason such claims are patentable has nothing to do with “patent law” and everything to do with politics.

  113. 92

    “At the end of the day, what is truly useful from a lot of software is not how it is written, but what it accomplishes once combined with a computer. The same cannot be said about Star Wars, can it?”

    That’s true, you have to combine starwars with a movie projector, dvd player, or printing press to get the truly useful result.

  114. 91

    “Why not? Is there some law of nature that would be violated by a computer reading that piece of paper and causing a machine to make the food according to the instructions on the paper?”

    Show where this can be done, and the non-obvious useful result of the process, and maybe we will talk. But I am not falling for your straw-man arguments.

  115. 90

    “a method for installing software onto computing system, the method comprising: … wherein the software includes machine-executable instructions that…”

    The installation method is novel and non-obvious because the content of the software is new? That doesn’t sound right…

  116. 89

    “that piece of paper with a recipe cannot cause a computer to provide a useful result”

    Why not? Is there some law of nature that would be violated by a computer reading that piece of paper and causing a machine to make the food according to the instructions on the paper?

  117. 88

    “So, I guess what I am saying is that instead of telling us they the claims are junk, just let us know how you would counsel, and that might turn the light on for folks.”

    I’d say one alternative may be “a method for installing software onto computing system, the method comprising: … wherein the software includes machine-executable instructions that…” (Of course, this is just a rough example, but you get the idea.)

    Like the novel process claims you mentioned, you’d have to rely on direct infringement by a customer or potential customer to show inducement or contributory infringement. But given that it’s a virtual lock that someone selling software is inducing someone to install it and that there’s no non-staple use other than installation (thus contributory), there would be minimal (if any) intrusion on the customer or potential customer. Moreover, forcing people to register upon installation is so commonplace that you probably could get the installation information from the competitor.

  118. 87

    “Exactly like a piece of paper with a recipe printed on it”

    Very lousy analogy – that piece of paper with a recipe cannot cause a computer to provide a useful result, nor does it change the structure of a general purpose computer.

  119. 86

    “Exactly like a piece of paper with a recipe printed on it” — lousy analogy, Malcolm

  120. 85

    “nice advice to your client –> go spend millions and don’t worry”

    That wasn’t my advice. My advice is that a software-writing client should be very worried if they need patent protection to recoup their investment.

    “would you give that same advice to a big pharm company”

    Of course not. But I wouldn’t tell them to stop paying their lobbyists either.

    “what is truly useful from a lot of software is not how it is written, but what it accomplishes once combined with a computer”

    Exactly like a piece of paper with a recipe printed on it. Except for some strange reason you can’t patent the piece of paper with a recipe printed on it. Go figure.

  121. 84

    Leopold
    – if you are unaware, your customer’s and a competitor’s customers are often the same entity, as that same entity often (almost 100% of the time) buys from multiple sources.
    – to your first point, aren’t you just dodging the question? Say that the software would clearly make a patentable device once combined with a machine (which yes, was assumed in my question), would your counseling still be “tough, deal with it)?

    Mooney
    – I understand quite a bit about copyright, especially in the area of software. And while your example seems to simplify the analysis, I think you know that the comparing the two is not a legitimate response. At the end of the day, what is truly useful from a lot of software is not how it is written, but what it accomplishes once combined with a computer. The same cannot be said about Star Wars, can it?
    – nice advice to your client –> go spend millions and don’t worry, it will take at least 6 months for the big guys to copy your product so deal with it. If that is truly your attitude, then why would ANYBODY need ro want patent protection? Come on, would you give that same advice to a big pharm company –> spend billions, cure cancer, and just rely on “first to market” to recover your investment.

  122. 83

    The following is from State Street:

    “The plain and unambiguous meaning of Section 101 is that any invention falling within one of the four stated categories of statutory subject matter may be patented, provided it meets the other requirements for patentability set forth in Title 35, i.e., those found in Sections 102, 103, and 112, Para.2”

    I keep shining the spotlight yet the peanut gallery is more enthralled with Star Wars and Beatty Crocker cook books.

    What the case law states is that the claimed subject matter has to fall within on of the four stated categories of statutory subject matter. Based upon a BROADEST reasonable claim construction consistent with the specification, the claims also include devices. Ergo, the claim meets the requirements of 35 USC 101.

    35 USC 101 does NOT read:

    Whoever invents or discovers any new and useful that falls outside of a process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may not obtain a patent therefor.

    Instead, 35 USC 101 reads:

    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.

  123. 82

    “There are many ways to write Star Wars but somehow you don’t find people filming their own versions of Star Wars every day. Perhaps there is something about copyright protection that you don’t understand.”

    Still confused about the difference between functional and non-functional? No wonder why your analysis stinks.

  124. 81

    “I have not heard how you would advise a client software manufacturer, that has spent millions of dollars in R&D to come up with a new software on how they should protect their “idea”.”

    I’d advise them that if they absolutely need patent protection to recoup their R&D, then they are screwed.

    “They cannot rely on copyright, because there are many ways to write the code.”

    There are many ways to write Star Wars but somehow you don’t find people filming their own versions of Star Wars every day. Perhaps there is something about copyright protection that you don’t understand.

  125. 80

    “how you would advise a client software manufacturer, that has spent millions of dollars in R&D to come up with a new software on how they should protect their ‘idea’…”

    Ooh, let me help, Malcolm. In-House, the first problem is your implicit assumption that this software manufacturer is entitled to protection (from competition) for an “idea.” I’ve counseled several clients that IP law doesn’t protect them from fair competition, which may include copying their business model, product concept, etc.

    And why would you be suing your customers for infringement, simply because you don’t sell computers? Wouldn’t you be suing your competitor’s customers? Or perhaps your competitor, for inducement?

  126. 79

    Mooney,

    I completely see that you are against software/medium patents. I think (but am not sure) that you are ok with computer patents that implement specific software. However, I have not heard how you would advise a client software manufacturer, that has spent millions of dollars in R&D to come up with a new software on how they should protect their “idea”. They cannot rely on copyright, because there are many ways to write the code. They cannot rely on the computer claim, because they do not make/sell computers with their software on it, and so would have to sue (or at minimum, inconvenience) their customers to prove actual infringement. And they cannot rely on method claims, because once again they would have to sue (or at minimum, inconvenience) their customers to prove actual infringement.

    So, I guess what I am saying is that instead of telling us they the claims are junk, just let us know how you would counsel, and that might turn the light on for folks.

    Thanks,

  127. 78

    EG: I was taking a jab at Pringles being considered food.

    Joe: With thousands of patents explicitly defining a computer-readable medium to be a signal, you have to wonder whether that will infect the claim construction of other patents that don’t explicitly include a signal in a definition, but don’t expressly exclude it either.

  128. 77

    “The computer-readable medium can be, for example but not limited to, an electronic, magnetic, optical, electromagnetic, infrared, or semiconductor system, apparatus, device, or propagation medium.”

    LOL!!!! Nothing tanks a patent claim like unchecked greed.

  129. 76

    I searched aclm/”logic configured to” and “computer readable medium” and 660 matches resulted. The first one I looked at is 7,387,238, which recites the first (but for some reason not the second) expression in the claims. However, there is no use of “logic configured to” in the description and figures. As an Examiner, I would have rejected the claims as lacking support, requiring the applicant to correlate each claimed “logic” to the disclosed algorithms. Do Examiners typicaly take that tack?

    Apparently, the Simpson application defined “computer readable medium” as including the code printed out on paper. This `238 patent has similar language defining “computer readable medium” as follows (see last sentence):

    “Furthermore, stored value card management system 501 and customer enrollment module 500 may be embodied in any computer-readable medium for use by or in connection with an instruction execution system, apparatus, or device, such as a computer-based system, processor-containing system, or other system that can fetch the instructions from the instruction execution system, apparatus, or device and execute the instructions. In the context of this document, a “computer-readable medium” can be any means that can contain, store, communicate, propagate, or transport the program for use by or in connection with the instruction execution system, apparatus, or device. The computer-readable medium can be, for example but not limited to, an electronic, magnetic, optical, electromagnetic, infrared, or semiconductor system, apparatus, device, or propagation medium. More specific examples (a nonexhaustive list) of the computer-readable medium would include the following: an electrical connection (electronic) having one or more wires, a portable computer diskette (magnetic), a random access memory (RAM) (electronic), a read-only memory (ROM) (electronic), an erasable programmable read-only memory (EPROM or Flash memory) (electronic), an optical fiber (optical), and a portable compact disc read-only memory (CDROM) (optical). Note that the computer-readable medium could even be paper or another suitable medium upon which the program is printed, as the program can be electronically captured, via for instance optical scanning of the paper or other medium, then compiled, interpreted or otherwise processed in a suitable manner if necessary, and then stored in a computer memory.”

    I wonder if this boilerplate appears in most patents describing or claiming “computer readable medium” and the impact of this decision on the validity of Beauregard claims in general?

  130. 75

    SF,

    Yep, food products are patentable. The original patent on the Pringle’s product was U.S. Patent 3,498,798 (issued in March 3, 1970) on a package comprising a plurality of stacked, saddle-shaped chips and a “substantially rigid tubular package surrounding” that stack of chips. One of the inventors, Fred Baur, recently died and had some of his ashes buried, by his request, in a Pringle’s container.

  131. 73

    The twit comment was uncalled for. I apologize. I was upset by this horrific (but not unexpected) news:

    “Alarmed by the growing financial stress at the nation’s two largest mortgage finance companies, senior Bush administration officials are considering a plan to have the government take over one or both of the companies and place them in a conservatorship … Under a conservatorship, the shares of Fannie and Freddie would be worth little or nothing, and any losses on mortgages they own or guarantee — which could be staggering — would be paid by taxpayers.”

    link to nytimes.com

  132. 72

    pds: “Looks like a recipe to me.”

    Indeed. Now put the phrase “A computer readable medium comprising instructions for a process, wherein said process is” in front of that recipe. Then try to patent it.

    Then apologize for being a twit.

  133. 71

    “You don’t know about patentable food products? … Probably one of the best examples is Pringles (TM).”

    patentable? ok.

    .. but food???

  134. 70

    “My cookbook recipe is new and non-obvious. And if it’s in a chef-readable format kitchen-executable format, it seems like the Julie Childs-type claim is good to go.”

    You don’t know about patentable food products? Yet another deficiency in MM’s knowledge regarding patentable subject matter. Probably one of the best examples is Pringles (TM).

    Claim 1 of U.S. Patent No. 3,998,975:

    1. A process for preparing a potato chip of tender eating quality characterized by a multiplicity of individual expanded air cells, said chip being made from a dough comprising dehydrated cooked potatoes and water, said process comprising the steps of: adjusting the iodine index and adjusting the lipid content of said dehydrated potatoes to provide a lipid content and an iodine index which are defined by points within the cross-hatched area of FIG. 1, intimately admixing water with said dehydrated cooked potatoes to form a coherent workable dough comprising from 25% to 55% water by weight, said dough being free of non-potato binder materials, forming said dough into chip-like pieces, and frying said pieces until they are crisp.

    Looks like a recipe to me.

    I’m sure that a new and non-obvious machine capable of making said chips would be patentable. Also, if the machine included a computer, then the computer-readable instructions that caused the machine to perform the process could also be patentable.

  135. 69

    I love seeing things like “associated with” in claims. Is that like, “related to” or “in regard to” or “substantially in accordance”?

  136. 68

    AllSeeingEye — thank you for your proposed claim 32 (I was hoping that someone on this board would prepare and share a claim with us).

  137. 66

    “And if it’s in a chef-readable format”

    That includes robot chefs, by the way.

  138. 65

    Mooney, you don’t know what a Beauregard claim is. Go fold some proteins while you are thinking about Julia Childs…

  139. 64

    “The different structure is from the different punchcards (which I believe in the case of looms were boards with different hole patterns).”

    Are the individual boards patentable subject matter simply because the “different hole patterns” are new and non-obvious?

    My cookbook recipe is new and non-obvious. And if it’s in a chef-readable format kitchen-executable format, it seems like the Julie Childs-type claim is good to go.

    All we need is for the Food Network to get their lobbyists working and we can end the unfairness once and for all. Our nation is waiting! No wonder American food is universally mocked for its blandness and unhealthiness. Without recipe patents, there is no incentive to develop new food. The culinary arts in America are dying because of the lack of strong patent protection.

  140. 63

    Here’s how I might have written that claim:

    32. An article of manufacture comprising:
    a computer readable medium; and
    instructions carried on the computer readable medium, the instructions associated with a device discovery service, the instructions readable by a processor, the instructions, when read and executed, for causing the processor to:
    discover devices directly connected to a network that are not directly connected to a computer; and
    provide a user home service accessible with a network browser with a list of at least one discovered device that is available for use on the network.

    Thats just a stab at it… However, it seems to me, a network operating system that checks the status of network devices such as network printers does the exact same thing.

  141. 62

    “I daresay that if you could come up with a cookbook page that can be directly read by the oven and directs the oven to autonomously produce something that’s never been seen before, you just might have patentable subject matter…”

    Yes, likewise if you invented a new “computer readable medium,” that generic composition might be patentable.

    But printing new information onto an old composition should never make that old composition patentable. Hence, the inherent bogusness of “Beauregard claims.”

  142. 61

    Mooney dreams about Julia Childs…

    I like the post above along the lines of – one mention of “software” and the lights go on and the monkeys begin banging their cymbals together – wrt Mooney and others. And then out comes the references to pieces of paper and stuff. Give us all (including yourself) a rest. We’ve all heard your hackneyed one trick pony show way too many times. Its no longer interesting, not even with the doo-doo references you are so fond of.

    There are so many things wrong with the claim above that have nothing to do with Beauregard or anything else. Its just a poorly drafted claim.

  143. 60

    “A machine is a machine and a computer is a computer; the only thing that “changes” anything is the specific punchcard (or software) being used right??”

    First off, a computer is a machine. Although this seems obvious, I have seen arguments (regarding 101) from some examiners that don’t reflect this fairly unremarkable fact. They seem to think that a computer is somehow not a machine.

    The machine has a different functionality (and nothing inherently wrong with a functional limitation) and a different structure. The different structure is from the different punchcards (which I believe in the case of looms were boards with different hole patterns). A computer readable medium (e.g., a computer memory, flash drive, CD, DVD) also changes the functionality of the computer in the same manner, and IMHO, should be treated the same way. Then again, it has been treated this way for quite some time.

    FYI, you refer to “software,” but not software per se. In my mind, operational software is necessarily connected to hardware. As such, if the software is functional (i.e., it actually does something), then, by my reading, the software is connected to a piece of hardware, which puts the software into the realm of statutory prior art.

    “that is okay with me, but I am afraid that Malcolm’s head might explode”
    That would be a positive byproduct. However, software per se is nothing but an abstract idea because, by definition, it is unconnected to anything. As such, how can you prove infringement? You cannot. This is why nobody (with an experience in the art) claims software per se.

    MM must be starting his weekend drinking early with this attempted thread hijack.

    Unfortunately, for those of us that want to have a serious discussion about the issues raised by these cases, he just clutters up the thread.

  144. 58

    “Hence the Julia Childs claim format”

    I daresay that if you could come up with a cookbook page that can be directly read by the oven and directs the oven to autonomously produce something that’s never been seen before, you just might have patentable subject matter…

    jaoi(tm) – if you want to take that idea and run with it, be my guest. Since I’ve only stated the problem to be solved, I’m not a co-inventor.

  145. 57

    “why not just allow the software per se to be patentable?”

    that is okay with me, but I am afraid that Malcolm’s head might explode

  146. 56

    Leopold Bloom – I think anon’s point was that in an apparatus claim that’s essentially reciting a general purpose computer running software, you couldn’t get past 102/103 without the new/nonobvious software.

    why not just allow the software per se to be patentable?

  147. 55

    “since there can be no ‘special purpose computer’ without the actual NEW/NONOBVIOUS software that makes it such??”

    anon, that’s a non sequitur. Saying that A+B yields C does NOT mean no C without A+B. For that matter, I don’t think anybody (yet) has suggested that a computer claim has to be novel and nonobvious to get past the statutory subject matter hurdle.

  148. 54

    “So, the “special (or specific) purpose computer” is, in essence, a legal fiction since there can be no “special purpose computer” without the actual NEW/NONOBVIOUS software that makes it such??”

    exactly. software is patentable as long as you use the right code-words and/or claim format.

  149. 53

    “a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software.”

    But wait, e6k says that the general purpose computer becomes “software per se” when programmed to perform particular functions. As he said: “Why? Because the software wouldn’t be performing the claim without the generic computer.”

    It looks like the Federal Circuit really messed that one up…

  150. 52

    “Hence the Julia Childs claim format”

    perfect!!

    our PTA is going to be reaping licensing fees for years to come from this years’ cookbook.

  151. 51

    “A computer becomes in essence a specific purpose machine when it is executing software that causes it to perform the specific purpose.”

    So, the “special (or specific) purpose computer” is, in essence, a legal fiction since there can be no “special purpose computer” without the actual NEW/NONOBVIOUS software that makes it such??

  152. 49

    “The instructions (i.e. logic) are embedded in a computer readable medium.”

    Ah yes. Like a recipe book. Hence the Julia Childs claim format, “A chef-executable set of instructions in a human-readable medium …”

  153. 48

    “pds, can you please explain how different punch cards create a “new” machine or how software changes a generic computer into a “special purpose computer”??”

    A computer becomes in essence a specific purpose machine when it is executing software that causes it to perform the specific purpose.

    from the fed circuit en banc in alappat:

    Alappat admits that claim 15 would read on a general purpose computer programmed to carry out the claimed invention, but argues that this alone also does not justify holding claim 15 unpatentable as directed to nonstatutory subject matter. We agree.
    We have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software. In re Freeman, 573 F.2d 1237, 1247 n.11, 197 USPQ 464, 472 n.11 (CCPA 1978); In re Noll, 545 F.2d 141, 148, 191 USPQ 721, 726 (CCPA 1976); In re Prater, 415 F.2d at 1403 n.29, 162 USPQ at 549 n.29.

  154. 47

    “Software, when combined with a generic computer, converts the generic computer into a special purpose computer (or at least that is how I see it). Similarly, the punch cards used with old-fashioned looms create a “new” machine from an old machine.”

    pds, can you please explain how different punch cards create a “new” machine or how software changes a generic computer into a “special purpose computer”?? A machine is a machine and a computer is a computer; the only thing that “changes” anything is the specific punchcard (or software) being used right??

  155. 45

    “The instructions (i.e. logic) are embedded in a computer readable medium. This is the essence of a Beauregard claim.”

    Unlike the claim at issue, the essence also includes something about “machine-executable” — which isn’t an earth-shattering relevation.

    I have to wonder whether HP actually wants to defend this claim or wants the Board, and then the Feds, to shoot this strawman claim down. Isn’t HP usually one of the big tech companies that bemoan software-related patents generally?

  156. 44

    “Either is claim 32.”

    Claim 32 isn’t a classicly-written Beauregard claim, but it certainly covers the same tpe of subject matter. The instructions (i.e. logic) are embedded in a computer readable medium. This is the essence of a Beauregard claim.

  157. 43

    Classic MM … you ignore the fact that your argument that “[State Street] has nothing do with claim 32” was shown to be yet another one of your legally-unsound arguments and, instead, go you off on some irrelevant tangent.

  158. 42

    “Actually I’m well aware of what it means. And I’m well aware that I just said that in the context of this particular patent, and specifically these claims, any discussion involving “the software per se” is being associated necessarily with a generic computer. I am in other words saying that you cannot distinguish the software from the generic computer in this claim. Why? Because the software wouldn’t be performing the claim without the generic computer.”

    Really, you need to clean up your grammar because your points are getting lost in ambiguous statements. I say this very seriously and not just to bust your ass. For example, is the “discussion” associated necessarily with a generic computer or the software per se necessarily associated with a generic computer?

    Software per se is not associated with a generic computer. Software PER SE, by definition, is not associated with anything. Thus, when an examiner writes “claim 1 is directed to software per se,” they are asserting that the claim is not associated with any hardware. If a claim is truly directed to software, per se, then I agree that the claim should not be patentable under 101.

    However, I would be hard pressed to find any claim that recites software, per se. These claims may be out there, but I don’t see them.

    Software, when combined with a generic computer, converts the generic computer into a special purpose computer (or at least that is how I see it). Similarly, the punch cards used with old-fashioned looms create a “new” machine from an old machine.

  159. 41

    “State Street wasn’t about business method claims.”

    Right, and Dred Scott wasn’t about slavery, it was about federalism. LOL.

  160. 40

    “[MRI images] are a computer readable medium, but they are NOT a computer readable medium embodying instructions for a computer to perform a specific action/series of steps.”

    Either is claim 32. And yet pds tried to persuade us that Beauregard claims were relevant to understanding why claim 32 wasn’t a pile of doo-doo. Since then, he’s been mostly moving the goalposts and kicking up dust.

  161. 38

    “An old-time mechanical loom uses punch cards to direct the loom to form the material in a particular pattern by controling various components of the loom. A computer-readable medium is basically just a modern version of those punch cards.”

    And if we go back to the era of punch cards, we’ll find all kinds of claims directed to “a computer readable medium, wherein said medium is a card with a first hole at coordinates x/y, a second hole at coordinates, x2/y2, a third hole at coordinates x3/y3 … and a fiftieth hole at x50/y50, and wherein said medium provides instructions for a computer to calculate an output value from an input.”

    Right?

    Gosh, that must have been a huge amount of work, filing patents on all those specific punchcards whose patentability was predicated on the specific instructions encoded on the cards. How many specific (not generic) punchcard patents were filed? How many were granted? Can you show me one?

  162. 37

    “Actually I’m well aware of what it means. And I’m well aware that I just said that in the context of this particular patent, and specifically these claims, any discussion involving ‘the software per se’ is being associated necessarily with a generic computer. I am in other words saying that you cannot distinguish the software from the generic computer in this claim. Why? Because the software wouldn’t be performing the claim without the generic computer.”

    Utter nonsense. And nice job quickly changing the subject. Apparently you don’t want to defend this ridiculous assertion:

    “It seems that they consider software running on a general purpose computer not adequately bound to statutory material. In other words, it seems you can’t make software statutory by just running it on a generic computer.”

    Or this one:

    “I wasn’t aware that you couldn’t make software configured to autorun (or any number of millions of things) before it is executed.”

    How exactly do you make software do “any number of millions of things” before it’s executed?

    And you said I was off base… sheesh.

  163. 36

    “State Street was a worthless decision. But more importantly, it has nothing do with claim 32 which is not a business method claim but a vapid pile of compositional garbage.”

    Try to focus MM … State Street wasn’t about business method claims. State Street was about statutory subject matter. What State Street said about business method claim is that calling something a “busines method” patent doesn’t mean anything because all claims are treated the same way.

    “Since the 1952 Patent Act, business methods have been, and should have been, subject to the same legal requirements for patentability as applied to any other process or method.”

    Thus, when the court discussed the legal requirements as to the claims in State Street they were talking about the legal requirements for all claims. Come on MM, you are slipping. Then again, I think you were already down and never got up.

  164. 35

    “But really, you and MM are like wind-up toys. Somebody uses the word “software,” the lights come on, the dancing monkeys clap their cymbals together and parrot the same stuff time and time again.”

    That’s in case you didn’t quite get it the first time.

    “Anybody who believes that doesn’t know the meaning of the term “per se.” Look it up in Black’s Law Dictionary since it is a legal term of art and it is being used in a legal context.

    By definition, “software per se” is not associated with anything.”

    Actually I’m well aware of what it means. And I’m well aware that I just said that in the context of this particular patent, and specifically these claims, any discussion involving “the software per se” is being associated necessarily with a generic computer. I am in other words saying that you cannot distinguish the software from the generic computer in this claim. Why? Because the software wouldn’t be performing the claim without the generic computer.

    “cool it with the sports lingo, e6k, did u get that email i sent?”

    You mean this one?

    FROM THE DESK OF MR.MOHAMED KABORE
    AUDITING AND ACCOUNTING
    SECTION OF BANK OF AFRICA (BOA).
    OUAGADOUGOU BURKINA-FASO
    WEST AFRICA

    Dear Friend,

    I am Mr.Mohamed Kabore the director in charge of auditing and accounting section of Bank of Africa (BOA) Ouagadougou Burkina-Faso West-Africa with due respect and regard. I have decided to contact you on a business transaction that will be very beneficial to both of us at the end of the transaction.

    During our investigation and auditing in this bank, my department came across a very huge sum of money belonging to our deceased customer who died with his entire family in a plane crash. The fund has been dormant in his account with this Bank without any claim of the fund in our custody either from his family or relation before our discovery to this development.

    For more information about the crash you can visit this site:

    link to news.bbc.co.uk

    The said amount was U.S $12.5M (Twelve Million Five Hundred Thousand United States Dollars). As it may interest you to know, I got your impressive information through yahoo search on foreign business relations here in Ouagadougou Burkina-Faso. Meanwhile all the whole arrangement to put claim over this fund as the bonafide next of kin and business associate to the deceased, to get the required approval and transfer this money to a foreign account has been put in place and directives, and needed information will be relayed to you as soon as you indicate your interest and willingness to assist me and also benefit your self to this great business opportunity.

    In fact I could have done this deal alone but because of my position in this country as a civil servant (A Banker), we are not allowed to operate a foreign account and would eventually raise an eye brow on my side during the time of transfer because I work in this bank. This is the actual reason why it will require a second party or fellow who will forward claims as the next of kin and business associate to the Bank and also present a foreign account where he will need the money to be re-transferred into on his request as it may be after due verification and clarification by the correspondent branch of the bank where the whole money will be remitted from to your own designation bank account.

    I will not fail to inform you that this transaction is 100% risk free. On smooth conclusion of this transaction, you will be entitled to 40% of the total sum as gratification, while 60% will be for me. Please, you have been advised to keep “top secret” as I am still in service and intend to retire from service after we conclude this deal.

    I will be monitoring the whole situation here in this bank until you confirm the money in your account and ask me to come down to your country for subsequent sharing of the fund according to percentages previously indicated and further investment, either in your country or any country you advice us to invest in. All other necessary vital information will be sent to you when I hear from you.

    I will be expecting to hear soonest.

    Have a nice day
    Mr Mohamed Kabore

    Or are you Karl? my email is actually examiner6k@yahoo.com I just bs the email field sometimes.

    BTW, anyone on these boards is welcome to contact mr. Kabore, he can be reached at m_kabore03@biz.by

  165. 33

    “A legitimate way of patenting a novel, non-obvious computer that performed a useful function would be to describe the computer itself with, oh, actual words. But those claims would probably be deemed “too narrow” because they wouldn’t literally read on a disk or a hard drive or somebody sending sending some code over a telophone wire.”

    Computer-readable medium claims are one 1 of 3 ways typically used to claim the invention, the other two or by claiming a device (e.g., the computer) and the method. As I noted earlier, the computer-readable medium claims are more closely tied to the method claims.

  166. 32

    “my insides are computer readable media because when i did my MRI, the machine read my guts and processed an image displaying the information within said guts.”

    They are a computer readable medium, but they are NOT a computer readable medium embodying instructions for a computer to perform a specific action/series of steps.

    There is a difference between functional descriptive material and non-functional descriptive material, your guts would be best described as non-functional descriptive material.

  167. 31

    “No, but if you were to obtain a patent on the instructions for using the tool, I would complain and so would everyone else.”

    But nobody is claiming the instructions, which is a point I have made over and over again yet you just don’t seem to get it. An old-time mechanical loom uses punch cards to direct the loom to form the material in a particular pattern by controling various components of the loom. A computer-readable medium is basically just a modern version of those punch cards. They are a structural device/product that provides instructions to tool. The instructions themselves are not being claimed, but instead, a physical embodiment of the instructions, which is capable of being used by the tool, are being claimed.

  168. 29

    “Is an electromagnetic wave a computer readable medium?”

    Of course, although more accurately it’s the space in which the wave is propogating that is the medium. Same with air and water (e.g., soundwaves are propogated through it).

    Beaureugard claims are legal toilet paper created to appease a lobby interested in patenting software. A legitimate way of patenting a novel, non-obvious computer that performed a useful function would be to describe the computer itself with, oh, actual words. But those claims would probably be deemed “too narrow” because they wouldn’t literally read on a disk or a hard drive or somebody sending sending some code over a telophone wire.

  169. 28

    my insides are computer readable media because when i did my MRI, the machine read my guts and processed an image displaying the information within said guts

    “Like halfway between first and second waiting to get caught by the pitcher.”

    cool it with the sports lingo, e6k, did u get that email i sent?

  170. 27

    Malcolm — why don’t you answer your own question — “Is an electromagnetic wave a computer readable medium?”

  171. 26

    “A computer readable medium isn’t just a floppy disk.”

    Thanks. Is an electromagnetic wave a computer readable medium?

  172. 25

    “I especially like the part of this wikipedia entry that states that computer-readable media claims are no longer that interesting.”

    A computer readable medium isn’t just a floppy disk. The list of items encompassed by that term on page 12, lines 15-20. As such, computer-readable medium claims certainly have some relevance. As a general matter, the body of the claim is typically identical to the body of the method claim.

    If I recall correctly, in In re Beauregard, the Federal Circuit vacated the BPAI decision, based upon the parties subsequent agreement that the claims were directed to statutory subject matter.

    “the 101 rejection was for a software server not a hardware server, as the claimed invention was a portal server”
    I think Leopold already addressed those comments.

    Again, I think everybody forgets that software per se is not the same as software.

  173. 24

    “software instructions are just instructions as to how to use the tool. If I was to obtain a method claim on the use of a tool … would you complain?”

    No, but if you were to obtain a patent on the instructions for using the tool, I would complain and so would everyone else. I understand why you insist on kicking up dust around this isssue, pds, but I would have guessed by now that you’d have come to realize that it’s a losing strategy.

  174. 23

    “if you don’t think State Street is good law,”

    State Street was a worthless decision. But more importantly, it has nothing do with claim 32 which is not a business method claim but a vapid pile of compositional garbage. Try to focus, pds.

  175. 21

    PDS wrote: “Yet again, MM evidences his ignorance. Ever hear of Beauregard claims? Probably not. Federal Circuit case law does not appear to be your forte.”

    So please explain Beauregard’s applicability and whether it qualifies as binding precedent from the Federal Circuit.

  176. 20

    For Ex Parte Simpson, the independent claim was too short, not surprising that it was rejected.

    For Ex parte Godwin, the 101 rejection was for a software server not a hardware server, as the claimed invention was a portal server (a software product sold by IBM and many other companies).

  177. 19

    “When you say ‘software per se’ in that context you are necessarily referring to software running on a generic computer.”

    Anybody who believes that doesn’t know the meaning of the term “per se.” Look it up in Black’s Law Dictionary since it is a legal term of art and it is being used in a legal context.

    By definition, “software per se” is not associated with anything.

  178. 18

    Maybe later you can explain why a claim in the format of claim 32, i.e., “A computer readable medium comprising logic to provide X” **should** be patentable under 35 USC 101.

    Does it provide a useful result? In most instances, yes.
    Does it provide a result that is tangible and concrete. In most instances, yes.

    Seems to meet the 101 test set forth by the Federal Circuit. Then again, if you don’t think State Street is good law, then go ahead a counsel your client that comes in with an idea on a computer-implented invention that they shouldn’t try to get a patent on it. Please, go for it MM. Not that I’m giving you any legal advice on this matter since for you to follow this advice would likely constitute malpractice. However, I would still like to see you follow your convictions and give that type of advice.

    A computer is nothing but a fancy and very flexible tool and software instructions are just instructions as to how to use the tool. If I was to obtain a method claim on the use of a tool, say on a CVD coater, would you complain?

    Pretty simple when you actually decide to leave the 19th century concepts of patentable subject matter behind and decide to enter the 21st century.

  179. 17

    “Someone hasn’t been paying attention to the latest court cases. It seems that they consider software running on a general purpose computer not adequately bound to statutory material. In other words, it seems you can’t make software statutory by just running it on a generic computer.”

    Which cases are those? Are you sure you’re not talking about computer-implemented means-plus-function claims? I’m not sure who “they” are, but “they” can’t just deem a computer to be non-statutory, as much as Malcolm would like them to.

    “When you say ‘software per se’ in that context you are necessarily referring to software running on a generic computer.”

    Um, no, I’m not. And the latter is statutory. Note that your MPEP says: “functional descriptive material” consists of data structures and computer programs which impart functionality when employed as a computer component.” Also, “When functional descriptive material is recorded on some computer-readable medium, it becomes structurally and functionally interrelated to the medium and will be statutory in most cases since use of technology permits the function of the descriptive material to be realized.” When the software is actually executing (regardless of the type of processor), there’s no question that it is “functionally interrelated” to the computer, and “permits the function of the [software] to be realized.”

  180. 16

    The Simpson decision raises an important issue.

    The Board’s analysis was that the since the computer-readable medium “could even be paper,” the Board concluded that it is “a computer listing per se.” However, page 12, lines 15-20 of the specification give plenty examples of computer-readable medium that would qualify as statutory subject matter. Thus, given a broadest reasonable claim construction, the computer-readable medium could include both statutory and non-statutory subject matter.

    The question this raises is how does 101 apply when claims recite both statutory and non-statutory subject matter. The way I’ve seen the Board and examiners treat this issue is that since it is non-statutory, then the claim doesn’t meet 101.

    However, I read 101 very differently. 101 does say exclude a patent from issuing on non-statutory subject matter. Instead, 101 only says that a patent must exist on statutory subject matter. 102, on the contrary, says that the existence of even a single piece of anticipatory prior art is fatal.

    Also, I believe this issue was touched by in In re Comiskey. The language discussed the use of modules. The Federal Circuit, relying upon a dictionary definition of modules being software or hardware determined that under a broadest reasonable construction, the claims could require the use of a computer. If the Federal Circuit in Comiskey was inclined to interpret 101 such that if any part of the claimed subject matter is non-statutory, then they would have came out differently.

  181. 15

    pds: “computer-readable medium” claims are ever-present.”

    Nobody said they weren’t.

    “Ever hear of Beauregard claims?”

    Yes. Did you know that just because a claim is written in Beuregard form does not mean that it is per se patentable under 35 USC 101? Well, now you know. You’re welcome.

    Maybe later you can explain why a claim in the format of claim 32, i.e., “A computer readable medium comprising logic to provide X” **should** be patentable under 35 USC 101. That would be a neat trick. Please go for it, pds. Also, please explain why you care because, frankly, nobody else does except for trolls and companies who reflexively file patents on every half-baked recycled semi-concept that dribbles out of their software developers’ keyboards.

  182. 14

    “That’s good practice unless you’re planning on drafting an application containing an algorithm or software. But I agree, you should steer clear of such applications in the first place.”

    I’d simply refer to the software as computer executable modules stored on a computer readable medium. Zero reason to refer to the software as “software” and give E6K a reason to 101 you ;)

    Likewise, you don’t need to use the word “algorithm.” Why can’t it be an “approach” or “method?” (Also, I’d never claim an algorithm alone. It would likely be in some sort of computer readable medium claim.)

    There is no reason to steer clear of such applications if you claim them properly. The ones I steer clear of are business methods. All you’ll end up with is an angry client and the examiner’s rejection affirmed on appeal.

  183. 13

    “But I agree, you should steer clear of such applications in the first place.”

    I agree … the backlog in the 2100 and 3600 groups are so big and the examiner turnover is so bad that it already takes years and years to get a FAOM. Of course, as an examiner, I would be frustrated considering the guidance they get on 101 changes a couple of times a year.

    But really, you and MM are like wind-up toys. Somebody uses the word “software,” the lights come on, the dancing monkeys clap their cymbals together and parrot the same stuff time and time again.

  184. 12

    Lowly is right on. Additionally, too many patents have been issued by examiners (apparently not this one) who do not understand basic English language and grammar. “Logic” is not structure per se, particularly when the written description establishes clearly that it is an algorithm not a device.

  185. 11

    “Can we break it down? This claim is drawn to “A computer readable medium comprising logic.””

    Yet again, MM evidences his ignorance. Ever hear of Beauregard claims? Probably not. Federal Circuit case law does not appear to be your forte.

    “computer-readable medium” claims are ever-present. Just go to:

    link to patft1.uspto.gov

    and enter in the search phrase:
    aclm/”computer-readable medium” and you’ll get over 16,800 hits. Also, there are many other variations of that term.

  186. 10

    “In fact, “software” and “algorithm” are on my list of words to never use in a patent application.”

    That’s good practice unless you’re planning on drafting an application containing an algorithm or software. But I agree, you should steer clear of such applications in the first place.

  187. 9

    “I agree that “server” can refer to a software module running on a general purpose computer, but that’s not the same as “software per se.”

    When you say “software per se” in that context you are necessarily referring to software running on a generic computer.

    “A software module running on a general purpose computer is a device, is it not?”

    Someone hasn’t been paying attention to the latest court cases. It seems that they consider software running on a general purpose computer not adequately bound to statutory material. In other words, it seems you can’t make software statutory by just running it on a generic computer.

    “It’s not actually CONFIGURED to do anything until it’s executing on a piece of hardware.”

    I wasn’t aware that you couldn’t make software configured to autorun (or any number of millions of things) before it is executed.

    My other thought is that you’re way off base. Like halfway between first and second waiting to get caught by the pitcher.

  188. 8

    “Other thoughts?”

    Computer “engineers” are per se illiterate and should not be allowed to write patents.

  189. 7

    “The panel quotes a boilerplate sentence from the spec, stating that the invention “can be realized in hardware, software, or a combination of hardware and software” to support a conclusion that a server can be “implemented in software per se.””

    I’ve had examiners make that argument before. This is why I believe it prudent to never say such a thing in the spec. I would say “can be realized by hardware, executable modules stored on a computer readable medium, or a combination of both.” In fact, “software” and “algorithm” are on my list of words to never use in a patent application. It’s too easy for an examiner to hone in on them and give you a 101 rejection.

  190. 6

    I don’t think much of the claim in Simpson, but the Godwin 101 decision isn’t right, in my humble opinion. The panel quotes a boilerplate sentence from the spec, stating that the invention “can be realized in hardware, software, or a combination of hardware and software” to support a conclusion that a server can be “implemented in software per se.” I agree that “server” can refer to a software module running on a general purpose computer, but that’s not the same as “software per se.” A software module running on a general purpose computer is a device, is it not?

    Further, the claims include further language that precludes coverage of “software per se”. For example: 7. A portal server system comprising: a portal coupled to a plurality of portlets, each of said portlets having associated portlet rendering logic; a portlet aggregator communicatively linked to said portlet rendering logic; and, a visual service extension to said portlet aggregator programmed to process said portlet rendering logic to transform visual style attributes in said portlet rendering logic into markup language tags which can be rendered for display in a specified type of pervasive agent.

    Note that the portlet aggregator is communicatively linked to the portlet rendering logic. Thus the claim recites something that the system does, not just something the software would permit a computer to do. One portion of a software listing, or a software module in the abstract, can’t be “communicatively linked” to another. Once a software module is running, then it can be communicatively linked to another module.

    Similar issues with claim 12: A portal server comprising: a portlet aggregator configured to aggregate portlet views into a single portal view; and, a visual service extension to said portlet aggregator programmed to process portlet rendering logic for selected ones of said portlet views to transform visual style attributes in said portlet rendering logic into markup language tags which can be rendered for display in a specified type of pervasive agent.

    Here the portlet aggregator is configured to aggregate portlet views, whatever that means. Software in the abstract is not configured to do anything. It’s not actually CONFIGURED to do anything until it’s executing on a piece of hardware. Thus, the claim can’t read on software in the abstract, and must be directed to a device.

    Other thoughts?

  191. 5

    Welcome to another edition of worthless claims that achieve nothing for anybody except the patent owner with the time and money to troll or seek out mentally challenged licensees.

    Can we break it down? This claim is drawn to “A computer readable medium comprising logic.”

    That includes a piece of paper with writing on it and nobody will argue that writing on a piece of paper makes the paper patentable subject matter. None of the additional language adds a darn thing to the claim. All it does is ascribe purposes to the “logic” and to the computer readable medium. Where is the beef? How much does HP pay its patent attorneys to write this junk?

  192. 4

    Am I missing something?

    This claim seems to be nothing more than

    1. Use an algorithm to acquire desired data and
    2. Present the data acquired.

    How is that EVER patentable?

  193. 3

    That claim is badly drafted. The prosecutor was going for breadth and went too far.

    I assume the Applicant had other more rigorous system claims.

  194. 2

    If only the attorney had drafted the claims to read “a computer executable module to” rather than “logic configured to,” they wouldn’t be in this mess. :(

    I think this whole 101 business is complete crap and that the PTO is harping on it because it’s a nice way of not having to actually examine applications.

  195. 1

    Such decisions are nonsense, until such time as the Patent Office defines what it means by “functional”, for something to be ruled non-functional. The current PTO definition is complete nonsense – something is functional if it structural and functional – a circular definition that defines nothing. Two years ago the PTO soliticted public comments on its ill-defined “functional” (I think Annex IV in the current guidelines), and since then the PTO has refused to respond. So it is unethical for the BPAI to issue such decisions – without a real definition, it isn’t a decision.

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