BPAI Applies Bilski to Deny Patentability of Machine Claim

Ex parte Cornea-Hasegan (BPAI 2009)(non-precedential)

I have been following the BPAI’s response in the wake of the Federal Circuit’s series of patentable subject matter cases that culminated with In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc). In Bilski, the full appellate court held that to be patentable, a process claim must either be “tied to a particular machine or apparatus” or transform “a particular article into a different state or thing.” Bilski explicitly focuses only on process (or method) claim, and practitioners have been left to question its impact on other claim forms.

In Cornea-Hasegan, Intel is attempting to obtain a patent on a short-cut method of performing mathematical calculations when the outcome is likely “tiny.” According to the claim, when the mathematical result is likely tiny, then software is used to calculate the result; otherwise, hardware is used to calculate the result. The application claims both “a method” and “a computer readable media including program instructions which when executed by a processor case the processor to perform” the method. The body of both claims are essentially identical, and neither discuss particular machinery beyond “a processor,” “software,” and “floating-point hardware.”

Processor Insufficient: A claim will be considered to cover patentable subject matter if it is tied to a particular machine. Here, however, the BPAI found that requiring “a processor” is not a “particular” machine.


The recitation of a “processor” performing various functions fails to impose any meaningful limits on the claim’s scope. The recitation of a “processor” performing various functions is nothing more than a general purpose computer that has been programmed in an unspecified manner to implement the functional steps recited in the claims. The recitation of a processor in combination with purely functional recitations of method steps, where the functions are implemented using an unspecified algorithm, is insufficient the recitation of a processor does not limit the process steps to any specific machine or apparatus.

Post-Solution Activity: Although the claimed “floating-point hardware” may be a particular machine, the BPAI disregarded that element as “insignificant extra-solution activity … ‘that will not transform an unpatentable principle into a patentable process.'” (Quoting Bilski).

Transforming Data: A claim will be considered to cover patentable subject matter if it transforms a particular article into a different state or thing. However, the transformation of abstract data or abstract data structures will not be sufficient to render the claim patentable. Here, the only arguable transformation is of data that has no direct physical world corollary.

Non-Method Claims: Some of Intel’s claims are directed to a “computer readable media” rather than a method or process. Intel argued that Bilski should not apply to those “manufacture claims” because Bilski‘s sole focus was method claims. Rejecting that argument, the BPAI panel determined that the Section 101 analysis is the same – regardless of whether the subject is a “manufacture” claim or a “process” claim. (Citing AT&T v. Excel (Fed. Cir. 1999)(abrogated by Bilski)). Remember here that the State Street case – which released the business method rush – determined the patentability of a “data processing system.”

Applying Bilski to the “computer readable media” claim, the BPAI found that the claimed invention was unpatentable because it did not require transformation of any article nor was it tied to any particular machine. Although the claim recites a “computer readable media” and “hardware,” those elements were seen as insignificant extra-solution activities.


Limiting the claim to computer readable media does not add any practical limitation to the scope of the claim. Such a field-of-use limitation is insufficient to render an otherwise ineligible claim patent eligible.

Quoting the Supreme Court in Diehr (1981), the BPAI noted that Section 101 eligibility “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.”

Rejection of all claims under Section 101 affirmed.

Notes:

  • In Ex parte Bo Li, the BPAI reversed the rejection of a claim written in similar Beauregard format. That case could be distinguished by additional links to a machine or apparatus found in Bo Li‘s claims. In particular, Bo Li’s claim “presents a number of software components, such as the claimed logic processing module, configuration file processing module, data organization module, and data display organization module, that are embodied upon a computer readable medium.” [Link]
  • In Comiskey (Revised opinion 2009), the Federal Circuit issued a remand order to the BPAI to consider whether Comiskey’s claims of a “system for mandatory arbitration” are directed to statutory subject matter under Section 101.
  • The BPAI opinion here relies on the following statement from the original Comiskey opinion: “the mere use of the machine to collect data necessary for application of the mental process may not make the claim patentable subject matter.” Comiskey (Fed. Cir. 2007). That statement was deleted from the revised Comiskey opinion.

163 thoughts on “BPAI Applies Bilski to Deny Patentability of Machine Claim

  1. “My point was that the Cornea decision is not incompatible with “general purpose computer + programming = particular machine” because they found (whether incorrectly or not) that the claim did not include any programming, but just functions, without stating how they are to be performed.”

    I refuse to believe that.

    The “programming” needed to apply the principle is incredibly simple. Simply look at the operands and the type of operation, predict the order of magnitude of the result, and send the operation down the software pipeline (if “tiny”) or the hardware pipeline (if “non-tiny.”) The implementation is clearly within the skill of PHOSITA (or even one of “low” skill in the art) – probably in 30 minutes or less.

    The BPAI doesn’t mean that preemption can be avoided by focusing on a “particular” algorithm. Rather, the BPAI means that regardless of the algorithm, this approach would preempt every use of the “principle” of triaging mathematical operations for hardware vs. software… i.e., that the problem and solution aren’t confined to any particular scenario. Regrettably, rather than just calling it “abstract,” the BPAI cited Bilski – because, hey, it’s trendy and powerful! But the flaw is obvious – the two prongs of Bilski have nothing to do with the BPAI’s rationale, and no amount of “tying to particular hardware” would suffice.

    So, the BPAI is confused. The blame for this is on Judge Michel: by instituting a hard requirement of “particularity” but refusing to define it, he’s allowed the USPTO to reject ANYTHING on the basis of insufficient “particularity.”

    Between Bilski and KSR, the courts are doing one hell of a job of turning patent examination into a fiat system. What is “obvious?” What is “particular?” Who knows? It’s up to the examiner’s subjective judgment… which is answerable to the SPE’s subjective judgment… which is answerable to the BPAI’s subjective judgment, and the CAFC’s…

    Face it, folks: we no longer have a patent examination system. We have a patent petitioning system. Be sure to ask the examiner very politely for your app to issue, before he reaches for his big “REJECTED” stamp.

    – David Stein

  2. Newman’s comments are dicta and while they do raise interesting questions (as Newman often does), Alappat stands firm in the critical application of “general purpose computer + programming = particular machine”. Bilski expressly left this alone.

  3. Noise,

    My point was that the Cornea decision is not incompatible with “general purpose computer + programming = particular machine” because they found (whether incorrectly or not) that the claim did not include any programming, but just functions, without stating how they are to be performed.

    However, Newman’s comments in Bilski about whether Alappat still applies in this regard at least raise this as a question.

  4. Tom,

    You would be missing something if you follow 6 into his briar patch.

    Stick to the Law and not to the invention of law that 6 would foist upon you.

    “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.”

    versus

    “Is not applicable because the programmed general purpose computer was judged to actually be a particular machine. The same cannot be necessarily said for every programmed general purpose computer :(”

    6 is using vacuous logic once again. The definition of “is” is… The definition of “an” – definite versus indefinite… Law vs Lawlol…

    The point in Alappat: general purpose computer + programming = particular machine. 6 tries his confusing circle route, jerking anyone who listens seriously to him that the holding is not applicable because it was held.

    Sorry 6, the judging to be a particular machine was held expressly due to software programming applied to a general purpose machine. So you are simply wrong (again) and the same CAN be said of every general purpose computer programmed to perform particular functions. Alappat did not say particular novel functions. Alappat did not say particular non-obvious functions. Alapat said particular functions. ANY particular function will do.

  5. This decision does not say that a computer running software is not a “particular machine”. They state that claim 1 refers to a computer “programmed in an unspecified manner” and contains only functional steps. That is fair given the use of “determining” in claim 1. If they had considered the dependent claims, which there was no argument about for some reason, the result might have been different since these specify how the determination is made.

    Am I missing something?

  6. “Aren’t those envisioned systems that allow robots to look and feel real, JUST algorithms?”

    No. They are new compositions of matter and articles of manufacture, in the classic and eternally patentable sense of the terms.

  7. 6:

    I like your discussion of Alappat – thanks for taking the time to write it up.

    However, I’m not sure I understand your conclusion, in at least two aspects –

    (1) “IMO it seems that Alappat was little more than a discussion on why means p function language has to be construed as invoking the actual hardware structure recited in the spec.”

    I really don’t think I’m sold on this idea – that the functional element of the “particular machine” that meaningfully limits the claim must be a piece of hard-coded, inflexible hardware, rather than general-purpose hardware (such as a processor) configured (by software) to perform the function.

    Of course, there are many shades of gray. How about an FPGA? How about a chip operating on a flashable ROM? And if that’s too programmable, how about a chip with a non-flashable ROM that can be swapped out for another non-flashable ROM?

    This is a Sisyphean task, 6. Any type of legal standard built on artificial rationale such as “particular = hard-implemented” will crumble to dust… because it’s 20 years behind the state of the art. Any contemporary technologist in modern computing will tell you that hardware and software are almost always functionally interchangeable.

    ===

    (2) “Simply look at his claim… that is a fairly particularly claimed apparatus. You could not Bilski that claim. There is simply too much structure.”

    The means+function claim in Alappat had “too much structure” for a Bilski rejection, right? What if I rewrite this claim as a method (additions in caps, deletions bracketed), to wit:

    “A [rasterizer for] METHOD OF converting vector list data representing sample magnitudes of an input waveform into anti-aliased pixel illumination intensity data to be displayed [on a display means], comprising:

    [means for] determining the vertical distance between the endpoints of each of the vectors in the data list;

    [means for] determining the elevation of a row of pixels that is spanned by the vector;

    [means for] normalizing the vertical distance and elevation; and

    [means for] outputting illumination intensity data as a predetermined function of the normalized vertical distance and elevation.”

    …I’m guessing you’d find this EASILY within the bounds of Bilski and clearly rejectable under 101… right? Let me guess – “not enough structure?”

    6, this logic amounts to little more than a circuit fetish.

    – David Stein

  8. “It’s going to be in the discovery and development of materials and systems that allow robots to look and feel real, and that allow robots to function endlessly without constant battery changes.”

    Mooney – Aren’t those envisioned systems that allow robots to look and feel real, JUST algorithms?

  9. Glad you liked it.

    Until Sunny comes up with any reason to believe An should be anything other than “One” straight from the dictionary as it is used in the statue there is no reason to believe otherwise.

    Nobody has yet to offer any sort of reasoning as to why it should be …

    Further, they haven’t come close to offering any sort of reasoning as to why the PTO interpreting it as “one” would not recieve Chev and thus stand as the official interpretation.

    It is so funny to me to see how differently the courts treat the exact same issues 50 years ago as compared to today. Back then it seems that they knew their place a bit better.

  10. And in case you are too thick, “enough to finish” means that your logic is so faulty that your argument is lost and hung with the very rope you often bring to the party.

    As Sunny Side Up would say – thanks for the definition of “an” that proves that 6 is wrong.

    I’m still getting a kick out of that story.

  11. 6,

    “IMO it seems that Alappat was…”

    Nuff said – your known propensity for sound logical thought is enough to finish.

  12. Noise, everyone knows that the SC will likely not overrule Bilski. That much is pretty much assured. The only thing left is to define “particular machine”.

    Your problem, and the CAFC’s problem, is that they know that the SC will decline to consider very much of anything that has an ounce of abstraction as a particular machine. They especially will likely decline to consider a programed general purpose computer as a particular machine. Why will they decline to do so? Because they’re not mor ons and you don’t change what the computer is (i.e. the hardware) when you load specific software on it.

    Thus it is my bet that the CAFC will back the BPAI, even through this misuse of Bilski to hit Beauregards, and surely for a programmed gen purpose comp not being a particular machine.

    Also, if you actually read Alappat you will find no such logic that would directly oppose this holding. For instance: “Because claim 15 is directed to a “machine,” which is one of the four categories of patentable subject matter enumerated in Section 101, claim 15 appears on its face to be directed to Section 101 subject matter.” does not speak to the issues of whether or not the machine was a particular machine, and whether or not the analysis applied in Bilski should be the same no matter the stat category. And also, you will notice that in Alappat’s case, even if Bilski and this present case would have come before it, then the same determination would have been made. Alappat’s claim was directed to a fairly particular machine, even though it used means plus function language.

    As an addendum: Even the board majority arguing about this part “This does not quite end the analysis, however, because the Board majority argues that the claimed subject matter falls within a judicially created exception to Section 101 which the majority refers to as the “mathematical algorithm” exception.”, the mathematical algorithm exception, does not preclude the application of Bilski’s logic.

    IMO it seems that Alappat was little more than a discussion on why means p function language has to be construed as invoking the actual hardware structure recited in the spec.

    The opinion that the court mainly overruled was: “The majority further held that, because claim 15 is written completely in “means for” language and because these means clauses are read broadly in the PTO to encompass each and every means for performing the recited functions, claim 15 amounts to nothing more than a process claim wherein each means clause represents only a step in that process. The majority stated that each of the steps in this postulated process claim recites a mathematical operation, which steps combine to form a “mathematical algorithm for computing pixel information,” Alappat, 23 USPQ2d at 1345, and that, “when the claim is viewed without the steps of this mathematical algorithm, no other elements or steps are found.” Alappat, 23 USPQ2d at 1346. The majority thus concluded that the claim was directed to nonstatutory subject matter.12”

    This sums up rather nicely why Alappat doesn’t help you:

    “Rather, claim 15 is limited to the use of a particularly claimed combination of elements performing the particularly claimed combination of calculations to transform, i.e., rasterize, digitized waveforms (data) into anti-aliased, pixel illumination data to produce a smooth waveform.”

    Thus, even the discussion about: “The reconsideration Board majority also erred in its reasoning that claim 15 is unpatentable merely because it “reads on a general purpose digital computer ‘means’ to perform the various steps under program control.”25 Alappat, 23 USPQ2d at 1345. The Board majority stated that it would “not presume that a stored program digital computer is not within the Section 112 Para. 6 range of equivalents of the structure disclosed in the specification.”26 Alappat, 23 USPQ2d at 1345. 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.

    Under the Board majority’s reasoning, a programmed general purpose computer could never be viewed as patentable subject matter under Section 101. This reasoning is without basis in the law. The Supreme Court has never held that a programmed computer may never be entitled to patent protection. Indeed, the Benson court specifically stated that its decision therein did not preclude “a patent for any program servicing a computer.” Benson, 409 U.S. at 71. Consequently, a computer operating pursuant to software may represent patentable subject matter, provided, of course, that the claimed subject matter meets all of the other requirements of Title 35. In any case, a computer, like a rasterizer, is apparatus not mathematics.”

    Is not applicable because the programmed general purpose computer was judged to actually be a particular machine. The same cannot be necessarily said for every programmed general purpose computer :(

    Simply look at his claim:

    Claim 15, the only independent claim in issue, reads:

    A rasterizer for converting vector list data representing sample magnitudes of an input waveform into anti-aliased pixel illumination intensity data to be displayed on a display means comprising:

    (a) means for determining the vertical distance between the endpoints of each of the vectors in the data list;

    (b) means for determining the elevation of a row of pixels that is spanned by the vector;

    (c) means for normalizing the vertical distance and elevation; and

    (d) means for outputting illumination intensity data as a predetermined function of the normalized vertical distance and elevation.

    That is a fairly particularly claimed apparatus. You could not Bilski that claim. There is simply too much structure. And all of the mpf structures link back to the spec for disclosed embodiments. Even with the admission that the applicant thinks the claim may read on a general purpose comp, it does not matter, stringing to together the broad reasoning of “means” with a Bilski determination? I don’t think so.

    Your standard “find x, find y, compare x to y” Beauregard will bite the dust. Some Beauregards will survive. And I will be waiting :)

  13. “The BPAI cannot overrule Alappat.”

    And the Federal Circuit can’t overrule Benson and Flook, with which the Cornea-Hasegan is consistent.

  14. Well, yes. The BPAI may indeed be smacked down again on this issue. But that would require a case in which they are smacked down. What I was asking is, how soon is this likely to happen?

  15. Frustrated,

    You do not need a next case for the legal view that a programmed general purpose computer is a particular machine. The critical part of Alappat still stands as Law. Bilski EXPRESSLY left that in place. Alappat smacked the BPAI for exactly the same reason that the BPAI is once again trying to promulgate.

    The BPAI cannot overrule Alappat. They can (and have done so) stretch dicta from Bilski as far as they can get away with. And they will continue to do so until the smackdown comes. They are merely testing the limits of a highsounding (Michel) but fractured and weak CAFC.

    The BPAI has been smacked down several times on this very topic and will be smacked down yet again.

    It is frustrating to see the CAFC act so weak and try to sound so strong (amongst themselves – the Comiskey decision is another in a string of disappointing legal works). The sooner the smack, the better everyone will be. Unfortuantely, it appears that the CAFC will vacilate until the Supremes (or Congress) step in and make a decision for them.

    If only the CAFC would man up and stand on their own without cowering from a potential smack down of their own from the Supremes, we would have more answers than questions. However, they contiue to make “quasi-law” and look over their shoulders for someone else to be definitive.

  16. Does anyone know when the next case that the CAFC could use to say that a programmed general purpose computer is a particular machine is due to issue?

    Right now the BPAI seems to be going hog wild and denying all claims that use a computer.

  17. “Wow, a shovel that digs!!! Big deal use your hands. Wow a back hoe that digs. Big deal use your hands. Wow a machine that digs!!! Laugh!!! Big deal!!!!!! My arms and hands can do the same thing!!!”

    You got it all backwards, brother. It’s more like this: “Wow, a shovel that digs!! BUT MY SHOVEL HAS A POWERFUL COMPUTER BRAIN THAT TELLS YOU WHEN IT’S ABOUT TO BREAK!!!!”

    or

    “Wow, a back hoe that digs! BUT MY BACK HOE IS CONNECTED TO A GPS SERVICE!”

    That’s how it’s done.

  18. MM wrote: “WOW!!!! You can recommend stuff to someone on the basis of what other people like. That’s old. BUT THIS METHOD USES A POWERFUL COMPUTER BRAIN, MY FRIENDS!!!!!!”

    Wow, a shovel that digs!!! Big deal use your hands. Wow a back hoe that digs. Big deal use your hands. Wow a machine that digs!!! Laugh!!! Big deal!!!!!! My arms and hands can do the same thing!!!

    Mooney, we don’t need no stinking regulations on the financial markets do we? And, we don’t need no stinking patents for innovation, do we?

    If I wasn’t so busy right now with writing and prosecuting EE, CS, and mechanical patents, I would spend some more time rebutting your arguments.

    How is it that you have so much time to blog, MM?

  19. MM wrote: “WOW!!!! You can recommend stuff to someone on the basis of what other people like. That’s old. BUT THIS METHOD USES A POWERFUL COMPUTER BRAIN, MY FRIENDS!!!!!!”

    Wow, a shovel that digs!!! Big deal use your hands. Wow a back hoe that digs. Big deal use your hands. Wow a machine that digs!!! Laugh!!! Big deal!!!!!! My arms and hands can do the same thing!!!

    Mooney, we don’t need no stinking regulations on the financial markets do we? And, we don’t need no stinking patents for innovation, do we?

    If I wasn’t so busy right now with writing and prosecuting EE, CS, and mechanical patents, I would spend some more time rebutting your arguments.

    How is it that you have so much time to blog, MM?

  20. “In many cases, if you ignore the conditional, you end up with nonsense that is absurdly out of touch with the logic of the disclosure.”

    I concur.

    I’m going to be pissed when I google a Landis section that states exactly, nearly word for word, what I’ve been saying. Especially after you having alleged reading him cover to cover (which is something I have almost, but have not quite done yet, dmn google previews skip pages) For now, I’ll drop it if you like, let me deal with my examinations the way I’m going to deal with them. If it makes it past my spe (who is a real stickler about doing things right) then it is good enough for me.

    “6, I have to be honest with you – I find your entire line of reason baffling and illogical.”

    There is at least one part that you simply cannot find baffling or illogical. Method claims must distinguish in terms of method step(s). (If you do not understand that stop me here, I’ll recap where you can find the basics of patent claim drafting) The “determination” to go one way or the other is a method step. (Stop me here if you like) The condition attached to the “determination” is not a method step. (again, stop me if you like) Thus if the prior art determined to go with “do (y);” in a prior art method that did not determine whether or not to “do y” based on “if x is true” then it meets the claim limitation because the prior art already made the “determination to “do (y);”” which is the actual step performed. Likewise, even if the “if (x) is not true, do (z).” is not even present in the prior art it is irrelevant because the reference made the determination to do y. Thus the entire conditionals attached to doing steps nets you no gain in terms of distinguishing your method claim from the prior art and was in effect ignored. (Again, stop me anytime)

    “schoolyard playground”

    This is the interwebz, not professional discourse. Of course, you don’t have to nakedly flame someone often like some posters are all too apt to do.

  21. Amusing and entirely true factoid – the captcha test that I had to pass in order to submit my above post featured the following letters:

    NMBFUK

    😆

    – David Stein

  22. “The ‘baffling’ part will go away if you recognize, as most readers have, that 6 is a nitwit.”

    People, PEOPLE. Are we professionals? Calling each other “nitwit” and “retard” is not appropriate for professional discourse, or in fact anywhere except a schoolyard playground.

    Nothing makes me less likely to respond or lowers an individual’s standing in my book as quickly as childish insults like this. I refuse to engage anyone who can’t maintain a certain basic level of decorum and maturity – including, notably, the most prolific poster in this forum. I utilize a simple, across-the-board moratorium… it’s just not worth my time or attention.

    – David Stein

  23. “6, I have to be honest with you – I find your entire line of reason baffling and illogical.”

    The “baffling” part will go away if you recognize, as most readers have, that 6 is a nitwit.

  24. 6 wrote:

    “I’m not taking issue with the “determinate” quality of “if” claims. Even presuming a perfect “determinate” quality I still take issue with the limitations.”

    But… why?

    Patent law is replete with specific, well-documented requirements for claim drafting. Antecedent basis, Markush grouping (a la SuperGuide), 112p6 styling, claiming ranges, statutory groups, preambles, transition terms, punctuation, “whereby” clauses… these are all very well-known concepts.

    Before this thread, I have never encountered any discussion of conditional logic in a claim. Not once. I read both Landis and Sheldon cover to cover (and I even have proof!! – outlines on my website), and neither of them have anything about the term “if.”

    So… what is the basis for this body of claim construction that you’re asserting here?

    ===

    “I personally do not believe that the claim is necessarily invalid just because it involves an “if”. It will only be invalid if I have both methods that it states as being performed, except without the conditional stuck in. In other words, the conditional is ignored.”

    There are not “both methods.” There is ONE method that has at least one step that is performed ONLY in some circumstances.

    In many cases, if you ignore the conditional, you end up with nonsense that is absurdly out of touch with the logic of the disclosure. What if you have two conditional steps in a method of this type:

    “if (x) is true, do (y); and
    if (x) is not true, do (z).”

    If you ignore the conditionals, then you’re reading a method that involves doing both y AND z. The applicant claimed no such thing. In fact, y and z may well be mutually exclusive, and the “single method” that you’re reading may be impossible.

    6, I have to be honest with you – I find your entire line of reason baffling and illogical.

    – David Stein

  25. “What is the problem here? Conditional logic does not (per se) denote ambiguity. Unless the conditioning specifies a random or indeterminate quality or test, the result is determinate. For any particular (x) that goes into the method, the same result (y) will be achieved.”

    Most of my claims aren’t that determinate though :( If they were then I would be more willing to accept them.

    Even so, I’m not taking issue with the “determinate” quality of “if” claims. Even presuming a perfect “determinate” quality I still take issue with the limitations. Also note that I personally do not believe that the claim is necessarily invalid just because it involves an “if”. It will only be invalid if I have both methods that it states as being performed, except without the conditional stuck in. In other words, the conditional is ignored.

    “Classic mathematical equations often involve conditional logic, such as:

    f(x) = { if x is within set A, g(x); if x is not within set A, h(x) }”

    Let me guess, you’re one of those people that believes math defines reality, rather than merely reflects it. I’ve got news for you, it merely reflects it. Except in a math class where math defines your grade. Life of course is full of conditional statements. Math is as well. Neither of them are method claims.

  26. Just remember that if your method claim includes “if” you may not be claiming a method at all but rather an algorithm for determining whether to apply one of several methods.

  27. Worth repeating:
    “Might this suggest a great deal about the differences between an examiner and a typical PHOSITA?”

    And I would amend “…differences between a vacuous examiner and a typical POSITA?”

  28. Folks:

    Really? We’re still wasting comment space by kicking around some arguments over whether a method claim can include the term “if?”

    What is the problem here? Conditional logic does not (per se) denote ambiguity. Unless the conditioning specifies a random or indeterminate quality or test, the result is determinate. For any particular (x) that goes into the method, the same result (y) will be achieved.

    Classic mathematical equations often involve conditional logic, such as:

    f(x) = { if x is within set A, g(x); if x is not within set A, h(x) }

    This property does not make the equation indeterminate, inconsistent, or strange. In fact, conditional logic is much less strange than some otherwise straightforward mathematical operations… such as ordinary division, which, you may recall, does some rather screwy things if the divisor is around zero.

    (side-note: I’d LOVE to see some patent applications rejected citing “this claim might require dividing by zero” rationale. =) )

    Anyway – it’s interesting to see “conditional logic” cited as potentially invalidating, when mathematicians (along with scientists in every other branch of science) use such logic daily with no problem, or even a second thought. Might this suggest a great deal about the differences between an examiner and a typical PHOSITA?

    – David Stein

  29. pilscinori wrote:

    “Given the importance of computer technology to the US economy, it is simply outrageous that Congress continues to stand silent and allow the USPTO, BPAI, CAFC, and SCOTUS to effectively enact law relating to patents through these decisions. We are far beyond ‘interpreting’ and ‘applying’ law at this stage. These judges are effectively enacting substantive law.”

    I agree that congressional action could be the quickest and most decisive resolution. And there’s certainly precedent – 35 USC 103(b) was passed to resolve some sticky and controversial issues in biotech patenting. However, Congress is probably too heavily lobbied by opposing groups to reach any type of consensus. And frankly, they’re probably sick of “patent reform bills” by now, having toyed with about a dozen of them in the past few years without effect.

    I disagree with your statement that SCOTUS and the CAFC are going beyond “applying” and “interpreting” law. I think that the CAFC was trying to do its job in interpreting the term “method” in 35 USC 101. (Of course, I think that the majority opinion was horrible in many ways – overreaching in terms of judicial economy; logically and technically inconsistent in many aspects; founded on misreadings or simply contortions of old cases; etc.)

    But I stridently agree with you that the USPTO, and the BPAI in particular, are overstepping their roles. Of course, this is nothing new – the USPTO has been a notorious and chronic violator of its limitations as an administrative body. The only difference is that the CAFC, for some unimaginable reason, has started listening to it for advice on how to shape the law… which is quickly proving disastrous.

    – David Stein

  30. “ANY application shall have something if IT does something? Bullsh IT.”

    Good luck on the LSAT, 6. Here’s a post-exam tip for you (it works in law school as well) – just repeat your incorrect answers over and over again, and maybe, just maybe, you’ll get partial credit.

  31. I had a response typed up, but you’re obviously too dmb to continue to talk to on the subject so I just deleted it. If you cannot at least read and apply a dictionary definition you simply prove that you are likely an actual attorney irl. The same ones that I win nearly every single argument on claim/word construction with. This is no different. And if we were irl you would soon find yourself saying that you agreed with me, just like legions of attorneys before you have done and will continue to do.

    If you’d like to show how awesome Sunny and yourself are, please, go where he cannot. Prove that you are not completely rtarded and repeat back to me my view without fing it up. He ll, use some copy/paste if you have to.

    As to “an” it is blatantly singular in the statute. Even interpreting the statute overall as he wishes it is still singular because it only addresses one application at a time no matter what. Any “schooling” that supposedly went on was me trying to learn him a thing or two, but failing in my role as a teacher.

    Just for lols let’s get Sunny’s view out of the way. He thinks that “An” in the following can be interpreted “Any” or “Every”.

    “An (Any/Every) application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States, or as provided by section 363 of this title, which is filed by an inventor or inventors named in the previously filed application shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier filed application. ”

    Let me break this down for you:

    “ANY application for patent for an invention disclosed … shall have the same effect … if IT contains or is amended to contain a specific reference to the earlier filed application.”

    ANY application shall have something if IT does something? Bullsh IT.

    “EVERY application for patent for an invention disclosed … shall have the same effect … if IT contains or is amended to contain a specific reference to the earlier filed application. ”

    EVERY application shall have something if IT does something? Bullsh IT again.

    No, AN (ONE) application shall have something if IT does something.

    You and he will never get around IT making your “Any” and “Every” sound rtarded. Iirc even JD saw this already. I believe I’d already pointed this out at phawk, but since Sunny no doubt got the last word in over there due to my posting in other threads along with that one I sure did get “schooledlol” to any mor ons reading the thread. I guess I should go and fix it up sometime.

  32. And 6, priceless writeup on Patent Hawk about eggs and the definition of “an”.

    Sunny Side Up schooled you, I just hope you took notes.

    Whose your (grand)daddy? – hilarious.

  33. 6,

    your motto must be: say something glib and declare victory. Who is your political idol? – Bill “that depends on what the definition of “is” is”?

    I was under the impression (OK – I wasn’t, but it sounds better) that you had some knowledge of computers. If you did then even by your extremely constained “one method = one procedure” (which is NOWHERE singularly and only defined as such in the information I presented), we can take any of the one procedure nested if-then or do-while or heck even case computer procedures and obliviate your complete lack of logic.

    You must really enjoy being vacuous. Please post some more and continue entertaining.

  34. If Mooney thinks Malibu real estate will ever pop, I now know how out of touch he truly is…

    BTW, the 6:22AM post is not mine…

  35. I apprently need to make myself more clear.

    To put this into your terms a method is a “set of actions” (what I call a set of method steps). A method claim with an if statement is two sets of actions with a conditional inserted to determine which set of actions is performed. Therefor it is two sets of actions in one claim.

    “a procedure or process for attaining an object:”

    That definition is dam near perfect. One method = one procedure, and one object or objective results as the case may be.

    “C’mon 6, do a 10 second Google that proves that Method cannot be anything but linear.”

    You did one for me, thx.

  36. 6,

    You are confusing Method with Action.

    A Method can and often does have more than one action. An action is something. Therefore a Method can and often does have more than one something. Do’h!

    Each element of a multi-element method claim is a particular something you do. To say that a Method claim cannot have more than one something you do is gratuitously vacuous. Do’h!

    Branching and/or iterative actions easily fall into the category of singular Method. Do you have any other logic besides “because I say so” to show that Methods must be linear?

    6, Since you like definitions, let’s look at Merriam Webster’s Online Dictionary:
    meth·od
    Pronunciation: \ˈme-thəd\
    Function: noun
    Etymology: Middle English, prescribed treatment, from Latin methodus, from Greek methodos, from meta- + hodos way
    Date: 15th century
    1: a procedure or process for attaining an object: as a (1): a systematic procedure, technique, or mode of inquiry employed by or proper to a particular discipline or art (2): a systematic plan followed in presenting material for instruction b (1): a way, technique, or process of or for doing something (2): a body of skills or techniques
    2: a discipline that deals with the principles and techniques of scientific inquiry
    3 a: orderly arrangement, development, or classification : plan b: the habitual practice of orderliness and regularity
    4 capitalized : a dramatic technique by which an actor seeks to gain complete identification with the inner personality of the character being portrayed.

    Nope, nothing in the definition limiting method to being strictly linear.

    Let’s look at another favorite of yours, Wikipedia:

    Method may refer to:
    – How to do or make something
    – Scientific method, a series of steps taken to acquire knowledge
    – Method (computer science), a piece of code associated with a class or object to perform a task
    – Method (music), a kind of textbook to help students learning to play a musical instrument
    – Methodology, the collection, the comparative study, and the critique of the individual methods that are used in a given discipline or field of inquiry
    – Software development process, a series of steps taken to build software
    – Method acting, a style of acting in which the actor attempts to replicate the conditions under which the character operates
    – Method (Godhead), the bassist and programmer for the industrial band Godhead
    – Discourse on Method, a philosophical and mathematical treatise by René Descartes
    – “The Method of Mechanical Theorems”, part of the Archimedes Palimpsest
    – Method, a 2004 film directed by Duncan Roy
    method, a San Francisco-based corporation which manufactures household products
    – Method ringing, a British style of ringing church bells according to a series of mathematical algorithms

    Here, if we want to be particular and exclude several meanings, I guess we could look at the software development process as a series of steps taken to build software and reason that a series of steps must be linear – oops, we all know that that development process is anything but linear. Furthermore, in the software sense, even you may have heard of pieces of code that branch and iterate.

    C’mon 6, do a 10 second Google that proves that Method cannot be anything but linear.

  37. How can a single method be anything but linear? It is something you do. Not two somethings you do. 1 method per claim thanks.

    I’m hardly confused, I know that they are two (or more) methods rolled into one with a condition attached to determine which branch is taken. The argument is that the “conditional” language is not relevant and that the two claims should be split in order to be proper. And if the conditional limitation is the distinguishing feature, then there is no distinguishing feature since the processes being performed (that is the steps of the two methods) are what is actually being claimed.

  38. The other delicious irony in all this is that the very same companies who are filing crap patents left and right effectively set the stage for their own demise.

    As 6k frequently points out, the proper use of Google is an extremely useful way to find prior art and it becomes more useful every day. Not only are Google and other habitual filers routinely attempting to claim trivial improvements on the prior art, but at the same time they are making that prior art easier for everyone else to find.

    It would be interesting to take twenty computer-implemented patents issued in 1985 and use modern tools to find prior art against the claims. My prediction is that it would be like shooting fish in a barrel.

    It’s another reason why the idea that patents are related to “technology growth” is a fricking joke. All those houses that were bought during the bubble. Was that a sign that the economy was growing? No, it was a sign that people were being lured into buying houses because it seemed like such an awesome way to make money. Now we Americans all have to pay for the greed and shortsightnedness of these high rolling hacks.

    The increase in patent filing likewise reflects growth in the business of patent filing. I would say that — on average — no property on earth is more overvalued right now than a patent on some software, computer-related, or web-implemented “invention.” That Malibu beach house isn’t a safe place to party anymore.

    link to youtube.com

  39. “the idea of the PTO being a ‘cheap lottery’ is silly to sophisticated filers”

    what else would you call it (other than some form of gambling) when you prepare and file claims without performing a prior art search and thus without a clue whether the application you “bought” has any value whatsoever?

    make no mistake. there are some who make informed decisions on filing. too many, however, are gambling.

  40. Love it!!

    Especially, if we could reverse GATT & then the Office could take as much time as it wished & the Inventor would still believe the system encouraged innovation … Lottery?

    What *will* it take before Money claims his orange carnie ticket?

    “and not a playground for hacks and wankers who would prefer that the PTO remain a cheap lottery with Big Prizes handed out randomly just to keep all the kiddies happy”

    Mooney knows all about hacks and wankers… and the idea of the PTO being a “cheap lottery” is silly to sophisticated filers, but these days the notion will get you published in GMU law review.

    Posted by: AllSeeingEye | Jan 17, 2009 at 06:22 AM

    AMEN >>

    Given the importance of computer technology to the US economy, it is simply outrageous that Congress continues to stand silent and allow the USPTO, BPAI, CAFC, and SCOTUS to effectively enact law relating to patents through these decisions. We are far beyond “interpreting” and “applying” law at this stage. These judges are effectively enacting substantive law. I suppose we should expect such passivity from the do-nothing Congress of Reid and Pelosi, but what about computer industry lobbyists and their trade associations? They appear utterly ineffective to turn back the tide, which ought to embarass these groups and their members. They are setting the stage for a collapse of the industry as there will be no legal tool to stave off foreign competition. If not Japan and Europe, then China will figure out that it can infringe here freely and use its far lower domestic labor rates to price US innovations out of existence. The USPTO through its executioner the BPAI is simply using 101 to avoid the hard, time-consuming work of searching for an applying art under 102 or 103.

    Posted by: Conservative in Exile | Jan 16, 2009 at 09:05 AM

  41. > humping robots

    Rejected under 35 U.S.C. 102(b) as anticipated by I. Asimov, “Satisfaction Guaranteed” in Amazing Stories, April 1951

    😉

  42. “Much ado about if…
    Are Methods only linear?”

    I wouldn’t get too worked up about 6’s musings on “if” limitations. He has repeatedly demonstrated that he doesn’t understand the difference between method and apparatus claims, so it’s not surprising that he’s confused on this issue as well.

  43. “and not a playground for hacks and wankers who would prefer that the PTO remain a cheap lottery with Big Prizes handed out randomly just to keep all the kiddies happy”

    Mooney knows all about hacks and wankers… and the idea of the PTO being a “cheap lottery” is silly to sophisticated filers, but these days the notion will get you published in GMU law review.

  44. Mr Malcolm:

    So let the record stand. You failed to cite the statue or case law that allows you to dissect claims into elements of novelty for 101 purposes.

    CASE CLOSED!

  45. “But all software is enabled. pds told us that sometime last summer. What happened to that guy? I worry about his blood pressure sometimes.”

    Someone apparently posted something under “pds” and he swore he wouldn’t post anything again until dennis fixed the problem.

    I’ll miss pds’s habit of spinning people’s arguments and then responding to the spin rather than their arguments.

  46. Turning and turning in the widening gyre
    The falcon cannot hear the falconer;
    Things fall apart; the centre cannot hold;
    Mere anarchy is loosed upon the world,
    The blood-dimmed tide is loosed, and everywhere
    The ceremony of innocence is drowned;
    The best lack all conviction, while the worst
    Are full of passionate intensity.
    Surely some revelation is at hand;
    Surely the Second Coming is at hand.
    The Second Coming! Hardly are those words out
    When a vast image out of “Spiritus Mundi”
    Troubles my sight: somewhere in sands of the desert
    A shape with lion body and the head of a man,
    A gaze blank and pitiless as the sun,
    Is moving its slow thighs, while all about it
    Reel shadows of the indignant desert birds.
    The darkness drops again; but now I know
    That twenty centuries of stony sleep
    Were vexed to nightmare by a rocking cradle,
    And what rough beast, its hour come round at last,
    Slouches towards Bethlehem to be born?

    — William Butler Yeats, “The Second Coming”

  47. Mal M deserves kudos… somewhere in there resides a kind of wisdom.

    change will come… f’rsooth

    good luck everyone

    tech schmeck

    love peace harmony mere survival ye’ll be grateful for ‘fore long

  48. “Personally I think I will be overlooking such limitations on those grounds until I get some further guidance.”

    It’s coming. Trust me.

  49. “But I’m surprised that you attorneys don’t care for your fellow man any more than that.”

    Odds are overwhelming that this “fellow man” is representing a competitor of one of my clients. Screw him.

  50. “Oh, I see – just those that might cost you your job.”

    Idk about that, but they would be poed.

    “Yes, I was talking about the claims in the reference patents not passing the new BPAI Bilski muster. If the claims don’t pass muster, then the patent doesn’t pass…”

    So utilize the magic of copy/paste and show us just what you mean instead of making everyone think you’re only talking about the reference as a whole.

    I’m interested in that as well Andrew. I’ve been seeing a lot of cases that, even if they don’t explicitly use “if” they are meaning “if”. In other words, methods that say do x step based on whether or not y happens. They never say “if” but “if” is implied.

    In other words, “conditional” limitations, what about them? Off hand it seems like an issue relating to not distinguishing in terms of a method step, and instead distinguishing in terms of a condition of performing a method step to me. Also, you could view it as an issue relating to 112 in some instances where the claim would be indefinite since it does not define what actually happens in the method, and instead defines what might happen in the method in either alternative circumstance.

    Personally I think I will be overlooking such limitations on those grounds until I get some further guidance.

    Whatev, I have a final to write up before I leave, ttyl.

  51. 6,

    Yes, I was talking about the claims in the reference patents not passing the new BPAI Bilski muster. If the claims don’t pass muster, then the patent doesn’t pass…

    “An Examiner, let me remind you that the rules of the road prohibit posting here under a name that includes a reference to your job from work.”

    LOL – 6, since when do you follow the rules of the road? Oh, I see – just those that might cost you your job.

    JohnDarling – thanks – I was thinking that since the Appeals Court can raise new issues sua sponte, then maybe the BPAI had some sua sponte power as well. As far as the prior art is concerned, I believe the actual requirement is prior art that has not been used in examination in a question of a New Light. Wouldn’t ANY art – even the very art previously used be citable in the New Light of Bilski? So the Director (in his final day) CAN direct an entire art field (or several) for the last upteen years to be reexamined in the new light of Bilski for each or any prior art already of record.

    That would be one heckavu going away present!

  52. “but that the reference patents themselves would also equally fail scrutiny under the current BPAI review.”

    You have to be talking about the CLAIMS in the reference patents. You have yet to show us some claims from the reference patents that would fail the Bilski test.

    That said, there probably are some claims that would, even in that very patent. They abound throughout the art.

    The 4 examiners have it. No ref gets sent. He gets no pity from me, if I can google it, then he could have googled it. But I’m surprised that you attorneys don’t care for your fellow man any more than that. I even gave you guys all morning.

    Jess why r u on here? You aren’t interested in this sort of stuff I thought.

    An Examiner, let me remind you that the rules of the road prohibit posting here under a name that includes a reference to your job from work. As for advocating functional limitations: ayeyaiyai. Also, perhaps you could stop by my office sometime and show me a computer readable medium with information structures that ever caused a computer to do anything because I have yet to see such a product.

  53. “Can the BPAI sua sponte invoke Reexamination under the new guidance of In re Bilski?”

    No. 3rd party or patent owner requested ex parte reexam under section 302 must be on the basis of prior art. Director initiated ex parte reexam under section 303 also must be on the basis of prior art.

    There won’t be any reexams of any issued patents on Bilski 101 issues. Unless the statute is amended/added to.

  54. from page 6: “the involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity.”

    but seems to me that d’ is needed to determine whether to calculate in software or hardware.

    What gives?

  55. Dennis,

    And in the new light of the current BPAI take on Bilski, many patents (including the claims of the reference patent in Ex parte Srinivas Gutta) would not pass 101 muster as well.

    The point of irony is not that the reference patents actually contain information that might rightly be used as a 102 source (no irony there – and not the point of my post), but that the reference patents themselves would also equally fail scrutiny under the current BPAI review.

    Can the BPAI sua sponte invoke Reexamination under the new guidance of In re Bilski?

  56. Software patents are dead, so let’s fire all the software and business methods art examiners and let everyone know what the new rules are. The PTO backlog goes down, too. Great!

    Posted by: Software patents are dead | Jan 15, 2009 at 06:40 PM

    Yes, let’s fire all those guys, especially 6, and will someone find out who mooney is and let me know?

  57. New Light, it doesn’t matter if the patent is valid or not for use as anticipating prior art. It does need to be enabled, however.

    But all software is enabled. pds told us that sometime last summer. What happened to that guy? I worry about his blood pressure sometimes.

  58. New Light — I think you are missing a key point here. In a 102 anticipation rejection, the reference is considered for what it discloses. When considering a 101 subject matter rejection, an application must be considered for what it claims. Many valid patents may disclose information that would not itself be patentable.

  59. Anyone else notice the irony in Ex parte Srinivas Gutta that after the BPAI found the claim to be outside of 101, a patent reference (with the presumption of validity) was used to 102 several of the claims? Now if we hold that presumptively valid patent up to the same line of logic we see that the presumptively valid patent itself does not pass the BPAI version of 101.

  60. MM says: “The problem with the magic words for getting out of 101 is that it creates a giganto loophole where you can just insert into the claim some baloney “particular machine” limitation (“wherein said process takes place in a structure, wherein said structure includes a furnace or air conditioner for modulating air temperature” — look, the method is tied to a particular machine!!).”

    That’s why you need to be able to make a _Lincoln Engineering_ rejection (exhausted combination). In _Quanta v. LG Elecs._ the Sup. Ct. said (in effect) that, for purposes of the exhaustion doctrine, exhaustion of a first claim that is limited to the points of departure from the prior art constitutes exhaustion of a second, exhausted-combination claim based on the first claim (e.g., purple microprocessors vs. PCs containing purple microprocessors). (This sounds as if the Supremes didn’t know that Judge Rich had overruled _Lincoln Eng’g_ in _Radio Steel & Mfg. Co. v. MTD Products, Inc._, 731 F.2d 840, 845 (Fed. Cir. 1984).)

    Anyway, if _Lincoln Eng’g_ is now unoverruled, that would take care of the problem MM sees. If not, where are exhausted-combination rejections when we need them?

  61. 1. A method for dynamically generating a privacy summary comprising:generating a profile for a user;receiving one or more privacy setting selections from the user associated with the profile;updating the profile associated with the user to incorporate the one or more privacy setting selections; andgenerating a privacy summary for the profile based on the one or more privacy setting selections.

    Yes, that claim was actually filed by Facebook. No misconduct there?

  62. “The problem of, say, deciding what DVD to buy, or what to cook for dinner, is not “technical”.”

    But … but … my method used a POWERFUL COMPUTER BRAIN!

    /desperate former inventor off

  63. “The claims in this application are terrible. I wouldn’t have expected it to be allowed even pre-Bilski.”

    And they never will be allowed, no matter what, because they are terrible.

    All this talk about 101 being abused blah blah blah ruin patents for everybody blah blah blah is just a Big Lie. As if nobody ever heard of distinguishing cases based on their facts. Getting rid of crap software patents and disgustingly broad “claim the universe” biotech diagnostic claims hardly means the end of patenting.

    Rather, it’s the BEGINNING of an era where the task of advising clients and preparing decent patent applications becomes a professional endeavor once again, and not a playground for hacks and wankers who would prefer that the PTO remain a cheap lottery with Big Prizes handed out randomly just to keep all the kiddies happy.

  64. In fact, this question ties in with one of the questions that the President of the EPO has referred to the Enlarged Board of Appeal:

    “Q.4(A)Does the activity of programming a computer necessarily involve technical considerations”

  65. In Euro-101, the word “technical” is a convenient portmanteau word to reference the longish list of statute-barred things in Art 52(2) EPC. European practitioners know that one has to put a contextual meaning on “technical”. I think we all agree that, shorn of context, acontextually, a word means anything you want it to mean. And everybody’s got an “agenda” here.

  66. “So would a new general purpose algorithm that has wide application be patentable? I’m thinking of the building-block type stuff (improved/faster sorts, parsing, tricky ways of converting or calculating something) that would be useful to just about every computer application.”

    Excellent question, I’m glad you asked it.

    As long as the generalised algorithms are concerned with information processing in the abstract – no, but I’d struggle to justify why that kind of stuff isn’t considered “technical”.

  67. Anon: do you see your algorithm as such, as perhaps a “mathematical method”? That too is in the explicit bar list of Art 52(2) EPC so, sorry, no technical character, unless you can dress it up somehow. The Euro-specialist patent drafters are of course pushing the envelope, even as we correspond. Beauregards, signal claims, all that sort of stuff, it’s meat and drink to the specialised Euro-drafter

  68. Noise, I think you’re probably right, but I’m still grappling with why 101 should be considered in a vacuum from the other sections. The “new and useful” language, to me, signifies that we need to know WHAT the applicant invents before we can evaluate it based upon 101 grounds. If we can’t even determine what the applicant actually created, how can we say it is fine under 101?

    That said, I think I’ll be spending some significant time shortly going back over a lot of 101 case law; to me, either a lot of people have lost the forest for the trees or I haven’t done enough research.

    Regardless, the case here seems to be closing the beauregard loophole; could you give some examples of how this affects anything other than business methods/software?

  69. Thanks, Max.

    So would a new general purpose algorithm that has wide application be patentable? I’m thinking of the building-block type stuff (improved/faster sorts, parsing, tricky ways of converting or calculating something) that would be useful to just about every computer application.

  70. Anonymous, if something has “technical character” it can meet Euro 101. A PC has technical character, a method of doing business does not. Euro-103 is about “technical effect” and solutions to objective technical problems. GATT-TRIPS offers patents for inventions “in all fields of……technology”. The problem of, say, deciding what DVD to buy, or what to cook for dinner, is not “technical”. The EPO has no Binding Precedent. So, the concept of “technical” can evolve with the march of technology, and is doing. There is an ongoing consensus view, that emerges from more than a thousand unappealable EPO Appeal Board Decisions, per year.

  71. Non-precedential???? WTFk? You talk about whack-a-mole. Michel writes Bilski, turns the world upside down and turns the lights off at the same time by leaving for future cases to decipher essential terms like “particular”. Now BPAI does that in an opinion that is NON-PRECEDENTIAL????

    Also, is the quote cut/pasted incorrectly or has the PTO extended its requirement that English must be a second language from examiners to BPAI judges:

    “The recitation of a processor in combination with purely functional recitations of method steps, where the functions are implemented using an unspecified algorithm, is insufficient the recitation of a processor does not limit the process steps to any specific machine or apparatus.”

    Huh?

  72. ” If a “mental” process doesn’t satisfy 101, why should a “mere” computer implementation of that process be patentable, either in terms of a computerised method, a programmed machine or a program encoded on a data carrier? ”

    From a policy perspective, my opinion is that in a lot of cases if the claimed method were performed as a “mental process” it would take so long to perform that it would not be “useful.” In those claims the claimed process is only useful when performed by a machine.

    Unfortunately that begs the question: how long should a given process take before it is not useful? I would not want Examiners making that judgment.

  73. Harm Fines writes:
    ———-
    In the BPAI opinions, why don’t they list the Examiner’s name? The BPAI decision is whether the examiner erred and listing the examiner’s name would allow us to better respond to that same examiner when they make the same “mistake” in a future Office Action.
    ———

    If you believe that an examiner has made a mistake and that there is a BPAI decision that supports your view and corrects a similar examiner mistake, then there isn’t any barrier that I’m aware of to citing that BPAI decision to the examiner.

    Adding the examiner’s name would only make it easier for the examination process to become personal. Based on the comments on this site, I suspect that it would do more harm than good.

  74. “You really think that just because you have an idea, it belongs to you?”

    Jeff Bridges as Obadiah Stane in “Iron Man”

    Ideas aren’t patentable. Useful applications of ideas are potentially patentable. If a “mental” process doesn’t satisfy 101, why should a “mere” computer implementation of that process be patentable, either in terms of a computerised method, a programmed machine or a program encoded on a data carrier? Given 101-ineligibility in the absence of computerisation, does it really matter whether you strike down “mere” computer implementation on the basis of an extension of 101 or of 103 (taking it as a given that “mere” computer implementation of any mental process is inherently obvious)?

  75. Max,

    But if the claim was technical, novel, and nonobvious, then it would be allowed, correct?

    Ok, so what is technical?

  76. In the BPAI opinions, why don’t they list the Examiner’s name? The BPAI decision is whether the examiner erred and listing the examiner’s name would allow us to better respond to that same examiner when they make the same “mistake” in a future Office Action.

  77. Noise makes a good point, to my mind. A PC, programmed with a new program, is itself new and a “particular” machine. Isn’t it?

    Europe would surgically excise the claim using 103, with its delicate instrument called “technical”. Even after KSR, US 103 lacks any such grim reaper, so the BPAI is obliged instead to resort to the crude and brutal 101 sledgehammer.

  78. DavidE,

    You raise valid points, but I believe you miss the gist of the argument here.

    The uproar appears to be in the mis-use of the law. Using 101 as a wholesale bar to patentability is simply a mis-use of the law. The effects of such mis-use are well worth the commotion, as not only software and business method patents are affected. MM in particular may realize that the 101 sledgehammer will even affect his world view and post such ridiculous arguments that the extra solution activity of presenting results saves the patentability of those ideas in his domain (which will not survive the hammer blow of 101).

    Also, the software boom really took off AFTER patenting was allowed. Such patenting allowed many players to be able to aquire financing and that business model is now in jeopardy. This, however, is a non sequitor to the real issue of the abbuse of law.

    The significant problems you highlight may well be real. However, disclosure and quid pro quo SHOULD be handled under separate sections of the law – NOT 101. The Law HAS provisions for these problems in sections 102, 103 and 112. To wield the sledgehammer of 101 because the Office has failed in regards to sections 102, 103 and 112 will only compound the problem and make matters worse for ALL arts.

    This just highlights the problem in that the Office is trying to make up Law to push its agenda, and that agenda is in opposition to the mandated cause that the Office should actually be following.

  79. Patent and copyright aren’t mutually exclusive. A new product comes loaded with IPR: patent, trademark, design, know-how, trade secrets, copyright. Europe recognises patentability when the inventor has solved an objective technical problem with a new and non-obvious combination of technical features and also enables the invention over the full scope of the claim. Occasionally it’s inventive even to identify the problem, whereupon the means of solution are obvious but you can still get a patent. All of these A publications enrich humankind and (was it Rich J.) give the public something it didn’t have before (rather than take away from it something it had already). Clients have been misled by some lawyers, into thinking one can circumvent these fundamentals.

  80. “The USPTO through its executioner the BPAI is simply using 101 to avoid the hard, time-consuming work of searching for an applying art under 102 or 103.”

    As I posted earlier, “BPAI = strong arm of the Office” and “Someone will once again have to tell the BPAI the difference between a general purpose computer and a computer transformed to a particular machine with the loading of software.”

    The BPAI has taken dicta from In re Bilski and pushed where Bilski simply did not go. Since In re Bilski did NOT go to the place in question, prior existing Law still holds. We only need to reference In re Alappat, as the critical section is very much still Law. The BPAI is once again trying to enforce a view that has been repeatedly smacked down. The wielding of the sledge hammer of 101 rather than the careful analysis under 102/103 and I would add 112 will also be smacked down. The CAFC and the Supremes should note the repeated and wanton disregard the Office and BPAI displays as it continues to push its agenda.

    “Alapat 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 ineffect 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 [emphasis added]

  81. This discussion begs the question, so here it is. Why is software patenting an important thing? It seems that almost all the attorneys here assume a need for it, but I’ve noticed that no one has actually spelled out the need, so far as I can see. Convince us that patent protection is required to protect innovation in the software industry! I remember a time when software patenting did not exist meaningfully and yet the industry boomed.

    In my view, there appear to be significant problems with software patenting as currently practiced.

    I’ll start with two points. First, there is a lack of disclosure. When the software is claimed in functional terms, the applicant is really only protecting the end result, not the specific method of implementation. Where’s the quid pro quo? Second, aren’t you concerned about cross-over protection between patent and copyright regimes?

    I would be happy to read serious replies.

  82. Well, Conservative, as far as I can see, from my location in mainland Europe, the USA dominates commerce, throughout the world, most strongly in those areas of human creativity where patent protection is NOT available (Bill Gates, Mr Starbuck(?),Ray Croc, Michael Jackson and friends, Hollywood, Coke and Pepsi, Marlboro). When it comes to building autos, drugs or computers, I don’t see so much domination. So, thinking wealth-creation tomorrow, do you really want more patents? Be careful what you wish for.

  83. Given the importance of computer technology to the US economy, it is simply outrageous that Congress continues to stand silent and allow the USPTO, BPAI, CAFC, and SCOTUS to effectively enact law relating to patents through these decisions. We are far beyond “interpreting” and “applying” law at this stage. These judges are effectively enacting substantive law. I suppose we should expect such passivity from the do-nothing Congress of Reid and Pelosi, but what about computer industry lobbyists and their trade associations? They appear utterly ineffective to turn back the tide, which ought to embarass these groups and their members. They are setting the stage for a collapse of the industry as there will be no legal tool to stave off foreign competition. If not Japan and Europe, then China will figure out that it can infringe here freely and use its far lower domestic labor rates to price US innovations out of existence. The USPTO through its executioner the BPAI is simply using 101 to avoid the hard, time-consuming work of searching for an applying art under 102 or 103.

  84. For the experienced Patently-O reader, any Mooney post is the sad and desperate cry of a poseur seeking help and attention. Particularly when the post deals with “software patents.”

    But ladies and gentlemen (and you too Mooney) I have become more concerned recently. Just look at the recent proliferation of references to bullets and killing.

    My recommendation – be afraid, be VERY afraid.

  85. unless you have filed already, you have probably jeopardized your foreign patent rights on your new invention, Mr. Mooney.

  86. All right then, I just filed my application on a system for shooting down seabirds that are in danger of flying into a passenger jet’s engines. It’s similar to shooting quail on your ranch except it uses GPS, a laser and A POWERFUL COMPUTER BRAIN to increase the accuracy.

    I think there’s a need for this. The key to patentability is the Meal Catcher (TM) which provides the unexpected result of lowering the expense of providing fresh, diced poultry to the jet’s crew and passengers.

  87. “I’m an advocate for defining inventions by their functionality.”

    No offense, but that’s deeply retarded.

  88. An Examiner — so if a large piece of machinery is claimed only using MPF elements, that would be a “functionally claimed” patent

  89. I always get a kick out of people who refer to “software” patents. We don’t issue software patents, last I check. What you meant to say was “functionally claimed” patents. I’m an advocate for defining inventions by their functionality. Long gone are the days when structure was the sole definer of the functionality.

  90. “As an “Actual Inventor” I would like to inform you that you are not allowed to dissect claims into individual elements of Novelty for purposes of 101 eligibility.”

    Malcolm Mooney |wrote back:

    Bets?

    Mr. Malcolm.

    As an “Actual Inventor” I must surely will take that bet. Now, please cite the statue or case allow that allows you to dissect claims into novel and non novel elements for 101 purposes.

  91. “purely functional recitations of method steps, where the functions are implemented using an unspecified algorithm, ”

    bull5h17!

    here’s the pseudo code to show us why:

    1. a method comprising

    normalizing by a processor operands a, b, and c for a floatingpoint operation;

    = “for each (a b c) let each / max (a b c)”

    predicting by the processor whether result d of said floatingpoint operation on said a, b, c might be tiny;

    = “if max (a b c) / min (a b c) < threshold " if so, then scaling by the processor said a, b, c to form a', b', c'; = "then max (a b c) * scalar" calculating by the processor result d' of said floating-point operation on said a', b', c'; = "let d' perform (a b c)" determining by the processor whether said d is tiny based upon said result d'; = "if d' < otherthreshold" if so, then calculating by the processor said d using software; and = "then let max(a b c) / scalar" "softdo (a b c)" if not, then calculating by the processor said d using floating point hardware. = "else perform (a b c)" So I used a fake corrupt mashup of lisp and c. Whatever. Point is, the claim language in itself specifies the algorithm. Details of implementation are within the ordinary skill of the art. The BPAI broad-brush obscures that essential point about software, which MM keeps trying to make in his distinctly ineloquent fashion.

  92. The voting stands at 4 examiners vs 2 presumed attorneys. Results in the morning, and to make it more fair for the attorneys (or others wanting the ref sent out) I’ll stop asking examiners.

  93. “Seasoned practitioners know better than to listen; while the uninformed, who may actually …”

    Translation: “Help me! Help me!”

    [insert sound of rock hitting earth]

  94. 6, do the right thing and cite the reference now.

    You know, it’s amazing. I continually get actions with terrible art, yet you’re able to consistently find dead on 102 art in 10 seconds with google. 😉

  95. Actually, as many of you have already figured out, I am not a patent attorney at all, but just a sad software developer who decided to start posting a bunch of garbage because the idea of “software patents” scares me so much.

    I don’t really understand what software patents are, or whether there really is such a thing, but I’ve read a little about patent law, and have been following it for a while and so I can make some reasonably convincing posts here to try to annoy real patent attorneys.

  96. ” That communication step is a significant transformation.”

    Actually, I’m glad that Mooney posts his utter garbage here on a regular basis. Seasoned practitioners know better than to listen; while the uninformed, who may actually take his posts seriously, will flail and flounder and eventually need the services of a REAL patent attorney.

    Thanks for confusing everyone with your garbage Mooney.

  97. “Once they finally achieve that goal … then what? Bye bye USPTO.”

    We won’t acheive it. :(

    Today I got an AF. He amended substantially, so it won’t be entered, but I always thought that this particular case should be an ez googler, but all previous googles failed due to certain terms mixing the results up with other irrelevant things. But I figured, meh, what’s 10 seconds of my time? I’m happy to report yet another 10 second google’s success.

    I’m telling you, I’m getting better and better at searching.

    Now, do I cite the reference NOW, or do I wait for the RCE? >:) Officially prosecution is closed…

    Now taking votes!

  98. “” giganto loophole” can be closed with a 102/103 rejection”

    Maybe now it can, thanks to KSR.

    See how it all fits together? A seamless web …

    link to youtube.com

    Btw, that’s Judge Bryson with the rock.

  99. “The USPTO’s goal is apparently for people to stop filing patents. Once they finally achieve that goal … then what? Bye bye USPTO.”

    Yes, we all remember before State Street was decided there were a couple years without any patent applications filed at all.

    Methinks some folks are a tad too invested in certain assumptions. Sort of like how there are still some folks out there who think that the best way to jump start the economy would be to start giving everybody huge lines of credit — because it worked before!!!!!!!

  100. It is just baffling to me to see an agency (the USPTO) seek out its own destruction.

    The USPTO’s goal is apparently for people to stop filing patents. Once they finally achieve that goal … then what? Bye bye USPTO.

    I also love examiners like 6k effectively cheering for developments in law that may someday cost them their jobs. Lulz.

    All that aside, it seems to me that IBM was trying to patent an algorithm by throwing in some magic language.

  101. Software patents are dead, so let’s fire all the software and business methods art examiners and let everyone know what the new rules are. The PTO backlog goes down, too. Great!

    People with software inventions can now rely on trade secret protection, and those looking to learn about such technologies can rely on academic papers.

    Probably not what Congress or the Federal Circuit intended with section 101 and Bilski. Mooney, 6 and PTO management can rejoice though.

  102. The problem with the magic words for getting out of 101 is that it creates a giganto loophole where you can just insert into the claim some baloney “particular machine” limitation (“wherein said process takes place in a structure, wherein said structure includes a furnace or air conditioner for modulating air temperature” — look, the method is tied to a particular machine!!).

    It’s the same with the argument that ANY “transformation” occuring ANYWHERE in the cliam gets the claim out of 101. It just creates a loophole to argue that this, that or the other plainly non-inventive step (“wherein the user is breathing”) is a “transformation”.

    This CAFC and the PTO aren’t interested in playing “whack-a-mole”. They are interested in full-scale mole-acide.

  103. “MM, the BPAI has shrunk the universe of statutory subject matter far further than you ever dreamed. ”

    I concur with this. The bilski I sent out was not for a computer implemented method and was a method that I would not have dreamed of 101ing before bilski.

    Though, MM may have dreamt this already, his test is pretty straightforward in its implications.

    On the subject of dreams, I dreamt last night that I was walking into my office and it was dark in my office then I turned around and someone I thought was my spe tazed me, my thought as I blacked out (and woke up) was “I’ll not allow that application”. Funny enough, I felt like I had just gotten electrocuted when I awoke it was the weirdest thing that’s happened to me in quite awhile. Those of you who have touched a live wire before know the feeling, but I was nowhere near an outlet.

  104. MM:

    Here’s what I generally do…

    Regardless of the preamble or statutory category, is every limitation functional whargarbbl that lacks structural inter-relationships?

    If not, no 101 issues.

    If so, does the preamble recite structural interrelationships, more than a nominal “apparatus”, “device”, “system”, etc.?

    If so, no 101 issues.

    Otherwise, it’s a 101.

    Now, under the second test I treat Beauregard claims as meeting the structural inter-relationships requirement if it recites something similar to “A computer readable storage medium having embodied thereon program/instructions, that when executed by a processor, cause the computer to perform the following steps:”

    Are we saying the this “particular machine” requirement (which is slightly stricter) is replacing the “structural inter-relationships” requirement, and therefore recitation of computer readable storage medium + processor is not enough to pass my 2nd test?

  105. Displaying the result of an abstract calculation on a monitor doesn’t make the overall invention meaningfully practical. (Remember Abele?) Putting the instructions to perform that abstract calculation in memory or a hard drive doesn’t make the overall invention meaningfully practical, either.

    Why not disclose and claim a practical use?

  106. “Sorry, no dice.
    Displaying data (like gathering data) is insignificant extra-solution activity — not patentable.”

    Yikes, you need to read more carefully because I agree that displaying data, by itself, is insignificant unless the “displaying” is defined in the spec to REQUIRE the transfer of tangible information to another.

    Here’s another question that arises from these crappy claims: let’s say that Gutta sees my computer screen with some merchandise and a “recommendation score” next to it. What’s to prevent him from dragging me into court and forcing me to disclose what my computer is doing?

    Because let’s be clear: calculating a dumbxss number and displaying it is all this method achieves.

    Nobody benefits from patents on this computer-implemented crapola except trolls and software patent attorneys. Hence the present efforts to crush them out of existence, anyhow, anyway.

    If you think they aren’t going to go extinct, think again. This is not the time to “reflect” or “take pause.” It’s time for radical reorganization and serious life planning.

  107. What if the claim read:

    “printing out the (whatever) using a Hewlett Packard HP-4100 Laserjet printer.”

    Would that suddenly bring the claim within the realm of 101 subject matter?

    This is ludicrous.

  108. MM wrote:

    “Here is one interesting part of the decision, however: “Regarding claim 1, the step of “displaying” need not be performed by
    any particular structure. It may be accomplished simply by writing the
    resulting score on a piece of paper. A conclusion that such post-solution
    activity is sufficient to impart patentability to a claim involving the solving
    of a mathematical algorithm would exalt form over substance.”

    I would argue here (if I was Gutta) that the claim does not merely recite “displaying” but rather “displaying … to the target user.” That communication step is a significant transformation.”

    Sorry, no dice.
    Displaying data (like gathering data) is insignificant extra-solution activity — not patentable.
    Machine prong: you didn’t claim a particular display.
    Transformation prong: doing anything to generic data is not patentable subject matter. Bilski citing Abele.

    MM, the BPAI has shrunk the universe of statutory subject matter far further than you ever dreamed.

  109. Examiner, here’s my test:

    Does the body of the claim, excluding the last step and the preamble, recite a bunch of steps without recitation of structure using words like “providing” “determining” “quantifying” “clustering” “processing” “characterizing” “partitioning” “ranking” “ordering” etc.?

    If so, then kill it.

    If not, then question two is: does the recitation of structure include only terms like “system” “processor” “computer” “calculator” or some fake terms like “ranking means” etc.?

    If so, then kill it.

    If not, does the preamble recite a “computer readable medium comprising instructions” or something to that effect?

    If so, then kill it.

    After that, it might still be killable, but it may require a bit more effort. Hope that helps.

  110. Between all the SPEs and QASs I’ve recently spoken to, all the unofficial and official memos I’ve gotten the past few weeks, the MPEP, and the BPAI’s recent decisions, I can safely say that I have no clue when to apply a computer related method 101 rejection. I vote we start from scratch with the tests and criteria.

  111. Ex Parte Srinivas Gutta (mentioned in a comment above) — the Board issued new rejections too — it is a never ending process at the PTO

  112. “As an “Actual Inventor” I would like to inform you that you are not allowed to dissect claims into individual elements of Novelty for purposes of 101 eligibility.”

    Bets?

  113. Claim in Srinivas Gutta is a classic example of computer-implemented obvious doodoo:

    1. A computerized method performed by a data processor for
    recommending one or more available items to a target user,
    comprising the steps of:
    obtaining a history of selecting one or more available items by
    at least one third party;
    partitioning a third party selection history into a plurality of
    clusters, wherein each cluster contains items that are closer to
    the mean of the cluster than any other cluster from among the
    plurality of clusters,
    modifying a target user’s history of selecting said one or more
    available items with one or more third party clusters to produce
    a modified target user’s history;
    processing the modified target user’s history to generate a target
    user profile, wherein the modified target user’s history
    characterizes preferences of the target user as modified to
    reflect preferences of the third party;
    generating a recommendation score for at least one of said
    available items based on said target user’s profile; and
    displaying the recommendation score to the target user.

    WOW!!!! You can recommend stuff to someone on the basis of what other people like. That’s old. BUT THIS METHOD USES A POWERFUL COMPUTER BRAIN, MY FRIENDS!!!!!!

    Here is one interesting part of the decision, however: “Regarding claim 1, the step of “displaying” need not be performed by
    any particular structure. It may be accomplished simply by writing the
    resulting score on a piece of paper. A conclusion that such post-solution
    activity is sufficient to impart patentability to a claim involving the solving
    of a mathematical algorithm would exalt form over substance.”

    I would argue here (if I was Gutta) that the claim does not merely recite “displaying” but rather “displaying … to the target user.” That communication step is a significant transformation.

    Where I would take issue with this sort of garbage generally is that it is not a tangible, concrete result. It’s mere data manipulation. The number is meaningless, or has no more meaning than any other number that might be generated. “Here’s the score for items that you won’t like. Here’s the score for items of modest interest. Here’s the score for items of less than modest interest. Here’s an item that was a randomly picked.” So what? Everybody knows that “scores” can be generated and ranked for any set of any thing in a million ways. They are all useful to somebody. The PTO needs to be examining this bullshxt?

    Algorithms dressed up like machines. Tear the sheep’s clothing off, burn it and put a bullet in the wolf’s head.

  114. Mr. Malcolm:

    As an “Actual Inventor” I would like to inform you that you are not allowed to dissect claims into individual elements of Novelty for purposes of 101 eligibility. Novelty is a 102 issue. Furthermore you must take the claims as a whole when determining 101 eligibility. My recommendation to you is to read a case called Deihr and another the enbanc case called Bilski. I hope this was helpful and in clearing up your confusion.

  115. Yes, cut and paste is the examiner’s favoritest invention of all time. More better than anything!

  116. Malcolm Mooney Wrote:

    My support is that if the novelty of the claim resides in the “if” then the claim is unpatentable as an algorithm.

    If the novelty resides elsewhere, then the claim is actually a claim to two independent methods and must be drafted as such (i.e., as two claims) to avoid indefiniteness, i.e., must the step after the “if” be practiced to infringe or anticipate the claim)?

    Mr. Malcolm:

    As an “Actual Inventor” I would like to inform you that you are not allowed to dissect claims into individual elements of Novelty for purposes of 101 eligibility. Novelty is a 102 issue. Furthermore you must take the claims as a whole when determining 101 eligibility. My recommendation to you is to read a case called Deihr and another the enbanc case called Bilski. I hope this was helpful and in clearing up your confusion.

  117. 6: “I kno, but they don’t give me the necessary tools to handle the bs you attorneys routinely put in apps in the MPEP. I asked my boss what to do and he’s wishy washy. They make me make decisions. And after I’ve already been exposed to the caselaw what else am I supposed to do? Issue a patent that does not appear on examination to be entitled to a patent? You want me to follow the law correct? I have to follow the issue law as well as the 101 etc laws.”

    Just look at the file history of the application that led to the caselaw. Copy and paste from that Examiner’s final rejection. If appealed, copy and paste from that Examiner’s brief. Easy counts!

  118. “You want me to follow the law correct? I have to follow the issue law as well as the 101 etc laws.”

    Actually, I think everyone would be happier if you would simply follow the MPEP, supplemented as necessary by other official PTO guidelines.

  119. “The fact that you need to ask this question is but one of the MANY reasons why you should do your job by following the MPEP and Office instructions, rather than improvising. ”

    I should add that I was pretty certain that I did have to cite the new opinion, but I needed the old one, and so far as anyone knows I’ve never read Comiskey 2.0.

    Though, let’s presume that they did know it, I would still argue the same logic as in Comiskey 1.0 and then let the BPAI/Appeal conference decide it.

  120. “The fact that you need to ask this question is but one of the MANY reasons why you should do your job by following the MPEP and Office instructions, rather than improvising. You’re an examiner, not an attorney. This is not a put-down – these are different functions. Your job as examiner is already difficult enough, and our job as prosecutors is needlessly complicated when examiners decide to get creative.”

    I kno, but they don’t give me the necessary tools to handle the bs you attorneys routinely put in apps in the MPEP. I asked my boss what to do and he’s wishy washy. They make me make decisions. And after I’ve already been exposed to the caselaw what else am I supposed to do? Issue a patent that does not appear on examination to be entitled to a patent? You want me to follow the law correct? I have to follow the issue law as well as the 101 etc laws.

    Be fair to me man, I shouldn’t have to deal with this mess. Drafters/prosecutors should CUT IT OUT TO BEGIN WITH. In most cases they’re well aware of how to claim the method/device properly, but claiming it properly leads to a big fat 102/103, so then THEY try to improvise. And that is what lands me into having to improvise.

  121. “a conveyor which directs containers in a first direction if the containers were determined to have a defect and in a second direction if the containers were determined to be free of the defect”

    claim element uses IF — must be an algorithm

  122. So we’re abolishing software-related patents because we’re afraid of humping robots? Fascinating…

  123. We can sum up much of the professed confusion in this area by simply recognizing a basic fact: computers are different.

    For those who beg to differ, I urge you to recall the similar discussion we had here regarding “signals,” where some commenters insisted (wrongly) that signals were just another composition of matter, like bicycles and typewriters, and no less an authority than Einstein said so.

    There is going to come a day when human or pet-like robots are readily made and programmed and available for mass consumption. Absent changes to the patent system, folks are going to be filing applications left and right about “A robot, wherein said robot is programmed to do this, that and the other thing.” And this, that and the other thing are simply going to be the sort of things that people have been doing forever, although robots may be able to some of those things faster (like thinking) or without tiring (like humping).

    The important innovations are not going to be in THOSE stoopit patent applications, however, which are already obvious in view of computers and reams of science fiction books. It’s going to be in the discovery and development of materials and systems that allow robots to look and feel real, and that allow robots to function endlessly without constant battery changes.

  124. “Note also: all claims reciting ‘if’ are invalid. They are not methods. They are algorithms.”

    That’s an interesting assertion, Malcolm. Do you have support for this that you would care to share?”

    My support is that if the novelty of the claim resides in the “if” then the claim is unpatentable as an algorithm.

    If the novelty resides elsewhere, then the claim is actually a claim to two independent methods and must be drafted as such (i.e., as two claims) to avoid indefiniteness, i.e., must the step after the “if” be practiced to infringe or anticipate the claim)?

    Watch for it.

  125. So now articles of manufacture have to be tied to a specific machine or achieve a transformation of some other article? How about compositions of matter: do they have to pass the machine or tranformation test as well?

  126. “I have a question though. Since Comiskey was En banced and changed, is the original opinion still citable? As it turns out I needed it just the other day.”

    The fact that you need to ask this question is but one of the MANY reasons why you should do your job by following the MPEP and Office instructions, rather than improvising. You’re an examiner, not an attorney. This is not a put-down – these are different functions. Your job as examiner is already difficult enough, and our job as prosecutors is needlessly complicated when examiners decide to get creative.

  127. Please let’s not derail on a discussion of whether “if” is useable claim language. It is.

    Don’t buy into Mooney’s latest attempt to disrupt useful dialogue and suppress information.

  128. “Note also: all claims reciting ‘if’ are invalid. They are not methods. They are algorithms.”

    That’s an interesting assertion, Malcolm. Do you have support for this that you would care to share?

  129. “Note also: all claims reciting “if” are invalid. They are not methods. They are algorithms. There might be valid claim in their, if you sort through all of the “ifs”. But a list of optional steps is not a method. Engage in this algorithm writing nonsense at your peril.”

    I ran into this issue just last Fri. He wrote the claim without “if”, but he argued as if he had put in “if”. So I rejected the claim as it stood, and suggested putting in the “if …” limitation but I didn’t know if the “if …” limitation would cure the claim or not. I also suggested the “if” limitation would die from 102 in that app as well but that is besides the point.

  130. So will Intel bother to appeal this piece of crap to the CAFC? I mean, what would be the point since the claims are dead ten ways til Sunday?

    Maybe there are worse claims to use as a test case for determining 101 case law. In fact, I’m sure there are. But I’m also sure that these claims suck.

  131. I should add, I don’t want it to be this other fella who did nothing more than a bilski inappropriately.

    “inappropriately” based on the law before the BPAI got its hands on it lol :)

  132. “Limiting the claim to computer readable media does not add any practical limitation to the scope of the claim.”

    Sweet sweet music to my ears. Finally the PTO is telling the truth about “readable-media with instructions” claims. THANK YOU. It’s particular true, of course, where the applicant fails to define what “computer readable media” is. All that money spent on this thing and they couldn’t even bother to fix this up.

    Another hilarious joke about these claims are the claims which depend from the Beauregard claims, e.g., “25. The computer readable media of claim 18, wherein said floating point operation on said operands a, b, c is a+b*c.”

    It’s as stoopit as “25. The high-power binoculars of claim 5, wherein the lady in window is undressing.”

  133. “Better yet, let it fall on numerous principles, basic and otherwise. Then there will be far less chance of resurrection by a meddling Supreme Court.”

    I want to be in the wiki for Beauregards throughout history as the examiner who put the beat down.

  134. “That said, I kind of hope you’re right, I want Beauregards to fall on more basic principles instead of 101.”

    Better yet, let it fall on numerous principles, basic and otherwise. Then there will be far less chance of resurrection by a meddling Supreme Court.

  135. The Board reached the correct decision here. The mere inclusion of the phrase “by a processor” can not rescue a claim from 101 failure. It’s still nothing more than an algorithm for manipulating data.

    Goodnight, Irene.

    And yes you could see this coming years ago. Start paying attention.

  136. I have a question though. Since Comiskey was En banced and changed, is the original opinion still citable? As it turns out I needed it just the other day.

  137. “This is retribution for the various Office illegal power grabs being shot down.”

    I can only hope so.

    “Someone will once again have to tell the BPAI the difference between a general purpose computer and a computer transformed to a particular machine with the loading of software.”

    We will see. That’s old school man, this is the new school. Chief Judge M has got our back. He already told congress in no uncertain terms to gt fo his back and he’d work things out. He’s a man of his word, and this is what we’re seeing happen.

    That said, I kind of hope you’re right, I want Beauregards to fall on more basic principles instead of 101. And I’d like to be the one to lower the axe. I might get famouse!

  138. “1. A method, comprising:
    normalizing by a processor operands a, b, and c for a floatingpoint operation;
    predicting by the processor whether result d of said floatingpoint operation on said a, b, c might be tiny;
    if so, then scaling by the processor said a, b, c to form a’, b’, c’;
    calculating by the processor result d’ of said floating-point operation on said a’, b’, c’;
    determining by the processor whether said d is tiny based upon said result d’;
    if so, then calculating by the processor said d using software; and
    if not, then calculating by the processor said d using floating point hardware.”

    Note also: all claims reciting “if” are invalid. They are not methods. They are algorithms. There might be valid claim in their, if you sort through all of the “ifs”. But a list of optional steps is not a method. Engage in this algorithm writing nonsense at your peril.

  139. “Why don’t one of you computer geeks write a good law review article (even for that IP Today magazine) which we can all refer to in our PTO papers?”

    Right, because that teckie weckie approach worked really well to in In Re Nutjen.

  140. “Someone will once again have to tell the BPAI the difference between a general purpose computer and a computer transformed to a particular machine with the loading of software.”

    Why don’t one of you computer geeks write a good law review article (even for that IP Today magazine) which we can all refer to in our PTO papers?

  141. “tiny” relative term 112 kk thx bye.

    “The recitation of a “processor” performing various functions fails to impose any meaningful limits on the claim’s scope. The recitation of a “processor” performing various functions is nothing more than a general purpose computer that has been programmed in an unspecified manner to implement the functional steps recited in the claims. The recitation of a processor in combination with purely functional recitations of method steps, where the functions are implemented using an unspecified algorithm, is insufficient the recitation of a processor does not limit the process steps to any specific machine or apparatus.”

    OWNED!

    “Rejecting that argument, the BPAI panel determined that the Section 101 analysis is the same – regardless of whether the subject is a “manufacture” claim or a “process” claim. (Citing AT&T v. Excel (Fed. Cir. 1999)(abrogated by Bilski)).”

    “Applying Bilski to the “computer readable media” claim, the BPAI found that the claimed invention was unpatentable because it did not require transformation of any article nor was it tied to any particular machine. Although the claim recites a “computer readable media” and “hardware,” those elements were seen as insignificant extra-solution activities. ”

    R E A D EM N W E E P!

    LOLOLOLOLOLLOLOLOLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLL

    Hahahahahahahahahahahahahahah

    “insignificant” lolololol.

  142. Here is the non-Beauregard claim:

    1. A method, comprising:
    normalizing by a processor operands a, b, and c for a floatingpoint operation;
    predicting by the processor whether result d of said floatingpoint operation on said a, b, c might be tiny;
    if so, then scaling by the processor said a, b, c to form a’, b’, c’;
    calculating by the processor result d’ of said floating-point operation on said a’, b’, c’;
    determining by the processor whether said d is tiny based upon said result d’;
    if so, then calculating by the processor said d using software; and
    if not, then calculating by the processor said d using floating point hardware.

    I wonder if the BPAI would have found this claim to satisfy 101 if it was written in apparatus format (e.g., A system comprising: a processor ….. and floating point hardware ….)?

  143. BPAI = strong arm of the Office.

    This is retribution for the various Office illegal power grabs being shot down.

    Someone will once again have to tell the BPAI the difference between a general purpose computer and a computer transformed to a particular machine with the loading of software.

    The next time the CAFC decides to issue an opinion (Bilski) that is exceptionally weak on the merits of the Law and cowers in anticipation of a Supreme smackdown, maybe they will consider the law of unintended consequences and just who would be more than willing to step into the power vacuum they create.

Comments are closed.