In re Ferguson: Patentable Subject Matter

In re Ferguson (Fed. Cir. 2009)

Scott Harris has been discussed several times on Patently-O. Harris is a former Fish & Richardson partner. Fish handles the most patent litigation of any firm in the country. In addition to being a patent attorney, Harris is an inventor. He has contracted with the plaintiffs firm Niro Scavone in several actions to enforce patents against Google and other companies. Harris is one of the named inventors of the Ferguson application and he handled the [futile] appeal.

The claimed invention focuses on a “method of marketing a product” and a “paradigm for marketing software.” These claims focus on methods and structures for operating a business.

Methods Under Bilski: Claim 1 reads as follows:

A method of marketing a product, comprising:

developing a shared marketing force, said shared marketing force including at least marketing channels, which enable marketing a number of related products;

using said shared marketing force to market a plurality of different products that are made by a plurality of different autonomous producing company, so that different autonomous companies, having different ownerships, respectively produce said related products;

obtaining a share of total profits from each of said plurality of different autonomous producing companies in return for said using; and

obtaining an exclusive right to market each of said plurality of products in return for said using.

Under Bilski, this case is open and shut. The claim is not even arguably tied to a machine — especially under the Nuijten construction of machine to be a “concrete thing, consisting of parts, or of certain devices and combination of devices [including] every mechanical device or combination of mechanical powers and devices to perform some function and produce a certain effect or result.” (Quoting Burr v. Duryee, 68 U.S. (1 Wall.) 531, 570 (1863)). Thus, the 1863 touchability definition of machine appears to hold weight. On the second Bilski prong, the claim does not require transformation of any article into a different state or thing. The only transformation is that of legal rights and organizational relationships that were explicitly excluded in the Bilski decision: “transformations or manipulations simply of public or private legal obligations or relationships, business risks, or other such abstractions cannot meet the test because they are not physical objects or substances, and they are not representative of physical objects or substances.”

Harris asked the court to consider a different test of patentable subject matter: “Does the claimed subject matter require that the product or process has more than a scintilla of interaction with the real world in a specific way?” The CAFC panel rejected that proposal primarily based on the precedential value of Bilski: “In light of this court’s clear statements that the “sole,” “definitive,” “applicable,” “governing,” and “proper” test for a process claim under § 101 is the Supreme Court’s machine-or-transformation test, see Bilski, passim, we are reluctant to consider Applicants’ proposed test.” The court went on to determine that the “scintilla” test would create too much ambiguity as well.

Non Method Claims: The application also included claims directed to a “paradigm for marketing software” made up of a marketing company that markets software in return for a contingent share of income. Although “instructive,” the Federal Circuit did not directly follow Bilski. Rather, the court looked to determine whether the claimed paradigm fit within one of the four statutory classes listed in Section 101:

Inventions Patentable: “… any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof…”

In a gentle Koan, the Court stated that it “need not resolve the particular class of statutory subject matter into which Applicants’ paradigm claims fall, [however], the claims must satisfy at least one category.” In fact, the court did attempt to resolve the particular class, but was unable to fit the paradigm claim into any of the four.

Applicants’ paradigm claims are not directed to processes, as “no act or series of acts” is required. Nuijten, 500 F.3d at 1355. Applicants do not argue otherwise. Applicants’ marketing company paradigm is also not a manufacture, because although a marketing company may own or produce tangible articles or commodities, it clearly cannot itself be an “‘article[]’ resulting from the process of manufacture.” Nuijten, 500 F.3d at 1356. Again, Applicants do not argue otherwise. And Applicants’ marketing company paradigm is certainly not a composition of matter. Applicants do not argue otherwise.  

Again applying the touchability notion of machine, the Court also rejected the notion that the company paradigm could be a machine:

Applicants do assert, however, that “[a] company is a physical thing, and as such analogous to a machine.” But the paradigm claims do not recite “a concrete thing, consisting of parts, or of certain devices and combination of devices,” Nuijtent, and as Applicants conceded during oral argument, “you cannot touch the company.”

Ending in a flourish, the court found that in fact, the Ferguson paradigm claims are “drawn quite literally to the paradigmatic abstract idea.” (quoting Warmerdam).

Judge Newman offers a poignant concurring opinion.  

147 thoughts on “In re Ferguson: Patentable Subject Matter

  1. 147

    NWPA,

    I was not aiming for an abstraction such as the one you put forth with J. Moore. I was aiming for a much simpler point that ANY process (and process is still one of the categories of patentable subject matter) can be described in a flowchart.

    The Mooney veneer of the examiner posing as a practioner is so thin that the statement:

    “That’s called an algorithm. Thank you for admitting this fundamental point in favor of patent ineligibility.” Posted by: Malcolm Mooney | Mar 13, 2009 at 02:47 PM

    is absolutely inane and requires a briar-rabbit-6-twist-of-logic to defend.

    We’ll simply step aside of the strawman “you could also flowchart a method consisting of a single step” distraction offered by Malcolm as it has absolutely nothing to do with flowcharting processes and signs of patent ineligibility.

    Now run away Malcolm, another of your fatal logic arguments has been dispatched.

  2. 146

    >>You could well be right about Stevens on most >>IP issues. But in Microsoft v AT&T, he was a >>lot closer to understanding how software works >>compared to the technologically-challenged. >>Treating software as an >>architectural “blueprint,” as did the majority >>in Microsoft, is an absurd analogy for how >>software works.

    EG: The problem with Stevens is that he like Douglas before him “with a seeming purpose” want to exclude all software from patentability. The other justices just appear to be really dense. Stevens model of software is that it is an equation that we all should be able to use, and that the PTO can’t do the job of examining software patents. Twenty five years ago the reason was there was no prior art. Now I am not sure what it is.

    A machine that processes information.

    The flow chart discussion above is ironic. It seems to underlie J. Moore’s arguments. Moore goes through the following exercise: can I think through the method in my head and could my head perform the method. (And yes she thinks out loud so we can know what she is thinking.) Yes. Then it can’t possibly be eligible for patentability. J. Moore, go through that exercise with a physical process—such as Deener–and you will see that your body could perform the process described in Deener, so it should not be eligible for patentability, right?!

    The implications of Moore’s thinking are interesting. I guess what J. Moore is saying is that she is such an obvious common thing in world that no machine that could do what she can do would ever be eligible for patentability.

  3. 145

    I don’t see anything wrong with anonymously trolling your own blog. Of course I’ve had a lot of free time to think about it lately.

  4. 144

    “Sad, brother. Truly sad.”

    Yep, and trolling your own blog is like sleeping with Lumbergh. Its just creepy.

  5. 143

    Now how would you know anything about what goes on between Dennis and his posters Mooney? Oh wait, I think I know.

    By the way, Che Guevara’s mule called… well you know the rest.

  6. 142

    “Any method can be flowcharted.”

    Only if “flowcharts” are defined so broadly that they are synonymous with methods.

    It may be technically true that you “can” flowchart a method of “A then B then C”, but in that can case you could also flowchart a method consisting of a single step.

    Only a m0r0n would engage in such a silly practice.

    By the way, Caveman, I thought you were banned. You went through the trouble of finding a new email address just so you could accuse Dennis once again of doing what you (and primarily you) do habitually, i.e., post under multiple user names?

    Sad, brother. Truly sad.

  7. 141

    “This whole Mooneys-under-the-bed thing is getting very very old…”

    Very old and inconvenient for the PuppetlyO Puppet Master, because when people really understand the intellectually dishonest agenda of the puppet show here at Puppetlyo the credibility will evaporate.

    The funny thing is that the Puppet Master actually thinks people don’t notice. But they do, and I took a poll, most think its “Unethical and Wrong.”

  8. 140

    Malcolm,

    Your ignorance is showing (yet again).

    Any method can be flowcharted. You may choose to be your own lexiconagrapher and define “algorithm” as a flow chart of a process, but even with that definition, this is NOT an admission of a fundamental point in favor of patent ineligibility.

    That is unless you and 6 have been drinking together again and redrafted 35 USC 101.

  9. 139

    “My case is Article 3, section 8 of the US Constitution, the 35 U.S.C., and the 37 C.F.R. ”

    I will be honest I haven’t seen any Beauregard claims that cover a legitimate promotion of the progress of the useful arts. Can you show me one? 37 USC doesn’t have any public policy objectives in it that I can see.

  10. 138

    “In fact, all software/computer programs can be “flowcharted” to describe what “process” they perform.”

    That’s called an algorithm. Thank you for admitting this fundamental point in favor of patent ineligibility.

  11. 137

    “Actel”

    It has been awhile since I used one of those boards. I’d forgotten it was an “embedded” FPGA, frankly I don’t remember how it operates and I don’t feel like looking it up atm.

    Just did you have something you wanted to say or did you just want to throw around ridiculousness that has no bearing on the discussion at hand? I haven’t said that patentability rests on public policy necessarily. Although it could very well be that the office lacks the authority under the constitution to even issue a patent to a Beauregard claim. That is another discussion. Right now we’re discussing if there are any public policy objectives being furthered by patenting Beauregard claims. So far no one has, or can put anything forward.

    I don’t blame any of you, I find it difficult to as well. Except maybe Just, because he thinks he’s a big shot, and he will until his 3rd RCE time comes around. I know his type. Real uncooperative until they have no choice.

    “You are crafty to base your hypothetical by assuming a contested fact.”

    You’re right I am crafty. And yes, I assume that it is a contested fact, because I am contesting it.

    “That software can be written down on a piece of paper is just one big red herring.”

    For the most part I agree. And personally I try to stay away from that particular fact in arguing against Beauregards, when I do.

    “Computer software is not a “written work.” The software can be “represented” by a written work, but the written work is not computer software. Just as a blueprint can also “represent” a piston, the blueprint is not the piston.”

    You lost me on that one. I can assure you that it is, I’ve written lots of software myself and I’m nowhere near a journeyman at it. It is definitely a written work. Also, the software can be the written work itself if you program in machine code. I’ve done that laborious ridiculousness myself, trust me it is done. As to your piston analogy it is very far off base since written software doesn’t only represent the software, it is the software unless you use some high level language, and then you’re simply using a high level language to shortcut through making the actual software the old fashioned way and you’re having a computer help you write the machine code.

    I’m going to guess you haven’t done much coding yourself, at all.

    I do have one question more though, since you guys refuse to answer my question about the public policy objectives.

    Do you guys think that if a claim reads on a piece of paper with words of written software on it like in his OCR example above then the PMD might be applicable even though the court said the PMD was applicable only when the words were meant solely for the human mind/eyes? I believe that would be a case that might even get granted cert.

  12. 136

    I’m thinking about writing some code that enables a computer with a camera to cature a representation of code, perform OCR, compile, and execute the code.

    I’m thinking of dumping the code into a patent and filing it with the USPTO.

    I’m thinking of claiming a computer readable medium having the code recorded thereon.

    I’m thinking of suing the USPTO, PAT2PDF, GOOGLEPATENTS, and anyone who views, prints, or photocopies the patent.

    I’m thinking of filing a ptent application claiming the process of thinking about these things.

    I’m thinking of suing you.

  13. 135

    “Justice Steven is one of the biggest obstacles to clear thinking in patent law and we can only hope that he retires soon.”

    Night Writer Patent Attorney ,

    You could well be right about Stevens on most IP issues. But in Microsoft v AT&T, he was a lot closer to understanding how software works compared to the technologically-challenged. Treating software as an architectural “blueprint,” as did the majority in Microsoft, is an absurd analogy for how software works.

  14. 134

    Max
    To be fair, magic words will allow a claim to escape EP-101, but that’s a hollow victory because non-statutory claim elements are then excluded from the analysis of obviousness – substance does triumph over form in the end.

    This whole Mooneys-under-the-bed thing is getting very very old…

    I’m Spartacus!

  15. 133

    “…is it too much to hope for some joined-up thinking about what is or is not statutory subject matter, instead of all this ‘magic words’ nonsense?”

    Yes.

  16. 132

    In Section 8 of Article 1, the bit that intrigues me is the bit about Congress having the power to define offences against the “Law of Nations”, to make rules about “Captures” on Land and Water, and to punish felonies committed on the high seas. Is all that stuff still there today. I imagine that “capturing” and punishment on the high seas is still in there, but all reference to a “Law of Nations” has been excised, right? Now I come to look at it word by word, Section 8 says “Science and useful arts” by giving exclusive rights to “inventors”. So, it’s 1) not necessarily ALL of the useful arts and 2) only “inventors” that qualify. Not every new and non-obvious thing is an invention (the winning number, for example, in the useful art of lottery tickets) and not every creator of a new and non-obvious thing qualifies to be dubbed an “inventor”, right?

  17. 130

    How many identities has “Mooney” now acquired? A multitude. But I suppose it’s a comfort, to lump together all views that don’t accord with your own as the ranting of just one solitary crazed individual. Myself, I have my doubts about the sanity of all those who see Mooney round every corner, and hiding behind every second posting.

  18. 129

    6 said, “Make your case, if you have one, for a public policy that is served by protecting the functionality of written works.”

    My case is Article 3, section 8 of the US Constitution, the 35 U.S.C., and the 37 C.F.R. In terms of how you examine patent applications, I think it says a lot that you are concerned about the public policy for patentability of functionality of software, when you should be more concerned with carrying out your duties to Exmaine patents under the law as it exists. This prjudice against certain art areas in the PTO has to stop. The bottom line is that copyright does not protect functionality or underlying information, only artistic espression. Patent protects functionality, but not underlying information or artistic expression. Is that not clear enough?

  19. 128

    I’m thinking pots and kettles Tyrone. Be careful not to disparage, with the “magic word” slur. In Europe, our magic word is “technical” no? Our magic’s more powerful than that of the CAFC, right?

    Or is “technical” not really “magic” at all. Rather, it corresponds to “useful arts” in the US Constitution, and “technology” an GATT-TRIPS so is as irreducibly fundamental as it is possible to get.

  20. 126

    Max: “I can’t imagine the USA accepting Euro-101, much less simply adopting the elegantly simple European Patent Convention lock, stock and barrel. Can you?”

    Nope, me neither, but is it too much to hope for some joined-up thinking about what is or is not statutory subject matter, instead of all this “magic words” nonsense? The idea that an unpatentable computer program becomes – bibbidy-bobbidy-boo! – patentable by virtue of being “tangibly embodied on a data carrier” simply boggles this poor mind.

    I share with Mooney the hope that the clock is about to strike midnight on the most egregious examples of bizware patents, but would also hope for a grown-up approach to patent rights in a hugely important industry sector.

  21. 125

    Spoke too soon. Sorry Dennis. I see my posting now. It just took a long time to get into the thread, for some reason.

  22. 124

    Now it’s happened to me: comment written and posted….and into thin air. No sign of it on the thread. Dennis, any more of this and I’ll lose my enthusiasm for posting to this blog. I can’t be faffed to start saving drafts etc.

    I suppose I used a word that your f1lt§r picked out. It used to tell me, but it didn’t on this occasion. Grrrrrrh.

  23. 123

    6: The premise of copyright and patent law is that we want to encourage the creation and disclosure of artistic works and useful articles. (You’d get that from an IP survey course.) If you don’t accept that premise, stop reading because your beef is with the system, not just software.

    If you accept that premise, consider that, in the absence of market power, software packages compete on the basis of their utility. Because copyright does not cover such utility, copyright protection is insufficient to encourage the creation and disclosure of the software functionality that is readily copied, once seen.

    Now, if you want to argue that incentivizing software isn’t necessary because their particular industry would build it anyway, go ahead and have that argument. To have a market-based policy argument is fine in my book.

    To have a technology-based policy argument is pretty difficult because a CD with encoded executable software is effectively a subcomponent. And we patent subcomponents in all sorts of other arts without hesitation.

  24. 122

    >>Justice Steven’s analogy to the punched roller >>used with a player piano

    Could you put a roller in the piano and have it generate a new song? No. And the problem with Justice Steven’s is that he has a desire to pigeon hole the computer into something that he already understands rather than something that is new under the sun, which it very clearly is.

    Justice Steven is one of the biggest obstacles to clear thinking in patent law and we can only hope that he retires soon.

  25. 121

    Yeah Tyrone. We in Yoorp are fortunate enough to enjoy the historical accident of a Patent Statute that includes a 101 provision that expressly includes the word “computer” yet which was enacted during in the interregnum between computers and the time when non-pharma patents became sexy. Given the diametrically opposed interests of pharma and EE, I feel sorry for the USA, aware that its patent statute needs updating, yet unable to navigate between those hotly opposed and enormous commercial interests. Shall “patentable” be confined to that which has technical character? Or not? I’m not expecting an answer any time soon. I can’t imagine the USA accepting Euro-101, much less simply adopting the elegantly simple European Patent Convention lock, stock and barrel. Can you?

  26. 120

    6,

    You ask about the “public policy” of patenting the functionality of software/computer programs. Software/computer programs are treated under copyright as similar to books (“written expression”), presumably because of the computer/software code uses alphanumeric expressions. That’s a very strange way to view software/computer programs which are not really analogous to books. But that’s where they’re stuck in copyright (check out the Copyright Registrar where you’ll see that software/computer programs are registered for copyright using the same category of forms for books).

    Frankly, software/computer programs are much more amenable to patenting as a “process” under patent than as “written expression” under copyright. For example, SCOTUS’s majority view in Microsoft v. AT&T that software is akin to an architectural “blueprint” is extremely inapt. In fact, dissenting Justice Steven’s analogy to the punched roller used with a player piano is a much more apt and reflects the origin of IBM punchcards from the 1801 Jacquard loom (the original “computer controlled” machine). Software code does more than simply provide a set of instructions, but instead “drives” or “operates” the computer. In other words, software, unlike a blueprint (or a book) is “dynamic” operating process. In fact, all software/computer programs can be “flowcharted” to describe what “process” they perform.

    That software/computer programs may be covered under copyright and patents is also not inconsistent. Product or packaging designs can be covered under design patents, copyright and trademark.

  27. 119

    Man, these software arguments go round and round ad infinitum and, from a Yoorpean perspective, continually miss the point. A computer program “as such” shouldn’t be patentable because it’s just copyrightable expression, whatever. It’s WHAT the software DOES and/or HOW it does it that should determine patent eligibility. In Yoorp, “technical character” is what counts (the meaning of which can be gleaned fairly well from the case law, if not readily expressed in a concise manner). If you pass that test you can claim a method, a programmed machine and a program product, with or without tangible embodiment on a data carrier.

    What seems to be missing in the US is a similarly clear doctrine on the WHAT/HOW question, which presumably is what Bilski tried (and failed) to do.

  28. 118

    “There are close to 400 patents and close to 600 published applications that specifically claim OCR”

    Uh … so what?

    Shall we pull, at random, 5 of those patents that use Beauregard language and laugh at the claims?

    I think there might be some patentable subject matter lurking out there in the field of OCR. But it’s virtually impossible that it is software-based.

  29. 117

    A Familiar Voice: “Just as a computer can OCR the piece of paper and “upload” the software in order to make the software functional, the same computer can OCR the blueprint, and use the blueprint to cnc machine the piston.”

    And yet the blueprint isn’t patentable but the software is.

    “The software can be “represented” by a written work, but the written work is not computer software.”

    And yet if I write down a computer-implementable method for displaying an improved virtual toolbox, that writing can anticipate a Beauregard claim.

    It seems contradictory, but that’s because what I wrote is true and what you wrote is false.

  30. 116

    “I extend an invitation to any who think they could do a better job than me or SF can do at finding a legitimate public policy objective that would be served by allowing the patenting of the functionality of written works.”

    You are crafty to base your hypothetical by assuming a contested fact.

    How is software being written on a paper any different than a blueprint of an unique automobile piston? Anybody writing a claim to a piece of software or an automobile piston is not intended to claim the either the blue print or the written code.

    Just as a computer can OCR the piece of paper and “upload” the software in order to make the software functional, the same computer can OCR the blueprint, and use the blueprint to cnc machine the piston.

    That software can be written down on a piece of paper is just one big red herring.

    Computer software is not a “written work.” The software can be “represented” by a written work, but the written work is not computer software. Just as a blueprint can also “represent” a piston, the blueprint is not the piston.

  31. 115

    It’s fairly clear that 6 has not read the law, or has even failed to read his basic engineering texts about the structure of materials, but it now appears that 6 has failed to read chapter 1701 of the MPEP.

  32. 114

    Also 6, I don’t recall when the test of patentability became whether the invention “served public policy”

  33. 113

    6 says

    “No takers on the invitation to explain to us all what a public policy served by allowing protection of software through patents might be?”

    We can’t seem to successfully explain to you that atoms don’t fall out of wires, how can we ever hope to deal with something complex like examining patents, software or otherwise.

  34. 112

    “It takes “considerable skill” to proofread a document. But that does not mean that claims to computer-implemented methods for proofreading documents should be patentable.”

    I can’t conceive of a more specious argument than this. There are close to 400 patents and close to 600 published applications that specifically claim OCR and probably many more that claim the subject matter without specifically using “OCR.”

    Apparently over 1000 applications say you’re exactly wrong Mooney. But, for regular readers, that’s no big surprise.

  35. 111

    “do you know that it is modeled on a heuristic algorithm”

    What is the heuristic algorithm modeled on?

  36. 110

    “That isn’t really software is it? That is hardware that has been modified.”

    embedded FPGA = embedded (software) field “programmable” gate array-i.e. it is software that changes the functionality of the hardware.
    Look at patents from Altera; Xilinx; Actel.
    The key is the software-that is what the name says. PSoC (Programmable System on a Chip) also is similar. Software defined radio (SDR) is also similar.

    MM I specifically wrote – “except MM”.
    Since you mentioned proof-reading – do you know that it is modeled on a heuristic algorithm. And the better ones use the same algo. to achieve the end result. But what do you care-For you the entire-EE side should be gotten rid off. Everything that was and could be invented was already invented in the last century by Tesla. :)

  37. 109

    “Class 2 of software: implemented in hardware: like an embedded FPGA:”

    That isn’t really software is it? That is hardware that has been modified.

    No takers on the invitation to explain to us all what a public policy served by allowing protection of software through patents might be?

  38. 108

    anonrakgcain “You can consult any software coder worth her salt- that it takes considerable skill to bring down code size and still achieve the same functionality. ”

    It takes “considerable skill” to proofread a document. But that does not mean that claims to computer-implemented methods for proofreading documents should be patentable.

    There is no point to such patents. They do not promote innovation. They protect abstract ideas but not “inventions.” Such patents promote nothing except the continued existence of a rather thoughtless and greedy patenting culture that appears to have thrived in the shade of such patents.

  39. 106

    Let’s put it this way, “software” inventions that involve the type of skill above will generally not be performed by the average coder like our friend “Brian” who is frozen at his keyboard afraid to write a line of code because of “software patents.” Those type of inventions are generally available for sale as extensions or special purpose libraries that can be patented, sold, distributed and used by many people to attain functionality that is prohibitively complex to develop independently. If someone wants to develop an independent solution, there is a good chance the independent solution.

    Back in another life, when I was a software developer we faced this kind of decision all the time, but especially with a compression requirement that we had. Since we were breaking new ground, there was not a lot available. We wound up paying for a third party library solution that we could easily integrate into our prototype product, but we continued to evaluate many other third party and independently developed solutions none of which would have infringed the module we bought.

  40. 105

    “(it’s become quite clear that when commenters here refer to the “little guys” they are referring to what most of us know as trolls).”

    Mooney, YOU are a troll.

  41. 104

    For 6 and other posters (except MM)about software patents:

    I provide two classes of software and ask one simple question:

    1. Class 1 of software (just-software).
    Code can be implemented in various ways in multiple languages across various platforms. Think of the functionality that is achieved by using either 2500 bits or 300 bits. Software engineers gree that same functionality using 300 bits is better than the one using 2500 bits. So code size is a test bench across platforms. As an example think of the “lasso” tool in a picture editor software like (Adobe). The Maths behind it is petty simple but there are different ways of selecting the pixels.
    You can consult any software coder worth her salt- that it takes considerable skill to bring down code size and still achieve the same functionality. It is even more impressive when the “logic” is ported across coding languages.
    If you deny a patent for this skill-then the whole point of the patent system goes for a toss.

    Class 2 of software: implemented in hardware: like an embedded FPGA: For this class too, software is the driver, rather than the dumb harware (gates).

    Can you simply deny patentability for these classes just because it is software.

    (Beaureaugard claims are one way of claiming these two classes. )

  42. 103

    Since no one else, I believe, has squarely addressed the point posed by The Future is in Software, to amend section 101 to read “Whoever invents or discovers any new and useful process, machine, manufacture, composition of matter, or software program . . . ” I’m all for amending 101, but the amendment you propose won’t do the trick. Software is already patentable, it’s just that any method that you’d implement through software, unless it cures rubber, has stopped being patentable. If you passed your amendment, the PTO, or the CAFC, will look at the first software claims that come through and apply the MOT test. Compositions of matter are already patentable, too, but your claim to a composition of matter comprising limestone won’t be. I think a better approach would be to amend 101 to say something to the effect that a general purpose computer is a specific machine for the purposes of determining whether a method defines patent-eligible subject matter.

  43. 102

    SF says he doesn’t know of any particular public policy objective being accomplished, or that it is so secret or complicated that he refuses to tell me, and I’ll need to take a class to find out what one is.

    It’s ok SF, I understand, it is difficult to enunciate a public policy objective being accomplished by patenting written works, the function of written works, or functionalities imparted to machines by written works. To your credit though, I doubt if any teacher in any class can do it either. So far as I can see that is because it doesn’t exist.

    None the less, I extend an invitation to any who think they could do a better job than me or SF can do at finding a legitimate public policy objective that would be served by allowing the patenting of the functionality of written works, the functionalities imparted to machines by written works, or mediums which impart functionalities to machines by providing the information contained in written works to put it forward. With at least a bare minimum of support if you could.

  44. 101

    Mooney: Look, I’m not going to argue that Saint Beauregard gave us anything more than the myth that it’s binding Federal Circuit law. Sadly, written description, enablement and indefiniteness have not been used to reign in attempts to short change the public in the software patent quid pro quo. (And obviousness surely hasn’t either.) I will, however, take issue with anyone that thinks copyrightable expression embedded on a computer readable medium (as opposed to any functionality embedded thereon) can be used to distinguish the prior art.

    As for 6, take a survey course on intellectual property and you’ll understand why we have copyright, why we have patents, why we have trademarks, and how all of them may apply to a particular software package.

  45. 100

    SF “You get patents for the “functionality” that the code performs.”

    Yes, that’s the magical gift of Saint Beauregard to his children: you can obtain claims to broad conceptual approaches and algorithms that anyone could dream up in five minutes and a few more hours to cobble into an application, as long as the claims are scratched onto a “computer readable medium.”

    Meanwhile, when you try to patent the functionality of molecules that took, in some cases, millions of dollars, a team of Ph.D. scientists, and years of testing to achieve, the law (e.g., Rochester) requires that the structure be expressly and specifically recited in the claim.

    Yet somehow the biotech community continues to innovate, “in spite of this.” I put the phrase in quotes because, as much as the Kevin Noonan’s of the world might disagree, allowing crap like the claims in Rochester or Classen to issue would be the worst possible result for the biotechnology industry. Great for trolls and those whining “little guys”, though (it’s become quite clear that when commenters here refer to the “little guys” they are referring to what most of us know as trolls).

  46. 99

    Well, my response was lost to the “back” button on the side of my mouse. I ha te that button I never even use it when I want to go back.

    Bottom line guys: Please address the public policy that needs to be filled by protecting the functionality rather than merely stating what happens in the absence of protection and asserting that it needs to be stopped. Why does it need to be stopped? I see no reason to stop copying of the functionality of code. That is why I’ve asked the question.

    For example, copyright was originally justified from a public policy perspective by saying that it will spur the creation of content and that the spurring of the creation of content is a good public policy objective. I agree with that. Although I see that copyright is now used for different ends, and so perhaps needs modification, I still agree with the basic premise.

    There simply is no public policy objective served by protecting the functionality of software. Does it spur creation of more functionality of software? I have seen no evidence for it whereas there was evidence back in the day of the printing press for copyright (where there might not be as much anymore).

    Make your case, if you have one, for a public policy that is served by protecting the functionality of written works.

    I’ll deal with your comment later SF since my original response was baletad.

  47. 98

    6: “My children’s story code also has code to display it. Why is it that you can ignore the code for the story while you cannot ignore the code to display it?”

    You can claim the manner in which the computer displays the story, not the content of the story. One is functional. One is printed matter. If you do claim the content of the story, you can ignore it for purposes of 102/103.

    If you can explain how your “story code” is functional, great. If all the story code supplies is text that is displayed, that sounds “solely for the understanding of the human eyes and mind” to me. Claim how the functional aspects of the story code interact with the display component. But if you try to claim the content of your story (e.g., that your story is about “Red Hiding Hood”), guess what … that’s printed matter.

    If you claim computer readable instructions for displaying “6 is a great examiner,” you can ignore the “6 is a great examiner” under printed matter. See what the rest of the claim says.

  48. 97

    Although, Greg Aharonian who is quite knowledegable and incisive in other areas, actually supports the merger of copyright and patent law. You would have good company there 6.

    I just ignore those rants, because it likes talking to someone who is otherwise rational but believes in the hollow earth theory.

  49. 96

    6,

    You need to understand the distinction between functionality and expression. A story has no functionality. A method of conveying a story could be patentable under 101, although it would likely fail under 102 or 103.

  50. 95

    “This lack of sympathy, more like [antipathy] hostility really, runs counter to promoting the progress of the useful arts.”

    Typo corrected.

  51. 94

    6 said, “I do have one serious question for all the “software should be patentable” crowd. Software is a written work. No matter how you swing it. That is copyright domain. And I’m pretty sure folks can use copyright to protect their code. Why is it that you think it should get both protections? Just purely from a public policy perspective. Why should we afford it both?”

    In part, because copyright protection only prevents actual copying. If someone independently writes software that fulfills a market niche developed by another, they are not liable for infringing a copyright on the software that created that market niche. The new software can supplant the old simply by functioning the same way. It does not have to have the same or even similar code or appearance. In that way, it is highly different from a novel or film. There is functionality that needs to be protected, not just artistic appeal.

    As an aside, your question is symptomatic of a plague among PTO personnel, who seem to have no ability to mentally place themselves in the shoes of the inventor or assignee and intuit what is needed to motivate reduction to practice, disclosure, and market realization of inventions. This lack of sympathy, more like antipathy really, runs counter to promoting the progress of the useful arts.

  52. 93

    “You can get copyright for the “expression” in the code itself and the output. You get patents for the “functionality” that the code performs. ”

    What is the public policy objective for distinguishing the two and providing protection for both? That is my question above.

    My children’s story code also has code to display it. Why is it that you can ignore the code for the story while you cannot ignore the code to display it? PMD cannot be used. Both are information structures on the CD remember, both the code for the story and means of displaying are physical matter in the form of dips on a cd and are, in the words of the court paraphrased, “not solely for the understanding of the human eyes and mind” and are “to direct the operation of a machine”. The former of which is the only time the printed matter doctrine excludes subject matter from consideration. I believe that was from In Re Lowry if you want to look it up. Since the printed matter doctrine cannot be used, why can we ignore the story now?

    What is the public policy objective for considering the functionality “on” the cd as opposed to strictly the functionality “of” the cd as with every other claim type in existence?

    It was interesting to see how much hypothesizing about about the applicability of PMD to stories on cd’s is done on these boards when the caselaw blatantly rejects that notion. According to the court, any structure on the cd etc. that causes the machine to perform an action (display “p”) is not exempt from consideration by the PMD. But don’t worry about that right now, focus on the public policy questions please guys.

    “C’mon 6 – review Written Matter Doctrine once again. Think about what copyright covers (does copy right cover functionality?)”

    What is the public policy for allowing the functionality of a written work to be protected?

    “In Beauregard, the PTO dropped its appeal. In Lowry, the PTO Board said the claims were statutory, so the Federal Circuit never addressed the issue. My definition of “good” law isn’t one based on the PTO’s preference at a couple of points in time. I prefer to have a holding of a Federal Circuit case on point.”

    Some people are ignorant of that. And, what’s more, is that the real issue is not whether the claims are stat under 101, it is whether they distinguish over the prior art by the means in which they purport to. But let’s talk about public policy right now.

    Nobody will win a case saying that claims to a cd are not statutory unless we get some heavy duty post solution Bilski action up in here.

  53. 92

    6:

    You can get copyright for the “expression” in the code itself and the output. You get patents for the “functionality” that the code performs.

    Using your CD example, the CD would be statutory subject matter, but the “novel and nonobvious” content of the children’s story would be akin to printed matter and thus ignored for purposes of 102, 103.

    If, however, there was claimed functionality on the CD that enabled the display (e.g., drivers, etc.) those would be considered for 102, 103.

  54. 91

    “Software is a written work. No matter how you swing it. That is copyright domain.”

    C’mon 6 – review Written Matter Doctrine once again. Think about what copyright covers (does copy right cover functionality?)

  55. 90

    “Beauregard and Lowry are good law”

    In Beauregard, the PTO dropped its appeal. In Lowry, the PTO Board said the claims were statutory, so the Federal Circuit never addressed the issue. My definition of “good” law isn’t one based on the PTO’s preference at a couple of points in time. I prefer to have a holding of a Federal Circuit case on point.

  56. 89

    I do have one serious question for all the “software should be patentable” crowd. Software is a written work. No matter how you swing it. That is copyright domain. And I’m pretty sure folks can use copyright to protect their code. Why is it that you think it should get both protections? Just purely from a public policy perspective. Why should we afford it both?

    Getting into the information structures is no different than getting into the written work aspect. If I take a children’s story and encode it so that it can be shown on another computer’s screen, without an outside viewer program (aka adobe), burn that, and look at the CD I then have a CD with the same ability to impart a functionality on another computer just like any windows CD etc. Why in the blue blazes should the CD that just displays a children’s story not be patentable (I believe you will all agree that it is not) and one that makes the computer display a window or perform a calculation be? Just purely from public policy perspective that is. What about if we consider the fact that we can simply reprogram the way the computer reads the DVD such that the information retrived from the children’s story CD actually tells the computer how to have all the functionality of windows. What then? Now my story CD has the same functionality as it did before, but as always it is still functional to tell the computer to run windows. I can see no public policy objective served by granting a patent on a children’s story CD just because it is capable of telling a computer (properly programmed with a read program that will modify how it reads CDs) to run windows. I don’t see the public policy objective that is being served. Can you identify it for me?

  57. 88

    “It appears, that like other posters, you are carelessly conflating 101 with 102/103.”

    Don’t forget the Supreme Court too, in Flook.

  58. 87

    From a policy standpoint, innovative software *should* be patentable, for the same reasons that innovative biotech, chemical, mechanical, pharma, etc. advances should be patentable. That is to say, the rationale for patents that we’re all familiar with (quid pro quo, etc.) applies equally to the software as well as bio/chem/etc industries.

    Additionally, as a former research biologist-turned bioinformatics software developer-turned patent attorney, I believe that the knowledge/insight/creativity/etc required to be innovative is fundamentally the same across arts.

    Therefore, I think Bilski and how it’s being applied is ridiculous. Beauregard and Lowry are good law, but Bilski can be twisted up and used to eviscerate software patents?

    I think it’d be way better for innovation in this country if, instead of continuing to play games with the language in Bilski w/r/t software patents, we got a firm statement from Congress that software is patentable subject matter. Maybe an amendment of 101 to read:

    “Whoever invents or discovers any new and useful process, machine, manufacture, composition of matter, or software program . . . ” How about that?????

  59. 86

    Mooney says: I’m right

    I can see the level of debate hasn’t improved any around here.

    Where does Mooney get the energy to be so annoying day after day? And how does he manage not to miss a day? Oh wait, maybe I know.

  60. 85

    “As I recall, the term “business methods” wasn’t meaningfully defined by Congress so … it’s rather pointless to hang your hat there.”

    MM,

    Once more, I’m going to make an exception to responding to your meaningless drivel. That Congress didn’t define “business method” in 35 USC 273 may have been an unfortunate oversight (Congress is notorious for those), but that they even mention “business methods” as something subject to prior user rights means to most intelligent folk that Congress considered “business methods” to be patentabl subject matter. Or are you going to use the oxymoronic logic of that district court judge who ruled that 35 USC 3 didn’t permit a private suit to remove Margaret Peterlin as unqualified because the standard for a “person who has a professional background and experience in patent or trademark law” was too vague? Like I told 6, a “man has got to know his limitations.” When it comes to your understanding of patent law, you are frankly clueless. And that’s the end of my story to you on this subject.

  61. 84

    The exclusion of business method patents was entirely judicially created and the CAFC was correct to overturn that line of thinking in State Street. Subject matter should not be excluded just because it happens to fall within a certain category. 101 does not enumerate what is patentable, but what is not.

    If something is no more than an abstract idea with no tangible or functional result, then it probably does fail under 101.

  62. 83

    “It’s a joke of a patent and a joke of an appeal, as Mr. Mooney points out, and as I meant to convey in my reference to Rule 36.”

    You’re right, I was being obtuse. Your Rule 36 reference should have been a dead giveaway to your views. I still think 103 and 112 rejections would have been better in this case, and I disagree with Mooney about whether that matters. But I’m not going to lose sleep over it, because this is one case where nearly everyone agrees the claims are empty. It’s rare when agreement on anything is so across the board.

  63. 82

    “”then reject under 112 not 101”

    “Reject it on whatever grounds are appropriate.”

    Indeed. 101 is surely an appropriate means for rejecting a claim to a “paradigm”, “concept”, “scenario” or any other “abstract idea”.

  64. 81

    smashmouth writes:
    “You don’t think SCOTUS would grant cert in this case, do you? Bilski stands a better chance. . .”

    MM writes:
    “‘the cert petition’
    BWHAHHAHAHHAHAHAHHAHAHAAHHAAHH!!!!!!!!!!!!!”

    My reference to him writing a cert petition is based on the law.com article about the case, which mentioned that “Harris … add[ed] that he may appeal to the Supreme Court.” link to law.com

    It’s a joke of a patent and a joke of an appeal, as Mr. Mooney points out, and as I meant to convey in my reference to Rule 36. I hope Mr. Harris doesn’t take his “paradigm” to the Supreme Court. Every minute spent reading that petition could be better spent doing just about anything else.

  65. 80

    “then reject under 112 not 101”

    Reject it on whatever grounds are appropriate. But get this garbage out of the PTO. It is sheer, unadulterated crapola like this POS that is clogging up the works over there. For every POS application like this that is being examined, another application for an actual invention is being ignored.

    Let’s get garbage like this out of the PTO, get the backlog and pendency down, start examining applications for actual inventions, and then RIF half the examining corps once this crapola is cleared out.

  66. 79

    “How on earth can anybody, whether of “ordinary skill in the art” (art of what?) or otherwise, determine if they’re infringing “developing a shared marketing force” or “marketing channels which enable marketing a number of related products”?”

    then reject under 112 not 101

  67. 78

    “The number of users (i.e., programmers) far out number those of yesteryear.”

    That may be. However, the number of patents to codes written on punch cards is zero.

    I believe zero is also the number of patents on unique piano rolls (distinguished only by the functionality, i.e., the music content, imparted to the player piano), a very closely related technology. Were there “limited users” of that technology as well?

    Your most glaring and fundamental error is your failure to recognize that the change in the ***business*** of patenting between now and the golden age of punchcard technology is far more important than any change in the relative number of software developers. While there have always been a finite amount of abusers and crooked exploiters of the patent system (Lemelson immediately jumps to mind), the full potential of what could be achieved was realized relatively recently. Hence we have the Scott Harris’ of the world unabashedly admitting that he and his cohorts filed “a new style of claims” as part of a scheme to achieve “wealth and fame off the Internet.”

    This sort of money-grubbing game has nothing to do with “promoting innovation” and “protecting inventions.” There is no quid pro quo. The granting of claims such as those filed by Fergusen et al would be tantamount to government-approved theft. This is true of all claims to methods of “making money,” and its true of nearly all claims to compositions and methods for making a computer do something “new.” The “public” does not benefit from the issuance of these patents. Only a “limited few” benefit.

    By the way, does CNBC crybaby clown Jim Cramer remind anyone of a few notorious, whining patent litigators? You know, the kind who represent trolls?

  68. 76

    Though we also see this:

    “Indeed, Lowry does not seek to patent the Attributive data model in the abstract. Nor does he seek to patent the content of information resident in a database. Rather, Lowry’s data structures impose a physical organization on the data.”

    So perhaps this case would not stand for supporting standard Beauregard claims except to rule out using the PMD to dispose of them.

  69. 75

    Also you can see how the board rejected the claims in In Re Lowry using the printed matter doctrine, I would be willing to bet that wasn’t the first time data structures were treated in that fashion and that was the first time the CAFC overruled it.

  70. 74

    I thought there was specific caselaw that stopped the punchcard patenting. That’s why it took until the genius in Beauregard to come up with the faux method of distinguishing a medium in terms of something else. Though it really looks like In Re Lowry was the real turning point as to mediums.

    link to bitlaw.com

    Way back in the day it appears that software was regarded as simply not being patentable in any form, under the various decisions of the day. Even though the decisions did not relate to mediums and etc.

    link to ipwatchdog.com

    I have to say, it’s such an exciting time in patent law to be living through. First we have major shifts in 103, then some shifts in 112, some major shifts in 101, and hopefully soon we’ll have a big shift as to software as well as some stuff pertaining to other fringe areas of abuse.

  71. 73

    Malcolm Mooney,

    “history of punchcards”

    Yes, enjoyed by the limited few users of mainframes relative to the number of users of PCs. Do you actually suggest that the number of users of mainframes were anywhere proportional to the number of users of PCs? If you are, then you’re hopeless or you weren’t around to enjoy logging into a “dumb terminal” in the computer lab and placing a telephone handset into a modem comprising of two rubber-like cups.

    Remember, it is not those who have actually touched the punch card; it is those who wrote the code from which one line of code was punched into the card. The number of users (i.e., programmers) far out number those of yesteryear.

    Any more “facts” from which I can shoot down your “why didn’t they do it for punch cards” theory?

  72. 72

    Malcolm Mooney,

    “Thank you. Of course, the actual facts re the history of punchcards and the behavior of patent applicants today in areas where a technology is “enjoyed by a limited few” completely undermine your argument.”

    To what “facts” are you using in your conclusory statement?

  73. 71

    “How on earth can anybody, whether of “ordinary skill in the art” (art of what?) or otherwise, determine if they’re infringing “developing a shared marketing force” or “marketing channels which enable marketing a number of related products”?”

    That’s easy. After the patent issues, you wait until you are sued and then a judge will tell you. ;)

  74. 70

    West Coast Guy “The reason why is simple: no money to be made when software was enjoyed by the limited few.”

    Thank you. Of course, the actual facts re the history of punchcards and the behavior of patent applicants today in areas where a technology is “enjoyed by a limited few” completely undermine your argument.

    link to en.wikipedia.org

  75. 68

    Malcolm Mooney,

    “Can you tell me why, “historically,” nobody bothered to patent specific programs as encoded on punch card media?”

    I will now bother, for the answer is quite simple when you look at the profit centers of today versus yesteryear.

    With the advent of the PC and the internet, the masses began to enjoy the processing power of computers. Because computing power was now opened up to the desktop of the masses and not just those select few at institutions (e.g., universities, government labs, etc…) who had access to mainframes which employed punch cards, selling software to the masses became profitable. This was due in part to the evolution of a standardized operating system (e.g., Microsoft operation system) and the internet browser (e.g., Netscape and Microsoft Internewt Explorer).

    This way not the same prior to the PC. Mainframe manufacturers (e.g., IBM) were profitable by selling or renting access time to their machines. Software was not a profit center; rather, software programming was a service provided by mainframe manufacturer. There was simply no profits to be made in software, especially during the day when mainframes were not standardized to one particular operating system.

    To anticipate your next question, yes, a box of punchcards arranged in a unique, sequential order and imparting functionality onto a mainframe was definitely patentable and could have been patented. The reason why is simple: no money to be made when software was enjoyed by the limited few.

  76. 67

    “I would say that one skilled in the art would be able to understand the metes and bounds of what was intended to be claimed.”

    Huh? How on earth can anybody, whether of “ordinary skill in the art” (art of what?) or otherwise, determine if they’re infringing “developing a shared marketing force” or “marketing channels which enable marketing a number of related products”?

    This claim is garbage. Pure and simple.

    Good riddance.

  77. 66

    “But for Judge Newman’s presence on the panel, I suspect that this would have gotten the Rule 36 treatment, and Mr. Harris could have started drafting the cert petition the day after argument.”

    You don’t think SCOTUS would grant cert in this case, do you? Bilski stands a better chance. . .

  78. 65

    But for Judge Newman’s presence on the panel, I suspect that this would have gotten the Rule 36 treatment, and Mr. Harris could have started drafting the cert petition the day after argument.

  79. 64

    “I think it is informative to recall that 101 has historically been about seprating that which is useful from that which is purely artistic.”

    Can you tell me why, “historically,” nobody bothered to patent specific programs as encoded on punch card media?

  80. 63

    EG “273 makes no sense if Congress didn’t recognize “business methods” as patentable subject matter.”

    As I recall, the term “business methods” wasn’t meaningfully defined by Congress so … it’s rather pointless to hang your hat there.

    Personally I have no problem extending the exclusion of “business methods” to any methods whose only credible utility is to increase profit resulting from business transactions, i.e., where increased profit, sales or transactions is the only credible improvement.

    Note that this does not include well-drafted composition claims (e.g., an improved cash register).

    The public receives no value from the awarding of monopolies on methods of selling crap. The incentive to innovate methods of selling crap is profit, not patents.

    Patents are to encourage the creation of innovative compositions and articles, and methods for manufacturing those articles.

    The rest is merely abuse and exploitation of the system (see In Re Fergusen for a quintessential example).

  81. 62

    Non Sequitur said, “Certainly, the format for a DVD could be patented, but that doesn’t mean that everything recorded on a DVD is entitled to its own patent. It is the same reason why a general-purpose computer may not qualify as a particular machine in some cases. If the only difference between the alleged invention and the prior art is based on content or information, then the alleged invention isn’t really tied to a particular machine.”

    If you punch holes in a substrate in a purely artistic fashion and hang it in a museum as art, then it is not patentable for that use. But if you punch holes in a substrate in a pattern that makes it useful as a mask for deposition formation of structures in manufacture of a semiconductor layer, then it is patentable subject matter. The same applies to textual instructions as holes. The key is to claim it for the patentbale use.

    And that is the key with software now, it seems. The Courts are forcing us to define what the data represents in order for the general purpose computer to be considered a particular machine. Instructions encoded on disk will surely remain patentable as long as we define what the information does that is particularly useful, and not merely artistic.

    I think it is informative to recall that 101 has historically been about seprating that which is useful from that which is purely artistic. Not all things that are artistic are purley artistic. Just because some things that are useful can be considered art, and subject to copyright, does not render them not patentable subject matter.

  82. 61

    “They call on Congress to reverse the burden of the proof on patent seekers by granting patents only to those capable of proving that:

    • their invention has social value

    • a patent is not likely to block even more valuable innovations

    • the innovation would not be cost-effective
    absent a patent

    I’m sure these standards can be simply applied.”

    No way. The whole point of this “test” is to de facto eliminate patents altogether, as its proponents advocate. In practice it would be impossible for the applicant to prove such a high standard, especially before the invention can be sold or publicly revealed. No one would know whether “the innovation would not be cost-effective absent a patent” until years later, in nearly all cases. That’s one reason they have maintenance fees payable at (I think) four year increments. Also, there’s no way to determine whether “their invention has social value.” Any test set out by the PTO or the courts necessarily would be almost entirely arbitrary. Furthermore, how would anybody know whether “a patent is not likely to block even more valuable innovations,” when those “even more valuable innovations” cannot possibly be known, let alone have their value estimated, at the time YOUR application is being examined?

    The book by Boldren and Levine has been touted incessantly over at the Mises blog. (Ask Stephen Kinsella, he’ll tell you more than you’ll ever care to know about the issue.) Although I’m often sympathetic to the libertarians, on this issue I think they’re out of touch with reality. Without patent protection, R&D would be practically impossible because of free-riders.

  83. 60

    One other thing that I cannot reconcile is that implict to many of the 101 rejections being made now, the courts are effectively saying that business methods are not patentable. Ok, if that is the case then why is Congress trying to prevent the patenting of tax avoidance practices.

    Aren’t tax avoidance “planning” practices a specific type of business method?

    I guess Congress doesn’t need to worry about this because the courts and the BPAI have effectively decided that business methods are not patentable subject matter.

    Just a thought.

  84. 59

    link to newswise.com

    Why not scrap 101 and start with this test that two economists propose:

    They call on Congress to reverse the burden of the proof on patent seekers by granting patents only to those capable of proving that:

    • their invention has social value

    • a patent is not likely to block even more valuable innovations

    • the innovation would not be cost-effective
    absent a patent

    I’m sure these standards can be simply applied.

  85. 58

    West Coast Guy,

    Amen to your comment. 273 makes no sense if Congress didn’t recognize “business methods” as patentable subject matter.

    Again, using 35 USC 101 as a primary screen for patentable subject matter (especially using the fatally flawed “machine or transformation” test of Bilski) is creating chaos and the very real danger of screening out technologies that should be assessed for patentable merit under 102, 103, and 112. In fact, what’s really needed here is perhaps a more “rigorous” application (or even a statutory update) of paragraphs 1 and 2 of 35 USC 112 so that the patentable scope sought by the patent applicant reasonably corresponds to what they’ve disclosed in the application spec. (Judge Linn I believe has suggested this and I frankly think it’s a good idea.) 35 USC 112, paragraphs 1 and 2, are frankly a much more objective way to screen out the “unpatentable” compared to the extremely “subjective” and arbitrary screen of 35 USC 101 now used by the Federal Circuit in Bilski and now Ferguson.

  86. 57

    Malcom,

    How do you reconcile Congress’ intent of including business methods as patentable subject matter as the words of § 273(a)(3) indicate?

    “For the purposes of [§ 273] the term “method” means a method of doing or conducting business[.]”

    How would you write a claim to business methods?

  87. 56

    “How does a claim like this even get past 112, second para. It is ridiculously indefinite.”
    Why?

    Is the “method of marketing a product” claim broad? Extremely so, but indefinite?

    I would say that one skilled in the art would be able to understand the metes and bounds of what was intended to be claimed.

    FYI – my opinion as to the claim shouldn’t be construed as my endorsement of this claim. My guess is that there is 102/103 art out there, but the USPTO hasn’t found it. Instead, they are taking the lazy route by employing 101.

  88. 55

    “But if your business method does not give a machine new functionality, it is like a turntable playing a new record. And your computer-readable medium is like the record.”

    There is a legally-recognized difference between non-functional descriptive material (e.g., your record) and functional descriptive material. See MPEP 2106.01 link to uspto.gov

    The functionality descriptive material imparts functionality to the machine, and as discussed in MPEP 2173.05(g), functional limitations are perfectly acceptable.

  89. 54

    “You’re just repeating yourself. Yes, you do examine Beauregard claims as just any other claim, but your business method portion is still not a statutory part of the claim and thus deemed to be known.”

    Sorry, the Federal Circuit doesn’t endorse that view. The BPAI may have dabbled with that a bit, but that is because you are dealing (mostly) with a bunch of inexperienced attorneys.

    There is a reason why they reissued the In re Comiskey decision — it was to get rid of the sloppy language/analysis that COULD support your argument.

    Sorry — just because a claim recites an algorithm (which is surely non-statutory by itself), doesn’t mean you get to ignore it when it comes to a 102/103 analysis.

  90. 52

    Limana,

    “So I was just talking about business methods that, without a data carrier, would not be statutory.”

    is answered by the sentence previous:

    “Unfortunately, there is still no good definition of business methods out there.”

    which ignores the point I made in the previous post:
    “How is it that you carefully read the case law, except missed the part where business method is explicitly stated as NOT to be regarded as nonstatutory in and of itself”

    It appears, that like other posters, you are carelessly conflating 101 with 102/103.

    Your premise about “statutory” business methods is simply unfounded – thus is merely noise.

  91. 51

    Alappat was not about a business method and actually solved an engineering problem. It made an oscillograph display a smooth sinusoidal wave by implementing a rasterizer program. In that regard, it was like a hardware driver.

    “Indeed, the preamble specifically recites that the claimed rasterizer converts waveform data into output illumination data for a display, and the means elements recited in the body of the claim make reference not only to the inputted waveform data recited in the preamble but also to the output illumination data also recited in the preamble. Claim 15 thus defines a combination of elements constituting a machine for producing an anti-aliased waveform.

    Consequently, a computer operating pursuant to software [i]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.”

    So if your business method includes making a computer perform a function that is wasn’t able to perform previously, your business method is not what I am talking about.

    But if your business method does not give a machine new functionality, it is like a turntable playing a new record. And your computer-readable medium is like the record.

    Unfortunately, there is still no good definition of business methods out there. So I was just talking about business methods that, without a data carrier, would not be statutory.

  92. 50

    limana,

    How is it that you carefully read the case law, except missed the part where business method is explicitly stated as NOT to be regarded as nonstatutory in and of itself (my apologies for the double negative)?

    “Why do you think that, if you store a nonstatutory program on your computer-readable meduim, it makes it a different medium? It doesn’t, unless you invent a new physical data structure (see Lowry).”
    – See Alappat for a hint

  93. 49

    “As for 103, you evaluate a Beauregard like any other claim, which means you’ve got to look at all the limitations (i.e., the invention as a whole).”

    You’re just repeating yourself. Yes, you do examine Beauregard claims as just any other claim, but your business method portion is still not a statutory part of the claim and thus deemed to be known.

    Is the combination obvious, i.e. to store a computer-executable program (that is deemed known) on a computer-readable medium (that is known)? Of course, it is.

    Why do you think that, if you store a nonstatutory program on your computer-readable meduim, it makes it a different medium? It doesn’t, unless you invent a new physical data structure (see Lowry).

    I do support Beauregard claims for statutory methods, i.e. programs controlling physical processes like hardware drivers. Then the Beauregard claims can help you to allege direct infringement instead of only contributory infringement.

    On the other hand, business methods only take advantage of existing functionality. They don’t turn the data carrier (or a computer system) into anything that the data carrier wasn’t designed to be.

    So if you want to overcome 101, you may not want to consider Beauregard claims as your secret weapon because you may win the battle, but you will lose the war.

  94. 48

    The answer on Beuregard claims has already been provided in the UK Courts. Following the decision in Aerotel/Macrossan the UKIPO stopped allowing such claims. Principally a disk or carrier is known and therefoe the only contribution to the art was a computer program.

    They were overturned on appeal to the High Court in Astron Clinica which said that if a method or apparatus were patentable then a beauregard claim was allowable. Importantly what they also said was that if the method and apparatus claim was not allowable then it was not made allowable by the presence of a program on a carrier.

    It seems an eminently sensible way forward and I can see no reason why, whatever the jursidiction, for it not to be acceptable. If anything it is on eof the few things that professionals on both sides of the Atlantic probably agree on.

  95. 47

    “well-developed law” lololololol, what well developed law is that? The law of claiming items in terms of the functionality IMPARTED to another item? The law of claiming items in terms of the functionality OF other items?

    A horseshoe that when thrown over a microchip causes the microchip to solve really complex never before solved math problem x and output the results.

    Don’t even try to tell me that is not enabled because it is. I was the inventor of the method to solve the math problem and it is disclosed.

    Tell me, is that horseshoe different than and distinguished from other horseshoes? For the purposes of this exercise let’s presume the horseshoe used in the spec is one from the 1800’s, an antique, that 80000 copies of which were made.

  96. 46

    “Litigators will grasp at any straw to invalidate a patent, yet you don’t these issues being raised against Beauregard claims.”

    So will examiners. And yet I do see these issues being raises against Beauregard claims.

  97. 45

    “As for 103, you evaluate a Beauregard like any other claim, which means you’ve got to look at all the limitations ”

    As for 103, you evaluate a Beauregard product claim like any other product claim, which means you’ve got to look at all the structural limitations and all the functional limitations describing what those structural limitations are capable of.

  98. 44

    “Why? ”

    Because the SC has stated so. Their reasoning went something like: Abstract ideas etc. belong to the common storehouse of knowledge reserved for all men and are available for all to take. Indeed, the discovery of E=mc2 didn’t make the relationship new, it meant we only then bothered to find it.

    Comiskey is still good lawlol imo and I’d argue any of the points therein as if it were still around. That is to say that Com is as good as any lawlol ever is.

    “Really? I would say that there an infinite amount of options as to how to store such a program. ”

    That is one reason why no Beauregard should ever pass 102/103. But it is more complicated than I care to go into right now.

    “Oh wait, that’s 6 – never mind, hopeless case”

    I already understand the printed matter doctrine, if you care to discuss how to properly distinguish an item in terms of ITS functionality rather than some other items functionality we can talk. Briefly though since I’ve already discussed it with with folks probably more in the know than yourself.

    While we’re discussing how to distinguish an item in terms of its functionality perhaps you can show me a DVD somewhere that causes a computer to do a dmn thing when it is read. I have yet to see one. I’ve seen computers that do things when they read a DVD, but I’ve yet to see a DVD cause a computer to do anything.

    After you fail to show me any DVD that causes any computer anywhere to do a dmn thing then we can discuss distinguishing an object in terms of pure information that is represented by information structures thereon. We can discuss whether or not the information limitations in Beauregards are information limitations or are actually meant to be information structure limitations. And we can discuss the information represented by information structures that causes computers to do something. Then things will get interesting.

    “Under 35 USC 102, you have to establish that the prior art teaches ALL of the claimed limitations.

    Thus, you have to look at the claimed invention AS A WHOLE, which includes ALL of the limitations.”

    Not if the limitations are improper in the first place.

    Your claim:
    A hammer comprising:
    A metal bar
    A step of comprehending claim drafting
    A polythiophene semiconductor layer
    An information structure etched onto the side of the metal bar that when scanned by a computer causes the computer to display a price and
    A circuit that when activated functions causes all tv’s on a block to turn on.

    I have prior art that shows a hammer comprising a metal bar a polythiophene layer an information structure in the metal bar and a circuit capable of causing all tv’s on a block to turn on if programmed correctly. Does your claim distinguish? If so, which portions distinguish? Tell me all of them.

    When you’re done, and hopefully learned something, then you can tell me what the function of the medium is in a Beauregard claim.

    F it, I’ll tell you, to store data and relay it to the reader. Nothing more, nothing less, ever. And to say otherwise is like saying the function of a butterfly wing is to cause a hurricane. There is no DVD in the world that causes a computer to do squat when read, other than recieve information. Which DVD’s in the prior art are capable of performing that function? Every last single one. As you are well aware, the prior art only has to be capable of performing the intended function.

    ” A blank DVD is not 102/103 art for the average Beauregard claim for those reasons.”

    The prior art includes my windows DVD, although that isn’t strictly relevant just yet. But if you ever get past the problems presented above then it will be.

    “The method steps merely describe the “functionality” imparted by the computer readable medium to the computer. As discussed in MPEP 2173.05(g):
    “There is nothing inherently wrong with defining some part of an invention in functional terms. Functional language does not, in and of itself, render a claim improper.””

    I notice you said the “functionality” IMPARTED TO THE COMPUTER, rather than the functionality of the DVD. Be clear, the invention is the DVD, not the DVD+computer combo. It says so right in the beginning of the claim. A computer readable medium etc. etc. It is not the functional language itself that renders the claim invalid, it is the fact that it is functional language describing something other than the invention itself i.e. the computer.

    Personally, I have no problem with claims to a generic computer with a specific functionality that is executed by executing software code. Oh wait, but those kind of claims fail because all generic computers are capable of those intended uses, all you have to do is program it, i.e. use it. You see, there is a reason people have been using Beauregards to get around this problem. The problem is, the method of getting around the problem is a problem in and of itself.

    In case you’d like the invention to be the DVD+computer combo I’ll remind you there is no product+apparatus statutory class so I would not go down that road if I were you.

  99. 43

    “TAABAYH; may I ask what that one word is?”

    Physical. It eliminated the absurd interpretation of “a computer readable medium” to include signals when the spec made it very clear that a computer readable medium is a dvd, a memory, a hard drive, etc.

    i have overcome numerous 101’s on beauregard claims by amending them to recite “a physical computer readable medium.”

    the examining corps isn’t nearly as strict on 101 as the BAPI is, for some reason. i doubt that would fly with the BAPI. they’d find some other absurd interpretation or way to invalidate that claim.

  100. 42

    “Why don’t you explain?”

    Your original comment read “[t]here is a limited number of options how to store such a program.” However, you’ve now backtracked and asserted that your comment referred to types of computer readable medium, which was clearly not the subject of your prior statement.

    “If your business method does not improve any constitutionally authorized subject matter, it’s a business method as such, and no Beauregard claim will get you out of 103.”
    103 and “constitutionally authorized subject matter” are two different requirements. A Beauregard claim is not directed to a class of subject matter commonly referred to as “business methods.” The class of subject matter of a Beauregard claim is a product (i.e., manufacture) or an sub-element of a machine. On that basis, Beauregard claims pass muster under 101.

    As for 103, you evaluate a Beauregard like any other claim, which means you’ve got to look at all the limitations (i.e., the invention as a whole).

  101. 41

    “It takes just one word to overcome almost all 101 rejections as to Beauregard claims.”

    TAABAYH; may I ask what that one word is?

    Thank you.

  102. 40

    “‘In that regard, I think that Bilski and Flook are totally off.’

    Are they? Or do Bilski and Flook represent perfectly fine solutions to the problem presented by claims which disguise new but unpatentable abstract ideas in flimsy, insignificant ancient art?”

    Oh, I think they both came to the proper result. And Bilski was also correct on the 101. Just Flook wasn’t because it had enough statutory limitations in the claim to make it past 101.

    I am kind of disappointed that all 103 arguments were taken out of Comiskey. Those would have been a perfect match with Bilski.

  103. 39

    “you have to look at the claimed invention AS A WHOLE, which includes ALL of the limitations. A blank DVD is not 102/103 art for the average Beauregard claim for those reasons.”

    What are you frickin nuts? Of course it’s relevant prior art.

    “Litigators will grasp at any straw to invalidate a patent, yet you don’t these issues being raised against Beauregard claims.”

    Can anyone identify a Beauregard claim case that resulted in a jury award of substantial damages to the patentee that was appealed and upheld on appeal?

    “The method steps merely describe the “functionality” imparted by the computer readable medium to the computer.”

    And in every other field, when you try to claim a composition purely by reference to its novel function, the courts and the CAFC will rip you a new one. Why is that?

    Hint: don’t look in the statutes or case law. The answer isn’t there.

  104. 38

    That’s what you think now. But if you read Comiskey really carefully, you will find a reference to Paulik, where the CAFC acknowledges that the constitution’s reference to useful arts means technology. If your business method does not improve any constitutionally authorized subject matter, it’s a business method as such, and no Beauregard claim will get you out of 103.
    According to Bilski, Flook is still good law, and it states right there in the Flook opinion that nonstatutory subject matter must be considered as known.
    Also, regarding your unlimited options of storing your program, if you just claim a run-of-the mill computer-readable medium, there is not an unlimited number of options. You can store your program on a harddrive or a medium, maybe a couple of other things that I don’t know of.
    But maybe you know more than I do. Why don’t you explain?

  105. 37

    “I don’t get the whole “insignificant postsolution activity” thing. In order to determine what “postsolution” is, we first need to know what the prior art is, i.e. what problems have already been solved. That is a 102/103 issue, not a 101 issue. In that regard, I think that Bilski and Flook are totally off.”

    Are they? Or do Bilski and Flook represent perfectly fine solutions to the problem presented by claims which disguise new but unpatentable abstract ideas in flimsy, insignificant ancient art?

  106. 36

    As such, if you claim a DVD (an example of a computer readable medium), when the “claim as a whole” is considered, the DVD is patentable subject matter because you cannot ignore that a DVD is neither a law of nature, natural phenomena, nor abstract idea.

    Is a DVD with a novel abstract idea digitally impressed on its surface “in computer readable form” patentable subject matter?

    I say it isn’t.

    You say it’s obvious.

    I say it doesn’t matter.

    I’m right.

  107. 35

    “Non-statutory matter has to be considered as known.”
    Why? Abstract ideas, although being non-statutory, are definitely not necessarily known. Even a law of nature (e.g., E=MC^2) was not known for quite some time.

    “A program directed to a business matter is non-statutory as such.
    All money-making methods are directed to business matters in one sense or another. Making money involves business in one form or another. Regardless, your statement doesn’t make sense.

    “There is a limited number of options how to store such a program.”
    Really? I would say that there an infinite amount of options as to how to store such a program.

    “Given a limited number of possibilities, it is ‘obivious to try’ to store it on a known computer-readable medium according to KSR.”
    Bad analysis followed by bad analysis followed by bad analysis leads to a bad conclusion.

  108. 34

    Non-statutory matter has to be considered as known. A program directed to a business matter is non-statutory as such. There is a limited number of options how to store such a program. Given a limited number of possibilities, it is “obivious to try” to store it on a known computer-readable medium according to KSR.

  109. 33

    “The question is whether or not the claims ever distinguish over the prior art DVD etc. The answer is: no.”

    From MPEP 2141.02:
    In determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been obvious. (underlining under “as a whole” omitted.”

    Under 35 USC 102, you have to establish that the prior art teaches ALL of the claimed limitations.

    Thus, you have to look at the claimed invention AS A WHOLE, which includes ALL of the limitations. A blank DVD is not 102/103 art for the average Beauregard claim for those reasons.

    The method steps merely describe the “functionality” imparted by the computer readable medium to the computer. As discussed in MPEP 2173.05(g):
    “There is nothing inherently wrong with defining some part of an invention in functional terms. Functional language does not, in and of itself, render a claim improper.”

    It is all quite simple and based upon well-developed law. Litigators will grasp at any straw to invalidate a patent, yet you don’t these issues being raised against Beauregard claims.

  110. 31

    “The question is whether or not the claims ever distinguish over the prior art DVD”

    ah, another one that needs to understand the Printed Matter Doctrine.

  111. 30

    “If you ask one having ordinary skill in the art, they will say that a “general purpose computer” with the DVD (or other computer readable medium) encoded with the instructions for perform a method (i.e., the typical Beauregard language) is measurably different than an identical general purpose computer in which the DVD (or other computer readable medium) does not include the encoded instructions.”

    Then put the measurable differences in the claim instead of the method steps performed by the processor.

    Seriously though, for all you guys discussion it is plain to see that beauregard passes 101, that is not the real issue. The question is whether or not the claims ever distinguish over the prior art DVD etc. The answer is: no.

  112. 29

    “I think the majority just lumps all that naked, upatentable stuff together and calls it abstract. If the court is going to apply MOT as the only test, not much is lost by doing this.”

    Read this amicus brief, which was filed in Bilski:
    /media/docs/2009/03/bostonamicus.pdf

    Start at page 13.

  113. 28

    “You’ve ignored that the sentence referred to a fundamental principle **OR** a mental process.”

    I think this is quibbling over next to nothing nothing. If no machine and no transformation are recited in a meaningful way, then accordingly to Bilski the methody stuff is not patentable (under 101) regardless of whether it constitutes a law of nature, mental process, mathematical algorithm, fundamental principle, etc.

    I think the majority just lumps all that naked, upatentable stuff together and calls it abstract. If the court is going to apply MOT as the only test, not much is lost by doing this.

    Newman’s point is that defining abstractness in this way is a circular argument that masks the point that the MOT is not the only test according to SC precedent. Newman also acknowledges that this is an easy application of Bilski.

  114. 27

    Non Sequitur,

    Before someone acuses you of being a sock puppet for Malcolm, please review the topic of the Printed Matter Doctrine before descending into one of Malcolm’s favorite (and fatally flawed) paradigms.

  115. 26

    By the way, the EPO Enlarged Baod of Appeal is currently looking into the question whether the claim category should make a difference.

    I personally find that, as soon as a certain threshold of structural language is met, the claim should pass 101 muster, regardless of its category.
    But in the next step, non-statutory subject matter should be considered as known when it comes to 102/103. If the only difference to the prior art is the nonstatutory method because all the hardware/structure/machine or whatnot is known, the claims aren’t patentable under 103.

    I don’t get the whole “insignificant postsolution activity” thing. In order to determine what “postsolution” is, we first need to know what the prior art is, i.e. what problems have already been solved. That is a 102/103 issue, not a 101 issue. In that regard, I think that Bilski and Flook are totally off.

  116. 25

    “Certainly, the format for a DVD could be patented, but that doesn’t mean that everything recorded on a DVD is entitled to its own patent.”

    Bilski:
    Second, the Court has made clear that it is inappropriate to determine the patent-eligibility of a claim as a whole based on whether selected limitations constitute patent-eligible subject matter. Flook, 437 U.S. at 594 (“Our approach to respondent’s application is, however, not at all inconsistent with the view that a patent claim must be considered as a whole.”); Diehr, 450 U.S. at 188 (“It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis.”).

    As such, if you claim a DVD (an example of a computer readable medium), when the “claim as a whole” is considered, the DVD is patentable subject matter because you cannot ignore that a DVD is neither a law of nature, natural phenomena, nor abstract idea.

    “If the only difference between the alleged invention and the prior art is based on content or information, then the alleged invention isn’t really tied to a particular machine.”
    If you ask one having ordinary skill in the art, they will say that a “general purpose computer” with the DVD (or other computer readable medium) encoded with the instructions for perform a method (i.e., the typical Beauregard language) is measurably different than an identical general purpose computer in which the DVD (or other computer readable medium) does not include the encoded instructions.

    There may be a difference “based on content or information,” as you allege, but that difference is measurable.

    FYI your statement that “the alleged invention isn’t really tied to a particular machine” ignores that Beauregard claims are product claims, not method claims. Just because you burn instructions on a DVD doesn’t magically convert the DVD from a product into some “abstract method.”

  117. 24

    The reason why Beauregard won’t save all software claims is the same reason why one can’t patent a work of fiction written on paper. Presumably, if I write an original work of fiction, no paper will have ever existed with those words in that exact combination prior to my reduction to practice. (I’m also assuming that it is non-obvious.)

    Certainly, the format for a DVD could be patented, but that doesn’t mean that everything recorded on a DVD is entitled to its own patent. It is the same reason why a general-purpose computer may not qualify as a particular machine in some cases. If the only difference between the alleged invention and the prior art is based on content or information, then the alleged invention isn’t really tied to a particular machine.

  118. 23

    “The logic of that last sentence is that there is no initial inquiry into whether the claim recites a fundamental principle – proceed directly to machine-or-transformation test.”

    You’ve ignored that the sentence referred to a fundamental principle **OR** a mental process. Thus, a mental process is a separate sub-class of unpatentable subject matter than a fundamental principle. Therefore, not all non-statutory method claims need be directed to a fundamental process. Thus, going straight to the MOT test is not appropriate in all situations involving method claims.

    Just because a claim fails the MOT test doesn’t mean that it recites a fundamental process as most claims don’t even attempt to recite a fundamental process.

    In Bilski, they wrote “A claimed process is **surely** patent-eligible under § 101 if: …” The use of “surely” indicates that the MOT test is perhaps the gold standard test (i.e., “surely patent-eligible”) but not the only test.

    Regardless, the Supreme Court in Gottchalk v. Benson, 409 U.S. 63, 71 (1972), wrote the following:
    It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a “different state or thing.” We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents.

    This was referred to by Newman and clearly indicates that the MOT test is not the sole test by which to determine subject matter eligibility of a process claim.

  119. 22

    “Besides, Beauregard claims are on life support.”

    Not even close. With regard to how they are defined, vis-a-vis statutory subject matter, Beauregard claims are claims directed to computer readable medium (e.g., a CD-ROM, a memory, a flash drive, a DVD, etc.), which qualify as a product or a machine. When a competent court states that a memory device, for example, is not patentable subject matter, then I’ll buy into your assessment. Perhaps you can share your legal theory as to why a DVD doesn’t qualify as patentable subject matter.

    It takes just one word to overcome almost all 101 rejections as to Beauregard claims.

  120. 21

    Hutz “Again, the question is not whether the claims should be rejected, but should they be rejected under 101.”

    And the answer is a resounding yes. A paradigm is not a process or a composition of matter. You can’t patent a novel “concept,” “idea,” “thought”, “scenario,” or “state of being.” These are abstractions. Newman claims to find these distinctions difficult. But she has a habit of making such distinctions difficult by adopting bogus premises that confuse her arguments.

    “This claims should have been rejected under 103.”

    True of nearly every pile of Bilski crap that we’ve seen.

    Ask yourself why that is.

  121. 20

    SilentPartner “So, yes, I’ve read Bilski. I’m a little worried that I can’t be as certain as to what it says as you are.”

    Why are you worried? After all, some commenter upthread wrote: “Bilski is easily avoided. Most claims getting Bilski’d were written and/or appealed well before Bilski issued. Getting around Bilski is a piece ‘o cake.”

    I think this is true, by the way. Of course, it helps if you are trying to patent an actual invention and not trying to “define a whole new … style of claims.”

    Just because Beauregard got away with it, doesn’t mean y’all will. Besides, Beauregard claims are on life support.

  122. 19

    “I don’t remember utility as being a 102 issue. Isn’t it a 101 or 112 issue?”

    Of course it’s a 101 issue. But the Commenters Who Never Saw A Claim That Wasn’t Patentable Under 101 like to pretend that “anything under the sun made by man” is patentable.

    Let the record show: a handful of wankers believe, without any legal justification whatsoever, that you should be able to patent a non-obvious “paradigm.” Many of us wondered what choir Scott Harris was preaching to.

    To nobody’s surprise, it’s those five or six commenters who hang out here and whine every time a patent is invalidated, and who would pay a week’s salary to suck Judge Newman’s toes for ten minutes.

  123. 18

    Let me throw another ingredient into the sauce. Note that the “definitive” test purportedly enunciated by the Supreme Court, as recited by the Federal Circuit in Bilski, is open-ended: “A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.” That test is definite, but it’s not definitive. It says that all claims that are A or B pass the test. It does NOT say that all claims that are not A or B fail. (It would be a different matter if it said “if and only if”.)

    Note also that the supporting citations in Bilski for this “definitive test” are generally open-ended as well. For instance, the court cites Flook for saying “An argument can be made [that the Supreme] Court has only recognized a process as within the statutory definition when it either was tied to a particular apparatus or operated to change materials to a ‘different state or thing.” Even ignoring the apparent admission that the proposition itself is arguable, it seems to me that the proposition is suggestive, but far, far short of a “definitive” rule.

  124. 17

    “I don’t remember utility as being a 102 issue. Isn’t it a 101 or 112 issue?”

    Mea culpa. 101.

  125. 16

    “Based upon this language it appears that the machine or transformation test is not automatically applied to all method claims. However, try telling that to the USPTO or BPAI.”

    You’re picking and choosing. Let me do the same to counter your point.

    Page 7:
    “The true issue before us then is whether Applicants are seeking to claim a fundamental principle (such as an abstract idea) or a mental process. And the underlying legal question thus presented is what test or set of criteria governs the determination by the Patent and Trademark Office (“PTO”) or courts as to whether a claim to a process is patentable under § 101 or, conversely, is drawn to unpatentable subject matter because it claims only a fundamental principle.”

    The logic of that last sentence is that there is no initial inquiry into whether the claim recites a fundamental principle – proceed directly to machine-or-transformation test.

    Page 10:
    “How does one determine whether a given claim would pre-empt all uses of a fundamental principle?” “The Supreme Court, however, has enunciated a definitive test to determine whether a process claim is tailored narrowly enough to encompass only a particular application of a fundamental principle rather than to pre-empt the principle itself. A claimed process is surely patent-eligible under § 101 if: (1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.”

    This passage reaffirms that the machine-or-transformation test supplants any other inquiry into whether the claims recite a fundamental principle (like an algorithm).

    The opinion is also riddled with statements like this one “the machine-or-transformation test is the applicable test for § 101 analyses of process claims” (page 14). Note there is no modifier of “process claims.” The opinion does not say the m-o-t test applies to process claims that have been determined to recite a fundamental principle. Nor does opinions application of the test to the claims first stop and aski if a fundamental principle is in the claims. (page 27-28)

    So, yes, I’ve read Bilski. I’m a little worried that I can’t be as certain as to what it says as you are.

  126. 15

    “In fact, you might even make a colorable argument that the claims fail to satisfy the admittedly weak utility requirement of 102.”

    I don’t remember utility as being a 102 issue. Isn’t it a 101 or 112 issue?

  127. 14

    Unless Judge Newman’s concurring opinion made you cry, it’s not “poignant.” Perhaps you mean “trenchant” or “pointed.”

  128. 13

    “Bilski is ambiguous in parts but seems to settle on the second approach – that the machine-or-transformation test applies to all process claims and we need not engage in a preliminary analysis of whether the claim recites some fundamental principle. Newman in her concurrence seems to be saying the opposite – that we first examine the process claim for one of the no-nos (law of nature, mental steps, algorithm, etc.) before using the machine-or transformation test. I have heard from other practitioners on both sides. What do you guys think?”

    Pg. 7 of the decision:
    “The true issue before us then is whether Applicants are seeking to claim a fundamental principle (such as an abstract idea) or a mental process.”
    The Fed. Cir. falls down on this — an abstract idea is not necessarily a “fundamental principle.” Regardless, you need to be claiming a fundamental principle or mental process.

    Pg. 10 of the decision:
    “The question before us then is whether Applicants’ claim recites a fundamental principle and, if so, whether it would pre-empt substantially all uses of that fundamental principle if allowed.”

    Two step test: (1) does if recite fundamental principle (2) only if it does recite fundamental principle do you check if it would pre-empt substantially all usses of fundamental principal.

    Also on pg. 10:
    “The Supreme Court, however, has enunciated a definitive test to determine whether a process claim is tailored narrowly enough to encompass only a particular application of a fundamental principle rather than to pre-empt the principle itself.”
    The definitive test being referred to is the machine or transformation test, which is used to determine if a claim pre-empts all uses of a fundamental principle.

    Based upon this language it appears that the machine or transformation test is not automatically applied to all method claims. However, try telling that to the USPTO or BPAI.

  129. 12

    I agree with Lionel that the claims should have been rejected under 103. In fact, you might even make a colorable argument that the claims fail to satisfy the admittedly weak utility requirement of 102.

    I think the 101 question is more difficult and at least in this case, is unnecessary. As a rule courts are supposed to avoid difficult (and less settled) grounds to affirm when a much easier and more clear-cut ground for affirmance applies, especially when that ground had been argued below (before the examiner). The problem is that the Fed. Cir. here and in Bilski appears to be treating 101 as a jurisdictional question, and considering it as a threshold matter. If 101 were clear cut and straightforward to apply, it wouldn’t be as much of a problem.

  130. 11

    I think something interesting is going on in Newman’s concurrence, pages 2-3. I think it’s been simmering in patent discussions as well:

    In determining if any process claim is patentable under 101, is there a first step before applying the machine-or-transofrmation step of determining whether the claim recites a fundamental principle (like an algorithm)? Or do we apply the machine-or-transformation test to all method claims ab initio? Under this second approach, presumably all claims failing the machine-or-transformation step recite a law of nature, abstract idea, or natural phenomenon expressly because they failed the test.

    Bilski is ambiguous in parts but seems to settle on the second approach – that the machine-or-transformation test applies to all process claims and we need not engage in a preliminary analysis of whether the claim recites some fundamental principle. Newman in her concurrence seems to be saying the opposite – that we first examine the process claim for one of the no-nos (law of nature, mental steps, algorithm, etc.) before using the machine-or transformation test. I have heard from other practitioners on both sides. What do you guys think?

  131. 10

    Again, the question is not whether the claims should be rejected, but should they be rejected under 101.

    This claims should have been rejected under 103.

  132. 9

    “I have no doubt that you think the claim is crap”

    It is crap. Obvious crap.

    “(most do as well, but that is besides the point)”

    No, it’s not, actually. And by saying “most” you are misleading readers. The correct phrase is “almost everyone qualified to provide a reasoned opinion.”

  133. 8

    “Gotta love Bilksi. It’s the crap claim killa.”

    Nope —

    A method of inducing aerobic exercise in an unrestrained cat comprising the steps of:
    (a) directing an intense coherent beam of invisible light produced by a hand-held laser apparatus to produce a bright highly-focused pattern of light at the intersection of the beam and an opaque surface, said pattern being of visual interest to a cat; and
    (b) selectively redirecting said beam out of the cat’s immediate reach to induce said cat to run and chase said beam and pattern of light around an exercise area.

    Definitely meets the machine part of the Bilski test and I have no doubt that you think the claim is crap (most do as well, but that is besides the point).

    Bilski is easily avoided. Most claims getting Bilski’d were written and/or appealed well before Bilski issued. Getting around Bilski is a piece ‘o cake. Enjoy the laughs while you can, they won’t last long.

  134. 7

    Great article here: link to law.com

    ——————————
    “The way the patent office and the Federal Circuit is acting lately is that they’re really trying to restrict the scope of patents, and this is just one more in a series,” said Harris, adding that he may appeal to the Supreme Court.

    Patent law observers were also unsurprised.

    “When I saw the claims themselves, I said, ‘A paradigm? Today? Are you kidding?'” said Mark Spolyar, a patent prosecutor with Baker Botts in Palo Alto.

    Harris came up with the idea for a company that would market software made by smaller companies with two of his friends, who are also named as inventors on the patent application: Lewis Ferguson, a securities litigator with Gibson, Dunn & Crutcher in Washington, D.C., and Darryl Costin, a technologist. Harris said they were eating dinner at a Washington, D.C., restaurant when they came up with the plan.

    “The Internet was just starting,” Harris said. “We were talking about all sorts of schemes that we could make wealth and fame off the Internet.”

    Harris said he wanted to break new ground with the 1999 application, which tries to patent a “paradigm” for a software marketing company — a rarely attempted claim.

    “A paradigm is basically a way of doing something,” Harris said. “I was trying to define a whole new set of claims — a new style of claims.”

    Back then, the patent office was more permissive in granting patents, so it wasn’t that shocking.

    “That was filed in an era where people were just throwing all sorts of claims at the patent office,” recalls Spolyar.
    —————————————–

    I appreciate the candor, Mr. Spolyar. But when did this “era” end? Based on the claims we’ve seen that the BPAI is currently squashing under 101, it seems that the era has, at best, barely ended.

    As for Harris’ claim that he “was trying to define a whole new set of claims — a new style of claims,” I wonder how he imagined accomplishing that task. Had he crafted his laughable “scintilla” test before he filed the application?

    I’ll just say it again: the hubris and greed are appalling. Thankfully, Fergusen et al. will be carring the stench of this case around with them for a while.

    And if nothing else they’ve proved beyond any doubt what I’ve been saying for years: in certain fields, patent prosecution is simply a game played by privileged people for their personal gain at the expense of the public interest. It’s utterly transparent that the only “innovation” of Fergusen et al was the money-grubbing realization that one might lure investors with ridiculous patent claims, as long as those claims impressed a naive person with the possibility (let’s be generous and call it a “fallback” position) of trolling multitudes of other companies.

    In case it isn’t perfectly clear, this is strike three for the “little guys.” Enjoy.

  135. 6

    Well, Ferguson isn’t much more illuminating on the “machine or transformation” test under 35 USC 101 than is Bilski. Note that Judge Newman (God bless her soul!) in rejecting the majority’s reasoning resolved that the Ferguson claims should have gone down on the 35 USC 103 ground that the Examiner urged (but was supplanted by the PBAI 35 USC 101 rejection); again Newman (correctly) assesses the merits of the claimed invention, rather than using this “illogical” screen under 35 USC 101 that Bilski burdens us with.

  136. 4

    “Supreme Court’s machine-or-transformation test” I don’t think so, that is the FedCir’s test.

  137. 3

    Yes another reason we don’t need patent reform? The Federal Circuit is adressing the issues…over-turning their prior poor decisions one state Street Bank at a time.

  138. 2

    So now Mooney is just recycling his posts from previous topics? Talk about lazy.

  139. 1

    I think the funniest line in any Federal Circuit opinion ever has just been written, and it wasn’t even written by the Federal Circuit.

    In the process of tanking every one of Scott “Prestigious Law Firm Partner and Alleged Inventor” Harris’ appealed claims, the Federal Circuit wasted some of its precious time addressing applicants’ proposed “alternate test” for determining statutory subject matter. Are you ready? Here is the test:

    “Does the claimed subject
    matter require that the product or process has more than a scintilla of interaction with
    the real world in a specific way?”

    ROTFLMAO!!!! Is Harris teaching law anywhere? If not, there’s always stand-up comedy.

    Imagine if the invention was a “paradigm” for marketing an energy bar with no filler formulated for a pet chinchilla. Does the claim to the energy bar with no filler formulated for a pet chinchilla have more than a scintilla of interaction with the real world? What about the dependent claim: “wherein said energy bar for said chinchilla further comprises vanilla”?

    Gotta love Bilksi. It’s the crap claim killa.

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