BPAI Remanding Cases Involving Computer-Oriented Means-Plus-Function Claims

In Ex party Rodriguez, the BPAI rejected a patent applicant’s means-plus-function (MPF) claims as indefinite for failing to provide any corresponding structures in the specification beyond a general purpose computer. That decision followed the Federal Circuit’s Aristocrat holding that “simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to ‘the corresponding structure, material, or acts’ that perform the function, as required by section 112 paragraph 6.”

A patent examiner recently wrote-in to identify the fact that the BPAI has recently remanded dozens of pending appeals in light of Rodriguez. The remands use the following form language:

Claims ___ of the instant application contain functional language that may be indefinite under 35 U.S.C. § 112, second paragraph. See Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328 (Fed Cir. 2008); Ex parte Rodriquez, 92 USPQ2d 1395 (BPAI 2009). On September 2, 2008, the Deputy Commissioner for Patent Examination Policy, John J. Love, issued a memorandum entitled “Rejections under 35 U.S.C. 112, second paragraph, when examining means (or step) plus function claim limitations under 35 U.S.C. 112, sixth paragraph” . . . Thus, there is a question as to whether claims ___, and the claims which depend upon these claims, meet the requirements of being definite under 35 U.S.C. § 112, second paragraph. . . . Accordingly, it is ORDERED that the application is remanded to the Examiner to determine if claims ___, and the claims which depend upon these claims, meet the requirements of 35 U.S.C. § 112.

See, Ex Parte Chefalas et al, Appeal No. 2009012658, Ex Parte Yamanaka et al, Appeal No. 2009010948, Ex Parte Gassen et al, Appeal No. 2009008147, Ex Parte McCabe, Appeal No. 2009013024, Ex Parte Selep et al, Appeal No. 2009008213, Ex Parte Martin et al, Appeal No. 2009011586, Ex Parte Tosey, Appeal No. 2009007299, Ex Parte Van Doorn, Appeal No. 2009011085, Ex Parte Sohraby et al, Appeal No. 2009012154, Ex Parte Breese et al, Appeal No. 2009008013, Ex Parte Choe et al, Appeal No. 2009010957, Ex Parte Swart et al, Appeal No. 2009011542, Ex Parte Kakinuma et al, Appeal No. 2009007905, Ex Parte Zriny et al, Appeal No. 2010001851, Ex Parte Park, Appeal No. 2010002356, Ex Parte Cherkasova et al, Appeal No. 2010000365, Ex Parte Messick, Appeal No. 2009014361, Ex Parte Levy et al, Appeal No. 2010000512, Ex Parte Gusler et al, Appeal No. 2010000556, Ex Parte Betge-Brezetz et al, Appeal No. 2010001913.

In the Chefalas case, the independent claim in question reads as follows:

48. A data processing system for handling a virus, the data processing system comprising:

receiving means for receiving a notification of a presence of a virus on a client data processing system through a communications link;

severing means for severing communication with the client data processing system through the communications link in response to receiving the notification; and

executing means for executing virus removal processes on the server data processing system.

88 thoughts on “BPAI Remanding Cases Involving Computer-Oriented Means-Plus-Function Claims

  1. 87

    Jeeze … you think they would actually teach their paralegals the difference between the different types of statutory subject matter.

    How would you explain to a paralegal the difference between a means-plus-function claim and a Beauregard claim? Some kind of genus-species thing?

  2. 86

    I just saw a couple of these remands. Amusingly enough, although purporting to deal with means-plus-function language, the identified claims did not include the language. Instead, the BPAI identified method claims and Beauregard claims.

    Jeeze … you think they would actually teach their paralegals the difference between the different types of statutory subject matter.

    Typical USPTO incompetence.

  3. 85

    Ned BTW, your claim is more of a single means claim than mine and might be invalid for that reason.

    Exactly. ;)

  4. 83

    Malcolm, your counter-example seems to suggest that the programming is part of the computer. My example is taking the Aristocrat cases to heart, that the corresponding structure of a means element is the algorithm. If that is the case, the computer is a separate and distinct element, not the same element. In proving infringement of such a means element, one should only have to show the algorithm somehow connected to and accessible by the computer for execution.

    But this also implies that the computer itself is a separate and distinct element.

    Is this right?

    BTW, your claim is more of a single means claim than mine and might be invalid for that reason.

  5. 82

    I knew you’d get it, Ned. But why not simplify it: a computer, wherein said computer comprises a means for achieving a new result.

    Looks a lot like a Beauregard claim, except a Beauregard claim has even less going for it.

  6. 81

    Given the algorithm is considered to be the corresponding structure, is the following claim structure proper:

    1. A special purpose computer comprising:

      a general purpose computer; and

      means for achieving the new result.

  7. 80

    You could say the same thing of a new type of gear box. It is only functional in the context of the machine with which it is designed to operate.

    A gearbox has structure that inherently performs its function. You can describe and claim that structure. You could crank it by hand, and it would still do what it does. Granted, you’d rather put it in a car, but that’s not the issue. It’s a question of practical usefulness (you can always find a useless context for a useful article), not a question of statutory utility.

    A Beauregard claim is nothing more than stored instructions for producing a desired result. It would be interesting to see them construed as means-plus-function, but I suspect a lot of them would get nuked from orbit for want of corresponding structure or written description.

    It might be fun to reverse-infringe Beauregard claims by selecting random media with random data and create computers that read those media and respond to them by carrying out an infringing process. A nice weekend project for all the marking trolls, perhaps?

  8. 79

    “How would the PTO know if an allegedly “new” bar code was actually new? Is there a database of bar codes somewhere?”

    Gawd Mooney, as much as I despise you, I at least thought you were a smart fella, now I’m not so sure…

  9. 78

    “No data you could possibly put on that card is meaningful without the robot architecture, which (unlike genes, for example) is implementation-defined.”

    You could say the same thing of a new type of gear box. It is only functional in the context of the machine with which it is designed to operate. It makes a nice sculpture, though, placed on your coffee table.

    The distinction being made here for software claims seems to be that you can describe the gearbox in definite structural terms, and don’t have to resort to functional terms. But the structure of the code stored on the medium can only be described in functional terms. I predict that Courts will interpret such claims as “means plus function” claims, and limit their scope in that fashion. And the hardware metnioned in the specification may impact the structure and structural equivalents of the code.

    The next big question is, when does a new type of “computer processor” stop being the same as the old type of “computer processdor” to the extent that code that makes the new type of processor carry out the same steps is “after invented technology.”

  10. 77

    “Even broje would tell you that the difference between programmed old blank robot and old blank robot was aesthetic in nature and thus obvious.”

    O heck no. I don’t conflate 101 and 103. that’s MM, and apparently you now. If the code only has image data, then it is just art. You can’t patent it for the same reason you can’t patent the mona lisa. That’s not 103. Let me repeat that since you can’t seem to get it through your head. That’s not 103. It does not matter how obvious or unobvious the image is, you can’t patent it.

    On the other hand, if the robot is not capable of rendering image data, and the inserted medium has image data PLUS some kind of application that adapts the robot to render the image data, then the application part stored on the medium is patentbale subject matter under 101, because it has practical utility. Whether that application is obvious under 103 is a different issue entirely.

  11. 76

    Is the programmed robot patentable? I’d yes. Hardliners would say the robot hasn’t changed. It is not “new.” But, I submit, no one on earth would agree with that.

    A robot that can do that sounds pretty patentable, whether it’s programmed at the time or not.

    The robot with the second card in sounds about as different as my TV when I change the channel. Patentable subject matter every time a new episode airs? I would think not.

    But we’re not talking about the robot. We’re talking about the cards. How would you claim the second card in such a way that it is patentable subject matter, even leaving aside the blatant obviousness over the first card?

    No data you could possibly put on that card is meaningful without the robot architecture, which (unlike genes, for example) is implementation-defined. You could literally put any data at all on the card, and hardwire the robot to respond to that particular data in the way you described. You could only ever claim the card functionally at the point of invention. If a point of invention can even be identified.

  12. 75

    …now a robot that creates a holographic vision of Morley Safer, now that would be of interest to Malcolm.

    Not my business, but Malcolm seems to have a thing for old, dour men.

    Hmmm, maybe that’s why the friction between he and Caveman. Either that or someone took someone’s favorite pair of red pumps.

  13. 74

    Hmm, so I have a blank robot. I insert a card bearing some data and the machine comes to life with a holographic appearance of the most beautiful red head on earth. “Oops, my bad,” I moan. I remove the card and insert a second. There now appears a holographic vision of blond beauty. “Now,” I say, “that is more like what I had in mind.” Is the programmed robot patentable? I’d yes. Hardliners would say the robot hasn’t changed. It is not “new.” But, I submit, no one on earth would agree with that.”

    I would.

  14. 73

    6,

    In case you missed the last paragraph in your haste to post:

    Then again on the other hand, hooray for our side – everything is either obvious in view of my fundamental building blocks of nature (all you need to do is program my existing bunch of electrons, protons and neutrons), or are necessarily products of nature and thus cannot be patentd.

    Making fun of others is good.
    Being fast and making fun of others is even better.

    Being too fast so that you are the one that is to be made fun of: priceless.

  15. 72

    “program my existing bunch of electrons, protons and neutrons)”

    You can program your electrons, protons and neutrons? Egads man, look at you, you’re a genius! You must get this to the patent office today!

  16. 71

    “In that case, let’s go back to my bunch of electrons, protons and neutrons, which are capable of, why just about everything. ”

    They are? Show me some of these magical electrons, protons and neutrons. You should patent them immediately as they are novel, nonobvious, and may even be a composition of matter. Hope you can enable them.

  17. 70

    IANAE, my bud, Ima gonna havta disagree with you on this one.

    No amount of code makes a machine into a different machine.“.

    I know you have an answer as to why Allapat is wrong. I know you have an answer to all those who can lay out the sfotware/hardware analogy stuff. Especially as encoding a spring can be done (you just have to type the code onto a thin metal strip and then coil the strip). I know you have an answer that’s actually an answer (and not a witty comeback). I know that you are purposely ignoring the fact that “was always able to perform” is simply not true, until the machine is actually programmed to perform (egads reminiscent of 6 and his “is capable of” must mean “can actually do” mutterings. In that case, let’s go back to my bunch of electrons, protons and neutrons, which are capable of, why just about everything.

    Then again on the other hand, hooray for our side – everything is either obvious in view of my fundamental building blocks of nature (all you need to do is program my existing bunch of electrons, protons and neutrons), or are necessarily products of nature and thus cannot be patentd.

  18. 69

    “Hmm, so I have a blank robot. I insert a card bearing some data and the machine comes to life with a holographic appearance of the most beautiful red head on earth.”

    You do not have such a blank robot. Liar.

    “It is not “new.” But, I submit, no one on earth would agree with that.”

    Even broje would tell you that the difference between programmed old blank robot and old blank robot was aesthetic in nature and thus obvious. And that’s if we get past novelty.

    Of course, if your robot were here to persuade me of it not being obvious then perhaps we could reach an agreement. Can we roll short hair on the blonde one? If not, obvious. If so, we can definitely work something out. I am going to need you to submit a working model or two, perhaps three. It’s totally required n stuff.

    “How would the PTO know if an allegedly “new” bar code was actually new?”

    Because, because, because… 102 says so unless you can prove otherwise so neyah!

  19. 68

    Hmm, so I have a blank robot. I insert a card bearing some data and the machine comes to life with a holographic appearance of the most beautiful red head on earth. “Oops, my bad,” I moan. I remove the card and insert a second. There now appears a holographic vision of blond beauty. “Now,” I say, “that is more like what I had in mind.”

    Is the programmed robot patentable? I’d yes. Hardliners would say the robot hasn’t changed. It is not “new.” But, I submit, no one on earth would agree with that.

  20. 67

    A new bar code that causes some sort of new thing to happen would be patentable…

    How would the PTO know if an allegedly “new” bar code was actually new? Is there a database of bar codes somewhere?

  21. 66

    “Think of it like a music box.”

    Think of what? The bar-code? I prefer to think about it like what it actually is if you don’t mind. And I’m still loling @ u.

    “However, you can patent a different set of tines, or a new spring that turns the cylinder differently.”

    Sure thing honey, so long as you tell me what the structure is.

    “A computer readable medium that encodes something akin to the new spring or the different set of tines is going to be patentable. ”

    According to you it already is. You happen to be wrong on both counts. A simple volley of POSSIBLE objections to the drawings/rejections rid me of my last Beauregard. I should hope other examiners could be so effective. I’m not 100% sure why they haven’t been.

    “Okay, I’ll concede that point.”

    I will also concede that point.

    “It doesn’t matter that it lacks practical application absent a preexisting machine designed to apply it. ”

    Nobody here argued that it did iirc.

  22. 65

    The two dimensional bar code was patentable, because it is different. A new bar code that causes some sort of new thing to happen would be patentable…

    Go back to your mud hut and come back when you have a clue.

  23. 64

    But you can’t patent the cylinder with one song on it, and then patent the cylinder with another song on it.

    A computer readable medium that encodes something akin to the new spring or the different set of tines is going to be patentable.

    Let me get this straight. You can’t patent the readable medium with novel code on it, but you can patent the readable medium if it encodes … hardware?

    Okay, I’ll concede that point. Encode a new spring on a computer-readable medium, and you can have your patent.

  24. 63

    Think of it like a music box. You have a set of musical tines that are triggered by a rotating cylinder that trigger those tines in a sequence that accomplishes a song. The cylinder records a song. You can take it out and put a new one in and it’s a different song. But you can’t patent the cylinder with one song on it, and then patent the cylinder with another song on it. However, you can patent a different set of tines, or a new spring that turns the cylinder differently.

    A computer readable medium that encodes something akin to the new spring or the different set of tines is going to be patentable. It doesn’t matter that it lacks practical application absent a preexisting machine designed to apply it. That new spring and that new set of tines also lacked utility absent the preexisting machine designed to make use of them.

    /thread

  25. 62

    “Similarly, if your bar code causes a computer reading it to become a different machine that performs a different function, it is 101 patent eligible.”

    Ok, just so we’re clear, some bar codes are patentable in your opinion. I just want to be clear before I lol @ u.

    “Similarly, if your bar code causes a computer reading it to become a different machine that performs a different function, ”

    What happens if it is, to anyone and everyone, the same machine except for its function? Mhmm, that’s what I thought.

    “Those against software patents would define the computer, absent any software, as the completed machine. But that is an immature view that no rational person could hold except in the interest of justifying a foregone conclusion that software should not be patentable.”

    Actually, that is the most mature view.

    And let’s be clear, as one “against” software patents, I would just like to say that I don’t begrudge you “protectionlol” for software, but I don’t think that patents are the appropriate venue. Especially if it comes at the cost of hoodwinking the established order of patents in order to get them in.

  26. 61

    If a cash register can read a barcode and do something “different” besides reading a price,

    Who cares if it’s doing something different besides reading a price? We haven’t gotten to the issue of novelty yet.

    A computer readable medium for achieving a desired result when input into an unspecified Turing machine is either 101-eligible or not. If it’s good enough for a Windows CD or an iPhone app, it’s good enough for a bar code. Or even handwriting, which I understand computers can make some attempt at reading.

  27. 60

    a barcode does not result in a cash register doing anything different except reading a different price.

    As 6 points out, that result (or non-result) depends on how stoopit your cash register is and, equally importantly, the degree and type of information encoded by the barcode. If a cash register can read a barcode and do something “different” besides reading a price, can I then claim the barcode in Beauregard format (i.e., functionally?)? You know “A bunch of lines encoding instructions that a cash register can read, wherein blah blah function blah provide an input blah blah database blah blah determine blah blah output.”

  28. 59

    But data that makes a machine function in a way that has practical utility, like software for causing a computerized device to play a song recorded in other data, is patent eligible under 101.

    As a method, maybe. Subject to Bilski. Unless you invented the speaker, your computer having been told to output music isn’t patentable.

    The machine is still the same machine as before, and is no more patentable under 101 than a hammer packaged with instructions for using it as a musical instrument. Same for the “computer-readable medium”.

    Similarly, if your bar code causes a computer reading it to become a different machine that performs a different function, it is 101 patent eligible. But if it is just a price, or product ID whereby the price is determined and displayed, then no.

    You misspelled “103” there.

    No amount of code makes a machine into a different machine. It’s the same machine, performing a different one of the functions it was always able to perform, by using a method that may or may not be patentable. There may be an app for that, but the app runs on a prior art device.

  29. 58

    “What does that have to do with the obvious fact that there is no physical modification to the cell phone?”

    /facepalm

    There is a physical modification in the memory.

    There is also a physical modification to a book that has its contents changed.

    Stop pretending the information doesn’t have a physical form you magical thinker.

    Now, even though something has a physical form, that does not make it patent eligible under 101.

    It has to have practical utility and not just artistic value.

    A song stored in a computer readable medium is still not patent eligible under 101 because it’s just art.

    But data that makes a machine function in a way that has practical utility, like software for causing a computerized device to play a song recorded in other data, is patent eligible under 101.

    Similarly, if your bar code causes a computer reading it to become a different machine that performs a different function, it is 101 patent eligible. But if it is just a price, or product ID whereby the price is determined and displayed, then no.

    The real test for whether the stored data is patent eligible under 101 lies in whether that stored data is there to be processed for reproduction, or whether it is there to be implemented for processing other data. In other words, is it an essential part of the machine for enabling it to perform a useful function, or is it data to be processed by the already completed machine?

    Those against software patents would define the computer, absent any software, as the completed machine. But that is an immature view that no rational person could hold except in the interest of justifying a foregone conclusion that software should not be patentable.

  30. 57

    Instructions executing on a processor in, for example in a cell phone controller might make the phone accomplish a complex signal processing function in a fraction of the time it took prior controllers.

    Okay, so you have a useful method. What does that have to do with the obvious fact that there is no physical modification to the cell phone?

  31. 56

    “Instructions executing on a processor in, for example in a cell phone controller ”

    Instructions executing on a modern cash register from a barcode might make the cash register accomplish a complex signal processing function in a fraction of the time it took prior cash registers. You simply need to have the correct cash registers appropriately programmed with appropriate functions (and the appropriate bar codes) for this situation to play out.

    “That is hardly a barcode on a piece of paper. But we cant fault you for trying to wrap your simple mind around the nuance.”

    No, your run of the mill Beauregard is a glorified barcode. It doesn’t deserve your praise.

  32. 55

    a barcode does not result in a cash register doing anything different except reading a different price.

    Instructions executing on a processor in, for example in a cell phone controller might make the phone accomplish a complex signal processing function in a fraction of the time it took prior controllers.

    That is hardly a barcode on a piece of paper. But we cant fault you for trying to wrap your simple mind around the nuance.

  33. 53

    “Separately, isn’t it funny how people will go to such great lengths and pay so much money for “stor[ed] different programmed code on the exact same set of transistors (or at least the ability to have such differently programmed code)?”

    Not really. I’d pay an attendant to fill up my gas tank and check my oil, I’m not sure how the two are any different.

    “At the risk of sounding ol NAL’ly, have you ever heard of the term “proper level of abstraction”?”

    You can’t “properly” abstract out all the structure and still be distinguishing in terms of structure.

    “Must strictly mechanical devices be distinguished down to the electron-proton-neutron arangements? (granted some might – but I’m talking by and larger here).”

    If the only thing different about your pedal is that its electron-proton-neutron arrangements are different then, um, yes?

    “In how many of those bicycle patents does anybody “even knows what physical modification was performed” at the electron-proton-neutron level?. ”

    None?, because the differences have structural descriptions given on a macro scale.

    “Dammit gumby, that information has to be known to get a patent. Not only knownsa, it hasta be in the application. exactly.”

    Why would it need to be known when we have perfectly good ways to structurally distinguish most pedals on the macro scale? You’re conflating products which are usually easily structurally distinguished on the macro scale with ones that are not structurally distinguishable on the macro scale. I note that in some arts even things that aren’t structurally distinguishable on the macro scale are still required to be structurally distinguished on the micro scale for patentability.

    “Yous gonna have to take that up with yous boss-master Kappos ”

    HAHAHAHAHAHAHAHAHAHAHAHA.

    “Why is it your fruitcake ideas alwasy seem to have the entire world going in the opposite direction?”

    They hardly do, K man simply hasn’t bothered to think things through yet. He just says the party line to make his constituency happy. Plus, he’s probably in up to his neck in having made the same mistake as the rest of you on some of his apps he’s taken care of in the past. Probably the same reason most of you still hold on to your nonsensical beliefs.

  34. 52

    C’mout c’mout wherever you are NAL

    Yes, because in the lack of a credible response, one can simply flood the stage with pages and pages of half-baked sophistry.

    Separately, isn’t it funny how people will go to such great lengths and pay so much money for “stor[ed] different programmed code on the exact same set of transistors (or at least the ability to have such differently programmed code)?

    Isn’t it funny how this has no relevance to the fact that a Beauregard claim — uniquely among composition claims — attempts to claim a composition without describing any novel or non-obvious structural feature of the composition? Rader wisely put a lance through the heart of product-by-process claims because they failed to claim compositions properly. Guess what’s next?

  35. 51

    “That especially applies to ‘one sentence’ caselawl that is likely being taken out of context to mean something that it doesn’t.”

    You should know. You are the undisputed champion of taking “one sentence” case law out of context.

  36. 50

    Hey lookie here what I just dusted off – the barcode cookbook.

    (C’mout c’mout wherever you are NAL, Malcolm’s beating up kids on the playground again).

  37. 49

    6,

    admit that your distinguishing feature…

    First you are off chasing relativism, now you bounce to the other end of the spectrum. Well no duh, that things are distinguished structurally. At the risk of sounding ol NAL’ly, have you ever heard of the term “proper level of abstraction”?

    Must strictly mechanical devices be distinguished down to the electron-proton-neutron arangements? (granted some might – but I’m talking by and larger here). In how many of those bicycle patents does anybody “even knows what physical modification was performed” at the electron-proton-neutron level?. Dammit gumby, that information has to be known to get a patent. Not only knownsa, it hasta be in the application. exactly.

    likely being taken out of context to mean something that it doesn’t.
    Yous gonna have to take that up with yous boss-master Kappos – he made it so that the same thing was said in his Bilski brief. Why is it your fruitcake ideas alwasy seem to have the entire world going in the opposite direction?

    Let’s face it, your ability to read is questionable at best. You want to lecture about taking things in context? Go right ahead, I could use a hoot.

  38. 48

    How about “if it is physical modification, then what isn’t?”

    Yup.

    Is a piece of paper with a bar code printed on it “structurally different” from an otherwise identical piece of paper with a different bar code printed on it? Cuz you know the different bar codes will make the cash register do different things when it “reads” the code. Is a novel “bar code on a piece of paper” (a computer-readable medium) patentable? Does it matter if I describe the bar code descriptively, or can I describe it functionally, like in a Beauregard claim? Why or why not?

  39. 47

    IANAE,

    How about “the aether?”
    How about transient electromagnetic waves?

    how about transient electromagnetic waves traveling through “the aether?”

    Separately, isn’t it funny how people will go to such great lengths and pay so much money for “stor[ed] different programmed code on the exact same set of transistors (or at least the ability to have such differently programmed code)? Hmmm, perhaps I can try that the next time I purchase a massive IT software upgrade – bounce the check and then claim that I don’t owe anything, because I still have the “exact same set of transistors.”

    Thanks IANAE, you are the man with the answers!

  40. 46

    “because quite frankly How is not as important as To what effect?”

    Idk whoever told you that sht. Products and apparatii are distinguished structurally. End o da story. If you need some caselawl I can get it for you. Or you can read some Landis on your own.

    “To piggy back on the IANAE statement, the “How” is like how do neutrons intereact with protons interact with electrons – interesting stuff in its own right, but rather pointless on the large macro [pun intended] scale.”

    So then you admit that your distinguishing feature is rather pointless to discuss on the large macro scale? Hmmm, well at least I didn’t have to make the point myself.

    “The “may no longer be relied upon” statement applies to all law”

    Some lawl little more vulnerable than other lawl. That especially applies to “one sentence” caselawl that is likely being taken out of context to mean something that it doesn’t.

    “The main difference between the two lies on the ease with which you can retrofit”

    Except “reprogramming” isn’t really “retrofitting”. Just a small snag there.

    I guess that you consider yourself “retrofitting” your computer when you type comments on PO. Or when you’re “reprogramming” your computer in a notepad file to make a simple adding proggy. Mhmmm, sure.

    “The other argument is that when you make the modification, it’s not really a physical modification”

    The stronger argument is that nobody even knows what physical modification was performed. Not the inventorlol, the judge, or the public.

    “In other words, by a bizarre and industry-specific legal fiction calculated to achieve the desired legal result.”

    Now you could be on to something here. But I doubt this particular legal fiction will withstand scrutiny by, for instance, the supremes, or any other clear thinking judge.

  41. 45

    That seems stronger, but raises two hard questions “if it’s not physical modification, then what is it?”

    How about “if it is physical modification, then what isn’t?”

    If the term “physical modification” is stretched far enough to cover storing different programmed code on the exact same set of transistors, does the term really mean anything at all?

  42. 44

    I’m pretty sure that “difficult to retrofit” has some bearings on legal fictions.

    Perhaps hidden in 103, behind “Patentability shall not be negatived by the manner in which the invention was made.

  43. 43

    Right. The main difference between the two lies on the ease with which you can retrofit. That creates a slippery slope,

    LOL.

  44. 42

    Right. The main difference between the two lies on the ease with which you can retrofit. That creates a slippery slope, since now it turns on how easy the programming task really is.

    The other argument is that when you make the modification, it’s not really a physical modification, so it doesn’t count. That seems stronger, but raises two hard questions “if it’s not physical modification, then what is it?” and “can a non-physical modification of a machine nevertheless cause a change to a physical result”

  45. 41

    and the pitching machine is just a fancy hammer.

    You’d have a better argument for obviousness if you could identify a human baseball pitcher nicknamed “The Hammer”.

    Even so, your Rube Goldberg SUV-pitching machine is a good illustration of how machines that perform physical tasks are structurally task-specific and difficult to retrofit for unrelated tasks. Computers that perform computing tasks are garden-variety computers with easily-interchangeable instructions to perform a particular task without physically reconfiguring the computer itself, the instructions not being physical except in the trivial sense that they have to be encoded in a medium.

  46. 40

    “When you can instruct the pitching machine down at the ballpark to start building SUVs, get back to me.”

    It’s easy. Modify it to include a motor that lets you aim, and move around a target, use really heavy balls. Then aim at a hunk of steel, shoot and reload lots of times until you have carved the steel into the shape of an SUV. Add a second hopper with paintballs so you can paint it the desired color when done.

    Sure it may be wildly impractical, but the point is that any machine (not just a computer) can be modified to achieve some realizable goal.

    By the way, my modification is obvious because we all know you can shape metal by hitting it with a hammer, and the pitching machine is just a fancy hammer.

  47. 39

    The question is HOW has it been structurally changed?

    Presumably by storing abstract instructions in some physical medium designed to change states every time it receives something to store (i.e. a “memory”). The same way your brain changes when you perform a mental step.

    In other words, by a bizarre and industry-specific legal fiction calculated to achieve the desired legal result.

  48. 38

    6,

    I don’t think the question isHow?“, because quite frankly How is not as important as To what effect?

    The How will also likely bring out of the woodwork the usual software is the same as hardware types. Unless you have a computer that can run without power (or without software), this is a path we really don’t need to go down yet again, do we?

    To piggy back on the IANAE statement, the “How” is like how do neutrons intereact with protons interact with electrons – interesting stuff in its own right, but rather pointless on the large macro [pun intended] scale.

    The “may no longer be relied upon” statement applies to all law. Sorta like tax code – if you aint changing it, you’re stagnating.

  49. 37

    “as truly the machine has been changed with the programming.”

    The question is HOW has it been structurally changed? Nobody of ordinary skill would know the answer to this question as these concepts are presented in your run of the mill patent application. Allapat simply takes a few cases that have nothing to do with the statement upon which you rely and acts as if that statement were already well established before Allapat was even decided. It isn’t. And the prior cases cited were a far cry from the nonsense you’ll see in your day to day. You best use caution, lest you get another one of these “Thus this court announces that our prior decisions may no longer be relied upon.” See Bilski in the State Street debacle.

  50. 35

    I notice how carefully you choose your words Mr. Mooney. But while “capable of…” may indeed lack the structure per se, a machine programmed to… will most assuredly not lack the structure, as truly the machine has been changed with the programming. See In re Allapat, 33 F.3d 1526, (“We have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software”).

    I think that you vastly overstate your case based on your highly selective chosen term.

    Mr. IANAE, your “it just needs” just happens to be the heart of the change. To be purposely glib, that’s like saying any bunch of neutrons, protons and electrons can do anything any other bunch of neutrons, protons and electrons can do, but merely needs the right instructions… While true on its face, the statement is hardly meaningful.

  51. 33

    Seems like if a first computer can do something that a second one can’t it’s different in some way.

    Pretty much any computer can do anything any other computer can do. It just needs the right instructions and enough memory/speed to handle the job in a convenient amount of time. Even a long enough strip of tape will do, in some cases.

    Structuralists like to say that this is meaningless because you could always change the second to be like the first. But you can say exactly the same thing for any two machines.

    When you can instruct the pitching machine down at the ballpark to start building SUVs, get back to me.

  52. 32

    Maybe it should have been a Design Patent on how to fold something.
    Imagine trying to reverse engineer making a Cake. I can’t even fathom how to mix the batter.
    Batter UP!

  53. 31

    What exactly does “meaningful way” mean? Seems like if a first computer can do something that a second one can’t it’s different in some way. Structuralists like to say that this is meaningless because you could always change the second to be like the first. But you can say exactly the same thing for any two machines.

  54. 30

    An algorithm is not a structure, nor does the recitating of a “computer capable of executing [specific algorithm]” limit the computer’s structure in any meaningful way.

    In short, this gift to the software patent applicant community continues to make a joke out of our patent laws.

  55. 29

    Show me a specific section in the MPEP you have issues with

    hey chuckles, I’m not the one with the “issue”.

  56. 28

    “Look at the namby pamby language the Office puts out regarding how the MPEP cannot be held by the appliant as something the examiner must follow (try appealing or petitioning – see where that gets ya).”

    It depends on the specific section of the MPEP. Most of the MPEP was written to provide examiners authority to do certain things, but failing to do these things are “neither apealable or petitionable”.

    Show me a specific section in the MPEP you have issues with as an example.

  57. 27

    The examiners are bound by this memo

    Yea? So what? You think a memo will get you anything when the Office won’t even enforce the MPEP on the examiners? Look at the namby pamby language the Office puts out regarding how the MPEP cannot be held by the appliant as something the examiner must follow (try appealing or petitioning – see where that gets ya). Like I observed previously, the Office does what it wants to do (and did so with much more flair before the weenie Kappos came to town).

  58. 26

    “Who cares, Love is long gone, and it’s not like PTO memos ever had effect of law, so it’s not like we have to abide by it anymore.”

    The examiners are bound by this memo, when applicable, because the memo represents management’s official position on the matter.

    If you disagree, then you can appeal.

  59. 25

    Paul, according to Newman, see. p. 36 of her opinion, the Bilski application has yet to be examined for patentability. However, her opinion seems to suggest that specification does indeed disclose the complex mathematics that are claimed in the steps of the Bilski algorithm. But, since Bilski does not actually claim a computer implementation, whether anything beyond the mathematics is necessary is unknown.

  60. 24

    There is nothing new about 35 USC 112(6). Its requirements are well known, even in the UK and elsewhere in Europe. For UK practitioners, it is discussed in “Fundamentals of Patent Drafting”. The CAFC decisions for computer-related cases is some years old now.

    If anything, what is amazing is that it has taken the USPTO so long to raise objections of this type, which are straightforward and decisive. Does Bilski pass this test – has anyone checked? If it does not, and the application could have been rejected so easily, we are reminded of the advert in wartime Britain: “Is your journey really necessary?”

  61. 23

    From my understanding, the algorithm is the corresponding structure. It must described, not just enabled.

    In terms of Bilski, a programmed machine is a particular machine. Thus, given Ariad, the Aristocrat decisions should be broadly applicable regardless of claim format. An algorithm must be described corresponding to the claimed function or step.

  62. 22

    unless the Examiner is particularly uncharitable

    Yeah, but the ability to be uncharitable is being challenged with BRI being constrained to “reasonableness” within view of the specification and invention” (of all the nerve), and not anything the examiner can dream up, coupled with Kappos trying to change the reject is quality culture.

    If ya didn’t know better, it looks like someone is trying to take the “no” out of innovation.

    If that happens we be left with invation. This may not be a bad thing because to get to the next step, we would need to add some “t” and “a” to get to invatation (slang for invitation) – as in inventors are actually invited to share their ideas. Such sharing may actually lead to promotion of the arts.

    Go figure.

    so it’s not like we have to abide by it anymore

    or any less. The Office will do what it damm well pleases thank you (that is until slapped down by the courts, and that slap only momentarily stops us – momentatily, as in the next count we need to get).

  63. 21

    “John Love seems to have conceded that “algorithm” is a form of, or a constituent of “structure”.”

    Who cares, Love is long gone, and it’s not like PTO memos ever had effect of law, so it’s not like we have to abide by it anymore. It’s just the opinion of someone who no longer works at the PTO.

  64. 20

    This memo? /media/docs/2010/04/section_112_6th_09_02_2008.pdf

    “For a computer-implemented means-plus-function claim limitation that invokes 35 U.S.C. 112, sixth paragraph, the corresponding structure is required to be more than simply a general purpose computer or microprocessor.6 The corresponding structure for a computer-implemented function must include the algorithm as well as the general purpose computer or microprocessor.7 The written description of the specification must at least disclose the algorithm that transforms the general purpose microprocessor to a special purpose computer programmed to perform the disclosed algorithm that performs the claimed function. 8 Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or in any other manner that provides sufficient structure.9 See MPEP 2181 for examples where the courts held that the corresponding structure is adequate for the computer-implemented means-plus-function claim limitations.10 A rejection under 35 U.S.C. 112, second paragraph, is appropriate if the written description of the specification discloses no corresponding algorithm.11 For example, merely referencing to a general purpose computer with appropriate programming without providing any detailed explanation of the appropriate programming12, or simply reciting software without providing some detail about the means to accomplish the function13, would not be an adequate disclosure of the corresponding structure to satisfy the requirements of 35 U.S.C. 112, second paragraph, even when one of ordinary skill in the art is capable of writing the software to convert a general purpose computer to a special purpose computer to perform the claimed function.”

  65. 19

    Well Alun, I’m disappointed to see you give EE’s a bad name. Maybe you could pay attention in class in your next life.

  66. 18

    John Love doesn’t make reality ya jackas. He can’t “concede” something that is not possible. He can however have misstated patent lawl.

  67. 17

    John Love seems to have conceded that “algorithm” is a form of, or a constituent of “structure”. His memo says “The corresponding structure for a computer-implemented function must include the algorithm as well as the general purpose computer or microprocessor.” I’m sure this will annoy a few members of the Strict Structuralist Party.

  68. 16

    I’ve always put in boilerplate language and drawings for a general purpose computer with these sort of claims, at least when I’m the one that’s written the app, although these days I mostly deal with foreign origin amendment work, and it’s rare that this has been done. IMO, this should overcome the problem, unless the Examiner is particularly uncharitable.

    As for people in computer art “growing up”, what MM ignores in his fractured reasoning is that a GP computer is as much a standard component as a cog or lever would be in the mechanical arts, so that in theory even all my boilerplate should not really be necessary.

    BTW, I’m an EE, not a comp sci person.

  69. 15

    This is not new. Examiners have always rejected 112 6th attempts under 112 2nd if the record is not exactly clear.

    The Board has always been kicking back cases for any reason possible so this isn’t new either.

  70. 14

    “A person of ordinary skill could easily come up with at least one algorithm for implementing the means plus function elements. That’s enough for enablement. The problem here is that invoking 112, 6p requires more specificity. ”

    But is it enough for WD? O BURNNNNNNNNNNNNNNNNNNNNNN!!!!!!!!!!!!!!!!

    Good question. Ever so slowly approaching the day when software applicants are forced to grow up. No more hand-waving and dust-kicking. Eventually they’ll be required to deposit information in a standardized, computer-searchable format.

    First, let’s get rid of Beauregard claims.

  71. 13

    Please stop feeding the “troll” myth.

    Tell it to Gene Quinn who very appropriately recognized some patent trolls of the lowest order:

    link to ipwatchdog.com

    Of course, Gene wasn’t the first. The judge who handed out the Rule 11 sanctions was first. Well done, and here’s to many more such decisions.

  72. 12

    “But is it enough for WD?”

    Probably not. Either a 112, 1st WD or 112, 2nd rejection would be appropriate here. PTO policy seems to be to apply the 112, 2nd.

  73. 11

    “The BPAI is remanding plenty of other cases now on other grounds, too, such as the Examiner’s failure to note the consideration of a reply brief”

    In Ex Parte Denissen, the Reply brief was filed on Feb 16, 2010. It looks like the Board took fairly immediate notice that the case was not ready for appeal. This remand is probably not a case of the Board scouring through old cases looking for excuses to purge the backlog, but is instead the proper, reasonably timely correction of an examiner error. Not sure what else the Board should have done.

  74. 10

    BPAI Order:

    We have decided to stall any decision in this case pending a decision from the Supreme Court in In re Bilski and orders from our leader on what to do about it. In the meanwhile, Mr. or Ms. Examiner, why don’t you pretend to reconsider the claims in light of this soon to be obsolete internal directive and get back to us after we all hear from the Supremes.

    Sit tight, Applicant.

    Peace Out,
    Da Board

  75. 9

    “A person of ordinary skill could easily come up with at least one algorithm for implementing the means plus function elements. That’s enough for enablement. The problem here is that invoking 112, 6p requires more specificity. ”

    But is it enough for WD? O BURNNNNNNNNNNNNNNNNNNNNNN!!!!!!!!!!!!!!!!

  76. 8

    The BPAI is remanding plenty of other cases now on other grounds, too, such as the Examiner’s failure to note the consideration of a reply brief (yesterday’s Ex Parte Dennisen). And several of these remands under Aristocrat affect only one claim, or one element of a claim, at that.

    It seems as if this is a new tactic for the BPAI, to comb through pending appeals and find any avenue through which it can reduce its backlog via administrative techniques.

    Paul: you’re right — most reexaminations (i.e., where there have not been claim amendments) are not subject to 112 rejections, just 102/103. But there are some backdoors examiners can use to kill an appeal of a reexamination through what is essentially a written description rejection.

  77. 6

    “If the problem is lack of any specific algorithm”

    A person of ordinary skill could easily come up with at least one algorithm for implementing the means plus function elements. That’s enough for enablement. The problem here is that invoking 112, 6p requires more specificity.

  78. 5

    If the problem is lack of any specific algorithm, flow chart or software support in the specification to enable a mean-function clause, I don’t understand why such applications don’t get a 112 enablement rejection instead of or in addition to an “indefinite” rejection?

    Is this new Board premptory legal position going to apply to reexaminations? That could be significant for quite a few troll business method patents in reexamination, but I don’t think the Board can properly do such remands in reexaminations?

  79. 4

    JAOI, I think that’s what IANAE was alluding to.

    What is this “Rodriquez” case identified in the remand order? Is it of any relation to the precedential “Rodriguez” case?

  80. 3

    Anybody hear the shaggy-dog dirtiest-of-all jokes that ends with:

    Talent scout:
    What do you call your act?

    The Father answers:
    The “Aristocrats.”

  81. 1

    48. A data processing system for handling a virus, the data processing system comprising:

    receiving means for receiving a notification of a presence of a virus on a client data processing system through a communications link;

    severing means for severing communication with the client data processing system through the communications link in response to receiving the notification; and

    executing means for executing virus removal processes on the server data processing system.

    This is a joke, right?

Comments are closed.