Correcting Patents at the District Court

CBT v. Return Path and Cisco (Fed. Cir. 2011)

CBT’s Patent No 6,587,550 covers a system of charging an “advertising fee in return for allowing” e-mail from an authorized sender to pass through an ISP.  Return Path’s Bonded Sender program (developed by Cisco) is very similar, except that the program has no advertising fee but rather charges an annual license fee.

On summary judgment, the N.D. Georgia District Court held the asserted claim 13 invalid as indefinite based upon what the court characterized as a “drafting error” made during prosecution.  The claim reads as follows:

13. An apparatus for determining whether a sending party sending an electronic mail communication directed to an intended receiving party is an authorized sending party, the apparatus comprising:

a computer in communication with a network, the computer being programmed to detect analyze the electronic mail communication sent by the sending party to determine whether or not the sending party is an authorized sending party or an unauthorized sending party, and

wherein authorized sending parties are parties for whom an agreement to pay an advertising fee in return for allowing an electronic mail communication sent by the sending party to be forwarded over the network to an electronic mail address associated with the intended receiving party has been made.

The claim indicates that the computer is programmed to “detect analyze the electronic mail” and the district court could not determine the meaning of “detect analyze” and therefore held the claim indefinite under 35 U.S.C. § 112.

On appeal, the Federal Circuit has reversed — holding that there is an obvious and correctable drafting error in the claim and that the district court has the power and obligation to correct that error in the claim construction process.

Correcting Drafting Errors in Court: The common law allows district courts to correct obvious errors in patent claims. However, that correction can only apply where “the correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.” Novo Industries L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003). Here, the court goes on to hold that this correction process must be done as part of the claim construction and must take into account how the correction impacts the scope of the claim.

As a claim construction issue, the Federal Circuit reviewed the District Court’s analysis de novo and held that the error was not problematic. In particular, because “detect” and “analyze” are such synonyms in this context that the particular correction made did not make much of a difference, but that the best correction is to add an “and” between the two limiting words.

Certificates of Correction: The patentee could have corrected this by filing a request for a certificate of correction with the USPTO. The chart below shows the number of certificates of correction issued by the USPTO each year since 1995. I include an estimate for the rest of 2011.

328 thoughts on “Correcting Patents at the District Court

  1. 301

    Are you serious?

    You show why it was quoted (law of nature) and then supply an additional reason and expect that that too was why?

    Step 2: Do not overread what you can impute from a case cite in a decision to fish out something else you want to inject.

  2. 300

    “i.e. described with sufficient specificity to satisfy the enablement requirement.”

    How about described with sufficient specificity to satisfy the WD req?

    Indeed, those who claim genus’s in the bio arena are beset on all sides by the WD req. Why do we give them a genus of structures of indeterminate girth whilst telling the bio people “show us some examples tardarse”?

    Why are we being told by the USPTO director to clampen down on people doing the same in other arts in our federal register?

    I’ll tell you why, because functional claiming has gotten out of hand. And it did so because of the courts giving people the wrong impression that by using functional language you were thus exempt from making sure everyone knows what structure(s) you’re talking about and/or invented. They forgot to mention that everyone better dam well know what structure you’re talking about.

  3. 299

    Overreader, Eibel Process was cited in Flook as an example of a patentable use of a law of nature in a new machine, that was new over the prior art because the webb was raised to a significant degree over the prior art so that the webb produced a result different in kind rather than degree. 

    This of course is a matter of obviousness, which does describe what is necessary for "printed matter" to provide a patentable distinction over the prior art.  It must be functionally related to the underlying article in a new way, different in kind.  Eibel Process.

  4. 298

    “only in insignificant details”

    Your own words…

    The “what is written” is hardly an insignificant detail, as it is precisly this that changes the machine input component and it is precisely this defines why the machine input component is different.

    That’s another touchdown.

    Try playing some Defense (and that would include actually addressing the exception to the printed matter doctrine).

    As for Eibel, I am not sure how you want to draw a printed matter exception case to a physical machinery case, but I do like this quote:
    General descriptive terms in a patent are not objectionable where it would have been difficult to make them more specific and where the description is sufficient to enable those skilled in the art to apply the invention

  5. 297

    IBP, “Your statement that “When considering the patentablity of a programmed computer, one can almost ignore the computer entirely and simply ask whether the claimed “process” achieves a new, physical result.” is off the mark.

    First, the unprogrammed computer must be sufficiently well-described to satisfy 112.

    Second, it is not the “physical result” of any “process” that imparts patentability to an article, it is the STRUCTURE.”

    IBP, In re Bernhart is not good law. It held the programmed computer was a patentable machine. That case was decided pre-Benson.

    Since then, we have the recent en banc cases of Alappat and State Street Bank that considered the patentability of programmed computers. Both cases required that the program computer produce a “useful, concrete and tangible result.” What is clear from both cases is that the structure of the computer is (largely) irrelevant.

    Even though both these cases are no longer good law after the Bilski case, see e.g., footnote 19 of the Federal Circuit case, they are still good for the proposition that a programmed computer does not constitute patentable subject matter unless the computer produces a patentable result, e.g., a result within the MOT or some other test that the Federal Circuit has yet to devise where a programmed computer failing the MOT would still be patentable.

    This is why I said that when considering programmed computers, where there is nothing special about the computer, that one can treat the claimed subject matter as a process, because that is how the courts treat the claims.

  6. 295

    Mooney:

    “the apparati are structurally indistinguishable (at least based on the disclosure and claims)”

    Exactly. Rejected under 112, without further consideration.

  7. 294

    Leopold channelling IANAE:

    “the functionality of the medium is defined by the processor, which isn’t defined in the claim”

    Precisely correct, which is why any claim so drafted should be rejected for failure to satisfy the 101 “specific utility” requirement.

    Like I’ve said before, it’s all about precisely how the claim is drafted.

  8. 293

    Ned–

    Let’s limit initial discussion to S-M eligibility under 101.

    Any outcome of this type of discussion depends entirely upon precisely how the claim in question is drafted.

    Let’s get some things straight here:

    First, an article claim is all about structure.

    Second, that structure must be described in a manner sufficient to satisfy the requirements of 112.

    Third, description of structure can be either direct, or indirect (by necessary implication) as in, for instance, MPF limitations.

    If a claim recites structural limitations, and if the description of those structural limitations satisfies 112, the “machine, manufacture, or composition of matter” requirement of 101 has been met.

    Further analysis would determine if other 101 requirements are met, and also if 102 and 103 requirements are met.

    Since the direct and indirect descriptions of structure that are acceptable under 112 encompass basically all ways of describing a structural limitation, the other requirements of 112 should be where the real action occurs–i.e. described with sufficient specificity to satisfy the enablement requirement.

    If a claim to a programmed machine is construed as a combination claim with an MPF limitation, the machine that is programmed must be described with sufficient specificity to satisfy enablement, for instance–if not, the claim fails 112.

    Even if 112 is satisfied and 101 is satisfied, 102 and 103 hurdles would remain.

    And since there is a finite range of discrete functions able to be performed by a programmed general-purpose computer (as it is commonly understood), many of the claimed combinations of functions would fail 102–and even if they somehow survived 102, it is all but impossible to understand how they could satisfy 103.

    Your statement that “When considering the patentablity of a programmed computer, one can almost ignore the computer entirely and simply ask whether the claimed “process” achieves a new, physical result.” is off the mark.

    First, the unprogrammed computer must be sufficiently well-described to satisfy 112.

    Second, it is not the “physical result” of any “process” that imparts patentability to an article, it is the STRUCTURE. Talking about the process steps by using, for example, means-for clauses, is an acceptable way under 112 of talking about the underlying STRUCTURE. It is a description of the process steps themselves–NOT THEIR PHYSICAL RESULTS–that is the description-by-proxy of the underlying structure.

    The hardware is NOT unchanged–the relevant inquiry is whether the changes that do exist, as described in the claim, satisfy the criteria of 112, 101, 102, and 103.

  9. 292

    Regarding "difference in kind,"  I invite you to read the Eibel Process case where that issue decided the case.  

    Difference in kind is required for non obviousness.  Otherwise, the claim to item2 is obvious over item2 if they are different only in insignificant details.  From a printed matter point of view, the functional relationship of the one item to the media has to be different than other items, else the subject matter is obvious. 

    Now we do have the problem of whether to classify the issue as one of 103 or 101 or 112, but that is beyond the scope of this discussion unless you want to divert to that as a discussion.

  10. 291

    The “dunce” comes to mind as well, Pile On. I suspect you spent many an hour in the corner with your hat on displaying to all that could see you your consummate academic prowess.

  11. 290

    Late to the game? Lulz, fool, I’ve been in this game for two or three years now. Me and this other tard had the same conversation you and Ned just had years ago. Still, neither you or he like to talk about what the actual functionality is.

    Eventually you’ll get down and tell us that the functionality of the CRM is supposedly to make the machine do the steps listed. But of course that’s outrageous as that is only the function of the instructions on the CRM, not the CRM itself. As can be easily demonstrated by simply programming the computer yourself to perform the steps without using the claimed CRM at all.

  12. 289

    Hey mindnumbed robot, pissing into the wind and finding yourself later stiking of excrement and wondering why. Learn to read. Why did I cite the Diehr dissent? For its law?, or for its interpretation of Flook — both were written by Stevens. Steven contended in his dissent that Flook held that if the point of novelty in a claim was a mathematical algorithm, the claim was not patentable. The holding of the Diehr court majority, which is what I actually cited, was that regardless that the only thing new was the mathematical algorithm, the Diehr claim recited a new process when the claimed subject matter was considered as a whole. One could not, they said, dissect and then ignore.

    I can only believe that your blind animus had so unhinged your perception of reality that you no longer have the ability to understand the English language. I suggest you wet your finger first and determine which way the wind blows before you let fly.

  13. 288

    Remember bucko the PMD is not something that entitles people to protection, it is something which can be applied to take it away

    6, you are late to the game and clueless as to what is going on. The discussion is on the exception to the PMD which makes up the entire PMD.

    You cannot and do not have the PMD without the exception.

    Try to keep up.

  14. 287

    not different in kind

    Why do you think “in kind” is a required difference?

    Would the printing on the outside of a measuring cup of any Shakespearean sonnet have achieved the functional relationship that permitted patenting in that case?

    The difference does not have to be “in kind.” The difference has to be a difference and the difference has to be functionally related. The “what is written” is the driver of the difference, not the “how the written material is read”

    You are overreading again.

  15. 285

    “Handwaving. Bootstrapping galore!”

    Indeed Ned. And it’s funny that they don’t even realize that they’re doing it.

  16. 284

    “The positon is clearly evident. As has been mentioned, the relationship really is there, otherwise discs would not be sold to begin with. ”

    Ok, we can accept that it may be there. Now, put it in words tard breath. WHAT IS THE FUNCTIONAL RELATIONSHIP? PUT IT IN WORDS.

    “There exists a defacto relationship because the explicit end functioning IS achieved ”

    Not the functioning of the CRM though… only the functioning of the information on the CRM. Which is what we’ve been telling you.

    “The fact that the mechanism does work is more than enough.”

    What mechanism? The CRM? The fact that the CRM “works” somehow makes how you’ve chosen to distinguish it magically ok? Because I’m lost as to how it working does that.

  17. 283

    “Quite simply, your reasoning keeps stopping at the point of the exception. You keep on presenting a position that does not reflect the full understanding of the doctrine. You keep stopping just before the critical portion of the debate and you want to draw a conclusion before you actually discuss that critical portion.”

    Indeed it does. I’m sure Ned stops his reasoning at that particular point because that is the particular point beyond which no further reasoning is required. There is no reason to discuss whether or not an exception to a printed matter exception exists in regards to 103 if we’re not even talking about 103. Particularly, Ned would appear to be referring to a rejection under 101 or 102. Under which statutes I note the modern printed matter doctrine has no place. As the good judges noted, there was the old school doctrine where PMD was applied to 101 and the new school where it was applied to 103. Critically, it appears Ned would make a rejection under, inter alia, 102, where the PMD doesn’t even show up.

    “and you keep on arguing from a pointof the doctrine that is incomplete.”

    Lulz, I think he’s arguing without the doctrine because he isn’t trying to apply the doctrine in the first place. Remember bucko the PMD is not something that entitles people to protection, it is something which can be applied to take it away. In other words, it does not give life to claims, they either already have it or not. Ned simply notes that they have no life to begin with, thus, trying to apply the PMD is not needed to kill them.

  18. 282

    Diehr reemphasized Flook’s holding and clarified in that case that an old process could be modified by a new algorithm to produce a new result. Flook was unclear on this point. See, Steven’s dissent in Diehr.

    WOW – Ned – pay attention to who is saying what! You need to recognize that dissents are not law.

  19. 281

    PT, I will agree and I believe I have agreed with you that what Benson “held” has been debated over the years. I continues to be debated. The holding was anything but clear.

    We can say the same thing about Bilski. While there is a lot of discussion in that case, the actually holding of the five Justices in the majority is opaque. The dissent ridicules it for this, and justly so.

    All nine justices agreed that the Bilski claims were abstract, but not a single one explained why.

    Back to Benson, all we know is that now, the Supreme Court cites it for the proposition that programmed computer that only produces numbers from numbers is unpatentable. That has been my understanding of the case for a long time as well, although in the beginning, I too was distracted by the “wholly preempt” language.

    Flook stands for the proposition that “wholly preempt” of Benson was not the point of that case. Flook held that a claim, “considered as a whole,” that was not directed to a statutory process could not be made patentable by limiting it to particular uses.

    Diehr reemphasized Flook’s holding and clarified in that case that an old process could be modified by a new algorithm to produce a new result. Flook was unclear on this point. See, Steven’s dissent in Diehr.

    So, regardless of how the cases have been misinterpreted in the past, we now have the Bilksi majority clarifying their interpretation. See, Bilski 14.

    Circling back to Benson, I don’t know exactly why you say I am wrong about Benson. I disagree that Benson ever required “wholly” preempt. I think it simply applied the MOT to the result of the calculation, although they didn’t say so clearly.

  20. 279

    When a court (any court) makes a speech and the contents of that speech have nothing to do with the interpretation of the law, nothing to do with the rationale that supports the holding of the court applying the interpretation of the law to the facts of the instant case, and the contents of said speech are couched in weasel escape words and phrases…

    Then when a lower court applies that which can be applied by the higher court’s ruling (even the highest court), and is not told that such is an express violation of the law…

    Then when the higher court (even the the highest court) later changes their mind…

    …I guess that “being wrong” is not something that happens in a vacuum of legal jurisprudence.

    It might take a lawyer to recognize what a court (even a Court) can and cannot do.

    I AM NOT SAYING THAT NED IS WRONG HERE.

    I am saying that Ned does not understand how the system works, the parts of a decision by a court (even the highest court) that have legal effect, and what type of legal effect different parts may have (or even that different parts of a court’s decision may have different legal effect).

  21. 277

    You can take you inane preaching to another corner.  Words do count.  Meanings do count.  "Misquote" and "disagree" are not the same thing.
     
    Overreader, or ping, or whoever, is a fricken liar.  I do not mince words.
     
     
     
     
     

  22. 276

    Anon, "defacto relationship", "is achieved."
     
    Between what and what?  You never state!  That is the problem.
     
    To define over every other cart, the item must modify the cart.  The program has no relationship to the media that is not different in kind than than every other program.
     
    You keep skipping this point as if it were not important.
     
    I have met your kind often in court who seek to prove a fact, a critical fact, of infringement by handwaving, burying the critical fact between two others that are easily proved.  You have done just that here. 

     
    Handwaving.  Bootstrapping galore!
     
     

  23. 275

    If he and I were in the same room, he would be in for it, big time.

    And please, leave the internet tough guy crrp oout of it.

    If you do not want to be told that you misquote, then stop misquoting. The misquote is not the words themselves, but how you used those words. Quie simply, you DID misquote. All the huffing and puffing you are doing afterwards just indicates that you are not mature enough to realize your error. Go ahead – keep holding your breath.

    If you want to be treated like an adult, then act like one.

  24. 274

    Ned,

    If that is how you feel, then I am not surprised that you go to such great lengths to avoid recognizing the simple fact that sometimes you are wrong. The phrase “Truth Hurts” never fit better.

    You attach far far too much emotion to being right or wrong. This quite literally blinds you and keeps you from admitting when you are wrong.

    If you cannot (or more likely as indicated here) will not admit when you are wrong, there is no possibility of having a gentlemanly debate. Do you really think that concedina point in a debate is fraught with as much emotion as you demand to be invested?

    The only ignorance here is yours – and the fact that you refuse to change your ignorance only means that you refuse to learn and you are not mature enough to have any type of discussion on the merits. In essence, you are saying that you cannot be wrong and No One better try to tell you that you are wrong or try to correct any errors in your position. The plain fact is that you are wrong on a number of your stated positions. A number of your stated positions DO NOT conform with fact or truth. As Overreaders Anonymous put it – you have a choice when faced with this realization. You can admit your ignorance (and learn), or you cna continue (and knowing that you present non-facts or non-truths, be deceitful). You DO NOT GET to ignore the facts or truth, merely because such are inconvenient for you.

    To take such an over-the-top offense is plainly childish. This is a completely unreasonable and childish stand to take. You getting so mad like this is exactly like a child throwing a temper tantrum. One should never be offended by the truth, evn if the truth is presented in a less than optimal manner.

    Your understanding of what it means to be “rude” (and your acceptance of truly rude behavior) is unacceptable.

    Either continue in your childish rants AND show a little defense, or buck up and address the facts and truths given, or be prepared to have the score continue to be run up.

  25. 273

    Ned,

    The argument has been presented. I am afraid that you will have to retract your “None. Nada. Zilch… You must state a position.” The positon is clearly evident. As has been mentioned, the relationship really is there, otherwise discs would not be sold to begin with. This is simply reality, and cannot be “cleverly” argued away or just ignored (and in an analagous sense, one only has to point up to the scoreboard on this position). The only way the ball is back in my court is if you are punting and letting me score yet another touchdown.

    There exists a defacto relationship because the explicit end functioning IS achieved (on the same end type of computer – there was a bit of dust-kicking by trying to insert end computers that can take any encoding and do something different – but that was a disenguous red herring best left ignored) with an encoding that meets the claims. The fact that the mechanism does work is more than enough. The fact that differently encoded discs actually do create different machines that DO different things is more than enough.

    You have punted. I have handed the ball off to my running back and now it is up to you to tackle him. Ignoring this already has resulted in the score being run up. If you want to be in the game, I suggest that you change your tactics.

  26. 272

    Who do you thing PT is?

    That said, given the long struggle between the CCPA and Federal Circuit and the Supreme Court on this issue, it seems that at least some on these courts felt the Supreme Court was wrong.

    Yet the attitude that the lower courts can prevail over the Supreme Court is surprising. The person who wrote the post cannot be a lawyer.

  27. 271

    Actually, anon, I have yet to see anyone here, including yourself, actually lay out an argument as to why the program has relationship to the media that is at all related to the claimed functions.

    None.

    Nada.

    Zilch.

    Now you went to a lot of trouble to writ all those words and still couldn’t spell out what it the relationship is, well…

    Just let this be understood, we, Malcolm and I and 6 and Leo, and perhaps many others, all contend there is no functional relationship that anything to do with the claim limitations regarding the program.

    The ball is in your court to explain to us why we are wrong. You cannot just stand there and say we are wrong. You must state a position.

  28. 270

    One more point, anon, and I think I know who you really are, that PT post said that I was “corrected.” This lingo itself identifies the poster to me. He has constantly bashed me and, from my observation, cannot engage in non rude discussions with anyone. He constantly is rude.

    Also his post says I have been “corrected” about “misquoting” the law. If you look at the thread slice, it was I who quoted the Bilski case verbatim, showing exactly which judges said what regarding the MOT. I did not misquote anything at all. Overreader’s post to the contrary is a complete lie to the extent it suggests that I misquoted anything. If he has a different opinion about what the quoted passage means, he did not say that. He said I misquoted, which is a whole different kettle of fish. He called me a liar.

    If he and I were in the same room, he would be in for it, big time. I can hardly understand how such a cretin has survived in this life being so rude to people on a constant basis.

  29. 269

    that one cannot re-patent the cart depending on the item.

    Ned, analogies can be fine items for discussions as long as the limitations of the analogies are understood.

    In particular (and this is a point that many have commented upon), the cart analogy fails for B-claims because of the written matter doctrine. (By written matter doctrine, I include the applicable exception).

    I hope we can agree on arguing the actual issue before us and not get caught up in arguing a faulty analogy.

    Continuing, by description, you seem to reference the mere “words.” This is on point to the writen matter doctrine, but you (again) leave out the exception.

    In essense, your position resolves to eliminating the exception and then saying the doctrine is as you want it to be. You are not dealing with what the exception is. You are note dealing with the actual full doctrine. You limit your understanding to the cart analogy.

    As to “the description,” it is very clear that what those words are have a very real, very functional relationship to the media itself. Please note the subtle change in Malcolm’s recent post in that he uses the word “encodes” rather than merely “written.” This subtle switch is an important point because “encode” means something different than merely “written.” “Encode” implies the as-claimed necessary “condition antecedent” (as Overreaders Anonymous puts it). If you do not include this in your argument, then we are not discussing the same B-claim items and we will only talk past one another.

    The “what the words say” portion simply cannot be ignored, because it is that portion that conveys the function claimed (and I am being a bit loose in my phrasing here, fully recognizing that the claim is to a product rather than a process – I am able to not conflate “function” as a process with “functionally related” as a doctrine). It would be as if the measuring cup case had Shakepeare quotes instead of the actual indications that it did have. You do not get to ignore what the words are in your analysis.

    Quite simply, your reasoning keeps stopping at the point of the exception. You keep on presenting a position that does not reflect the full understanding of the doctrine. You keep stopping just before the critical portion of the debate and you want to draw a conclusion before you actually discuss that critical portion.

    Further, you simply make a blanket, conclusory remark of “I think that all that is necessary is that the program the executable from the media.” and I do not see on what basis you are making this a necessary requirement for the full printed matter doctrine to apply.

    I can see why people get more than a bit gruff with you. You have not taken the many many times suggested understanding of what the full doctrine actually says and you keep on arguing from a pointof the doctrine that is incomplete.

    Take some time to understand and accept the full doctrine and then reconfigure [pun intended] your argument in that proper light.

  30. 268

    “Wrong?”

    You know what that means? I will give you a definition:

    “wrong (rông, rng)
    adj.
    1. Not in conformity with fact or truth;”

    When you accuse somebody of being wrong, you accuse somebody of being, factually wrong, a liar. It is offensive, and it is intended to offend. People who use such language in discourse and who do not know that such language offends are are ignorant boobs.

    If you disagree with somebody else’s opinion, you do not call them wrong, you state that you disagree with their opinion and state why. You do not call them wrong, because that is intended to smear the person to whom you are speaking, and to inflame emotions, and to be rude.

  31. 267

    Anon, let’s first talk about the cart. It carries items. I hope we can agree on this much: that one cannot re-patent the cart depending on the item. Simply adding that the cart can be unloaded into a destination in an automatic fashion changes nothing about the relationship between the item and the cart.

    If the item, however, changes the cart in some nonobvious way, the improved card might be patentable. But that would imply that the item has functionality with respect to the cart.

    A description of the item does not add that functionality. A description of the item and how it works with other machines does not add that functionality. What would add that functionality would be something like discussed in In re Lowry. If the claim required the items to be distributed about the cart in a fashion to improve its loadbearing capacity, the distribution of the items would be functional with respect to the cart and patentable.

    From the above what do we learn? That a program on a medium has no relationship to the medium except for being carried by the medium. That it may have some functionality with respect to a computer, for example, is irrelevant to whether it has any different functionality with respect to the media. A description of how that program may function in a computer, is simply a description of the program. It does not change the relationship of the program to the media.

    In order to be patentable, the program functionality qua program must be have functional relationship to the computer, such that the media becomes more than just a bearer of the program to the computer, but rather instead becomes an integral part of the computer. In order to provide this “program” functionality, I think that all that is necessary is that the program the executable from the media.

    Obviously, this presents a problem in that 99% of all programs are not executed from the media, so asking people with these limitations into the claims is a nonstarter.

  32. 266

    Ned,

    What kind of gentleman’s debate are you trying to have if you ignore the fact that sometimes you are wrong?

    Your tendency to mirror Malcolm (chi chi then, now boob) does not speak well of either “gentleman” nor “debate,” but more of a childish emotional outburst that is typically characterized by stubbornness, crying, screaming, defiance, angry ranting and a resistance to attempts at pacification: a temper tantrum.

    Says it all” indeed – but not quite, I think, what you think it says.

  33. 265

    Ned,

    Before I jump to a conclusion and read something that you may not have intended, are you saying that the claim functionality must be the same “functionally related” that allows the exception to the printed matter doctrine to apply?

    Please clarify.

  34. 264

    The program is functionally related to the computer.

    For the recorded media to be justified as a component of the computer, the claim must recite or at least provide that functionality.  Most B-claims fall short.

    Sent from iPhone

  35. 262

    Ned,

    That’s take a step away from your many fans and discuss B-claims in a calm and civilized manner.

    We can start with your proposition:

    Beauregard claims, as a general matter, do not require that the program recorded on the medium be executed or be executable from the medium.

    It appears that you think the “executed or be executable from the medium” is an important point.

    Can you elaborate?

    Are you thinking that “functionally related” must mean “executable”?

  36. 261

    In truth, the Court was not competent to speak to limiting protection away from these programs, rather than in “extending” to cover them. As there was no existing basis in law to make the limitation

    LOL. Yet somehow the case made it to the Supreme Court. And somehow there’s legions of folks even within the software industry who think that these patents are a sxck jxke.

    Software patent fundies. They never cease to make me laugh.

  37. 260

    Ned,

    In case you misunderstood, the message of my post was that the Supreme Court does not have the authority to legislate law, and the verbage laid down in Benson by Justice Douglas could be and was ignored by subsequent lower courts for the very reason that such verbiage has no legal effect. The lower courts did not “expand” protection, because there was no need to “expand.”

    That is why there is no such Supreme Court effect of “expanding” patent coverage, because no such effect was necessary. And since no such effect was necessary, Congress did not need to act on what you somehow see as a request from the Supreme Court to do so. Congress did not need to act as you seem they think to.

    Quite simply, not everything out of the Supreme Court is the Law of the Land.

    Secondarily, you have already been corrected on the MOT issue. See the exchange between you and Overreaders Anonymous at:
    Aug 13, 2011 at 09:38 AM
    Aug 13, 2011 at 11:19 AM
    Aug 13, 2011 at 02:37 PM
    Aug 13, 2011 at 02:56 PM

    I do not understand your obsession with misquoting law, and then ignoring those that correct you.

  38. 259

    Ned,

    Make your choice and maybe when you answer a simple question I will answer one in return.

    Are you being deceitful or ignorant?

  39. 258

    LET ME TAKE A STAB AT THAT.
    When you have the Art that applies to an application, and then someone decides to steal by designing around it. And with that Fraud in essence becomes the Art that trashes your Application? So then the fake Design around becomes “Prior Art,” that really was never the Art to begin with?

  40. 256

    Ned,

    Every accusation you make today applies to you and your pal Malcolm.

    A total lack of facts and actual law is all anyone gets from you two.

    Malcolm is the King of the ad hominem and you are the King of the misrepresentation. There is definitely a fundamental dishonesty going on here and A New Light nails exactly who that dishonesty is coming from.

    Quite the pair. Neither of you will actually discuss the actual issues, or even plainly state what the issue is with the actual law.

    How many times have I read now you being asked to explain the exception to the printed matter doctrine and you HAVE NEVER DONE SO.

    You say it is time to put others on “ignore”, yet you have been doing this consistently to anyone that challenges your bizarre viewpoints.

    Do everyone a favor, talk about the issues, and only the issues, and do not falsify the legal holdings when you do talk about the issues.

    Malcolm already has the habit of saying others do the dirty tricks that he does – you do not need to join him in that habit.

  41. 255

    Malcolm, who are these folks? When they get cornered they stop discussing the issues, and resort instead to — well how would you describe it? But it generally consists of ad hominem attacks or name calling.

    This pattern tells me there is something fundamentally dishonest about them. Recall, that ad hominem attacks are essential to propagandists.

    Regardless, I wish there were some way we could simply avoid them, but that has become more difficult all the time due their shape shifting monikers. Ping is gone but I think ping is still here, but using different monikers.

    I don’t know about you, but as soon as I identify one of them by their knowledge of posts months and years ago, it is time to call them on their deception and put them on “ignore.”

  42. 253

    A PT, but Benson has become the law of the land because Congress never acted and the Supreme Court continues to follow the MOT it announced. The programmed machine must do something physical (clue) rather than just calculate a number that might be useful, but not used.

    Benson left the decision to change the law to Congress. Congress never acted to expand protection to computer programs that only produced data. It reacted in horror to State Street Bank when it was announced, and, if one listens in on the debates in Congress, they are not too happy about trolls which typically employ “software” patents.

    But you are also quite right that the Federal Circuit thought it was the Supreme Court and did it damndest to expand protection of Software while ignoring, as best it could, the Supreme Court.

    They did so just again in the last few months in Prometheus in a 101 case that, while not a software case, had similar issues.

  43. 252

    we are discussing here why “the exception” is illogical, both factually and legally.

    Hey Malcolm, look up at the scoreboard.

    You have shown no offense and no defense. Only table pounding.

    What “facts” make the exception illogical?

    What “laws” make the exception illogical?

    You will have to speak up over the noise of the table pounding.

  44. 251

    TA: The typical Beauregard claim is not merely reading something from a computer readable media

    The typical Beauregard claim is a composition claim. There is no “reading” required to infringe a Beauregard claim. There is no “programming” required to infringe a Beauregard claim. All you need to do is sell a computer-readable disc encoding the recited instructions.

    To stop there is to not include the exception to the printed matter doctrine

    Dear Clxxlxss Rxtxrd – we are discussing here why “the exception” is illogical, both factually and legally. If you can’t process this basic information, then you are far too stxpxt to be having this conversation in the first place.

  45. 250

    Benson was ignored by the lower courts – and rightly so – because Douglas overstepped the function of the Supreme Court in deciding what the law as written should be (in essence, re-writing the law) as opposed to determining or interpreting what the law as written was.

    The flaws in that decision are most vividly captured at the end of the decision:

    It may be that the patent laws should be extended to cover these programs, a policy matter to which we are not competent to speak.

    In truth, the Court was not competent to speak to limiting protection away from these programs, rather than in “extending” to cover them. As there was no existing basis in law to make the limitation, any Supreme Court direction to that effect does not have the force of law and that is why the lower courts could rule as they did following Benson. If the lower courts could not do so, then subsequent Supreme Court cases would merely need to point this out and reiterate Benson directly.

    The flaw continues:

    The President’s Commission on the Patent System rejected the proposal that these programs be patentable:
    ‘Uncertainty now exists as to whether the statute permits a valid patent to be granted on programs. Direct attempts to patent programs have been rejected on the ground of nonstatutory subject matter. Indirect attempts to obtain patents and avoid the rejection, by drafting claims as a process, or a machine or components thereof programmed in a given manner, rather than as a program itself, have confused the issue further, and should not be permitted.’

    The President’s Commisssion did not have the authority to make law and its recommendation did not make law. The Court misstepped by giving that commission’s results the de facto power of setting the law.

    The flaw continues:

    ‘The Patent Office now cannot examine applications for programs because of a lack of a classification technique and the requisite search files. Even if these were available, reliable searches would not be feasible or economic because of the tremendous volume of prior art being generated. Without this search, the patenting of programs would be tantamount to mere registration, and the presumption of validity would be all but nonexistent.’

    ‘It is noted that the creation of programs has undergone substantial and satisfactory growth in the absence of patent protection, and that copyright protection for programs is presently available.’

    If these programs are to be patentable, considerable problems are raised which only committees of Congress can manage, for broad powers of investigation are needed, including hearings which canvass the wide variety of views which those operating in this field entertain. The technological problems tendered in the many briefs before us indicate to us that considered action by the Congress is needed.

    Douglas was basing a right on a commission’s view of an administrative agency’s convenience factor – the tail wagging the dog.

  46. 249

    Ned,

    You are either spouting non-sequiturs and purposefully being misleading or you are in error of your understanding of what a Beauregard claim is and even what the issue surrounding such a claim is.

    Your choice: deceitful or ignorant.

  47. 248

    Overreaders Anonymous, while there is nothing literally wrong with your post, it nevertheless misrepresents what I said.

    What I said is that “I have never seen a B-claim that required that the program be executed or even be executable from the medium. That article/machine cooperation is not claimed.”

    Now I hope that you least agree to this short, two sentence proposition, as a statement of fact.

    Beauregard claims, as a general matter, do not require that the program recorded on the medium be executed or be executable from the medium.

    “From the medium.”

  48. 247

    Nice that you don’t expect a reply, but everything you post above in 1) proves my point.

    Thanks for playing. Now run along.

  49. 246

    Please read the court’s own words.

    1) The MOT
    Kennedy, Alito, Thomas, Roberts, Scalia
    “This Court’s precedents establish that the machine-ortransformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under §101. The machine-or transformation test is not the sole test for deciding whether an invention is a patent-eligible “process.”

    Breyer, Scalia
    “In sum, it is my view that, in reemphasizing that the “machine-or-transformation” test is not necessarily the sole test of patentability, the Court intends neither to deemphasize the test’s usefulness nor to suggest that many patentable processes lie beyond its reach.

    Stevens, Ginsburg, Breyer, Sotomayor
    “…[A]lthough the machine-or-transformation test is reliable in most cases, it is not the exclusive test.

    2) Why are Bilski’s claims abstract?
    Regarding how the majority decided that the Bilski claims were abstract, I await your views. However consider the words of four Supreme Court justices who observed,

    “The Court, in sum, never provides a satisfying account of what constitutes an unpatentable abstract idea. Indeed, the Court does not even explain if it is using the machine-or-transformation criteria. The Court essentially asserts its conclusion that petitioners’ application claims an abstract idea. This mode of analysis (or lack thereof) may have led to the correct outcome in this case, but it
    also means that the Court’s musings on this issue stand for very little. ”

    ) Do the Bilski claims pass he MOT?

    Obviously, in my view, the Bilski claims did not pass the MOT. They are not directed to a particular machine. They do not transform an article from one state to another, or to a new thing. The claimed subject matter produces a result that is determined by a novel mathematical algorithm, a number that represents balanced risk. This is the very kind of claim condemned in Benson and in Flook. It does not appear to pass the MOT for this reason.

    I don’t expect a reply to this post from you because because I believe your only purpose in making the above post was to demonstrate your animosity to me personally.

  50. 244

    The Supreme Court in turn basically affirmed that that test is all but exclusive.

    That about says it all: You have no clue as to what you are talking about.

    There are at least these two solid takeaways from Bilski:
    1) Bilski tried to claim an abstract idea and was rejected.
    2) MOT is not “all but exclusive.”

    Step One Ned – learn when you are way over the limit of a reasonable interpretation of what you read.

  51. 243

    Your choice of words is excessively poor.

    Bootstrapping or booting refers to a group of metaphors that share a common meaning: a self-sustaining process that proceeds without external help.

    If the claim states such and such as a limitation, then such and such is not beyond the scope of the claim. Condition antecedent is still condition required.

    Once again Ned, you have let your preconceived notions run away from the actual situation.

    You are misunderstanding, misstating and overreading.

    What you want is just not an appropriate match for what it is.

  52. 242

    A new light, I see that Stevens got a bit off track in his dissent in Diehr. He intepreted Flook to hold that if the only thing new in a claim was an algorithm, that that claim was unpatentable. His dissent is an odd interpretation of Flook, because his majority opinion in Flook went out its way to show that applications of laws of nature to produce new results was patentable, citing the Eibel Process case. That understanding of Flook was the basis of the majority holding in Diehr.

    That said, Steven’s dissent in Diehr described a war between the Supreme Court and the CCPA/Federal Circuit concerning 101. The CCPA had, before Benson, simply declared that programmed computers were new machines* and, then after Benson, maintained that view despite it being flagrantly inconsistent with Benson. The CCPA limited Benson to “wholly preempt” ignoring Benson’s discussion of the MOT. Even while Flook struck down that crabbed interpretation of Benson, it remains good law to some even today.

    This consistent disregard of the Supreme Court by the CCPA and the Federal Circuit eventually led to Alappat and State Street Bank, two decisions now overturned to the extent they relied on “useful, concrete, tangible result.” Those two cases opened the floodgates to pure software and business method patents that have nearly brought down the patent system.

    Shocked by what happened (including the troll phenomena spawned by Alappat and State Street) and the reaction of the American people and Congress, the Feds did a 180 and finally recognized the MOT test announced in Benson. The Supreme Court in turn basically affirmed that that test is all but exclusive.

    So, I find it somewhat remarkable that there are folks here that still believe that In re Bernhart is good law. It is not, and has not been good law since Benson. But that they still believe is itself remarkable indeed.

    * In re Bernhart, 57 C. C. P. A. (Pat.) 737, 417 F.2d 1395 (1969), the court reaffirmed Prater, and indicated that all that remained of the mental-steps doctrine was a prohibition on the granting of a patent that would confer a monopoly on all uses of a scientific principle or mathematical equation. Id., at 743, 417 F.2d, at 1399. The court also announced that a computer programmed with a new and unobvious program was physically different from the same computer without that program; the programmed computer was a new machine or at least a new improvement over the unprogrammed computer. Id., at 744, 417 F.2d, at 1400. Therefore, patent protection could be obtained for new computer programs if the patent claims were drafted in apparatus form.”

  53. 241

    “To stop there is to miss the point of the claim and to confuse the “reading” and “writing” by only partially anthropomorphizing what the machine and article of manufactures are and do. To stop there is to not include the exception to the printed matter doctrine – while persistently attempted, those attempts are attempts at arguing something that is not what matters.”

    I sense a lot of bootstrapping going on here. The claim is to a computer readable medium bearing a program of a particular description. I have never seen a B-claim that required that the program be executed or even be executable from the medium. That article/machine cooperation is not claimed. So, please, stop talking as if this requirement was actually there, it is not.

    Arguing that this or that functionality distinguishes the claim is beyond the scope if the claim does not require such functionality. How many times have I encountered such arguments (in cases I have reviewed) where the applicant has made arguments beyond the scope of the claim? So often I cannot count. Most examiners quickly catch on, and make the observation that the applicant’s argument is beyond the scope of the claim.

    Nothing in B-claims requires execution of any program by any machine. That is beyond the scope of the claim, so quit it with your bootstrapping arguments.

  54. 240

    It’s close enough.

    merely reading a disk is not the same a programming a computer.

    Nobody is claiming otherwise.

    Actually, by saying “It’s close enough” you are claiming otherwise.

    The typical Beauregard claim is not merely reading something from a computer readable media – there is an attendant aspect that must also be included.

    To stop there is to miss the point of the claim and to confuse the “reading” and “writing” by only partially anthropomorphizing what the machine and article of manufactures are and do. To stop there is to not include the exception to the printed matter doctrine – while persistently attempted, those attempts are attempts at arguing something that is not what matters.

  55. 239

    I was over on another thread, and I read some things American Cowboy wrote. And then read some others remarks. I agree with a lot that was stated. And I might add being 2011 and a world of difference form the 70’s,
    the only way this Country free of Patents would work is if it were gated. And we only bought and sold to ourselves. So why don’t we consider that we must come back to the center a little. In order for this Country to remain great is for fairness. It is fair that we put people to work. It is fair that we manufacture our ideas in this Country. It is fair that if you file in another country you must pay 10x the amount you would have paid to file in this Country. Now that is not being deceptive or biased. That is helping curtail Deception. And what is good for the USPTO is good for America. And PATENTS are good for America.
    Now some may choose to File in another country while paying the high fees. But if they do it will be either a Red Flag or a choice they have made.

  56. 238

    A little Poetry to soothe the savage in your beat.
    I will sign this one because it has a melody that all should listen to.

    You should listen to the Snowflake, not the flakes.

    There was a little Snowflake,,
    And it came falling down.
    But as it did it grabbed another,
    As both Flakes hit the ground.

    And when They hit the ground,
    They fell on Flakes three and four.
    Now Snowflake number one,
    was small no more for sure.

    Along comes a little girl,
    She picked the four flakes up.
    She blew them up into the sky.
    from her hands that formed a Cup.

    And now it was still snowing,
    flakes attaching making bigger,
    the Story that you all were told,
    She’s Dumb ,She can not figure.

    But did you ever stop to listen,
    to the Girl that cupped the Flakes?
    She knows each side like everyone,
    They made a huge Mistake.

    I Mistake that “She” has paid for,
    And now so much time has passed,
    In time the Flakes they figure,
    She’s never gonna last.

    But just like Benji Button,
    She really does exist.
    It’s been going on her whole life,
    But no one gave a —-.

    This didn’t just start yesterday,
    or the day before.
    It’s been going on her whole life.
    But others chose her score.

    Sort of like the Snob,
    that tells you , you can’t do it.
    And then just like he’s done before,
    He’s wrong, and He just blew it.

    But because he is a Snob,
    Or his life has now passed.
    Again I get no recourse,
    But I do get the last Laugh!

  57. 237

    Do you know what the Scoreboard Move is?

    Have you ever played organized football?

    Welcome to the Chi Phi Patent Forum. Quarters anyone?

  58. 236

    It is late and I am finally home. I have had plenty of time to read and reflect on the many posts on this thread.

    I hesitate to write.

    I hesitate to write because it may seem like I am trying to convert those that will not be converted.

    That is not why I write. That is not why I overcome my hesitancy.

    I write because those that will not be converted have provided the very items that should be read to show why the positions they espouse are indeed bad law. And I feel strongly that bad law should not be espoused in a way that confuses bad law with good law. And by good law, I do not mean a value-judgment good law. I mean an active this-is-real law.

    Those that will not be converted have slipped again into quoting law and twisting its meaning to be the opposite of its actual real meaning. I am compelled to make note of this error and to more than chastise those who commit this error, to point out that the error is evident from the case law itself.

    The trilogy of cases, from Benson to Flook to Diehr does not tell the tale of a straight line, with only minor corrections or refinements as some who are quite vocal here would have you believe. It is important for everyone to take the time to read the cases (and if possible, read the lower court cases as well).

    But just as important as it is to read the actual cases, it is important to place the authors of the opinions in the context of time and philosophy.

    It has been pointed out for the benefit of newer readers that this is a story of “value” and that is indeed true. There has been a great tug-of-war when it comes to “value” and Section 101 has played the albeit infrequent, but quite visceral centerstage attraction, and the star player of that attraction is best personified in Justice Stevens.

    Justice Stevens is an extremely attentive and extremely diligant man. Unfortunately, Justice Stevens is also an extremely passionate, biased and activist man. Decisions before him were less about what the law meant and more about what he thought the law should mean.

    It is absolutely critical to note on which side of the decision Justice Stevens writes from, as this most exemplifies the seesaw battle over “values” as played out on the center stage of the Nation’s Highest Court.

    And Stevens has proven his consistency of philosophy, even to the bitter end of his career, in the culmination as a losing side in Bilski. Throughout the pitched battle, one can tell whether the Stevens Views were ascendant or not by where Stevens opinion lay.

    Interwoven in the drama is the subplot of the CAFC and its predecessor, each of which courts aimed to be the definitive word on patent law, a role (that of being the definitive arbiter on any law) that is jealously guarded by the Supreme Court.

    In any event, Stevens has always written, even in defeat, as if his view is what the law should be.

    But that is not how law works. The law as written by the dissent (and in Bilski, make no mistake, Stevens’ opinion is a dissent in every way except for name), is, when in contrast to the majority opinion, and these cases are all studies in sharp contrast, great examples of bad law.

    It is not as if the majority views and the dissenting views are mere shades apart.

    They are not.

    They are as starkly contrasting as night and day.

    It is thus painful to see those who post on the topic try to co-opt the majority views and elevate the dissenting views to recast what the current state of the law actually is.

    It is painful and it is extremely dishonest.

    An attorney is under an ethical obligation to acknowledge controlling law. I believe that even on blogs, that ethical duty exists, and in fact, since there is no judge to chastise and control the attorney, the ethical need to be diligant, to be honest, is even more pronounced.

    I think it is fully legitimate to disagree with the law and to argue for its change. But it is imperative that the meaning of the law not be bent so badly as to make dissenting views ascendant. Such is a travesty of justice because even though we discuss law and its merit without being in an actual courtroom, we all should be aware that our words, even on blogs do become reflected throughout society, in the media, in the common man’s understanding, in the views championed and challenged by academia and yes, even reverberate back in the courtroom itself.

    We owe justice more than our feelings and convictions, more than our personal beliefs and philosophies. We owe justice the courtesy and respect to recognize what the law actually is at any point in time.

    To this end, I heartily encourage all to actively read (and re-read) the cases of the trilogy and the capstone Bilski. And as you read, be aware of the differences in time and opinion of the writers – and critically important, which writers are writing from which end of “the scoreboard.”

    In damming prose, in particular, the dissents from the last two cases, the losing side view of the last two cases, those of Diehr and Bilski, those words as written by Stevens should be studied carefully for what Stevens says the law should be.

    Study this carefully to arrive at exactly what the law is not.

    Many of the themes that have been played out to the audience of this blog, which have been perpetrated as good law will find a vibrant home in these last two dissents.

    These items are not good law. Those that would misrepresent what the law means does a disservice to all, to each common man, to each attonery, to each academic, to each judge, and even, to himself. Those who wish to understand why bad law should not be characterized as good law are recommended to read, study and contrast the views expressed not only in each decision, but how each decision changes who is on top. And who is not.

    Thank you for reading this. But thank you more for honestly discussing what the law is.

  59. 235

    We’re not talking about our favorite baseball players for fxckssake. Go post to some CNN article on patent reform if you can’t stand being criticized here for lack of clarity.

    Oh I can take criticism for lack of clarity. But that’s not what you are dishing to me. All you got for me is talking smack, when you have not shown that ability.

    Do you know what the Scoreboard Move is?

    Have you ever played organized football?

    I doubt it, but let’s pretend you can understand my story anyway.

    Imagine a game and your opponent just loves to talk smack. That’s cool, you know that you are better and you prove so on the field, play after play you beat the shtt out of him. Yet he continues to talk smack. SO you continue to beat the shtt out of him. Your team is up 35-0 and it is not even half time. You have owned the punk on both sides of the ball, on offense and on defense. Yet he continues to talk the same smack.

    What do you do?

    You pull him aside, take off your helmet, offer the biggest grin you can until he stops talking smack and then you raise your arm and point to the scoreboard.

    There is nothing more satisfying than the seeing the realization on the punk’s face that all the punk has is his smack talk.

    Guess what, Malcolm [I lift my arm and point ot the scoreboard], it’s 35-0 and its not even halftime and all you have is your smack talk.

    I have the offense – the law.
    I have the defense – the facts.

    All you have is your pounding the table.

    Do you know how silly you look?

    This is a discussion about the legal basis for certain (in some cases arcane) types of claims issued by the USPTO.

    It certainly is. When are you going to actually get into the game?

    Your cheerleader Ned, with his tired retreads from dissents (which only reinforce the fact that his position is bad law, is certainly not going to get you up on the scoreboard.

  60. 234

    anon,

    I claim:

    computer program on a computer readable media.

    The function of a computer program is to provide executable instructions to a computer. The functionality requires that the computer be able to access and execute the instructions.

    If the computer program cannot be read and executed from the readable media, there is a failure in claimed program functionality.

    Now, we know that most, if not all, programs on computer readable media are not executed from the transportable media, and that the media only bears the programs to the computer. The claims seem to not have some essential functionalilty related to executability that needs to be expressed to make them definite to the extent they could validly claim statutory subject matter.

    For 101 purposes, though, I think we should take the broadest reasonable construction to see if the claims read on unpatentable subject matter. We quickly see, that without any requirement for executability from the transportable media, that the claims read on what we would affectionately call printed matter because the claimed program functionality has nothing to do with any functionality the program may have with the media qua media.

    In essence, B-claims are either indefinite or non statutory.

  61. 233

    You might want to remember that some of the tech people may have English as a second language and be mmore careful about what you say you agree with.

    This is a discussion about the legal basis for certain (in some cases arcane) types of claims issued by the USPTO. We’re not talking about our favorite baseball players for fxckssake. Go post to some CNN article on patent reform if you can’t stand being criticized here for lack of clarity.

  62. 232

    if you want to claim a method of programming a computer”

    Where did you get this from?

    From New Anon’s 1:39 post. The correct question (as asked already by yours truly) is why is New Anon talking about “programming a computer”? Honestly, I don’t think New Anon is capable of articulating an answer to the question. I’d just drop it if I were you.

    you don’t agree with that portion of the doctrine, so it must be wrong…

    No, I don’t agree with that portion of the doctrine for the reasons that I’ve given here in this thread and elsewhere. You, on the other hand, seem to care less about the “logic” used to establish the exception and are satisfied with simply referring to it endlessly as if that somehow makes everything special and wonderful.

  63. 231

    Quite right there. My bad. I intended to say the dissent in Flook.

    In part, that dissent said,

    “The present case is a far different one. The issue here is whether a claimed process [Footnote 2/2] loses its status of subject matter patentability simply because one step in the process would not be patentable subject matter if considered in isolation. The Court of Customs and Patent Appeals held that the process is patentable subject matter, Benson being inapplicable, since
    “[t]he present claims do not preempt the formula or algorithm contained therein, because solution of the algorithm, per se, would not infringe the claims.”

    “…[I]t strikes what seems to me an equally damaging blow at basic principles of patent law by importing into its inquiry under 35 U.S.C. § 101 the criteria of novelty and inventiveness. Section 101 is concerned only with subject matter patentability. Whether a patent will actually issue depends upon the criteria of §§ 102 and 103, which include novelty and inventiveness, among many others. ”

  64. 230

    anon, you should know that Malcolm and I disagree on this: that the structure of DNA, isolated or cNA, is sufficient by itself to confer patentability. I think one must still do a 101 analysis based on the claimed subject matter as a whole to determine what was being patented,the chemical structure or the information.

    I think it is the information, just as does Judge Sweet. Malcolm wholeheartedly approves of Judge Lourie’s opinion.

    Malcolm and I know each other’s positions. They are being hotly debated even now and will eventually be decided by the Supreme Court.

    In computer law, the whole issue of patentability of software and Beauregard claims is still on the table given Bilski. Even whether software can be patented as a machine (when the machine only produces data) and not as a process that is actually tied to a specific, patentable use, is an issue that has to again be addressed now that Alappat and State Street are no longer good law.

  65. 229

    anon, I can understand that Malcolm can be a bit rough on people. So can 6. So can I. However, I agreed with the substance of what Malcolm wrote. Malcolm’s point was that music made a CD-ROM different just as much as a program made a computer different. I amplified the point in my own post.

    Archer made the exact same point in his dissent in Alappat when he discussed music on a CD-ROM or on the roll for a player piano. There is nothing insulting in this at all. It is a serious point. It was again, the point I amplified in my post.

    Malcolm’s post, which I supported, next expressed exasperation with that portion of New Anon’s sarcastic reference to DNA. The original snideness came from New Anon, not from Malcolm. The snideness in New Anon’s post suggest long familiarity with Malcolm’s position on structure and DNA, and that New Anon was not so new after all.

    My own post was polite and serious, and for that, I got an F off. This overblown heat seems to prove that New Anon is an old poster who has grudges to bear, just as Malcolm suggested. I don’t care who he is, he is not worth talking to, IMHO.

  66. 228

    Malcolm.

    Try harder. Try without the preconceived “it must be wrong” passion. Keep trying until you get it.

  67. 227

    Ned,

    Steven’s dissent in Diamond v. Diehr is nothing like New Anon’s statements and questions.

  68. 226

    Yes, a general purpose computer and a disc are both patentable subject matter in the first instance.

    I think I see where New Anon may be getting further lost.

    If, as Leopold states, a baseline machine and article of manufacture are patentable subject matter, and if, as the law states, any new and useful improvement thereof are also patentable subject matter, then why is such a fuss being made about the present subject?

    Rather than throwing insults, let’s see some helpful comments in reply.

    I’ll start: New Anon, what you see is the result of a philosophical battle and has really very little to do with actual law. Another poster had remarked that the debate has to do with “values,” and was entirely correct.

    The problem with arguing from “values” is that that is worse than pounding tables, because “values” tend to be ir_rational, and even an attempt at conducting a gentlemanly reasonable discussion will not be fruitful.

    Most likely, such attempts will be met with insults and purposeful obfuscation.

  69. 225

    Yes, a general purpose computer and a disc are both patentable subject matter in the first instance.

    I think I see where New Anon may be getting further lost.

    If, as Leopold states, a baseline machine and article of manufacture or patentable subject matter, and if, as the law states any new and useful improvement thereof are also patentable subject matter, then why is such a fuss being made about the present subject?

    Rather than throwing insults, let’s see some helpful comments in reply.

    I’ll start: New Anon, what you see is the result of a philosophical battle and has really very little to do with actual law. Another poster had remarked that the debate has to do with “values,” and was entirely correct.

    The problem with arguing from “values” is that that is worse than pounding tables, because “values” tend to be irrational, and even an attempt at conducting a gentlemanly reasonable discussion will not be fruitful.

    Most likely, such attempts will be met with insults and purposeful obfuscation.

  70. 224

    there does not have to be a functional relationship between the elements of a claim.

    Ned,

    You are mistaking the discussion of a doctrine with a discussion of claims. Actually, a discussion of an exception to a doctrine.

    You seem to have quite some difficulty in discussing doctrines of law. This was noticable in the discussions on IC doctrine as well.

    I advise you to engage in some research on this matter prior to commenting further.

  71. 223

    Leopold,

    What exactly did I mistake by pointing out the fallacy of an early part of your position?

    You realize that you merely assumed that I did not read past the “writing” part.

    Bad assumption.

    The writing part in quotes happens to hit uponthe exception to the written matter doctrine which is pivotal to the entire discussion now raging across two threads. It is that unwillingeness to understand or accept or both the implications of what it means to “write” and when such is fully permissible under the patent rules that impedes the smallminded people who pursue their philosophies with such reckless abandon.

    There are lot’s of reasons to not like the exception – but none those can be combined with any degree of intellectual honesty in not acknowlesging and accepting what the full doctrine means.

    I really do “get” why people feel the need to play such games on these boards, and how painful it must be for them to recognize that they are arguing a different philosphy that is currently embedded in the patent law. But the tact (or lack thereof) employed really only convinces themselve moreso and prevents them from realizing just how foolish they are.

    So now if you have managed to follow your own guidance and read through my complete post, please tell me what “clear mistake” I made in my comment. Tell me why what I point to is not “the key” to the debate.

  72. 222

    pure ignorance on display

    Actually, the analogy of one art’s building blocks to another art’s building blocks is pretty good for an English as a second language poster.

    I recognize that that set off the NIMBY effect for you, but if you try really hard, you may be able to handle those feelings without throwing a temper tantrum or hitting those sitting by you.

  73. 221

    based on bad logic.

    It really depends on if you are just being a sore loser and being upset because “what you want” is not being given to you.

    In that case, the exceptions are simply proper and just.

    Try to grow up a little bit and accept reality.

  74. 220

    Nobody here said that ‘playing music is the same as programming’.

    No Malcolm, technically speaking, it was not directly said – but what was said – ““I cannot imagine anyone who would think that CD player containing a blank CD is not a different machine than a CD player with a Megadeath CD in it.” directly implies that you think the logic of playing a CD making a change to a machine is on par with the logic of programming making a change to a machine.

    That’s pretty insulting.

    Ned, You jumped in on the fun making – not really a very serious answer to New Anon’s rather earnest point. Yeah, you probably didn’t mean to be a dick, but you have gotten some bad habits from your friend Malcolm.

  75. 219

    Ned,

    I see where New Anon is coming from – you agreed with Malcolm who had just finished insulting New Anon.

    You might want to remember that some of the tech people may have English as a second language and be mmore careful about what you say you agree with. While you think Malcolm is all fine and upstanding because he takes a more or less respectful tone with you, you might consider reading every one of Malcolm’s post as if he is addressing you to see how downright vile the man is.

  76. 218

    the law requires new compositions of matter to be distinguished from old compositions on the basis of structural differences

    Cite please.

    Please include any appliable exceptions (as we both know that applicable exceptions are every bit part of the law).

  77. 217

    I’m sorry New Anon, but my post was serious, polite and substantive. You “offed” me and, in your post to Leo, suggested that you had tried to have a serious conversation (with me) but was thwarted in some fashion. But that is a fricken lie and a smear. It was I who tried to have a serious conversation with you and for that effort I was given the bird.

    The olfactory senses will not tolerate the bull that spews from your keyboard. You are a flat out liar.

  78. 216

    How about just applying the patent laws?

    Great idea.

    You and Ned need to understand what they actually mean first though.

  79. 215

    You also are missing the ability to read and understand others comments

    No, that is the ability of those people to write coherently.

    You are making the rather too-full-of-yourself mistake that if someone disagrees with you, they must have read you incorrectly.

    Your example is an obvious strawman and completely misses the point of the exception to the printed matter doctrine.

    Oh that’s right, you don’t agree with that portion of the doctrine, so it must be wrong…

    /off sarcasm.

  80. 214

    Beauregard claims do not require that either of those actions ever take place.

    Do you have a sample of what you consider a Beauregard claim to be?

    if you want to claim a method of programming a computer

    Where did you get this from? No one is saying anything about inventing a method of programming – in fact, what is being said is that the programming does not have to be the inventive step to qualify for the functionally related exception. Why are you confusing the ability to qualify for the exception of a doctrine with what an invention is?

  81. 212

    As if playing music is the same as programming.

    Nobody here said that “playing music is the same as programming”. Your inability to understand what you are reading and your inability to write coherently make it impossible to discuss anything with you. Maybe you should have stayed in high school that extra year.

  82. 210

    F off Ned: “New Anon, I will second what Malcolm said after Malcolm was just insulting.

    Maybe you better read waht you sign up to before you agree with it.

    F off double calling me a jerk for you being a jerk.

  83. 209

    Listen, New Anon, my post to you was polite, to the point and substantive. I don’t know where you get your attitude from, but you will be assured that I will not reply to you with any courtesy at all in the future, even if I do reply. You seem to be just another of the many jerks that inhabit, no, infest, this site.

  84. 208

    “Further, we see Malcolm’s love of dissection repeated:
    “But standing alone, “the novelty of the mathematical algorithm is not a determining factor at all.” Flook, 437 U.S. at 591, 198 USPQ at 198.”
    Fortunately, there is no “standing alone” allowed. Flook is expressly overruled in this regard.”

    I don’t understand your point.

    Flook was clarified in Diehr to the extent it could be misconstrued. Flook is still cited by the Supreme Court for its holding. See Bilski p. 14.

  85. 207

    “Thus it is only with a faulty strawman premise and a twisted final trick that Archer arrives at his conclusion: Thus unlike the rubber curing process in Diehr, the claimed rasterizer here is not an application of mathematics in an otherwise statutory process or product”

    A thing of beauty? No. More like a very bad abomination of law in attempt to achieve a pure policy standpoint to unnaturally disqualify what is clearly understood to be a new machine.’

    I think you may again have missed the premise: the rasterize only produced data. That was the problem Archer identified that prevented it from being considered in the same class as the claim in Diehr.

    Perhaps if you reread the decision with this premise in mind, you could understand Archer’s points a little better.

  86. 206
      “Archer would strip out applied math. It is Archer that seeks to expand the Supreme Court exception. He is not the first judge to so think and will not be the last. But as we have seen with Stevens, trying to push something back over the line that has been rightfully crossed over is not easy to do. And it clearly is not meant for a Judge to do at all.”

    I do not share this view of Archer dissent. Note he in part found the Alappat claim unpatentable because it was not “applied.” The claim simply produced data.

    To me, whether a machine claim needs to actually “do” something is problem. Take Alappat, how can the rasterizer actually do anything by itself? It produces data for the display. Something else would use the data to produce a signal for the display.

    To do something within the ambit of an apparatus claim, one would have to claim the rasterizer as part of a system that would include the display. One cannot tag a process step onto a machine claim, e.g., displaying the smoothed signal on a display. That would itself render the claim indefinite.

    Now, I understand the reason that the patent applicant did not want to include the whole system in the claim is that the rasterizer was a separate part that could be sold. Without a claim to the rasterizer per se, the patent owner would have had to rely on contributory infringement.

  87. 205

    I think he is saying to be descriptive of what it is you are claiming, not to just recite what you are listing in the claim?

  88. 204

    Not directed to you Leopold.

    As if playing music is the same as programming.

    My mistake for trying to hold a serious conversation.

    I won’t make that mistake again.

  89. 202
      “‘The presence of structure on the face of the claims does not ipso facto make the claimed invention or discovery one of statutory subject matter.’

      That would be wrong. Not may be statutory, but is statutory for that test. As with anything else, such must still pass all all other tests.”

    I respectfully suggest that there is something wrong with this assertion. If you have a cite, I would be interested to review it.

  90. 201

    Ah, yes. From Wikipedia:

    “When the United States invaded Panama in December 1989, Noriega took refuge in the Holy See’s embassy on December 24, which was immediately surrounded by U.S. troops. After being continually bombarded by hard rock music, including Van Halen’s hit song Panama[4], and “The Howard Stern Show” for several days, Noriega surrendered on January 3, 1990.[5][6]”

    Howard Stern and Van Halen for 10 days? Noriega was a tougher man than I.

  91. 200

    I seem to recall that the first President Bush used this technology in the invasion of Panama.

  92. 199

    Malcolm, serious question indeed.  

    Let sum up the facts.  The CD when played with certain music on any player at any volume (that is at least audible) clears the room, of people, of any age and history, in which it is played.

    My God,  this does have utility — within the Useful Arts at that!  Not trivial at all so that it might be added to Breyer's list of trivial patents recently issued by the PTO in response to State Street Bank.

    I can see other applications, perhaps even some that might be non obvious and worthy of patenting.  For example, we could play the CD to a prisoner who could not clear the room until he confessed.  That would not be torture, would it?

    What
    about dirty tricks in a campaign.  Your opponent in has the majority in a caucus room.  No problem, you bring out the magic CD and "clear the room."

    Why there is no end!

    What music is this that has such POWER?

  93. 198

    While the MOT test is not the exclusive test, it remains the best test for whether a programed computer actually does something that is patentable.

    How is clearing out a room not a transformation?

    Serious question. This is what happens when you start creating “exceptions” in the law based on bad logic.

  94. 197

    New Anon, I will second what Malcolm said, but add this:

    Whether they are different is not the issue. They are. But physical differences by themselves are not sufficient to confirm patentablity on a programmed computer. The physical changes relate to the particular states of bits in permanent memory. But what is critical is that, with a program, the computer “operates” differently. This is why the courts uniformly look to whether this different computer operation results in something new in a patentable sense. While the MOT test is not the exclusive test, it remains the best test for whether a programed computer actually does something that is patentable.

  95. 194

    Ned states that all that is required from B-claims is that they be readable.

    I do not think this is accurate

    It’s close enough.

    merely reading a disk is not the same a programming a computer.

    Nobody is claiming otherwise. And if you want to claim a method of programming a computer, by my guest. Or a method of reading a disc. Beauregard claims do not require that either of those actions ever take place.

  96. 193

    New Anon Am I missing something?

    Yes, the ability to write coherently. But don’t feel bad — a lot of judges suffer from the same problem.

    You also are missing the ability to read and understand others comments. For example, according to your comment, “anon” wrote that “printing alone does not disqualify patentability.” I responded that anon was setting up a strawman. Why did I respond that way? Because nobody is arguing that “printing alone disqualifies patentability.” Why is nobody arguing that? Because it’s not true.

    An example for you: “A bike comprising [novel feature X] and printed instructions for riding the bike.”

    Nobody is arguing that the printing clause in this claim renders the claim unpatentable. Nobody. So why raise the issue?

    Maybe you’ll argue now that “anon” meant something different. Well, if “anon” meant something different, anon needs to learn to write something different. And so do you.

  97. 192

    … merely saying “printing” like it finishes the argument is a clear mistake.

    It certainly would have been a mistake, had I merely said “printing” like it finished the argument. But I didn’t.

    I respectfully suggest that failing to actually read my argument past the word “printing,” which appears fairly early in that argument, is a clear mistake.

  98. 191

    Ned states that all that is required from B-claims is that they be readable.

    I do not think this is accurate, as merely reading a disk is not the same a programming a computer. I think that programming necessitates a change. B-claims that program and then execute are not susceptible to the arguments here of different computers “reading” differently.

    Are these different computers reading differently what is called a Strawman?

  99. 190

    I cannot imagine anyone who would think that a programmed computer is not a different machine than an unprogrammed computer.

    “I cannot imagine anyone who would think that CD player containing a blank CD is not a different machine than a CD player with a Megadeath CD in it.”

    … because only one is capable of clearing out a room, right?

    To hold otherwise would be akin to saying that all molecules with same number of building blocks as DNA must all be the same.

    Again, pure ignorance on display. No wonder these dxpshxts can’t just stick with one name.

  100. 189

    Now I am confused.

    Malcolm has posted that it is a strawman in response to anon’s statement of “printing” alone does not disqualify patentability.

    But as I understand the written matter doctrine and the exception, this is exactly what is being argued, because the items “written” on the disks are being treated like text in a book. The exception to the written matter doctrine says that those things to which the doctrine applies are NOT like writing in a book.

    If the written matter doctrine applies to what is written on a disc, then there is no argument against subject matter patentability. I understand that the difference between a music CD and a progammed disk is exactly according to this.

    Am I missing something?

  101. 188

    Actually I only follow policy as far as my spe makes me. And apparently many other examiners are also finding B claims ineligible. So no, I’m not 100% sure that I do have to. Indeed, I’ll be sending out this rejection and we’ll see what the ol’ spe does. If I had to guess, he’ll sign it.

  102. 187

    The issue with a general purpose computer vs. a programmed, special-purpose, computer is again whether the addition of the program makes the programmed computer patentably distinct (assuming novelty and non-obviousness), i.e., a “new computer.”

    Thanks Leopold. I cannot imagine anyone who would think that a programmed computer is not a different machine than an unprogrammed computer. To hold otherwise would be akin to saying that all molecules with same number of building blocks as DNA must all be the same.

    I better grab some (many sets of) 8 carbon atoms, 10 hydrogen atoms 4 nitrogen atoms and 2 oxygen atoms and think about this.

  103. 185

    w point, I have to recall that IBM persuaded the patent office to reverse course on Beauregard claims when they demonstrated that a computer operated differently when a disk with a different program was inserted. It seemed to me that IBM had rigged a demonstration so that programs in some fashion executed directly from the disk or CD-ROM. So while the demonstration showed that the disk or CD-ROM “could” be a component of a computer that make the computer function differently upon insertion into the computer, such is not generally true of programs carried to the computer on the computer readable medium.

    Sounds like a classic case of inequitable conduct.

  104. 182

    anon: “printing” alone does not disqualify patentability

    Strawman. Nobody is arguing the contrary.

    When the exception is understood and accepted, a lot of this 101 discussion would vanish

    Spoken like a true fundamentalist. Take off the mask, AI. You look like a clown.

  105. 181

    I never said that the two discs are completely interchangeble. In fact, they are clearly distinguishable by the code that is “printed” on them

    Therein is the key – you use “printed” in quotes, (I think) knowing full well that the distinguishing characterisitc, as captured in the printed matter doctrine and the critical exception, is that “printing” alone does not disqualify patentability. merely saying “printing” like it finishes the argument is a clear mistake.

    Magic hatbands for everyone!

    When the exception is understood and accepted, a lot of this 101 discussion would vanish.

  106. 180

    Judge Patel believes that Bilski (Fed. Cir.) “abrogated” Alappat. Clearly, it overturned the useful, concrete, tangible result test. But fn. 19 only lists State Street Bank and AT&T as being “abrogated.”

    Why wasn’t Alappat listed in fn. 19?

  107. 178

    exactly the same way that a piece of paper is changed when instructions for a process are written on it.

    Da_mm, that printed matter exception really really svcks for you.

    [pounds table]

  108. 177

    Perhaps, but I think the one I read was by a student who was noting a whole bunch of different ways functional language is used, and this was but one small argument he stole from some other source. I have it saved at work.

  109. 176

    It’s okay, Shill. I knew you’d have a rough day. Maybe lay off the alcohol until your mom gets home.

  110. 175

    Treads on a tire are patentable even though the treads “just sit there” without a car

    Those treads are distinguished from prior treads in the prior by their structural features. You’ll never get a claim “An improved tire tread, wherein the tire tread makes the car skid less in the rain on 22nd Street in Tulsa, Oklahoma in August during a full moon,” or if you do it will be laughed out of court in 1 second.

    This is true even though such a tread is “really really easy” for anyone skilled in the art to make, and even though you won’t prior art expressly teaching such a tread.

    Let it sink in.

    By the way, there is another type of claim where the shortcut is allowed. But everyone in the field agrees that it is an exception to the law (unlike, say, the software folk who refuse to admit it). Do you want to know what that other type of claim is? I’ll let y’all guess for a bit.

  111. 173

    that the law requires new compositions of matter to be distinguished from old compositions on the basis of structural differences

    “Nobody here is saying that a functional limitation renders a composition claim ineligible or unpatentable.”

    Furthermore, the statute does not support a simple “structure” test. 35 U.S.C. Section 101 plainly refers to several classes of subject matter having longstanding usage in the patent law and requires that the applicant have “invent[ed] or discover [ed]” a new and useful one of them. “Structure” is not one of these classes. Nor does Section 101 simply require a claim that recites structure.”

    LULZ”

  112. 172

    Treads on a tire are patentable even though the treads “just sit there” without a car.

    BY ITSELF is a meaningless legal distinction.

    YOU may not lack sense, but the argument sure does.

  113. 170

    Which argument I borrowed from IANAE. Perhaps he wrote your article. Those ivory-tower academics have a lot of free time, no?

  114. 169

    You know what I love about these kinds of decisions MM? They involve MAGIC. Which I’ve been saying for quite awhile now and indeed even wrote a story about. See for instance page 7 line 12.

  115. 168

    Presenting the same (program containing) disc to two different computer may make a difference depending on whether the computers can read/execute the program.

    Presenting two different discs to the same computer presents the same problem depending on compatibility. But assuming compatibility, normally the functionality of both discs is the same regardless of the program because all that the claims require is that they be readable. The contents of the program itself is irrelevant to whether it can be read.

    But all this discussion is really a waste of time when one realizes that what IBM was trying to do was to turn contributory infringement into direct infringement. If we could get the courts to clearly hold that the sale of such a disc is contributory infringement (per se), a lot of this 101 discussion would vanish.

  116. 166

    LB Much of the sturm and drang on this website is focused on a largely pointless argument about whether computers programmed to perform patentable processes are properly the subject of patent. It’s pointless, in my view, because the courts pretty clearly say they are, and I’m not aware of any real threat to this position.

    I would have said the same thing about claims to the eligibility of isolated DNA molecules but there are two judges on the Federal Circuit who actually bought the ACLU’s crxxp.

  117. 165

    “Simple mental experiments have been repeatedly posted on this topic. If the view that ignores the printed matter exception were true, two different discs with different programs would be completely interchangable and the loading in a computer would not matter on which disc was presented.”

    Technically speaking, they are, depending on how you change the computer in each scenario. Which is perfectly fine since B claims don’t recite the computer. Indeed, this same argument was made in a paper that just came out this year attacking B claims on 112 2nd grounds for a failure to properly put the public on notice since the function of a given disc will change depending on the computer, which is of course unrecited in the claim.

  118. 164

    what happens when you put a patentable process onto a computer-readable medium

    With respect to the “process”, absolutely nothing happens. With respect to the medium, it’s changed in exactly the same way that a piece of paper is changed when instructions for a process are written on it.

  119. 163

    Beautfully written. If Patel’s reasoning is adopted by the CAFC it will get rid of a good chunk of cxxxp currently churning at the USPTO.

  120. 162

    … two different discs with different programs would be completely interchangable and the loading in a computer would not matter on which disc was presented.

    I never said that the two discs are completely interchangeble. In fact, they are clearly distinguishable by the code that is “printed” on them. What I said was that BY ITSELF, an encoded disk functions exactly like a blank one – it just sits there. When you talk about loading the disk into a computer, you’re now introducing a computer into the mix, and the claimed object is no longer BY ITSELF. Now, the distinctive functionality that is at the heart of the claim depends on the computer, as well as the program printed on the disk. I think that’s a problem, because it makes it impossible to tell whether a given disk infringes a claim until you match it to a computer that is not specified in the claim.

    Please don’t rewrite my arguments and then accuse me of lacking sense. Thank you.

  121. 161

    The Shill: If the view that ignores the printed matter exception were true, two different discs with different programs would be completely interchangable and the loading in a computer would not matter on which disc was presented.

    Use some common sense!

    The Shill sure likes to spin ’round and ’round, doesn’t it? Easily the most aptly named commenter here. And to make matters worse, The Shill writes terribly so everything has to be translated into English first. “Loading in a computer would not matter on which disc was presented”? Just as bad as the worse PTO Examiners that certain commenters here love to whine about.

    But back to the “substance” of The Shill’s comment, such as it is. The Shill’s plea to use “common sense” really says it all here. How about just applying the patent laws? We’re talking about composition claims, not method claims. Nobody denies that software allows computers to carry out different methods. The issue (is it really so hard to remember this?) is that the law requires new compositions of matter to be distinguished from old compositions on the basis of structural differences, not by how those new compositions are made and not by what those compositions are capable of doing. This isn’t a 101 issue, although there may be 101 issues lurking around the corner depending on how hard you twist the other patent laws in your favor.

    This is a long-term battle and constant vigilance is required.

    And you believe this, obviously, because you are a self-interested shill. What other exceptions in the patent law would benefit you personally? Why not shill for those as well? That’s a rhetorical question. I know that you already do shill for those exceptions, tirelessly, before the USPTO. That’s why 50% of your appeals are pure shxt.

  122. 160

    The shilling, you keep citing something to the effect that there does not have to be a functional relationship between the elements of a claim. Please explain this a little more, give some examples and cite a case or two. I am not following you.

  123. 159

    I must admit some amusement that Malcolm finds Archer a “thing of beauty” when Archer destroys the last half decade of Malcolm’s tirades with “Furthermore, the statute does not support a simple “structure” test. 35 U.S.C. Section 101 plainly refers to several classes of subject matter having longstanding usage in the patent law and requires that the applicant have “invent[ed] or discover [ed]” a new and useful one of them. “Structure” is not one of these classes. Nor does Section 101 simply require a claim that recites structure.”

    I have no idea why you think this quote “destroys” anything that I have said in this thread, or elsewhere.

    This is a habit of yours. I could do the same thing I suppose. How about it? “Phillips destroys your position. Nyah nyah nyah.” Convincing? I didn’t think so.

  124. 158

    I’m still waiting for you or one of your sockpuppets to explain why these quotes amuse you.

  125. 156

    The encoded floppy disk, on the other hand, by itself functions just like any other floppy disk.

    Most definitely not. It suffers from the same flawed “House” argument as does the programmed computer.

    In some respects the disc does have the same functions (transfer mechanism) but in other, equally functionally-related respects, it does not. Even absent the differences, the printed matter exception simply does not require a different or novel functional relationship.

    Simple mental experiments have been repeatedly posted on this topic. If the view that ignores the printed matter exception were true, two different discs with different programs would be completely interchangable and the loading in a computer would not matter on which disc was presented.

    Use some common sense!

    The mistake (over and over and over) being made is somehow requiring that the functional relationship be a specific, distinct and completely determinative functional relationship.

    It does not need to be so.

    Ignore the smoke and mirrors put forth by those who ha_ te the critical exception to the printed matter doctrine. That doctrine in its entirity must be understood, and like it or not, accepted.

    All else is purposeful obfuscation.

    Bilski says no, or at least suggests it.

    Bilski was not a software or computer case. Stop (over)reaching. It is completely separate whether the APPLIED math on a machine is just a trick to claim the math itself (PURE MATH).

    This is not as difficult as it is being made. The only reason why all the dust is being kicked up is because some people want to pound the table and rule out software and computer related inventions. The very real thr_eat is the same as it ever was – the repeating over and over and over a message attempting to make the perception a reality.

    Critical-minded people see right through that message, but overlook the effect of forceful repetition. This is a long-term battle and constant vigilance is required.

  126. 155

    Leo, so long as we are clear here that simply because a computer or a disk (CD-ROM, etc.) with a new program is structurally different from the prior art, that structural difference by itself is not sufficient to determine whether the claimed subject matter is patentable under section 101.  I see your post as conceding this fact.  If so, we are in agreement.

    I refer to Archer's dissent as explaining why the majority opinion was wrong when it seemed to find patentability of the claim in the structural differences of the computer without more.  The dissent would have ignored the utility of the data being output by the claimed rasterizer, the smoothing of a display waveform, as justification a patentability of the claim, because the claim itself did not actually require the smoothing of a
    display waveform.  It only outputted data, data that was intended for such use in such a display.   Clearly, if a claim to a programmed machine actually requires that the claim itself actually do something physical to be patent eligible, it would be almost impossible to claim a programmed computer per se as a machine, because one cannot add process steps to an apparatus claim.  That renders them indefinite.

    But this issue seems to be sidestepped by the Federal Circuit in subsequent cases such as State Street Bank.  I expect at some time in the future that the issue will again be raised because of recent case law by the Federal Circuit that holds that process steps in apparatus claims render them in definite.

  127. 154

    Ned,

    STOP.

    Once again you chafe with incorrect legal applications.

    Opinions in dissent do not carry the force of law. Just because you choose to be persuaded means nothing.

    Benson was rejected as a process claim, not an apparatus. The missing of the apparatus aspect was a substantial error in that judgement. Regardless, Benson has been modified by the trilogy of cases, and merely quoting Benson alone on this point is irresponsible.

    I politely suggest that if you offer a truce and violate the terms of that truce repeatedly, then your word is even more diminished.

    If that is possible.

  128. 153

    Ned, you’re manufacturing law from a dissent and a holding from State Street that was expressly not adopted by the Supreme Court. That’s a shaky foundation you’ve got there.

    In any case, you’re making it way too complicated. A computer is a machine and is generally patentable subject matter under Section 101. The judicially-created prohibition against patenting of abstract ideas applies if your claim to a machine is nothing more than a computer programmed to implement an abstract idea.

    This approach doesn’t require any special treatment of computer-implemented inventions other than an alertness to the possibility that the computer isn’t doing anything practical. This approach doesn’t render Benson’s principles meaningless, because the Benson court held that the claims were merely to an abstract algorithm. (I think the Benson court was wrong on the application of its holding to the facts, but I’m ok with the holding.)

  129. 152

    Leo, but it is worse than you described because all that the claim requires, by inference, is that the program be physically read from the disk. There is no functional relationship between the claimed subject matter of the program and the computer that normally has anything to do with the mere act of reading the subject matter of the disk into the computer.

    However consider if the claims required that the program be executed when read. Then there would be a functional relationship between the claimed subject matter and the computer. I think this would render the claims entirely patentable, and not indefinite. However the computer industry such as IBM will be up in arms because the whole point of Beauregard claims is not the have the programs execute from the disk or CD-ROM, but the simply have the programs be carried to the computer.

    With the latter functionality for the disk or CD-ROM, there is no functional relationship between the functions of the claimed program and the CD-ROM or with the computer when the computer reads the contents of the CD-ROM. To hold that these claims are patentable tends to undermine patent law generally.

    New point, I have to recall that IBM persuaded the patent office to reverse course on Beauregard claims when they demonstrated that a computer operated differently when a disk with a different program was inserted. It seemed to me that IBM had rigged a demonstration so that programs in some fashion executed directly from the disk or CD-ROM. So while the demonstration showed that the disk or CD-ROM “could” be a component of a computer that make the computer function differently upon insertion into the computer, such is not generally true of programs carried to the computer on the computer readable medium.

  130. 151

    Leo, the short answer is this, the new structure is irrelevant. See Judge Archer’s dissent in Alappat. To hold otherwise would render meaningless Benson, which did have new structure.

    The majority opinion in Alappat held the claims patentable because the rasterizer smoothed the waveform of the display. It provided a new, concrete, tangible result. This new result was emphasized in State Street Bank when it referred to its holding in Alappat as the reason the court there found the claims to be patent eligible.

    Machine do not ordinarily require a new, concrete, tangible result to be patentable. Processes do. That is why the courts treat claims to program machines as processes and analyze the cases the same way.

    I politely suggest that you read Judge Archer’s dissent. It is eloquent and persuasive.

  131. 150

    Similarly, I am confused by the posted notion that a disc is not patentable subject matter. Clearly a disc is a manufacture and is likewise one of the things expressly stated as patentable subject matter.

    I know that I and others have been sloppy in discussing this, so I’m not surprised you’re confused. Yes, a general purpose computer and a disc are both patentable subject matter in the first instance. The issue with Beauregard claims is whether the program on the disk provides any patentable distinction over an empty disk, or whether the program should just be treated as printed matter and ignored, since it does not have a function that is related to the disk. The issue with a general purpose computer vs. a programmed, special-purpose, computer is again whether the addition of the program makes the programmed computer patentably distinct (assuming novelty and non-obviousness), i.e., a “new computer.” I think the two cases are quite different, since the programmed computer unquestionably functions differently, so the programming has a functional relationship to the substrate (the machine). The encoded floppy disk, on the other hand, by itself functions just like any other floppy disk.

    A completely SEPARATE issue is whether putting a non-patentable method, like a pure, unapplied, mathematical algorithm, on a computer will give you a statutory machine. Bilski says no, or at least suggests it. But this is a special case – unpatentable methods on otherwise patentable machines. Much of the sturm and drang on this website is focused on a largely pointless argument about whether computers programmed to perform patentable processes are properly the subject of patent. It’s pointless, in my view, because the courts pretty clearly say they are, and I’m not aware of any real threat to this position.

  132. 149

    new anon, the attitude you express is somewhat of the same as the attitude expressed by dissent in Diamond v. Diehr. I suggest you read that opinion first, then read the majority opinion in that case.

  133. 148

    Maybe it is a nomenclature or term of art thing, but I am having trouble understanding how a general purpose computer is not considered to be a patentable subject matter in the first instance.

    Is this like a phone is not considered to be patentable subject matter?

    Is this because “general purpose computer” is like “a person having ordinary skill in the art”, a legal abstraction?

    Am I conflating “patentable subject matter” with “patentable”?

    To me, “patentable” is what is decided by everything other than Section 101 and “patentable subject matter” is decided by Section 101, with “subject matter” turning “patentable” to mean “patent eligible.”

    I do not understand what concept of law would treat a general purpose computer into a non-machine. To me it is clear that “machine” is one of the express categories and it is equally clear that computers are machines.

    Similarly, I am confused by the posted notion that a disc is not patentable subject matter. Clearly a disc is a manufacture and is likewise one of the things expressly stated as patentable subject matter.

  134. 147

    Sorry 6, official PTO policy is that B claims are statutory because the encoded program is functionally related to the substrate, i.e., the storage medium. I think that is incorrect – the program has no functional relationship to anything until the medium is coupled to a processor that can interpret the instructions. Until that time, a CD or a magnetic disk is just a thing with 1’s and 0’s on it. As IANAE has explained, the functionality of the medium is defined by the processor, which isn’t defined in the claim. It’s theoretically possible to start with a list of functions that you want accomplished, take any disk, with arbitrary data on it, and then design a computer that will read that disk and perform those functions in response to that arbitrary data. All I have to do is define the instruction set on this external computer to match the arbitrary data.

    But your hands are tied. You have to follow official policy, don’t you?

  135. 145

    Lulz.

    “I don’t like it, therefore it is cr_ap”

    [says Malcolm as he pounds the table yet again]

    My turn for a rant. Buckle up and enjoy the ride.

    Alappat has arranged known circuit elements to accomplish nothing other than the solving of a particular mathematical equation represented in the mind of the reader of his patent application

    That’s your idea of “a thing of beauty”? Not knowing the difference between pure math and applied math?

    the majority today holds that any claim reciting a precise arrangement of structure satisfies 35 U.S.C. Section 101

    Start with a false premise and then blow it over (can you say strawman?)

    As has been noted several times of late (and wonderfully by A New Light), there is no such thing as a “pure structure claim = patent” rule of law. That simply is a false premise now, just as it was a false premise when Judge Archer built his “thing of beauty” dissent.

    the discovery of mathematic functions, relationships, operations, or algorithms does not entitle a person to a patent therefor. Diehr, 450 U.S. at 191, 209 USPQ at 10 (“a mathematical formula as such is not accorded the protection of our patent laws”); see Walter, 618 F.2d at 770, 205 USPQ at 409 (pure mathematics is not an <31 USPQ2d 1567> art or technology).

    Too much “legal argument” here is passed off by misquoting law and held up as “things of beauty” – here the misquote relays on obfuscating the difference between pure math and applied math. As A New Light eloquently stated, when pure math is applied, it crosses over and:

    I think that math, pure math, and music are similar, yet different. The similarity comes from the pursuit of each not being a useful art. Each is pursued to the delight of the human mind, rather than in any type of functionality. The difference comes from when pure math is applied to a useful end. When this happens, the math is no longer merely a delight of the human mind, but has become a tool and a building block. In fact, it has become just as much a building block as carbon, hydrogen and oxygen atoms, just as much a building block as transitors (virtual or actual) and just as much a building block as nuts and bolts.

    Archer deftly overstates his position and understates (after mistating same) his opponents:
    On the other hand, an invention or discovery of a process or product in which a mathematic operation is practically applied may be statutory subject matter.

    That would be wrong. Not may be statutory, but is statutory, for that test. As with anything else, such must still pass all all other tests.

    Even given structure and circuit diagrams, Archer goes overboard when he sees applied math. “Oh no, data is being stored in a Great Computer Brain”

    The presence of structure on the face of the claims does not ipso facto make the claimed invention or discovery one of statutory subject matter.

    That would be wrong. Not may be statutory, but is statutory for that test. As with anything else, such must still pass all all other tests.

    However, the Supreme Court expressly reversed… in Parker..accord Diehr

    Misquoting law yet again – accord simply is not the right legal phrase. Diehr did not merely accord Parker.

    I must admit some amusement that Malcolm finds Archer a “thing of beauty” when Archer destroys the last half decade of Malcolm’s tirades with “Furthermore, the statute does not support a simple “structure” test. 35 U.S.C. Section 101 plainly refers to several classes of subject matter having longstanding usage in the patent law and requires that the applicant have “invent[ed] or discover [ed]” a new and useful one of them. “Structure” is not one of these classes. Nor does Section 101 simply require a claim that recites structure.” The remaining portion of Archer’s quote is superbly handled by A New Light’s views (above).

    Archer would strip out applied math. It is Archer that seeks to expand the Supreme Court exception. He is not the first judge to so think and will not be the last. But as we have seen with Stevens, trying to push something back over the line that has been rightfully crossed over is not easy to do. And it clearly is not meant for a Judge to do at all.

    And to answer a possible further question, yes I think Benson was wrongly decided.

    This is not to say that digital circuitry cannot be an element in an otherwise statutory <31 USPQ2d 1575> machine. Under Diehr, it can

    Another legal misquote – it was not circuitry that was an element that Diehr focused on – circuitry (and as A New Light suggests, this includs virtual circuitry) has always been understood as a statutory element. Archer is twisting Diehr’s discussion of applied math.

    Thus it is only with a faulty strawman premise and a twisted final trick that Archer arrives at his conclusion: Thus unlike the rubber curing process in Diehr, the claimed rasterizer here is not an application of mathematics in an otherwise statutory process or product

    A thing of beauty? No. More like a very bad abomination of law in attempt to achieve a pure policy standpoint to unnaturally disqualify what is clearly understood to be a new machine.

    Further, we see Malcolm’s love of dissection repeated:
    But standing alone, “the novelty of the mathematical algorithm is not a determining factor at all.” Flook, 437 U.S. at 591, 198 USPQ at 198.
    Fortunately, there is no “standing alone” allowed. Flook is expressly overruled in this regard.

    Again, the beauty of A New Light’s thoughts show the error of Archer: “Getting back to the music analogy, Alappat is like a composer who claims his song on a compact disc, and then argues that the compact disc is equivalent to a player piano or a music box with the song on a roll or even sheet music because they all represent the same song. The composer is thus clearly asking for (and getting from the majority) a patent for the discovery of a song and a patent covering every physical manifestation of the song.” This cannard should be permanently retired because it is a direct obfuscation of something that simply does not belong in a patent arena discussion and would be rejected on other grounds (the whole Delight of Mind versus Purposeful Use).

    So we see, point after point of this dissent can be seen for what it is – pounding the table, strawman set ups and twisted application of law. It is the dissent that is meritless.

    Let the actual law stand as is. Let the actual facts stand as is. I will leave the table pounding to you.

  136. 144

    That is a shame.

    Also, maybe someone should point out that it is impossible to put a method on a CRM. Methods are intangible.

  137. 143

    “the computer-readable medium alone is NOT properly the subject of a patent, for the reasons that IANAE and Malcolm have proposed.)”

    Well that’s interesting. You seem like a pretty decent lawlyer, could you perhaps elaborate in a better way? I have before me my first B claim going out with a whole load of rejections. One more couldn’t hurt.

  138. 142

    Thanks, 6, that’s great. Judge Patel is right on the money, based on my 2.5 minute read. I don’t think we’re going to get an answer to the Beauregard question, however. Judge Patel said only that putting an unpatentable process onto a computer-readable medium won’t cut it. That doesn’t tell us anything about what happens when you put a patentable process onto a computer-readable medium. Since she’s right that the process itself is unpatentable, the Federal Circuit doesn’t need to reach the question of whether Beauregard claims are valid in general.

  139. 140

    There is language in Alappat that suggests the Federal Circuit believes that the circuits themselves are somehow altered by the program.

    And the Federal Circuit is absolutely correct. When the program is stored on a magnetic medium that is coupled to a processor, the little magnetically re-oriented thingies on that medium are just as much a part of the circuits as the doped semiconductor material in the processor or the tantalum in the power supply decoupling capacitors. The same is true for the pits in a CD, when the program is stored on it. Sure, a six-year-old can alter those aspects of the circuit, sometimes in meaningful ways, but so what?

    The computer system, which INCLUDES the storage medium for the software, is physically altered when you load a new program on it. I’m totally perplexed by the denials of this, just as I am by the silly statements that software is “equivalent” to structure or that software is a “substitute” for structure. (Hint: when all you’ve got is an argument by analogy you’ve probably already lost.) WHEN IT’S INSTALLED ON PHYSICAL MEDIUM THAT IS OPERATIVELY CONNECTED TO A PROCESSING CIRCUIT THAT IS ITSELF CONFIGURED TO EXECUTE THE SOFTWARE, THE INSTALLED SOFTWARE IS PART OF THE COMPUTER SYSTEM’S STRUCTURE.

    A computer with a new program installed on it is physically different from the same computer without that program, in a way that can be directly observed, measured, characterized, etc., using pretty simple instruments. In the case of optical storage, those physical differences can be observed with the human eye (through a microscope, of course). The STRUCTURAL differences seem to me to be undeniable, and I’d love to see a contrary argument that doesn’t reduce to “computer-related claims s*ck” or “beauregard claims s*ck.” Those arguments might be correct, but they have nothing to do with whether a programmed computer has structural differences from the unprogrammed computer.

    The next question is whether the STRUCTURAL differences in the programmed computer are functional, so as to put this structurally different new machine into the realm of patents as opposed to the domain of copyright. The answer is pretty straightforward – YES, when the program is installed on a media that is physically and operatively coupled to the processor that is configured to execute it. (Side point – the computer-readable medium alone is NOT properly the subject of a patent, for the reasons that IANAE and Malcolm have proposed.)

    The final question is whether it’s proper to claim a computer-readable medium in functional terms. Malcolm pretends that computer-implemented claims are always in the form of “black box programmed to do X.” In fact, they typically recite a “computer” or “processing circuit,” which both ARE structure and which both have a very definite and limiting meaning to the skilled person. (“Black box” or “utensil” do not convey structure.) The functional limitations that follow tell the skilled person how MY computer or MY processing circuit are different than others. As far as I can tell, this approach to claiming is EXACTLY the same as “the nucleic acid that encodes X, Y, Z,” which is the example I gave above. The term “nucleic acid” tells the skilled person what general structure we’re talking about, while the functional limitation “encodes X, Y, or Z” distinguishes MY nucleic acid from what you’ve seen before. There is no “special treatment” for computer-implemented inventions.

    Malcolm is correct that many computer-implemented claims should never have been granted. IANAE is correct that Beauregard claims are based on extremely questionable logic. But I’ve yet to see a persuasive argument that a properly written computer-implemented claim is invalid simply because it relies on a computer program and the functions encoded in that program to distinguish over the prior art.

    Whew. I’ve said my piece; sorry for yelling. And I still haven’t finished that provisional application. Carry on…

  140. 139

    I’ll address your good specifics later, but there is some confusion–I was talking about a B-claim, and not a claim to a programmed computer.

  141. 138

    Compare:

    “but has nothing to do with claims to novel, structurally defined compositions of matter”

    and

    “Nobody here is saying that a functional limitation renders a composition claim ineligible or unpatentable.”

    LULZ

  142. 137

    I recall that both interpretations of heating were actually described in the specification such that it was not only the claim that was ambiguous, but the specification. You might want to check that out.

  143. 136

    I think Paul Morgan raises a good point. I am perplexed as to why Chef America was not distinguished or even mentioned in this case. My recollection from a couple years ago on finding related Chef America case law was that there was none. The Chef America case appears to be one of those silent Fed Cir anomalies. The way I see it, the error in this case of forgetting to insert “and” (or “or” as one commenter put it), is no less obvious than the error in Chef America of heating the dough rather than the oven, resulting in obviously unintended burnt buns. Had the court in Chef America relied on the specification as much as the court in this case, the error in Chef America should have been deemed obvious and should have been corrected. And what about the Chef America holding that “courts are not to engage in rewriting claims for patent practitioners”? The Lourie panel in this case should have at least distinguished this aspect of Chef America.

  144. 135

    I have no doubt that the corresponding structure to MPF elements directed to program steps would include the computer elements that carry out the program. But, when the question is what is the “new structure,” the proper answer is “only the program.” The hardware itself is unchanged. Indeed, when asserting infringement, one does not want to get into the weeds about whether the particular computer was the same or equivalent to the computer disclosed. One only wants to demonstrate that the accused programmed computer operates the same way.

    When considering the patentablity of a programmed computer, one can almost ignore the computer entirely and simply ask whether the claimed “process” achieves a new, physical result. See, e.g., Archer’s dissent in Alappat for a full explanation what I mean; but this is also the critical inquiry in Benson, Flook, Diehr, and Bilski.

    Given Bilski, both en banc Federal Circuit and Supreme Court, it is becoming clear that State Street Bank and the Alappat majority are in severe disrepute. I believe, as apparently does Malcolm, that when considered next again by the Federal Circuit, they will flatly overrule both cases, and follow Archer’s dissent in Alappat.

    This said, if the novelty is not in the program, but in the new computer architecture, a claim to the improved computer will be patentable as a machine without regard to any new result. It will be assumed that the machine has the same overall utility as the old, but with an new efficiency.

  145. 134

    Ned–

    I think they’re treated more like combination claims with “means for” clauses under 112p6.

    When you said “only if the machine does something new”, I assume you mean to say something different than it did BEFORE it was programmed, as opposed to something not previously done by any other machine…

    It’s not the “doing of something new” that is the clue to patent-eligibility, it is the STRUCTURE THAT ENABLES the doing of something new–the key is how to describe the structure, and what kind of description the PTO an the courts will find acceptable.

    They have deemed acceptable, essentially, a statement of the function and a means for achieving the function, combined with a medium–and under 112p6, such B-claims are “…construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

  146. 133

    Further note that the quote refers to a process, not a composition of matter.

    Sort of a big deal. Nice try, though.

  147. 132

    To wit, the most recent CAFC decision after Bilski Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010), has moved such that the direct quote is now assumed law, and rather discusses the matter thus: “and
    invention which is not so manifestly abstract as to override the statutory language of 35 U.S.C.S. § 101 may nonetheless lack sufficient concrete disclosure to warrant a patent. In 35 U.S.C.S. § 112, the Patent Act provides powerful tools to weed out claims that may present a vague or indefinite disclosure of the invention. Thus, a patent that presents a process sufficient to pass the coarse eligibility filter may nonetheless be invalid as indefinite where the invention would not provide sufficient particularity and clarity to inform skilled artisans of the bounds of the claim.

    Note that this is not limited to a 112 Para 6 tool, and further note that sufficient particularity and clarity to skilled artisans of the bounds of the claim is what is required. The applied math in this invention is implemented by software, software which must be programmed into a computer.

    The perpetual nonsense about exacting structure is just that: perpetual nonsense.

  148. 131

    Anon, good point there on firmware.

    Regarding post State Street Federal Circuit cases, while they may cite to some novel structure in programmed computers, they cannot simply hold that a programmed computer without more is a new machine.  That clearly would violate both Alappat itself and State Street Bank, both en banc cases.  They would have to find that the programmed machine did something concrete and tangible, etc.

  149. 129

    like the software=firmware=hardware equivalency better as it is more accurate to what the technology actually is

    Technology? LOL.

    determine whether or not the sending party is an authorized sending party or an unauthorized sending party, and

    wherein authorized sending parties are parties for whom an agreement …. has been made

    Where’s the “technology”? And let’s face it: there’s nothing unusually stxxxpxt about this claim. It’s par for the course.

  150. 128

    In essence, the Federal Circuit treats claims to a programmed computer as a process

    Correct. For 112 purposes, claims to programmed computers are examined *exactly* as if they were method claims. The fact that the apparati are structurally indistinguishable (at least based on the disclosure and claims) is ignored.

    This exception exists for computer apparati only, because … of some laughable self-serving dicta in an old, terribly written Federal Circuit case.

  151. 127

    I like the software=firmware=hardware equivalency better as it is more accurate to what the technology actually is.

    Further, I think your claim that the courts do not cite to the “new machine” language is baseless.

    Defining the terms should not be done preemptively by you. Let’s let the terms mean what they actually mean. Those not willing to learn what those terms mean should not be preaching on the topic anyway.

  152. 126

    The majority opinion in Alappat is one of the worst written opinions in the history of the Federal Circuit. Archer’s dissent, on the other hand, is a thing of beauty. Eventually that dissent will become the law. That’s how the law works: meritless, crxp decisions are eventually overturned.

    More importantly, Alappat is a 101 case. I’m not talking about 101. And even if I were, the majority opinion in Alappat is such a huge pile of unpersuasive bxllshxt that I couldn’t possibly care less.

  153. 125

    by taking things to their logical extreme

    The problem, Ned, is that you show no appreciation of what logical extreme means. You consistently blow by any type of reason that is not your own, and repeatedly apply “reason” to case law that no reasonable person would hold.

    You insult Kant by labeling what you do a method of testing propositions and logic for two reasons: 1) you never apply the tests to your own views (this shows up in your repeated ducking of any point that you don’t like); and 2) you apply what you think is reason as the standard for reason and this standard is unbelievably biased by your existing views.

    Far too many times I see you embrace your bias as gospel. Far too many times, you need to be far more humble.

    You are not interested in any type of debate. You merely want to preach.

    Why should I accept any type of “truce” from you, when you continue to do the things that chafe? Have you bothered at all to read any of my posts, or to contemplate the criticms that attaches to you so readily (rather than merely being rude and labeling anyone with a different view “a cretin”)?

    You are only too quick to judge others as to form of commenting, while your form is possibly the worst possible and most insulting form I read. Granted, I typically do not read the filth-strewn form of those whom you claim I am wrong about. It is easy to see why you think more highly of Malcolm and 6 – you think they agree with what the mighty Ned thinks, so they must be doing a good job (the exchange on appeals and runaway legal application with no respect for settled law comes to mind).

    Do you really expect me to accept such an apology as you offer with such a meaningless truce? You offer no real change in your posting, and even defend your style. You expect far too much goodwill from your name, as that account has been massively overdrawn.

    Put your ego on check, evaluate the limits of reason, stop distorting holdings and discuss law as a gentleman. Then, I might have reason to accept your apology and truce.

  154. 124

    Malcolm, Leo, 6, Lionel,

    Regarding computer structure.

    To some extent, I think we are talking past each other because we do not define “structure” in the same way when we think of how a programmed computer is altered structurally by its program. Malcolm, I believe, is thinking of the computer architecture. I believe the Federal Circuit itself believes that it is the a program which is the new structure. After all, when faced with a means plus function clause directed to a program element, the corresponding structure it looks for is the program.

    There is language in Alappat that suggests the Federal Circuit believes that the circuits themselves are somehow altered by the program. But it is clear that the Federal Circuit itself no longer cites Alappat for this proposition. Rather it emphasizes that aspect of Alappat where the claimed rasterizer provides for a smoothed display.

    While there appears to be many here do do not agree with the following, I believe that a computer having new computer architecture is patentable as new a machine without regard to the use to which it is put. In contrast, a new “programmed computer” that varies from the prior art only by its program is patentable as machine only if the machine does something new. See the State Street’s interpretation of its Alappat holding. In essence, the Federal Circuit treats claims to a programmed computer as a process, regardless of its denial of such construction in Alappat.

    I hope this is useful to a least place context our discussions concerning “novel structure” when talking about computers.

  155. 123

    That’s funny

    No, that’s sad.

    Cite the case and the passage

    Alappat, passim.

  156. 122

    you were busted upthread

    That’s funny.

    “programmed to” is all the structural description necessary.

    Cite the case and the passage where the reasoning for this rule is explained. Otherwise, just keep sxckin’ your lollipop, son.

  157. 121

    As I noted upthread, when you say “class of apparatus” you are referring to a class of apparati defined only by what the apparati are capable of doing.

    Actually you were busted upthread for trying to say this and you were corrected.

    that no structural descriptions at all are necessary

    Not true – “programmed to” is all the structural description necessary.

  158. 120

    Leo: The law says that defining structure by function is OK, so long as you meet the requirements of Section 112.

    Are you referring to 112P6? There must still be a reference to definite structure as any abuser of means plus function claims will tell you.

    If you’re asking whether I could give you a comprehensive structural definition of some infringing computers, then the answer is yes. (At least, the theoretical me could.)

    The theoretical “you” is truly theoretical. I’m not aware of a single application or patent with claims similar to those at issue here where the computer with “new” functions was described in such a way as to distinguish it structurally from otherwise identical old computers. Not in the claims, nor in the specification.

    A properly written computer-based apparatus claim defines a class of apparatus that is readily distinguishable from all other apparatus in the world and enables those skilled in the art to build as many different embodiments as they wish.

    If granted, it also prevents every one those apparati from being built without taking a license, which is one of the problems. As I noted upthread, when you say “class of apparatus” you are referring to a class of apparati defined only by what the apparati are capable of doing. Your argument boils down to “that’s okay because programming is incredibly easy.” Modifying a computer (or computer-readable media) is apparently so easy that you get a free pass from the requirement applied to every other composition claim in ever other field of endeavor. It’s so easy that no structural descriptions at all are necessary to distinguish these compositions from those in the prior art.

    At the same time, you will argue to the USPTO that these incredibly broad “classes” of apparati are non-obvious in view of thousands of years of recorded human history in activities such as advertising, charging fees, introducing people with similar interests to each other, etc.

    Sorry, but I ain’t buying the “legal arguments.”

    On the other hand, turning the law upside down (or ignoring it) because it makes a wealthy, whiny group of constituents happy? Yes, I can certainly see that happening.

    The fact that the defined class of apparatus potentially includes an infinite number of embodiments should make it easier for you to invalidate it, I suppose. But it doesn’t make it unpatentable, per se.

    This isn’t the issue. The issue is composition claims that are devoid of distinguishing structures.

    Let’s say I invent a utensil that allows me to selectively pick up white rice from a mixture of white rice and brown rice. There are surely an infinite number of distinct embodiments of that utensil and some of them are straightforward to make. Assume there is no such utensil in the prior art. Can I get a claim that covers *every* such utensil with that function without describing how the utensil differs structurally from prior art utensils? Of course not, unless the laws applying to computers are applied to my utensil. Then I’m golden.

  159. 119

    I repeat,

    Note that Benson was not “reaffirmed” as you indicate here.

    Your understanding is so extremely flawed as to be an insult to not only any reader, but to every reader.

    You take the statement including the “no categorical rule/narrow resolution” and you attempt to make a broad categorical rule.

    Dante has a special place for the likes of you.

  160. 118

    It’s the patentee’s own problem if he claimed an infringement he can’t detect.

    Except that this requirement that you detect infringement exclusively by structural analysis is your requirement. The law says that defining structure by function is OK, so long as you meet the requirements of Section 112.

    And more to the point, if all you had in front of you was the claim, could you give a structural description of the set of infringing computers?

    If you’re asking whether I could give you a comprehensive structural definition of some infringing computers, then the answer is yes. (At least, the theoretical me could.) On the other hand, if you’re asking whether I can give you a comprehensive structural description of every possible programmed computer that meets the terms of the claim, then the answer is no, of course not. It’s an infinite set. But the law is OK with that, too, so long as that particular infinite set is distinguishable from other (non-infringing) instances. Finiteness and definiteness are not the same thing. The law requires that your claims be definite, but it certainly doesn’t require that they be limited to a finite set of discrete embodiments. I think it’s wonderful that claims to molecules cover a small, finite, set of readily identifiable structures. But that’s not a legal requirement.

    A properly written computer-based apparatus claim defines a class of apparatus that is readily distinguishable from all other apparatus in the world and enables those skilled in the art to build as many different embodiments as they wish. The fact that the defined class of apparatus potentially includes an infinite number of embodiments should make it easier for you to invalidate it, I suppose. But it doesn’t make it unpatentable, per se.

    I’m looking forward to your response, but please don’t be offended when I don’t participate further. I really have to get this application done…

  161. 117

    I didn’t say it would be easy, and I would need some tools, just as I presume IANAE/Sauron would to “look” at nucleic acids.

    Okay, so it’s difficult and expensive in practice. No problem. It’s the patentee’s own problem if he claimed an infringement he can’t detect.

    The question I’m really interested in is what structure you’d look at to determine whether a “programmed computer configured to do X” claim is infringed, without the computer actually running any software. And more to the point, if all you had in front of you was the claim, could you give a structural description of the set of infringing computers?

    I know what structure you’d look at to determine infringement of a DNA claim. You’re looking for a specific sequence of atoms (arranged as nucleotides), and probably the easiest way to find it would be to use the complementary sequence that can only physically bind to the sequence you’re looking for. But you can’t do that with the programmed computer unless you can describe what structure you’re looking for.

  162. 116

    “Focusing on one element and trying to determine whether it is wholly preempted, i.e., does not seem to ask the right questions. ”

    Tell it to the USSC.

    “If the claim as a whole is doing something new, physically, and the algorithm is contributing functionally to that result, it is patentable. ”

    So long as you are not simultaneously preempting the entire judicially excepted subject matter.

    Remeber Ned, there is no rule that something IS patentable in this context, there is only a rule against certain things being patentable, all else is considered patentable. That’s why it is a judical exception.

  163. 115

    6, excellent post.

    Even if one would consider every programmed computer to be different from every other programmed computer with a different program, the programmed computer remains non statory if, considered as a whole, it is not directed to statutory subject matter, i.e., not doing something within the MOT or some other test that the Feds have yet to devise.

    Thus, a programmed computer that is part of another system and that system is modified functionally to do something new, as in Alappat, the programmed computer claimed in that context is patentable. Claimed withou any new, patentable use, but just calculating numbers from numbers, the programmed computer remains non statutory.

  164. 114

    So what?

    Wow. So deep. So penetrating.

    Must be more of that reduction ad absurdum Kantian categorical imperative stuff.

  165. 113

    I’m sorry, that’s what I thought you were claiming to be able to do personally. Apparently you were claiming that you (or some other entity, perhaps go d himself) could theoretically accomplish that? I gotcha.

    This is the interwebz. For all you know I am g od himself.

    I’ve got to finish drafting a provisional. See ya.

  166. 111

    “Oh, so now we’re talking about whether I personally could do it, rather than whether it’s theoretically achievable, is that it? ”

    I’m sorry, that’s what I thought you were claiming to be able to do personally. Apparently you were claiming that you (or some other entity, perhaps go d himself) could theoretically accomplish that? I gotcha.

    “Since I’m busy and since your parents probably won’t let me into their basement to crack open “your” computer, I’m afraid you’ll have to take my idle boast for exactly what it was, an idle boast. :)”

    Lulz.

    “That looks like a trick question to me. You have to give me the computer it’s installed in, too.”

    So then the functionality of the cd with a 1 on it isn’t set? It depends on something outside of itself? Aka the computer which you’ve placed the cd into?

    Well, you weren’t defending B claims so I’m going to just let this issue die down. I’m still drafting a rejection for several atm.

  167. 109

    Thank you for correcting

    Lulz – when wrong, just claim victory.

    The point here was that the claim provided did not explicitly recite structure, but rather by th efunction it performs.

    Encoding is a function – perhaps that was too subtle for you.

    Now we have the weasel effect of “modestly redudant” and “one can [note, not does, but “can”] trivially specify” and “every adult should“… affecting the rather simple and straight forward analyis here.

    But but but – F A C E D

    That’s how it seems to work here.

    Oh so true – just not in the manner you may have intended.

  168. 108

    Lulz, you sure think you could, but I doubt if you ever have, and I also doubt that you could in fact accomplish the task.

    Oh, so now we’re talking about whether I personally could do it, rather than whether it’s theoretically achievable, is that it? Since I’m busy and since your parents probably won’t let me into their basement to crack open “your” computer, I’m afraid you’ll have to take my idle boast for exactly what it was, an idle boast. :)

    I’m curious, what would you peg as the functionality of a cd with a single 1 thereon?

    That looks like a trick question to me. You have to give me the computer it’s installed in, too.

  169. 107

    6, however you slice it, the real question is whether the claim as a whole is directed to statutory subject matter.  Statutory subject matter requires that the machine or process, normally, do something new, and after Bilski, its seems clear that what it does has to be physical.  If it does not actually do something new, the claim as a whole is non statutory.  The claim cannot just calculate a new number from a number.  

    Focusing on one element and trying to determine whether it is wholly preempted, i.e., does not seem to ask the right questions.  If the claim as a whole is doing something new, physically, and the algorithm is contributing functionally to that result, it is patentable.  If the claim as a whole is not doing something new
    physically, it is not patentable subject matter.  The MOT, while not the exclusive test, is, per Breyer, the best test out there.  

     

  170. 106

    Lulz, you sure think you could, but I doubt if you ever have, and I also doubt that you could in fact accomplish the task.

    I’m curious, what would you peg as the functionality of a cd with a single 1 thereon?

  171. 105

    When someone deals in Lasers and tells you not to abandon your Application. And the other one is bought and paid for so it is a done deal… Then why would He? Boy he just ought to stick to making Bird Houses. Because as I see it, what he did was for the birds.

  172. 104

    Wouldn’t you rather I just observe the computer from the outside, to see what it does?

    This is an apparatus claim, not a method claim.

    My new black box with stuff inside “does something different” than that old black box with stuff inside. Is merely reciting that fact in the claim enough to get a composition claim granted?

    It wasn’t, the last time I checked.

  173. 103

    I’ve had my nose so deep in other cases I can’t hardly remember anything else atm.

    I understand. If you’re open to some advice, I suggest starting with Gordon v Steele, Vaughan v Menlove, and R v Latimer, and then work from there. In 2-3 years you’ll be slinging case law with the best of them.

  174. 101

    I didn’t say it would be easy, and I would need some tools, just as I presume IANAE/Sauron would to “look” at nucleic acids.

    My hourly rate for infringement analysis is kinda steep, though. Wouldn’t you rather I just observe the computer from the outside, to see what it does? It would save you a few hundred grand, at least.

  175. 100

    “I can “look” at a programmed computer and know from its structure whether it anticipates or infringes the claim, without needing to see what it actually does. ”

    I lulzed. Sure you can. Maybe one “programmed” by adjusting it’s hardware. FPGA?

    You can’t crack my computer open here in my house, look inside and tell me if it infringes i4i’s patents.

    There is no fing way.

  176. 98

    “I have to yield, since I somehow managed to get through over 22 years of school without ever taking a biology class”

    Man, not even a HS class? No intro class in college? Crazy man.

  177. 97

    What, sire, is your expertise? Does it even come close to my own?

    Since when is mangling law (sorry, applying the Kantian categorical imperative) and being too full of oneself considered an area to be labeled an “expertise?”

  178. 96

    Is that right? I could have sworn that it was relying on that, it’s been awhile. I’ve had my nose so deep in other cases I can’t hardly remember anything else atm.

  179. 95

    “You now seem to agree that any kind of preemption is sufficient.”

    Idk what you mean by “any kind of preemption”. In Benson they said look to whether the claim is wholly preempting. In Flook they came along and said, look to whether it would be wholly preempting if not for the drafter having tacked a few features on to stop it from wholly preempting.

    Idk why you want to draw my attention to that part in Bilski, of course you can consider any algorithm to be a principle in the abstract. That’s what they are.

  180. 94

    Thank you for correcting The Shill, IANAE.

    I’m guessing you’ll need to do it again the next time the subject comes up. That’s how it seems to work here.

    Once again, folks: the genetic code is modestly redundant but the structural relationship(s) between the three nucleotide codons and the amino acids they encode is straightforward (there is some weirdness at the margins, e.g., the coding for selenocysteine incorporation is baroque, but doesn’t affect the analysis here).

    Every adult should know this stuff, by the way. It’s about as fundamental as understanding why the sun rises and sets every day, and why our planet has seasons (hint: this stuff doesn’t depend on some decider living on Mt. Olympus). What’s amazing to consider is that the code was only determined a half-century ago. Revolutionary stuff.

  181. 93

    Don’t be rude to Ned, even if he is sloppy with his verb tenses.

    Unless of course, you were merely using the categorical imperative as a way of testing Ned’s propositions and logic.

    Did Ned pass?

  182. 92

    software can take the place of structure

    Yes, that is a “legal argument.”

    The statement has the bonus of also being a “factual argument.”

    That leaves only the table-pounding to you.

  183. 90

    I’d like to attend that meeting as well.

    I can “look” at a programmed computer and know from its structure whether it anticipates or infringes the claim, without needing to see what it actually does.

    That’s a bold claim, LB.

  184. 89

    We can talk after class. Meet at your tower? :)

    Sure. It’s the one with the glowing orange eye at the top. I’ll give you a ring when I’m free.

  185. 88

    I think I’m going to need to ask what you mean by “structure” in that context.

    We can talk after class. Meet at your tower? :)

  186. 87

    So those SEQ IDs define the nucleic acid structure itself and not some proteins that are expressed by it?

    The SEQ IDs could define either the sequence of nucleotides or the sequence of amino acids, but there’s a well-known correspondence between three-nucleotide codons and the amino acids they encode. It’s a many-to-one substitution cipher. Either type of sequence contains the same information.

    I can “look” at a programmed computer and know from its structure whether it anticipates or infringes the claim, without needing to see what it actually does.

    I think I’m going to need to ask what you mean by “structure” in that context.

  187. 86

    The SEQ ID convenient forms are the prodcuts of the action that is claimed – not the distinguishing structure.

    Given the product, one can trivially specify exactly what arrangements of carbon, nitrogen, oxygen, hydrogen, and phosphorous would encode any particular SEQ ID. It doesn’t even take a biology degree – just the standard table of codons off Wikipedia and the known structure of the four (or five, I guess) nucleotides.

    So, yes, the “function” does unambiguously specify a particular structure. In much the same way that a mechanical tab that fits into and mates with a very well-defined slot is itself structurally well-defined.

    Good luck inferring that level of structure from a computer-readable medium based on what it does to an unspecified computer.

  188. 85

    I have to yield, since I somehow managed to get through over 22 years of school without ever taking a biology class. So those SEQ IDs define the nucleic acid structure itself and not some proteins that are expressed by it? It appeared to me that “encode” was an action/functional word.

    You can “look” at a molecule and know from its structure whether it anticipates or infringes the claim, without needing to see what the molecule actually does. Try doing that with a computer-readable medium, in the absence of a computer.

    I’m not defending computer-readable medium claims. I can “look” at a programmed computer and know from its structure whether it anticipates or infringes the claim, without needing to see what it actually does.

  189. 84

    An isolated nucleic acid, that encodes

    that encodes

    The SEQ ID convenient forms are the prodcuts of the action that is claimed – not the distinguishing structure.

    Back to the tower with you, you academic.

  190. 82

    isn’t the following thing defined entirely by its function?

    No, it’s defined by a very specific arrangement of atoms that is conveniently abbreviated in SEQ ID form.

    It’s no more “defined entirely by its function” than a claim to “polymerized tetrafluoroethylene” (claim 1 of US Patent No. 2,230,654 in its entirety). Does that sequence of carbon and fluorine atoms have a function? Sure it does. But the claim is explicitly a specific structural arrangement of those atoms.

    You can “look” at a molecule and know from its structure whether it anticipates or infringes the claim, without needing to see what the molecule actually does. Try doing that with a computer-readable medium, in the absence of a computer.

  191. 81

    IANAE outed himself as an academic with his spring break leave

    Great detective work, Sherlock. You discovered the only possible reason why anybody would take a week off at that time of year.

    It’s exhausting, balancing academia with my other jobs as a PTO examiner, PTO non-examiner, and EPO examiner. That week off came at just the right time for me.

  192. 80

    Can you identify for me one claim to any other type of apparatus in any field of endeavor that can only be distinguished from prior art apparati by the function it performs when it is turned on and operating?

    An interesting question. I’m kinda busy, and way out of my field, but isn’t the following thing defined entirely by its function?

    1. An isolated nucleic acid, that encodes a) the light chain variable region of SEQ ID NO:40, or b) the heavy chain variable region of SEQ ID NO:38, or c) the light chain variable region of SEQ ID NO:40 and the heavy chain variable region of SEQ ID NO: 38, or d) the light chain CDR1, CDR2, and CDR3 sequences of SEQ ID NO:40 as shown in Table 20 and the heavy chain CDR1, CDR2, and CDR3 sequences of SEQ ID NO:38 as shown in Table 18, or e) the light chain variable region of SEQ ID NO:52, or f) the heavy chain variable region of SEQ ID NO:50, or g) the light chain variable region of SEQ ID NO:52 and the heavy chain variable region of SEQ ID NO: 50, or h) the light chain CDR1, CDR2, and CDR3 sequences of SEQ ID NO:52 as shown in Table 20 and the heavy chain CDR1, CDR2, and CDR3 sequences of SEQ ID NO:50 as shown in Table 18, or i) the full complement of any of the encoding nucleic acids of a) through h).

  193. 78

    One comes to believe whatever one repeats to oneself sufficiently often, whether the statement be true of false. It comes to be dominating thought in one’s mind.

  194. 77

    These repetitive words and phrases are merely methods of convincing the subconscious mind.

  195. 75

    Human beings, who are almost unique in having the ability to learn from the experience of others, are also remarkable for their apparent disinclination to do so.

  196. 74

    To paraphrase,

    There is none so slow to learn as those who turn a blind eye to what should be learned.

  197. 72

    Looking glass, did you know that it takes more than a month on average to get a printed COC after it has been approved?  My god, you guys, whoever you are,  are beyond belief.  Way beyond.

  198. 71

    Leo, also consider, if you will, what the Feds themselves said about Alappat, en banc, in State Street Bank:

    “Unpatentable mathematical algorithms are identifiable by showing they are merely abstract ideas constituting disembodied concepts or truths that are not “useful.” From a practical standpoint, this means that to be patentable an algorithm must be applied in a “useful” way. In Alappat, we held that data, transformed by a machine through a series of mathematical calculations to produce a smooth waveform display on a rasterizer monitor, constituted a practical application of an abstract idea (a mathematical algorithm, formula, or calculation), because it produced “a useful, concrete and tangible result”—the smooth waveform.”

    And,

    “We note that, for the purposes of a § 101 analysis, it is of little relevance whether claim 1 is
    directed to a “machine” or a “process,” ….”

  199. 70

    Changing the software is equivaelnt to changing the structure and is and should be treated as such.

  200. 69

    You don’t seem to understand that software can take the place of structure. So perhaps you are simply a slow learner.

  201. 68

    Yes I do. It was the test itself. See, Breyer’s summary.

    “Fourth, although the machine-or-transformation test is not the only test for patentability, this by no means indicates that anything which produces a “ ‘useful, concrete, and tangible result,’ ” State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F. 3d 1368, 1373 (CA
    Fed. 1998), is patentable. “[T]his Court has never made such a statement and, if taken literally, the statement would cover instances where this Court has held the contrary.” Laboratory Corp. of America Holdings v. Metabolite Laboratories, Inc., 548 U. S. 124, 136 (2006) (BREYER, J., dissenting from dismissal of certiorari as improvidently
    granted); see also, e.g., O’Reilly v. Morse, 15 How. 62, 117 (1854); Flook, supra, at 590. Indeed, the introduction of the “useful, concrete, and tangible result” approach to patentability, associated with the Federal Circuit’s State
    Street decision, preceded the granting of patents that “ranged from the somewhat ridiculous to the truly absurd.” In re Bilski, 545 F. 3d 943, 1004 (CA Fed. 2008) (Mayer, J., dissenting) (citing patents on, inter alia, a “method of training janitors to dust and vacuum using
    video displays,” a “system for toilet reservations,” and a “method of using color-coded bracelets to designate dating status in order to limit ‘the embarrassment of rejection’ ”);
    see also Brief for Respondent 40–41, and n. 20 (listing dubious patents). To the extent that the Federal Circuit’s decision in this case rejected that approach, nothing in today’s decision should be taken as disapproving of that determination. See ante, at 16; ante, at 2, n. 1 (STEVENS,
    J., concurring in judgment). In sum, it is my view that, in reemphasizing that the “machine-or-transformation” test is not necessarily the
    sole test of patentability, the Court intends neither to deemphasize the test’s usefulness nor to suggest that many patentable processes lie beyond its reach.”

  202. 67

    And I love how you can attack apparently obvious process claims, yet defend completely brainless claims to existing gene sequences.

  203. 66

    That worked.

    but

    but still I do not have the certificate of correction in hand.

    W

    T

    F

    Must be more of that famous Ned Heller “catagorical imperative.”

  204. 65

    A bunch, you must think that I called the patent office in response to Malcolm's suggestion.  No, I have been calling them for some time, but still I do not have the certificate of correction in hand. 

     I will say, that when you do call, they are responsive, helpful, and prompt.  However if you do not call, your certificate of correction may take some time.  

  205. 64

    Um no, I think you are wrong about Malcolm and 6. 

    Regarding what you might think ridiculous, I do not.  What I'm trying to do is drill down below the surface of the law to understand its principles by taking things to their logical extreme.  This is a way of testing propositions and logic.  I suggest you read up on Immanuel Kant and his so-called "categorical imperative."

    Regarding science, I readily admit that I am not a biologist.  Some of the things I might say in this field may seem to a biologist to be a bit funny.  My field is computers and computer technology.  I have a great deal of experience in this.

    I hope your comments here were good faith.  I will take it that way, because I offered you a truce an
    apology.  I have yet to hear back from you as to whether you accepted.

  206. 63

    Because your analysis, at least with respect to the “capable” part, is essentially identical to the BPAI’s reasoning in In re Alappat and in In re Freeman.

    Malcolm is an Office stooge.

    The outing is evident from the lack of posts on the same subject in the previous thread (vacation? “No, I just don’t want to post on the subject” and the proliferation of posting on the subject when he returned from vacation.

    Just as IANAE outed himself as an academic with his spring break leave, so too Malcolm’s habits give a hint to who he is (and why he believes as he does).

  207. 62

    6, thanks for your post.  

    I think we are agreed then that Flook did clarify Benson to the extent that one could interpret Benson to require that a claim "wholly" preempt nonstatutory subject matter before it was deemed unpatentable.  You now seem to agree that any kind of preemption is sufficient.

    I would also like to refer you to the Bilski discussion of Benson where it interpreted Benson as well.  There the Bilski court found that the claim in Benson was "abstract" because it was only manipulating numbers, numbers in an numbers out:

    "Rather than adopting categorical rules that might have wide-ranging
    and unforeseen impacts, the Court resolves this case
    narrowly on the basis of this Court’s decisions in Benson, 
    Flook, and Diehr, which show that petitioners’ claims are
    not patentable processes because they are attempts to
    patent abstract ideas.  Indeed, all members  of  the  Court 
    agree that the patent application at issue here falls outside of §101 because it claims an
    abstract idea. 
    In Benson, the Court considered whether a patent application for  an algorithm to  convert binary-coded decimal numerals into pure binary code was a “process” under 
    §101.  409 U. S., at 64–67.  The Court first explained that 
    “ ‘[a] principle, in the abstract, is a fundamental truth; an
    original cause; a motive; these cannot be patented, as no
    one can claim in either of them an exclusive right.’ ” 

  208. 61

    Ron, true that Benson did not acquire the MOT test.  But it did hold, as described in the Bilski majority, the claimed algorithm unpatentable because it only processed numbers. I quoted the relevant passage in the prior post.

    Regarding the process for determining whether to deliver an e-mail, this is purely an abstract idea within the holding of Bilski, Diehr, Flook and Benson because it deals only with numbers.  There is nothing in the claim that requires the modification of any structure, nor does it appear to "do" anything physical.

    Now I would agree that if a business utility was statutory, that the production of a concrete business result might be sufficient by itself to render a business method claim
    patentable per State Street Bank.  However, State Street Bank after Bilski is in severe stress.

  209. 60

    Ned states that he is still waiting for critical corrections to issue at 8:49 PM.

    Malcolm tells Ned to get on the phone at 8:59 PM.

    Ned reports back that he did and Malcolm’s advise works at 5:33 AM.

    I did not know that the Patent Office had a graveyard shift working with the corrections people.

    T O O L S

  210. 59

    Ron, I agree with you on the whole about the Bilski opinion – it is not clear.  I think, however, you can read between the lines to determine that the Bilski claim was abstract because it was "numbers in and numbers out."  See the discussion of the Benson case, particularly on this point.

    "The Court then held [in Benson] the application at issue was not a “process,” but an
    unpatentable abstract idea.  “It is conceded that one may not patent an idea.  But in practical effect that would be the
    result if the formula for converting  .  . . numerals to pure binary numerals were patented in this case.”  409 U. S., at 71. "

  211. 58

    Anne der Mouse

    "All you rely on is highly discredited Federal Circuit law."
    You do realize that portions of a decision can be discredited and
    other portions remain fully in tact. Seriously.
    Overreaching and making up your own law on technology that you are clueless with is just plain sad."

    Do you deny that the Diehr dissent heavily criticized the Federal Circuit decisions that held that a program computer without more was a patentable; and that those same decisions were heavily criticized in Bilski when a majority of the judges heavily criticized State Street Bank which relied heavily on those discredited decisions.  Indeed, the majority of Bilski, in the passage I quoted in a prior post,
    noted that almost no computer program could pass the traditional test for patentable subject matter without having been claimed as part of otherwise statutory process as in Diehr.

    Regarding your final point, your assumption that I am clueless on this law and technology is beyond insulting.  I hope you realize this, cretin, that your form of commenting to me, and probably to others, is beyond acceptable.  

    Because you post anonymously, I did not know who you were.  But I will never again respond to you to the extent that you are identifiable.  

  212. 57

    Who the F are you to ask me this question in this fashion?

    My guess is that this attitude comes from your own rudeness and arrogance, Ned.

    That and the ridiculous treatment of the subject from both scientific and legal perspectives.

    And for good measure, the company you keep (and your apparent disregard for their rudeness and arrogance). Not that such a measure is needed, but one only has to take a small step back and read these threads to see that you reap what you sow.

  213. 56

    Anne der Mouse

    "See the discussion of this issue in Diehr, albeit in dissent."
    You cannot be trying to make a legal argument from a dissenting opinion. Seriously?"

    The Diehr dissent is quoted in the Bilski majority.

  214. 55

    Anne Mouse:

    "You cannot seriously believe that a programmed computer without more is patentable subject matter"
    You cannot seriously be making a statement on a subject you clearly know nothing about. Do you know what "programmed" even means?"

    Who the F are you to ask me this question in this fashion?  

    For your information, I worked as an engineer/systems analyst for four years prior to going to law school.  I have worked as a patent attorney in the computer field for over 30 years.  I know a lot about computers, systems, all their components, and about programming.
     

    What, sire, is your expertise?  Does it even come close to my own?  

  215. 54

    Anne der Mouse

    ""but the Supreme Court just reaffirmed Benson that said that a computer with new software was not new a new machine"

    Cite please. Note that Benson was not "reaffirmed" as you indicate here."

    From Bilksi:

    "It is true that patents for inventions that did not satisfy
    the machine-or-transformation test were rarely granted in 
    earlier eras, especially in the Industrial Age, as explained 
    by Judge Dyk’s thoughtful historical review.   See 545 
    F. 3d, at 966–976 (concurring opinion).  But times change.
    Technology and other innovations progress in unexpected 
    ways.  For example, it was once forcefully argued that 
    until recent times, “well-established principles of patent
    law probably would have prevented the issuance of a valid 
    patent on  almost any conceivable computer program.” 
    Diehr, 450  U. S., at 195 (STEVENS, J., dissenting).
     But 
    this fact does not mean that unforeseen innovations such 
    as computer programs are always unpatentable.  See  id., 
    at 192–193 (majority opinion) (holding a procedure for 
    molding rubber that  included a computer program  is
    within patentable subject matter).  "

    The cited passage from Diehr:

    "Prior to 1968, well-established principles of patent law probably would have prevented the issuance of a valid patent on almost any conceivable computer program. Under the "mental steps" doctrine, processes involving mental operations were considered unpatentable. See, e.g., In re Heritage, 32 C.C.P.A. (Pat.) 1170, 1173-1177, 150 F.2d 554, 556-558 (1945); In re Shao Wen Yuan, 38 C.C.P.A. (Pat.) 967, 972-976, 188 F.2d 377, 380-383 (1951). The mental steps doctrine was based upon the familiar principle that a scientific concept or mere idea cannot be the subject of a valid patent. See In re Bolongaro, 20 C.C.P.A. (Pat.) 845, 846-847, 62 F.2d 1059, 1060 (1933). [Footnote 2/5] The doctrine was regularly invoked to deny patents to inventions consisting primarily of mathematical formulae or methods of computation. [Footnote 2/6] It was also applied against patent claims in which a mental operation or mathematical computation was the sole novel element or inventive contribution; it was clear that patentability

    Page 450 U. S. 196
    could not be predicated upon a mental step. [Footnote 2/7] Under the "function of a machine" doctrine, a process which amounted to nothing more than a description of the function of a machine was unpatentable. This doctrine had its origin in several 19th-century decisions of this Court, [Footnote 2/8] and it had been consistently followed thereafter by the lower federal courts. [Footnote 2/9]"

    Note, Diehr was not about a programmed computer, but about a molding process that employed a programmed computer as a component.   Also see Alappat where the raterizer was a component of a display.   Benson however only worked on numbers.

    Continuing from Bilski,

    "Rather than adopting categorical rules that might have
    wide-ranging
    and unforeseen impacts, the Court resolves this case
    narrowly on the basis of this Court’s decisions in Benson, 
    Flook, and Diehr, which show that petitioners’ claims are
    not patentable processes because they are attempts to
    patent abstract ideas.  Indeed, all members  of  the  Court 
    agree that the patent application at issue here falls outside of §101 because it claims an abstract idea. 
    In Benson,
    the Court considered whether a patent application for  an algorithm to  convert binary-coded decimal numerals into pure binary code was a “process” under 
    §101.  409 U. S., at 64–67.  The Court first explained that 
    “ ‘[a] principle, in the abstract, is a fundamental truth; an
    original cause; a motive; these cannot be patented, as no
    one can claim in either of them an exclusive right.’ ”  Id., at 
    67 (quoting Le Roy, 14 How., at 175).  The Court then
    held 
    the application at issue was not a “process,” but an unpatentable abstract idea.  “It is conceded that one may not patent an idea.  But in practical effect that would be the
    result if the formula for converting  .  . . numerals to pure
    binary numerals were patented in this case.”  409 U. S., at 
    71."

    Note the final passage discussing why the Benson claim was not a process, but an abstract idea —
     numbers to numbers.  

    A programmed computer by itself only calculates numbers.  It is unpatentable (as a matter of law?) per Benson, Flook, Diehr and Bilski.

    When a programmed computer, however, is used as part of another machine (Alappat or Diehr) it may be patentable.

  216. 52

    case law discussed here from Leopold Bloom to help you out on how the legal argument works for how “configuring” creates a new machine

    I have yet to read a case that was even modestly persuasive on the subject I’m discussing, specifically: how can an allegedly modified apparatus be patentably distinguished from an old apparatus in the absence of any structural differences between the two apparati?

    I recall that there is some horribly written case that says, essentially, that the instructions carried out by the computer *are* the structure. Is that what you call a legal “argument”? Sounds like a self-serving tautology to me.

    Can you identify for me one claim to any other type of apparatus in any field of endeavor that can only be distinguished from prior art apparati by the function it performs when it is turned on and operating?

    Actually, HW, these questions aren’t for you because I know you are incapable of a reasonable discussion about the topic. Maybe Mr. Bloom or someone else would like to take a stab at the questions.

    An admission that exceptions for computer-related inventions were judicially (and crudely) carved out by the courts purely for policy reasons is a perfectly acceptable answer, by the way. Then we can discuss whether those exceptions have done more harm than good to our patent system and whether those exception have resulted in the creation of jobs for anyone other than lawyers and wannabe patent trolls (also known as “start-ups” or “small businesses” in some circles).

  217. 51

    HW If it is “impossible” for you, then maybe you need to understand a little about computers.

    I started programming in the 70s. How about you?

  218. 50

    I gotcha, that’s pretty much what I thought.

    So, if you don’t mind terribly much, and if it won’t terribly put you through much bother, how much did Allappat depend on State Street?

  219. 49

    “Do you even realize that programming modifies a machine structurally? Seriously!”

    Lulz, does the USSC even realize that?

    Here’s the deal bucko, both me and Ned, as well as the USSC know that in some embodiments of various claims programming does modify a machine structurally (although it is entirely possible to make embodiments that do not).

    But, both me and Ned, as well as the USSC know that unknown structural modifications are quite irrelevant to the patentability determination. Indeed, the only people who didn’t get the memo on this are the patent protectionists sitting on the Federal Circuit and those that follow their misguided caselaw that they base on even more misguided caselaw.

  220. 48

    Ned, if you will bother to read in context then you will notice that FN 11 is not saying what you believe it to be saying. But, of course, that’s probably too difficult for you I suppose.

    Here’s a brief explanation for you, what he is saying is that all claims which are unpatentable because of preempting judicial excepted subject matter are “more or less patentable” because they preempt judicially except subject matter AND NOT FOR ANY OTHER REASON. SPECIFICALLY ONE REASON THAT CLAIMS ARE NOT MORE OR LESS PATENTABLE is that the specific end use contemplated is the only one for which the algorithm has any practical application. That is a mere situation that arises sometimes. Claims do not benefit any more or less if that is the situation in a given claim. Likewise they are not harmed any more or less if that is the situation in a given claim. YOU ALWAYS LOOK FOR ONE THING. AND ONE THING ONLY. Which is what I’ve been trying to pound into your numbskull for quite awhile now.

    I know this is hard for you to grasp because his language is quite confusing.

    Regardless, even if it had been unclear to the man who wrote Benson some years after he wrote it why a process claim is any more or less patentable because the specific end use contemplated is the only one for which the algorithm has any practical application (note how I just used that quote OUT of the context of rescuing a claim with post-solution activity where it was orignally used) then that doesn’t change the decision one little bit. And that you should be sure of as a lawltard.

    “Flook noted to be patentable, the use of a law of nature or abstract idea in a claim must be directed to an otherwise statutory process or machine, referencing, among other cases, the Eibel Process case involving a claim to a machine where the novel feature involved the used of gravity by raising one end of a “wire” so that the flow of pulp paper eliminated tears and the like”

    Sort of, yes it did. And note who the author is. And then note that the only reason that author did not concur with the majority in Diehr, which held practically exactly what you just recited, a few years later was because of his wierd claim construction.

    “The claim did not include or modify an otherwise statutory process or machine.”

    Exactly, and if it had, then he would have said it was ok. Just like the court in Diehr did for a different claim a few years later.

  221. 47

    Compare:

    It seems impossible to me… can patentably distinguish one computer from another.

    and from link to patentlyo.com :

    “Compare:

    but has nothing to do with claims to novel, structurally defined compositions of matter

    and

    Nobody here is saying that a functional limitation renders a composition claim ineligible or unpatentable.” ”

    Oops.

    If it is “impossible” for you, then maybe you need to understand a little about computers. There are plenty of classes out there that you can learn about the equivalence of hardware, firmware and software. You even have the case law discussed here from Leopold Bloom to help you out on how the legal argument works for how “configuring” creates a new machine.

    If you actually want to learn, that is. But if you want to turn a blind eye to any understanding, then even US 8,000,000 won’t help you.

    As for the “every new CD” dilemma you face, didn’t you understand the missive posted by A New Light? Are you still trying to find Ned in the dark so that you two can comfort each other and find your way to the “light?”

    Maybe if you paid attention to the legal logic, you would not spend so much of your time over the past half decade saying the same impotent stuff, wasting so much of your energy on legally flacid conclusory arm-waiving. Such may convince those wanting to be so convinced, but true gentlemen with critical minds simply see your conflated and misguided views for what they are: pointless hot air.

    No wonder you like to give out balloons…

  222. 46

    LB Because your analysis, at least with respect to the “capable” part, is essentially identical to the BPAI’s reasoning in In re Alappat and in In re Freeman.

    Understood.

    The reason I used the term “capable” is that the claims here are apparatus claims, not method claims. There are no recited “steps” or “actions”.

    The claim literally describes a computer hooked up to a network. The only recited difference between that computer (and network) and the millions of prior computers is that this computer is programmed in such a way that it is (allegedly) capable of doing something new and non-obvious. It seems impossible to me that the generic recitation of “detecting and analyzing” previously unclaimed (but also pre-existing) types of information and then responding to that determination in some ancient manner (“charge a fee”) can patentably distinguish one computer from another. How is it any more inventive than a CD “configured” to play a new piece of music when a button is pushed, then stopping when it “determines” that the disc has ended? Seriously. What is the fxxxxxxxg difference? The fact that money is involved? OK, make it a CD jukebox. Can I get a separate patent for every new CD?

  223. 45

    i think that your reference to benson is incorrect. this case is not like benson. in benson you had an attempt to patent an algorithm for bcd to binary number conversion on a digital computer. here, the claim is not concern with a mere manipulation of the contents of an email message but rather it is concerned with a process for determining whether to deliver a given email message.

    furthermore, benson did not require a transformation test, in fact, it expressly stated the opposite. in benson the scotus merely stated that the transformation test is an important clue for determining statutory subject matter.

  224. 44

    I have no idea why you are bringing up Alappat. Did I say anything about patent eligibility?

    Because your analysis, at least with respect to the “capable” part, is essentially identical to the BPAI’s reasoning in In re Alappat and in In re Freeman. In both cases, the Federal Circuit smacked that reasoning down, explaining that a programmed computer is a new machine, relative to the previously unprogrammed computer.

    Whether that new machine is obvious is another question. But it’s not true that the distinction in the present case is with respect to the type or source of the information, but with what it specifically does with a given type of information and how it responds to it.

    That said, the claim quoted above is pretty poor. In re Hyatt (1983) is almost never applied properly by the Office, and doesn’t really apply here, but there has to be something wrong (under Section 112 paragraph 2, maybe under paragraph 6) with a claim directed to an apparatus for achieving X comprising a computer configured to achieve X. Give me two steps (jeez, I’m channeling Lynyrd Skynyrd) carried out by the thingy; give me another device; give me something else, please.

  225. 43

    i’m not sure that i agree with your interpretation of bilski. from what i can tell, the only definite thing that you got out of biliski was a disposition of the bilski application, but you don’t really get a clear idea of why bilski was declared to be an “abstract” idea…a point which stevens noted in his (imho, much better written) concurring opinion.

    bilski just says that the machine or transformation test is not the only test for statutory subject matter, but gives no further guidance on how you determine what is statutory subject matter.

  226. 42

    Bilski was not about software patents or even computers.

    Do you even understand the aspect of State Street Bank that was criticized?

    Seriously!

  227. 41

    This aspect of Benson was dismissed at fn. 11.

    And yet, you just got done cherry picking and making an overreaching statement about how Benson was just “reaffirmed.”

    Note in Eibel Process, the machine was modified structurally.

    Do you even realize that programming modifies a machine structurally? Seriously!

    You are either ignorant or duplicitous, but either way, enough from you!

  228. 40

    but the Supreme Court just reaffirmed Benson that said that a computer with new software was not new a new machine

    Cite please. Note that Benson was not “reaffirmed” as you indicate here.

    You cannot seriously believe that a programmed computer without more is patentable subject matter

    You cannot seriously be making a statement on a subject you clearly know nothing about. Do you know what “programmed” even means?

    See the discussion of this issue in Diehr, albeit in dissent.

    You cannot be trying to make a legal argument from a dissenting opinion. Seriously?

    All you rely on is highly discredited Federal Circuit law.

    You do realize that portions of a decision can be discredited and other portions remain fully in tact. Seriously.

    Overreaching and making up your own law on technology that you are clueless with is just plain sad.

  229. 38

    Diehr’s dissent heavily criticized the very cases relied upon by Alappat for their crabbed view of Benson and that a programmed computer was a new machine.

    None of those cases are good law especially in light of Bilski’s heavy heavy criticism of State Street Bank that repeated that heresy.

  230. 37

    when interpreting claim language you do a phillips analysis from the standpoint of a phosita.

    in the first instance – delete the word “detect”, you are left with analyzing an email message. but the court inferred that some degree of detection was inherent in analyzing since you would have to detect that email message before analyzing it.

    in the second instance – delete “analyze”, the court relied upon an analysis of the claim as a whole. in that case, you would have a detection step but also a determination of whether or not the sending party was an authorized sender. referring to the specification, the court concluded that analysis was inherent in the “determination” step.

    in the third instance, the court relied on the specification which presented an embodiment in which both detection and analysis were performed.

    consequently, even though there were 3 possible corrections to the claim language, each possibility comprised the same claim scope.

  231. 36

    Your terminology is a little loose, so I’m not sure I understand your question. Nothing happens to the middle decision, at least in the sense that the result remains the same. The loser is still the loser, and there is not usually any basis for a “do-over” of that particular case.

    If your question is how much value that middle decision has as precedent in a new case, then the answer is that it depends on how much that middle decision really depended on the earlier, overturned holding. (A holding is not the same as a result. For that matter, a decision is not quite the same as either, if you view, as I do, a decision as an application of law to the specific facts of a case. A court doesn’t quite rely on an earlier decision; it relies on an earlier holding as to the content of the law, and then applies that holding to the new facts.) If the rationale for the holding in the intermediate case is really undermined by the over-turning of the original holding, then the intermediate case is probably worthless. But, there is no simple formula, and it’s not always entirely predictable. On the other hand, it’s not nearly as arbitrary and chaotic as some of the posters at this site suggest.

    I hope this helps.

  232. 35

    Malcolm, maybe they did file it and were still waiting years later for it to issue. I am still waiting for corrections to issue that were filed in 2007 that are critical. I joke not.

  233. 34

    If wholly preempt is understood to require that all uses of the abstract idea be foreclosed by the claim in order for the claim to be unpatentable, that is not good law and has not been since Parker v. Flook. This aspect of Benson was dismissed at fn. 11.

      * fn11 “It should be noted that, in Benson, there was a specific end use contemplated for the algorithm — utilization of the algorithm in computer programming. See In re Chatfield, 545 F.2d 152, 161 (CCPA 1976) (Rich, J., dissenting). Of course, as the Court pointed out, the formula had no other practical application; but it is not entirely clear why a process claim is any more or less patentable because the specific end use contemplated is the only one for which the algorithm has any practical application.”

    Flook held, specifically held, that even limitations to a field of use would not save an otherwise unpatentable claim. Then they again clarified Benson:

      “First, respondent incorrectly assumes that, if a process application implements a principle in some specific fashion, it automatically falls within the patentable subject matter of § 101 and the substantive patentability of the particular process can then be determined by the conditions of §§ 102 and 103. This assumption is based on respondent’s narrow reading of Benson, and is as untenable in the context of § 101 as it is in the context of that case.

    Flook noted to be patentable, the use of a law of nature or abstract idea in a claim must be directed to an otherwise statutory process or machine, referencing, among other cases, the Eibel Process case involving a claim to a machine where the novel feature involved the used of gravity by raising one end of a “wire” so that the flow of pulp paper eliminated tears and the like. link to supreme.justia.com

      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. Respondent’s process is unpatentable under § 101 not because it contains a mathematical algorithm as one component, but because, once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention. Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application.

    Note in Eibel Process, the machine was modified structurally. In contrast, in Flook, the claim merely calculated a number that was useful in catalytic chemical conversion of hydrocarbons. The claim did not include or modify an otherwise statutory process or machine.

  234. 33

    I have no idea why you are bringing up Alappat. Did I say anything about patent eligibility?

    Lots of inventions, in many fields, are based on old materials that are “capable” of being modified to yield the claimed invention.

    Show me an apparatus claim in any other field where the invention is distinguished over the prior art solely by its functionality (i.e., by what it achieves), without any reference to novel structure.

    You choose to believe that the modification of a general purpose computer is somehow not real, or is of lesser value than other modifications.

    Nope. Just really obvious, especially if the claim just recites some generic “determining” steps in a “programmed to” or a “wherein” clause.

    As I said, that’s what computers do: they process information. Everybody knows this. The type of information or the source of information that the “new” computer apparatus processes can not possibly make a difference for 103 purposes unless ordinary skilled artisans believed that such information could not be processed. And if that’s the case, the claims need to recite the solution to that problem in detail, including new structure if they are composition claims. Otherwise it’s just six of one kind and half a dozen of the other.

    David “my amplifier goes to 11” St. Hubbins is a genius compared to most software appplicants and the PTO employees who examine their claims.

  235. 32

    Leo, let me ask you something legal if you don’t mind. If, for instance, a court at the appeals level decides something. And if that same court then relies upon that decision to decide a slightly different but similar issue then what happens when the original decision is expressely overruled? Legally speaking, what happens to the decision in the middle?

  236. 31

    Leo, but the Supreme Court just reaffirmed Benson that said that a computer with new software was not new a new machine. All you rely on is highly discredited Federal Circuit law. See the discussion of this issue in Diehr, albeit in dissent. That line of cases culminated in State Street Bank. A majority of the Bilski court heavily criticized State Street Bank.

    You cannot seriously believe that a programmed computer without more is patentable subject matter?????

    Now, if the PTO is still granting such patents, shame, shame on them. Seriously.

  237. 30

    Oh, come on, Malcolm, we’ve been here before. The claim doesn’t recite a computer that is “capable” of being programmed in a particular way. Alappat (spelling?) made it crystal clear that there is a difference between the unprogrammed “general purpose” computer, which is certainly capable of being programmed to do many things, and the programmed “special purpose” computer, which actually is programmed to do something particular.

    Lots of inventions, in many fields, are based on old materials that are “capable” of being modified to yield the claimed invention. You choose to believe that the modification of a general purpose computer is somehow not real, or is of lesser value than other modifications. That’s certainly your right, but I don’t think you’re likely to see the law go down this route.

  238. 28

    Re: Certificates of Correction. Yes, it may seem that way. But note that a certificate issued to correct a USPTO printing error has been held by the Fed. Cir. to not be retroactive in effect and to only be effective in suits filed AFTER the correction – Southwest Software, Inc. v. Harlequin Inc.

  239. 27

    Certificates of Correction: The patentee could have corrected this by filing a request for a certificate of correction with the USPTO.

    A terrible and incredibly costly mistake was made by whoever decided against filing the Cert of Cor.

  240. 26

    I’m not talking to backsliders like you Ned. Go and review my literature on the subject until you repeat the same learning process you went through a month ago. I wrote it specifically for you. Don’t let it go to waste due to backsliding.

    You must emerge triumphant and realize that “the reason” that the claim in Benson WAS considered drawn to an abstract idea was because, gasp, it was preempting all uses of the abstract idea (JUST LIKE A CLAIM RECITING THE ABSTRACT IDEA BY ITSELF WOULD DO LULZ). And you must also realize that there is no other reason.

    When you emerge triumphant do let me know.

  241. 25

    don’t think the inventors are relying on the content of the e-mails to distinguish their claim from the prior art. Rather, the distinction, assuming it exists, is in the configuration of the computer

    Computers couldn’t detect emails prior to this patent?

  242. 24

    Did I say there was anything abstract about an email travelling between a sending party and a recieving party? No I did not. I recited an abstract idea that includes mere determining. The abstract idea does not involve an email travelling between a sending party and a receiving party.

    Although, if you’d like to discuss the abstractness of an email travelling between parties we can do that at a later date with you footing my usual fee.

  243. 23

    Nope I haven’t yet.

    And no I don’t think two computers programmed to detect and analyse RESPECTIVELY is equivalent to one computer programmed to accomplish both tasks. And I also wish you gl making your doctrine of equivalents argument after they make this correction and then the accused device is two distinct devices.

  244. 22

    You must have missed my point. I don’t want to give them any benefit. I want to not give them any modification even if there is a blatant error because of the first mentioned condition in D’s post.

    Of course, I have not read the entire spec and claims and so it could be very reasonable to make their “and”. But in this context that’s about as likely as a snowflake surviving in he ll.

  245. 21

    Ned, I don’t begin to understand what you’re saying about Benson, but never mind that. In this case, I don’t think the inventors are relying on the content of the e-mails to distinguish their claim from the prior art. Rather, the distinction, assuming it exists, is in the configuration of the computer. I really don’t want to re-hash the arguments about whether a computer programmed to do X is structurally different from a computer programmed to do Y. As of today, the law says that it is.

  246. 20

    6: I cannot go along with them in saying that the correction will not be a big deal. It could become a very big deal, especially if we adopt their proposed change

    I don’t see what possible difference it could make given the other (gag) “limitations” in the claim.

  247. 19

    Indeed, all these claims are highly suspect under Benson, Flook, Diehr and Bilski, but not, under any number of overruled Federal Circuit decisions, including those all-but overrule such as State Street Bank.

    Alappat is at least defensible because the claimed rasterized did smoothe a display waveform, a new result that is different in kind that a new business utility.

  248. 18

    Put another way: as of the priority date of this application, computers and computer networks were old and it was well-known that computers are capable of analyzing any type of computer-readable information, for any purpose.

    What possible difference could it make when determining obviousness of a computer-network “apparatus” whether the information is sent by an “advertiser”, an “authorized user”, a grandmother, a dog with a nose-activated keyboard, or five hundred rabbis? Or whether the information in the message is an offer to buy a house, a request for more Alpo, a suicide note, a terrorist plot, or an invitation to an orgy?

    Unless there’s a special reason that a computer wouldn’t be able to process the information, then the information should be treated equal to any other generic information and ignored for patentability purposes. Of course, if there is something “special” about the information that would present a special problem to the computer in terms of processing the information, then the detailed structure-based solution to that problem should appear in the claims (as opposed to some hand-waving about the result achieved).

  249. 17

    So, I claim an e-mail over the internet, where the e-mail varies from prior e-mails in content, and the internet is unchanged.

    Look to Benson. Did the algorithm modify the computer? No. The computer did its thing, calculate the algorithm. The algorithm varied from prior algorithms only in its information.

    The e-mail on the internet is the same in substance as the algorithm in Benson. Since it varies only in content, the claim is on the e-mail content. That is unpatentable information, unless, that is, State Street Bank remains good law. But I doubt that.

  250. 16

    What is abstract about an e-mail traveling between a sending party and a receiving party over a communication network?

  251. 15

    anon, MM is on the warpath about the PTO issuing patents that seem on their face obvious to even two year olds with average skill in dealing with life. I think he is right to raise the concerns he does, because obvious patents are something that we can all agree are not good for anyone but the patentee, granting a monopoly in exchange for nothing in return. But in addition, these laughable patents bring disrepute to the patent system as a whole. It is a wonder that you yourself do not see that and support Malcolm’s well-founded criticisms.

  252. 14

    You didn’t read the case, did you?

    Besides, don’t you think two computers programmed to detect and analyze is equivalent to one computer programmed to accomplish both tasks? I do.

  253. 13

    13. An apparatus for determining whether a sending party sending an electronic mail communication directed to an intended receiving party is an authorized sending party, the apparatus comprising:

    a computer in communication with a network, the computer being programmed to

    How can it be that the patentability of an apparatus can hinge on what indisputably OLD elements in the art are “capable” of doing, without recitation in the claim of any structure that would distinguish that old element from the prior art?

    I’m not aware of any other field of endeavor where such laziness in claim drafting is endorsed by the PTO or the courts. One could argue that computers are “different” and warrant an exception, but the “differences” would seem to me to favor even more strict prohibitions against such claims.

  254. 12

    Paul, I think the difference there, at least in part, was that the scope of the claim was dependent upon the correction. Here, regardless of choice, the scope was the same.

  255. 11

    I note that this CAFC panel fails to even cite its prior notorious “burn the buns” decision, Chef America, Inc. v. Lamb-Weston, Inc., where that prior panel REFUSED to allow fixing of a REALLY obvious drafting error that made the claim read illogically and inoperatively.

  256. 9

    Putting a missing “and” rather than an “or” between the two words seems highly appropriate – why give the party creating the ambiguity any benefit from it by broadening the claim?

  257. 8

    6, see my post on Benson below.

    I will agree with you that the abstract idea does not appear to modify a statutory machine or process in any way. The statutory part of the claim is unmodified, old. As a whole, the claim varies from the prior art only in information.

    Now, such might be patentable under State Street Bank because it produces a new business result that is “concrete,” but I find it hard to reconcile with Bilski because that case seem to throw State Street into the trash.

  258. 7

    6, I’ve been thinking about our discussion regarding 101. When we consider Benson’s claim to calculating a new math algorithm on an old computer, the “reason” that the claim can be considered to be drawn to the algorithm, per se, is that the algorithm does not modify the computer in any way to make it different, i.e., new, or to use the computer to do something different in kind. It does the same thing it always did, execute programs, numbers in, numbers out.

    No functional modification.

    For the same reason a claim to an old piano player with new music can be considered to be drawn to the music is because the music does not modify the piano player to make it different or new, and the piano player with the new music doesn’t do anything different in kind from that which it did before.

    In contrast, the molding claim of Diehr did modify the molding process functionally.

    Turning to Flook, there was no process actually claimed other than calculating a number, and that is not a statutory process. There was nothing there to functionally modify.

  259. 6

    Also, aren’t abstract ideas a little more at play here then potential 112 issues?

    Is this not an attempt to preempt every use of the abstract idea of:

    determining whether a sending party sending an electronic mail communication directed to an intended receiving party is an authorized sending party by detect analyze the electronic mail communication sent by the sending party to determine whether or not the sending party is an authorized sending party or an unauthorized sending party wherein the authorized sending parties are parties for whom an agreement to pay an advertising fee in return for allowing an electronic mail communication sent by the sending party to be forwarded over the network to an electronic mail address associated with the intended receiving party has been made.

    I mean, I’m not saying the claim is valid or invalid as validity is a question for a court. But that’s an abstract idea written above. And it appears their claim to an apparatus including a computer covers all uses of that abstract idea.

  260. 4

    ” but that the best correction is to add an “and” between the two limiting words. ”

    Why not an “or” or simply deleting one of the words? I should think that putting an “and” between them would be the worst possible way to resolve the matter. By putting “and” then you have to have both detection and analysing for either prior art or infringement. This in distinction to the simplistic “or” or striking one word or the other, which would require only one thing to be found.

    I mean, for instance, perhaps the accused system uses one computer for detection and another computer for analysing, bam all of a sudden no infringement.

    In either event, as much as I’d like to agree with the feds on this one, in so far as there is a blatant drafting error, I cannot go along with them in saying that the correction will not be a big deal. It could become a very big deal, especially if we adopt their proposed change, perhaps the most impactful way of changing the wording that is immaginable.

  261. 3

    Yes, that’s almost as pathetic as allowing a small piece of a big piece of biological material to be patented. Who would have ever thought to cut something big into something small??? Oh wait, at least a computer brain cutting something big into something small recites, you know, structure, which is patentable…

    But wait, since the PTO has been making the mistake of allowing patents on big things cut into small things for a long time, that’s okay…

    Pathetic indeed.

  262. 2

    It seems obvious in hindsight that if the variation in claim language does not affect the scope of the claim, one can essentially ignore the error.

  263. 1

    CBT’s Patent No 6,587,550 covers a system of charging an “advertising fee in return for allowing” e-mail from an authorized sender to pass through an ISP.

    Because nobody ever thought of making money by charging people fees when they engage in certain activities.

    But wait! This method uses a POWERFUL COMPUTER BRAIN to determine who gets charged.

    Good gxd, our PTO is pathetic.

Comments are closed.