In re Aoyama (Fed. Cir. 2011)
Aoyama’s pending application claims a supply chain management system with two elements: “an order controller system” and “a warehouse system.” According to the claim, the order controller generates “transfer data” using “reverse logistic means” and the warehouse receives the transfer data. The Examiner identified U.S. Patent Application Pub. 2001/0034673 (“Yang”) as fully anticipating and that rejection was affirmed by the Board of Patent Appeals and Interferences (“Board”).
On appeal to the Court of Appeals for the Federal Circuit, a split panel agreed that the claims lacked merit but found them impermissibly indefinite rather than anticipated.
The key to the decision focuses on the means-plus-function “reverse logistic means” limitation.
Means-plus-function (MPF) claims are deceptive. MPF claims appear to be broadly drafted and without any structural limitations. However, the patent act requires that the actual scope of MPF claims be limited to structures disclosed within their specifications. 35 U.S.C. 112 p6. The court has also repeatedly held that an MPF limitation is considered impermissibly indefinite if the specification does not contain any structure that performs the claimed function.
Here, the claimed “reverse logistic means” generate “transfer data.” Aoyama pointed to a flow-chart (Figure 8) as providing the necessary structure. (Shown below). In reviewing the flow-chart, however, the Federal Circuit could not identify sufficient structure. In particular, the court noted that the flow-chart identified a number of results, but did not identify any way that “a computer could be programmed to produce the results described in the boxes.” Quoting both the Examiner and the Board, the Court wrote that Figure 8 only “presents several results to be obtained, without describing how to achieve those results, and certainly not how to generate transfer data.”
Importantly, the question of means-plus-function structure is much like that of written description. It does not matter whether one skilled in the art would be able to create a structure to perform the claimed function. Rather, the focus is on whether such structures were disclosed in the specification.
Because the means-plus-function limitation lacked sufficient disclosure of an accompanying structure and are therefore unpatenable.
In dissent, Judge Newman argued (1) that the federal circuit improperly raised the issue of indefiniteness and (2) that the figure and accompanying text should be considered sufficient structural disclosure.
One other thing to note: Congress is about to pass a patent reform bill. Did they put in there that software patents are to be removed under 101? No.
The three judges should be impeached.
The holding of CYBERSOURCE is just shameful. Let’s by pass Congress, the SCOTUS, the precedent of the Federal Circuit, and rather than cabin Benson as the SCOTUS has done, let’s expand its holding and recite policy reasons for doing this that have not been cited since Benson almost 50 years before.
And, then let’s just distinguish our holding against all the cases based on sheer nonsense.
What bothers me so much is that it is not just this case or the holding of the case but the nation as a whole seems to have gone down this rat hole of amoral behavior. There is no shame left. We are in an era that if you can do, then do it. Steal. Cheat. Lie. Rape. Burn. As long as you can do it, then just do it. No morals. No boundaries.
It scares me that this opinion was written. It crosses the boundary of civil behavior. I believe this case is a mere foreshadowing of what is to come.
And the fact that the readers here have not as a whole condemed this case is even the more frightening.
There are so many reasons that this holding is wrong that it boggles the mind to list them.
Newman got it right. Wow, these animals are really going after software. This holding is surely going to raise the cost of writing a software patent for no reason other than these “judges” want to get rid of software patents.
I read the CYBERSOURCE opinion. Man, that is one of the most twisted bizarre opinions since Benson. Shameful and ridiculous.
1) Benson is not good law.
2) Both the GPS case and the graphics mask case could have a data gathering step and then done with a pencil.
I don’t have time to go into depth, but the biggest reason that this is a bad law is that SCOTUS in Bilski did not hold that if one can perform a method in a human head than a machine that performs the method is not eligible for patentability. That is the holding of Cybersource. If the SCOTUS believed that was a consequence of “abstract” then they would have held as such and not have bothered with all the rest.
Also, the way they tried to get around the fact that a general purpose computer that is programmed is a particular computer was shameful.
This case makes me think that what we are headed for is a complete reset of the country. Judges like this that feel no obligation to apply the law are as bad as the politicians and Banksters. You have to believe that our country is going to end badly when Fed. Cir. judges write an opinion like this.
“PRO SE LOLOLOL”
Correct. To paraphrase Nikon: if the patent matters, the representation matters.
Oh, and one more point, Rader seems to have adopted this same approach even for method claims. See, Research Corporation Technolo-gies, Inc. v. Microsoft Corporation, 627 F.3d 859 (Fed. Cir. 2010)(the patentable end use does not have to be claimed.)
“that could damage their patent portfolio.”
Excellent observation, that.
Simple, "Programming is done for a reason and that reason supplies your critical "to".
It really does not get simpler than that."
Simple, it not as simple as that. The "reason," as you say, must within the useful arts, something physical, and not something such as balancing the abstract concept such as risk (Bilski.)
The critical contribution of Alappat was that the
technological use did not have to be claimed. It only had to be disclosed.
And further to my response, I hereby incorporate by reference what Mooney said at 1:13pm, without admitting that any particular argument advanced on the basis of the credible, specific, or substantial utility criteria of 101 is “a loser”.
I’ve been through it specifically on this board more than once, in threads on testing methods, for example.
And, no need to get testy. I am familiar with not only the US judicial system, but with the operation of big lit firms–which is where you will find many of the real reasons that particular issues are raised and others are not.
“many parties choose to settle or pursue other arguments rather than present a “winnning” argument that could damage their own patent portfolio.”
Tinfoil hats to the left (Mooney, stop hoarding).
Not familiar with the US judicial system? It is motivated infringers that present those types of arguments. Considering that these suits involves cases dealing with tens or hundreds of millions of dollars at stake, it is interesting that these issues haven’t been raised. I would venture a guess is that no one bothers raising these issues because those arguments are losers.
Have you ever been involved in patent litigation? The number of d.o.a. arguments that are presented vastly outweighs the number of “winner” arguments. Another interesting correlation is that greater the number of partners and/or in-house counsel involved in the ligitation, the greater the number of “loser” arguments that will be presented. People with big egos get really attached to their “loser” arguments.
As has been noted a million times on these threads (perhaps you’re new here), many parties choose to settle or pursue other arguments rather than present a “winnning” argument that could damage their own patent portfolio.
“Just because the specific, substantial, and credible criteria aren’t often used, doesn’t mean that they cannot be very useful. It just takes the court a while to realize these things.”
Not familiar with the US judicial system? It is motivated infringers that present those types of arguments. Considering that these suits involves cases dealing with tens or hundreds of millions of dollars at stake, it is interesting that these issues haven’t been raised. I would venture a guess is that no one bothers raising these issues because those arguments are losers.
However, since we are playing this game, what criteria do you want to employ? Credible? Substantial and/or Specific? Care to walk us through how such an argument can be made?
Sounds about right. Thanks JCD.
I want to elaborate on my last post a bit. MPF claims are rarely used in most art areas because they are unduly limiting. With a conventional claim, you can disclose one implementation of an invention, and then claim the invention itself. With a MPF limitation, you suddenly limit the claim to subject matter disclosed in the specification.
That some practitioners like to use MPF language in the software arts has always been a bit weird. I believe that, to a large extent in the software context, the goal of such language is usually to take advantage of abstract disclosure of functionality with little or no structure to get broad coverage on MPF limitations. Given the history and intent of MPF limitations, and their interpretation with respect to other art areas, this made little sense. This opinion appears to recognize this practice, and attempt to shut it down.
Excellent, in that case.
Bill promptly, my friend!
“However, the “utility” requirement is on the bottom of the list in terms of usefulness.”
Until it isn’t.
Just because the specific, substantial, and credible criteria aren’t often used, doesn’t mean that they cannot be very useful. It just takes the court a while to realize these things.
The biggest problem with this case, as with many of these cases, is the dicta therein that can be used to confuse.
As far as I can tell from my brief reading (disclaimer: I did not go review this patent), the court simply felt that the flowchart disclosed insufficient structure to support the MPF limitation. From glancing at the flowchart, this doesn’t really seem to be a shocking result.
The court is clear in that “[s]ufficient structure must simply ‘permit one of ordinary skill in the art to know and understand what structure corresponds to the means limitation’ so that he may ‘perceive the bounds of the invention.'” (quoting Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008).)
Here, the court simply finds that the flowchart did not provide sufficient structure to be able to understand what is encompassed by the recited “reverse logistic means for generating transfer data”. From my quick review, I can’t say that I am entirely sure either. It wouldn’t surprise me if the applicant was trying to make this broad enough to essentially read on almost any means of generating transfer data. If this was the case, is it really surprising that the court took a negative view of this?
One interesting angle: if you think that this claim is definite, what exactly do you think limits the “reverse logistic means for generating transfer data”? What sort of reverse logistic means for generating transfer data would NOT be covered by this claim?
Exactly why SCOTUS baulked in Bilski. They thought seriously about telling the American people that pure business (no technology) does not belong to the “useful” arts of the patents clause of the Constitution, and then 5 of them went off that idea.
“For now.”
You are going to be hard pressed to find any judge that is going to buy an argument that says that a programmed computer doesn’t have a utility. There aren’t a whole lot of arguments you can find to invalidate “software” patents — some, but not a lot. However, the “utility” requirement is on the bottom of the list in terms of usefulness.
“I suspect that many of these deals are broader in scope than the mere IP.”
Nope — pure IP, no consulting, no “hardware,” nothing but the patents.
“As for the utility requirement, that is one of the easiest requirements to overcome.”
For now.
You are more than welcome.
As for me, I have vastly more interesting risks to take on and manage than the vagaries of software/system patents.
“EVEN IF one was able to have drafted one of these “well”–that is, in fulfillment of 112, 101, 102, and 103–the resulting coverage would be so narrow as to be practically worthless.”
Then you are not drafting well…
But I am glad that you are so generous as to leave this business to others, so for that, Thanks!
You are missing lots of critical information regarding my particular clients, of course.
Things like opportunity cost of patenting, development and product launch schedule, IP portfolio strategy, co-operative development agreements, etc..
While I appreciate that some entities can, and do, still derive value from software/system patents, that is increasingly due to their particular chosen business practices and less and less due to the place held by software/system patents within the broader patent scheme–that is, it has more to do with the character of the business and less to do with the character of the patents.
I left lots of $ on the table, but I still feel good about it. EVEN IF one was able to have drafted one of these “well”–that is, in fulfillment of 112, 101, 102, and 103–the resulting coverage would be so narrow as to be practically worthless.
Having done all the previous opinion work, I felt then, as I feel now, that I knew what I needed to in fact draft one “well”–but my clients generally don’t want narrow patents unless they are a critical piece of a larger portfolio puzzle, and none of my clients were particularly in the business of software, rather software is a mere adjunct to their core businesses.
And as for software/system patents being sold for millions, well, I believe you if you say it, but I suspect that many of these deals are broader in scope than the mere IP, and include it only as a part of the negotiated purchase. I do know of somebody who recently bundled it with other business properties because they thought that was the only way to extract some value from it–to throw it into the mix–because contemplated longer-term revenue streams from licensing were no longer deemed viable. And they’re going to do it again, and is a practice they are recommending to essentially all of their clients at this point.
So I guess they’re not completely sunk in some cases, just listing and taking on water. No doubt some entities can still extract value therefrom, but I’m glad that I’m not involved with any at this point.
If one closes their eyes to the fact that software is equivalent to firmware is equivalent to hardware, then the perpetual confusion one finds themselves in should be no surprise.
And yet, you insist on presenting yourself as a befuddled m0r0n, chasing incorrect doctrines and denying the reality all about you, shocked at the prospect that physical changes actually do happen when a computer is programmed and refusing to accept the norms that are understood by the persons of ordinary skill in the particular art.
THE TUNE OF THE TIN MAN (SING AS IF HIM)
When I see information,
and not of that Vocation,
I’m dumped upon again.
And if that’s all forgiving,
when I’ve done not much living
you must also have no Brain.
Nor me 6. But it is always those specific details that are asserted in these columns, as the new “structure” or the thing that makes the machine “specific” and therefore renders the claimed subject matter patent-eligible. Me, I think the app should include disclosure of the very structure that is relied upon by the prosecuting attorney for eligibility/patentability. Does there not have to be present a written description of what Applicant regards as his invention?
“As AI would now say “Bangs Gavel. Case closed.”
Hmmm.. I have to check my portfolio but I may a have a copyright, trademark, and pat pend on said process. Keep check on your post for a bill .
“The underlying concepts are nearly as old as human commerce. That’s how sxxxty this p.o.s. application is. It could easily be invalidated under 102, 103, 112 or even 101.”
If this is true then the claims should be rejected under 102, and 103 at best. But 112, and certainly 101 are separate issues.
“The critical language in the majority opinion was the word ‘to’.”
Ned – what do you think the word “programmed” entails, but an inherent “to“?
Programming is done for a reason and that reason supplies your critical “to“.
It really does not get simpler than that.
“what I don’t fully understand is many continue to believe that a programmed computer and/or a programmed CRM are patent eligible subject matter regardless that they do not otherwise pass the MOT.”
Let’s start with the language of the statute: “any new and useful process, MACHINE, manufacture, or composition of matter, or any new and useful IMPROVEMENT THEREOF.” A programmed computer is an “improvement” of the non-programmed computer. Pretty f-n simple.
Also, regarding Gottschalk v. Benson, the question addressed is whether the method described and claimed is a “process” within the meaning of the Patent Act. Put another way, it wasn’t a “machine” case. MOT doesn’t apply to machines — if it is a machine, it automatically passes the test. Again, pretty f-n simple.
For someone who suggests that people read “Douglas’s opinion at the Supreme Court,” you need to take your own advice.
As for the utility requirement, that is one of the easiest requirements to overcome.
Ned,
You are overreading again.
Severly.
Guys, what I don’t fully understand is many continue to believe that a programmed computer and/or a programmed CRM are patent eligible subject matter regardless that they do not otherwise pass the MOT. That issue was the issue on appeal in Benson, and the Benson claims were found not patent eligible. The Benson court, while not fully accepting the MOT as the exclusive test, did say that it was an important clue.
Rich, in Benson expressly stated that programmed computers were machines within 101 “without” a requirement of a specific use. He was reversed.
For all the sturm and drang put out by the defenders of an obviously lost cause, Alappat simply cannot overrule Gottschalk v. Benson even if it wanted to.
I think the point of Alappat was whether the claim was claimable as a machine despite the fact that the claimed machine itself only produced data, data that was used for smoothing a display waveform. The dissent would have said no. The majority held yes. The critical language in the majority opinion was the word “to”. A single word. It modified “produce” as in “produce a useful, concrete and tangible result.” In other words, “to” was acceptable for a machine that only produced data, so long as the specific use disclosed was “useful, concrete and tangible.”
Readers of Alappat who take away from it some glorious idea that that court endorsed the patent eligibility of all programmed computers without regard to whether they produced data that was useful in a concrete and tangible way are way out there on a limb. The case does not stand for that proposition at all.
It would be good for doubters to actually read In re Benson to understand Rich’s holding in that case, and then to read once again Douglas’s opinion at the Supreme Court. It is revealing on this point.
“As those app’s would be issuing as patents about around now, or would have just recently issued or still be in progress, professional judgment and integrity carried the day, and I’m sitting pretty.”
Funny that … I know of clients CURRENTLY selling software/system app patents to extremely sophisticated buyers for millions.
“Looks like Spam for dinner again!”
And my clients are eating filet mignon and I’m not doing too badly myself.
FYI — there is a difference between sloppy application writing and unpatentable subject matter. Just because you cannot overcome the sloppy application writing doesn’t mean that clients cannot obtain extremely valuable patent rights.
As Dirty Harry once said, “[a] man’s got to know his limitaions.” For your potential client’s sake, I’m glad you knew yours.
FYI the simple minded was not given what she needed to understand. So now i know he published my Patent even though it was morphed over and over before he completely buried me in that FACT! The FACTS being you can not capture back what has been published.. nor can you file a CIP that will be allowed. So now I will Bury Them!
1) Understand the fallacy of the “all structure” (non)rule.
2) Understand even absent the ‘all structure” (non)rule, the role of inherency.
3) Understand that the analogy is not based on “claim details’ in the first place, but rather on the concept of “underlying invention” and “perform entirely in the human mind.”
Supposedly they all do Max, but I’ve never seen one that gets into those specific details.
The only thing I don’t understand is why would they steal just about all my Evidence… and still leave the Newest File..that had no reference to 09/630/926?
I would say in hindsight that makes them not very smart. I believe that is just what they refer to as more Prima Fascia. And just the mention of UT sends chills down my Spine. But i don’t understand how my sanity can al all be questioned when the evidence was never there to discern from?
Details Details Details! But the details are hidden. So now I know it was Published. The details I missed was how it was done.
But how can a Pro Se’r miss what they don’t know, or can’t see.. I guess that makes me Blind before my time? TSK TSK TSK!
“How can that possibly be? It cannot be, so that interpretation of Alappat must be wrong.”
BS Detector just went off the charts again…
It was around about 4 years ago now that I had my first consultation with a potential client regarding the possibility of drafting and prosecuting a software/system-type patent application.
After having shredded such claims in opinion work that I had done, I politely declined, and explained to them why I didn’t believe such claims were worth the paper they were written on, and why I couldn’t professionally countenance involvement in any such thing, even if they were willing to pay.
I’ve since turned down a number of other such requests, and have never drafted or prosecuted a software/system app.
As those app’s would be issuing as patents about around now, or would have just recently issued or still be in progress, professional judgment and integrity carried the day, and I’m sitting pretty.
I have received more than one call from people thanking me for having saved them money–and one call just to tell me that I was right, after a potential client went and had somebody else prosecute an app, which the client believes is now essentially worthless.
Every dog has his day, and today is mine.
Now if I can just leverage all that goodwill into paying projects, now that nobody is spending any money…
Looks like Spam for dinner again!
“Spam–A Good Conscience Product”
How about B claims. Ever seen one that recites a specific arrangement of pits (or even one that was supported by a specification that includes a map of the actual arrangement of laser pits on the disc that programs the computer).
“treat them as processes”
The implications of this protocol are convoluted, unwieldy, and largely unknown–and most of all, unnecessary.
Why throw rationality out the window along with economy?
Over and over I tried to get the info on what was missing on the correction I sent in for 08,546,033. No help just constant letters telling me something must be lost, then more money.. something is missing. This went on and on, Never did the USPTO tell me what was missing. I was PRO SE LOLOLOL. again now I see that this is now where I can see it. I never got a notice that it was requiring an OA NEVER. Now I see it was a Notice of Reissue in the Official Gazette. Now what was Reissued the only embodiment that was allowed me the Jet ski Fender? Not the BLUE one I received that said I had some of what i spoke of to Tamai. Now I ask you if it was the Citings that were missing and now I know that it was… And I was PRO SE! Wasn’t that what I should have been told by Sotelo, instead of letter after letter saying there was something missing? So if I got no mail, not a hint of what it was I needed to do as a PRO SE… then now why is it out there finally for me to see? Is there a reason there? I sure would like to know. But then I was never told as a Pro Se so why would I be told now as a so called Pro Se. How can all that be done to a Pro Se? It can’t.
Citings missing .. See how easy that is to say! Sotelo called me before to say plenty of things.. why wouldn’t he call the Pro Se”R? Because I wasn’t!
I’m unaware of any claims to computers reciting electrons and gates that was deemed unpatentable.
I have no problem accepting that, so long as they tell me how it was changed.
1) composition claims reciting “instructions” that are “readable” by those machines but which are structurally indistinguishable from prior art compositions,
Completely false – factually and legally
You’re not paying attention. We’re talking about patent claims, specifically claims to computer-readable “discs” do not recite any structural features that distinguish the claimed composition from prior art compositions.
Please go troll some local news website where you will encounter people with capacities for understanding that are similar to your own.
But Alappat did have specific structure, a pair of ALUs and a barrel shifter, IIRC, and it was described.
Benson also had specific structure, a shifter. That was enough structure for claim 8 according to Rich, writing for the court. Regarding claim 13, it was directed merely to a program. But, there Rich wrote that a programmed computer was a machine and otherwise statutory:
“Realistically, the process of claim 13 has no practical use other than the more effective operation and utilization of a machine known as a digital computer. It seems beyond question that the machines-the computers-are in the technological field, are a part of one of our best-known technologies, and are in the “useful arts” rather than the “liberal arts.” as are all other types of “business machines,” regardless of the uses to which their users may put them.”
link to digital-law-online.info
Benson was overruled by the Supreme Court. The Supreme Court held both Benson claims invalid under 101 because the claimed programmed computer did nothing more than calculate numbers.
Now are we to understand the very proposition of law put forth by Rich in In re Benson, and which was reversed by the Supreme Court, is now good law again? How can that possibly be? It cannot be, so that interpretation of Alappat must be wrong.
Let’s look further for clues as to why the claims in Alappat passed 101 muster.
Alappat also held that the claimed rasterizer did something useful, concrete and tangible. That new use is what made the claim patentable subject matter. Even though that test has been overruled in Bilski, it remains somewhat obvious that Alappat’s claims, treated as a process, did otherwise pass the MOT.
The bottom line is this: a programmed computer by itself is not 101 eligible. A programmed computer must do something patent eligible as well in order to be patentable subject matter.
I’m objecting to the drawings in a case as we speak, along with other substantive rejections. We’ll see what he comes back with.
1) composition claims reciting “instructions” that are “readable” by those machines but which are structurally indistinguishable from prior art compositions,
Completely false – factually and legally. If factually indistingushable, a blank disc would have the same configuring effect as a disc with a program. Legally, well, we all know the correct legal stand still exists, don’t we?
“Really? Little electrons can be moved from one end of a gate entirely in the human mind?”
See, ya tard – have at it.
Paul,
Making a statement assuming your own conclusions is not very effective. Merely saying that Judge Linn thought the cited case law did not amount to much does not validate the ignoring of the case law. You merely saying that you think Judge Linn was right in doing so is rather meaningless and also does not validate the ignoring of case law. You do not get to simply ignore that which you do not like.
Further, your statement of “any judge will seek to curtail bad patents’ also applies to Judge Newman, unless sub silentio you wish to disparage that judge at the expense of your preferred judge – and do so without any clear basis for doing so.
Lastly, I care not one iota whether your concern is drafting for “World requirements [and] not just US requirements.” “We” are not dealing with “World” law. “We” are dealing with US law. “We” are decidedly not less concerned with the legal threshold in any one country – and quite the contrary, that legal threshold is the driving concern on this issue – the only one of legal import that matters in this decision.
Smells knows something is happening here but he just don’t know what it is.
Nobody wants to prevent new machines for computing from being invented or prevented. What concerns me and others are (1) composition claims reciting “instructions” that are “readable” by those machines but which are structurally indistinguishable from prior art compositions, and (2) method claims that are essentially mental steps rendered patent eligible merely by the generic recitation of the use of the machine in the method.
Just get rid of this crxp wholesale and start applying 103 rigorously and diligently to the remainder and a lot of other problems will disappear. And that will be the only result. There will be absolutely zero effect on the progress in the “software arts” or Internet commerce or social media, etc, you can bet your life on that.
An invention will be un patentable if it fail’s at one or more of the following steps:
101
102
103
112
You are not allowed to mix or skip any of the above. And 101 includes a process as a separate and distinct category from manufacture, and composition.
Any attempt to absorb processes as a sub category of manufacture or composition was denied by the Supreme Court in Bilski. And thats a fact you Mooney and rest of the anti patent crowd can continue to cry about if you like. But it won’t change a thing.
“Everything an abacus does can be done entirely in the human mind. ”
Really? Little wooden balls can be moved from one end of a small dowel entirely in the human mind?
See, ya tard, you focus entirely on “function”. The rest of us focus entirely on “structure” as is good and natural.
I wish.
” AI, I think you try too hard to deny that Bilski was, in fact, a business method. ”
Umm no. I simply read what the Court says and accept it as law. The Court said Bilski’s invention is a process so it’s a process. You on the other hand try to hard to read into the Courts words, opinions they did not express. Or project your own personal beliefs for what you wish the law should be. That’s why you always lose these debates on the blog, and in the Court room when the opinions come down.
I don’t envy the Fed. Cir. judges. Spending all this time & energy trying to figure out how to best trash such ridiculous patents would have made me very depressed.
No, it was not. Everything an abacus does can be done entirely in the human mind. The underlying invention of an abacus is merely the ability to do math. That is ALL an abacus can do.
Take that and apply the Kantian exercise and tell me what you are left with.
“an improved machine”
that should be all the need be said.
Ned – you need to accept the fact that programming does change the structure of the machine. It provides both a new use and a new structure. This is a holding in Alappat, even if you try to classify it as dicta.
“could be described”
“could be described”
“could be described”
READING people – try it sometime.
“a claim to a real machine”
What is “a real machine?” Is a computer “a real machine?” Is an abacus “a real machine?”
Anytime you start changing what is claimed insearch of “the underlying invention” you run the risk of gatting away from any “real machine.”
I only hope you can see this very obvious problem with the logic in play. If you are willing to take that step with machines, why not with other building block items? The answer lies in the fact that it only a philosophical choice to outlaw computer realted inventions and not one based in facts or law.
a specific disk with a specific and exact structure of pits/grooves/markings/magnetic residuals
Right, pits/grooves/markings/magnetic residuals markings that are “specific and exact” but somehow never, ever described.
The “new” abacus probelm was never resolved on the other thread.
Yes, it was actually.
I only hope you can see the difference.
Trust me, Ned: NIMBY can’t see the difference.
I’m wondering about the Newman point, that Applicant was deprived of two instances.
Suppose the Board had found the claim obvious over Adam ‘001 and that the CAFC re-construed the claim wider and so found that Adam deprived it even of novelty. Anything wrong with that?
Now take a step back towards the present case. Board construes the claim, raises no 112 objection but finds Adam deprives the claim of novelty. CAFC re-construes the claim and finds it indefinite, finds itself unable to proceed to novelty determinations. End of story.
So why does Newman think the Appellant was treated in any way unfairly? Must the court instead send the case back down with a decision that the claim is indefinite, and that novelty should be re-considered in the light of that finding?
It is amazing just how ludicrous the argument is that the invention is in the particular arrangement of pits on a disk. Tell that to any kindergarten student and you will get a big laugh.
Smells, but information processing is all about calculating numbers with an improved machine. Ditto BM, where method is conducted using machines. The inventions are in the methods, not in the machines.
When one is claiming a real machine, it has new structure, not a new use.
OK, then. Let’s start with
1) treat them as processes; and
2) make them pass the MOT.
If they do not, then the burden shifts to the applicant/patentee to demonstrate that the claims are necessarily limited to a particular machine.
The MOT remains a valid test according all nine justices. It is a burden shifter.
I’m sorry, NIMBY, but a claim to a real machine cannot be “done” by a human. I only hope you can see the difference.
Remember Moonley, b4 you get 2 smug, the only difference between a claim directed to the middle of a Twix bar and the middle of a DNA strand is the TWIX bar is man-made (i.e., patentable subject matter).
Your right – it is not compicated, but you are wrong because you seek (no surprise) to confuse the issue and change the subject to an invention of a disk. But it is not just “a” disk at all – it is a specific disk with a specific and exact structure of pits/grooves/markings/magnetic residuals etc. That particualr disk would be structurally different (and claimed so) than other disks.
The cannard of “structure” needs to be retired.
Back to the tower with you!
a music CD could be described in exacting and painstakiing physical structure detail, but would still not be a patent eligible item.
Sure it could – if what you invented was the disk itself. You’d hardly need to recite any structure at all, probably. Certainly nothing nearly as specific as what particular information was stored on it.
It’s simply not patent-eligible as an end-around for claiming the music you recorded on one particular prior art CD.
This isn’t complicated at all.
“But I do like the Cybersource take — if it can be done entirely by humans, it is not patentable subject matter.”
The “new” abacus probelm was never resolved on the other thread.
What can be done with an abacus that cannot be done entirely by humans? Now take the Kantian view and extend this logic to any art unit using any tools.
The ‘structure’ argument is a fallacy. As was explained in a prior post (the corrupted one?), a music CD could be described in exacting and painstakiing physical structure detail, but would still not be a patent eligible item. Even given this failure, there simply is no hard and fast law that requires a purely structural approach. Likewise the whole “the real invention is not in the programming, but in the processes” is circular and self-serving logic, easily refuted by postulating that without the programming, there would be no processes. All this is is assuming the point that you want to hold. A lot of mental masturbation is going on here.
Malcolm, it’s all very well talking about vomit and asserting that any competent Exr can refuse using any or all of 101, 102, 103 or 112. The problem remains, how to terminate such stuff quickly and cleanly, without the inventor resenting it, when the prosecuting attorney is zealous and his client is paying his fees.
So far, I haven’t seen anything more effective than the EPO’s obviousness tool.
I like the way the EPO handles obviousness. The problem with the USPTO, though, is not the legal standard but the fact that the employees at the office aren’t even close to being on the same page. If everyone agrees on how to handle this xxxx, then it does eventually go away because applicants realize they aren’t going to get anywhere with it. But if there’s 30-50% of Examiners out there who either lack the intellectual capacity to write the correct argument down or who simply refuse to do so (e.g., because the claim has a lot of words or because they are themselves Pxtxnt Txxbxggers), then we aren’t going to get anywhere, ever.
The steady stream of sxxxt flowing from the USPTO is all the proof anyone needs that Kappos is a miserable failure as a PTO director.
“as since they are all obvious”
Bias check – CHECKED.
And, every step [of any patent EVER] could be performed by a human using [conventional building blocks of whatever art unit is involved] available.
Commericiality is a red herring.
All this is is anti-patent nonsense. Bio is the obvious next target for carving subject matter out of the patent law coverage.
Ned, no, that “can be done entirely by humans” isn’t workable, and is an overly-simplistic concept that is not up to the task required of it.
Furthermore, it’s unnecessary, and is an unfortunate result of the CAFC panicking as they grope around in the dark room of patent law.
IBP, for a long time now, I have looked at the problem from a numbers in numbers out point of view. Information processing is just that. But I do like the Cybersource take — if it can be done entirely by humans, it is not patentable subject matter. This would include numbers in and numbers out, but a lot more as well. It would help define what is “insignificant” extra solution activity by giving us good criteria for its determination.
Bilski, both lower and upper courts, decisively turned the tide in this long struggle to patent software. The four Supreme Court justices who signed on to Kennedy’s B-2 and C-2 are holdouts, as well as are Rader and Newman. But they are definitely in the minority now.
Regarding proof of infringement, if a computer performs the claimed functions of the claim, it must necessarily have the program to do so. So, this whole struggle over 112, p.6, and p.2 is quite funny from the big picture point of view, as the real invention is not in the programming, but in the processes.
We should, I suggest, simply drop the formalities and state that all programmed computer claims, all B-claims, and all system claims involving programmed computers should be construed as processes unless the applicant/patentee can demonstrate that the claims are directed to specific structure.
Malcolm, it’s all very well talking about vomit and asserting that any competent Exr can refuse using any or all of 101, 102, 103 or 112. The problem remains, how to terminate such stuff quickly and cleanly, without the inventor resenting it, when the prosecuting attorney is zealous and his client is paying his fees.
So far, I haven’t seen anything more effective than the EPO’s obviousness tool.
And there is solid basis already, to introduce this tool into the USPTO. I refer to the utterances at CAFC level (was it the CAFC’S predecessor, or was it SCOTUS) that assessing any sort of obviousness other than technological obviousness (like, what new musical composition is “obvious”) is a task one can’t even begin to address. Everybody can see the logic in that.
If you can’t begin to address obviousness of some particular claimed subject matter, because it is not a contribution to science and “useful arts”, then ergo that subject matter is not susceptible of patent protection. As AI would now say “Bangs Gavel. Case closed.”
Mind you, you do obviousness of design patents. I see that as a problem. I don’t understand that kind of obviousness either. Hey ho.
Mere accretion of subject-matter old in the art.
Invalid as obvious under 103.
Insubstantial utility.
Patent-ineligible subject-matter under 101.
Also potential incredible utility, unless substantial scientific research has been performed on “revenue” and “customer satisfaction”.
Also potential non-specific utility, unless “customer satisfaction” is VERY well defined and repeatable.
Note that architecture and logic can always be discussed in these cases because they are always disclosed either explicitly or by necessary implication in software/system claims.