Patentable Subject Matter: Relying on Benson; Construing Claims for Eligibility

By Dennis Crouch

FuzzySharp Tech. Inc. v. 3DLabs Inc. (Fed. Cir. 2011)

In a per curiam opinion marked nonprecedential, the Federal Circuit has vacated and remanded the subject matter invalidity finding of a N.D. California District Court and instead ordered the court to rework its decision in light of Bilski v. Kappos, 130 S. Ct. 3218 (2010) and subsequent Federal Circuit decisions on point. As discussed below, FuzzySharp’s invention relates to compression software for computer graphics. U.S. Patent Nos. 6,172,679 and 6,618,047. The main idea of the invention is to avoid calculations associated with always hidden surfaces. Although the specification explains that its implementation uses “fuzzy” math to calculate always hidden surfaces. However, “fuzzy” limitations are not found in the asserted patent claims. The application was filed in 1997, but claims priority to a 1991 Australian patent application.

FuzzySharp’s appeal was filed after the district court determined that the claimed method failed to pass the machine-or-transformation and therefore, under the prevailing law at the time, the method did not constitute patentable subject matter. In re Bilski, 545 F.3d 943 (2008). In its 2010 Bislki decision, the Supreme Court rejected the notion that the machine-or-transformation test could serve as the exclusive test of the patentable subject matter of a newly invented process. In the new rubric, the machine-or-transformation test offers only an important clue.

In its opinion, the Federal Circuit largely agreed with the lower court’s conclusion that the FuzzySharp claims fail the machine-or-transformation test, but, following the new Bilski rubric, remanded for a determination on the ultimate question of patentable subject matter.

Meaningful Limitations: FuzzySharp’s asserted claims involve two elements that are potentially linked to a machine – computation and computer storage. However, the appellate panel found those elements lacked “meaningful limits” on claim scope in the same way that the recitation of a general-purpose-computer is not a meaningful limitation of a software process that will only be performed on a computer. (Citing Gottshalk v. Benson, 409 U.S. 64 (1972)).

Claim Construction: An important and arising issue is the interplay between claim construction and patentable subject matter. Under Federal Circuit precedent, claim construction appears to be a necessary precursor. However, the Supreme Court has regularly ignored details of claim language in making its determinations – focusing instead on what it saw as the invention.

Here, the court held that some claim construction is necessary: “[W]e conclude that … the patent eligibility of at least one of the asserted claims turns on questions of claim construction that the district court did not have the opportunity to address.” It will be interesting to watch how the parties argue on remand for claim construction results that favor their hoped-for subject matter eligibility outcome.

Notes:

  • The per curiam panel included Judges Bryson, O’Malley, and Reyna.
  • The U.S. application was prosecuted by Carl Oppedahl’s Colorado-based firm.
  • The patentee is represented by Matthew McAndrews from the Niro firm on appeal; Jonathan Baker from Skadden Arps is handling the appellate defense.
  • Here is Claim 12 of the ‘047 patent that the Federal Circuit analyzed:

    12. A method of reducing a step of visibility computations in 3-D computer graphics from a perspective of a viewpoint, the method comprising:

    computing, before said step and from said perspective, the visibility of at least one entity selected from 3-D surfaces and sub-elements of said 3-D surfaces, wherein said computing step comprises:

    employing at least one projection plane for generating projections with said selected set of 3-D surfaces and said sub-elements with respect to said perspective;

    identifying regions on said at least one projection plane, wherein said regions are related to the projections associated with said selected 3-D surfaces, said sub-elements, or bounding volumes of said 3-D surfaces or said sub-elements;

    updating data related to said regions in computer storage; and

    deriving the visibility of at least one of said 3-D surfaces or said sub-elements from the stored data in said computer storage; and

    skipping, at said step of visibility computations, at least an occlusion relationship calculation for at least one entity that has been determined to be invisible in said computing step.

 

 

399 thoughts on “Patentable Subject Matter: Relying on Benson; Construing Claims for Eligibility

  1. 399

    You say that you do not need to include a computer in a software claim using the analogy that you do not need to include a person (or, my addition, a machine that uses a wrench) in a claim to a wrench.

    In a discussion about the printed matter doctrine, how is the wrench relevant?

    I don’t dispute that you wouldn’t need the computer to claim software if it were not argued that the software is merely printed matter.

    If a computer is configured to read a poem written on paper and do something with it. Say, output a visual representation of the poem. Is the poem now eligible subject matter? It has a functional relationship to the computer.

    As I understand it, a computer must be configured to read software and do something with it. Without an appropriately configured computer the software is just words in a language that describe something (if you can read the language).

    Perhaps the poem would be eligible subject matter if the configured computer were described in the specification?

  2. 396

    Ned:”AI, you assume that Benson worked on point of novelty. It did not.”

    Benson worked on dissection.

    Diehr worked on claims as a whole, concept and application.

    Diehr also recognized a computer and software as statutory.

    Ned, you are worse than Jobs when it comes to distorting reality.

    Thus, the attorneys here ripping you to shreds.

  3. 394

    When logic is not constrained to reality, Ned is free to run amuck.

    Ned’s reply: “Exactly

    W

    T

    F

  4. 393

    If and when you ever become serious about understanding law

    Anon- you assume that Ned wants to be serious about understanding law.

    There is no basis for this assumption. Ned is only interested in Shilling.

  5. 392

    “How long must we continue to suffer this philosophical battle that has no place in the patent universe? Is a computer somehow more than just a machine? Really?”

    A computer is a special machine. A programmable one.

    Any programmer should have the freedom to tell the machine what to do, and patent law should not stand in its freedom to do so.

  6. 391

    Remind me again, what did the Supreme Court say about software in Alappat?

    Red Herring and obfuscation.

    Back to the tower IANAE.

    I’m pretty sure that “transitive property” is quite on point with the the functional relationship aspect – and the only reason you “get a great laugh” is because you realize that it destroys your depraved games quite thoroughly. Indeed, rather than “doesn’t really answer anything at all” it answers quite nicely the full printed matter doctrine and the case at point.

    But thanks for playing the “I’m too st_upid” game.”

  7. 390

    101 still does tend to get readers going though, doesn’t it

    Yes.

    Yet another awesome multi-hundred thread wherein the anti-software patent people are decidedly decimated.

  8. 389

    try to remember – transitive property

    Try to remember? I still get a great laugh every time I see “transitive property” trotted out as if it’s some fundamental law of the universe or principle of patent law or something. It’s almost as funny as “Bilski 14” as a thought-free, generic answer to everything that doesn’t really answer anything at all.

    Remind me again, what did the Supreme Court say about software in Alappat?

  9. 388

    Go for it, then. I’m waiting.”

    Waiting? it’s been done to you for quite a while now – You still have to deal with the real law (and not just cribb the Nies dissent from In re Alappat (it did not work for Nies, and it surely isn’t working for you).

    try to remember – transitive property, “a functional relationship….

    Be a good boy and run back to your tower now.

  10. 387

    Ned,

    If and when you ever become serious about understanding law (and not just preaching on what you want the law to be) and decide to pick up reading again (and not just reading those words that reinforce what you like), I would enjoy a serious response from you on the thoughts that I have put to you.

    L_ies on what a legal holding is, would of course, be excluded from any such serious conversation.

  11. 386

    We agree, but you do not understand that.

    Please do not insult me by saying I do not understand – it is clear that it is you that does not understand encryption. What you think we agree on, then, is completely unclear.

    I suggest (strongly) that you think on this for awhile before embarrassing yourself by making arguments on topics that you do not understand.

    I will answer your simple question with an even simpler question: Does an encryption technique “care” what it is encrypting (the subject of the encryption)?

    Go, and do not post in such blatant ignorance anymore.

  12. 385

    Ignorance?  We agree, but you do not understand that.  

    Now think on that for awhile, and when you are done, try again.

    But before you go, let me ask you a simple question: why is encryption useful?

  13. 384

    Actually Ned, your ignorance on the subject is showing – encryption is quite distinct from the subject matter being encrypted. The key is in the protection of WHATEVER is the subject of the encryption.

    Try not to be so foolish as to make arguments in areas that you know nothing about.

  14. 383

    Just a further observation: the Supreme Court may have hoisted itself upon its own petard in Bilski. If the only distinction between the Bilski hedging algorithm being patentable or not was whether it was executed on a computer or not then Bilski stands for nothing but nonsense. The Bilski court would have made itself a laughingstock because anyone with any sense could see that the recital of execution on a computer would be to elevate form over substance.

  15. 381

    What you “forget” is that reality gets in the way of your desired end result, and that real invnetion happens with new component of software, which is every bit equivalent with new components of firmware and which is every bit equivalent with nes components of hardware.

    You’ve got the wrong academic. You probably meant this for Ned. I’m not nearly so charitable. I don’t see a meaningful distinction between software, firmware, and hardware for the purposes of patenting what a general-purpose computer does. Nor do I see much point in having a claim limited to firmware when software could do the same thing without infringing.

    Your purposeful conflation of “built-to-be-changed” and actual “has-been-changed” is dust kicked in the air that is easily dissipated.

    Go for it, then. I’m waiting. Explain to me why a traffic light showing green is patentable over a traffic light that can show any one of green, yellow, or red.

  16. 379

    Huh? Encryption can run on made up data and discard the results.  Such is completely useless.

    You actually have to encrypt useful data — inputs and outputs, that is the key.  

    Get real.

  17. 377

    With software, the machine is not – except in a temporary sense.

    Wrong – the machine is every bit changed in exactly the same way – your “temporary sense” is a vapid smokescreen. As the quotes on “firmware” posted today show, firmware is every bit as transitory as software – there is no substantive difference. None.

    Keep sliding Ned, keep sliding down that slope.

    Expect a call MOnday from your masters – they will not be happy that you have tripped into this discussion. Not at all.

  18. 376

    Ned – dead wrong. Encryption based on “user name” and “key” are precisely picked from the ether and then vanish into thin air.

    SUch have no impact to the actual invention, the actual applied math that yields a useful result.

    No doubt” – but not in the manner that serves your position, quite, in fact, in a manner that destroys your position.

  19. 375

    What about Firmware to hedge risk as in Bilski?

    What then?

    What about a hardwired machine (no firmware or software) to hedge risk as in Bilski?

    What then?

    What about a medical method ruled patent ineligible? What then? All medical methods then patent ineligible?

    When logic is not constrained to reality, Ned is free to run amuck.

  20. 373

    The Schilling, I would agree with you if configured to actually met with that said. With firmware, the machine is indeed "configured to." With software, the machine is not – except in a temporary sense. The situation is akin to the difference between an article of manufacture and a signal. We now put into our Beauregard claims, "non-transitory." If "configured to" were construed to mean "non-transitory," we need say no more. However, I don't think it has that limited meeting, which suggests that we need to add to our claims the term "firmware" or some form of the word "permanent" or "non-transitory."

  21. 372

    Software to hedge risk as in Bilski?

    Bilski did not have such software.

  22. 371

    No Ned,

    Already answered: see the phrase ‘configured to’ ” defeats you. Soundly.

    Those that pay for your shilling will be most unhappy with your gaffe on stepping on such slippery slope and sliding all the way down to the logical bottom.

    This is like the Ned-Motel trap – welcomed in, but cannot get out.

  23. 370

    more or less the answer they gave in Morse.

    Actually, you academic – quite the reverse of your mis-statements of Morse, and your hidden “House” argument. You would have it that all inventions are already present in a computer, robbing all future invnetors of their applied creativity, however actual configurations that are indeed later developed.

    YOU would have it the bastardized-Morse way, and deny those that believe in software-related inventions actually are realized in that new inventions do happen precisely because the new configurations in the old toybox are really created. Your purposeful conflation of “built-to-be-changed” and actual “has-been-changed” is dust kicked in the air that is easily dissipated.

    What you “forget” is that reality gets in the way of your desired end result, and that real invnetion happens with new component of software, which is every bit equivalent with new components of firmware and which is every bit equivalent with nes components of hardware.

    Those are the facts. That is the law.

    Back to the tower with you!

  24. 369

    Software to hedge risk as in Bilski? You think that should be patentable just because it is software?

    What about software that does nothing, reads data, performs some manipulations, but discards the result?

    And so on.

  25. 367

    No doubt.  But the data must have a source and a destination.  It cannot simply be picked from the ether and then vanish into thin air.  

    All you have to do to take the abstract into the real world is specify the source and destination.

  26. 365

    Already answered: see the phrase “configured to”

    “The computing power of a general-purpose computer, however configured, for carrying out the following steps: …”

    I think that was more or less the answer they gave in Morse. Oh wait, I keep forgetting, Supreme Court precedent doesn’t apply to software if it’s been overruled by the Federal Circuit.

  27. 364

    would you be satisfied if we required

    Already answered: see the phrase “configured to”

    This has been stated only like a bajizillion times.

    You might want to read this but once to allow the understanding to seep in.

  28. 363

    Or am I missing the point that you have to include the computer in your claim so the person analogy is irrelevant?

    Do you have to include a person in a claim for a new “wrench” (because, as you know, without the person actaully using the new “wrench”, the new “wrench” is useless, not even able to generate heat, but only act as a paperweight.

  29. 362

    Encryption – a data input and data output involving applied math in a highly technical manner to achieve a very useful end result (and not just producing heat).

    Online transactions everywhere beg to differ with your viewpoint.

  30. 361

    I have here a Computer,
    It’s not on, no not at all.
    Because without the Plug that has it,
    It’s just a box with wires all.

    And just like my nice flat Fender,
    without it’s Plug like flaps or rope,
    And it too without its ender,
    Problem solved now your the dope.

  31. 360

    Yes, Diehr would have failed Benson, Flook, and Bilski. Thus the Supreme Court saw the need for Bilski 14. Although you still refused to accept it.

  32. 359

    Ned is trapped by his own admissions.

    There is no reason whatsoever to give Ned any slack on this point. He will (and must) realize just why his position on this slipperly slope leads him to slide down the hill into acceptance of a position he has long fought against.

    There is no other possible outcome.

  33. 358

    And I can’t believe I didn’t even get the missing middle till I was between thoughts. Where is it Germany this time? Or was the French (Patois) a dead give away.. Anyway no matter… I’ll find out. I hope you have a Merry Christmas and a Happy New Year.
    Channeling Mann… It’s legal to record here LOLOLOL!

  34. 357

    You said that it is a red herring to consider whether the flash drive is connected to a computer. That what is important is if there is a functional relationship when it is connected.

    Well, I realize we haven’t defined a claim here, but are you saying that if you claim a computer readable medium with software, that because it could have “a” functional relationship with a computer that the printed matter doctrine doesn’t apply?

    If that is so, would the same software printed on a piece of paper that can be read by (connected to) a computer have a functional relationship?

    If so, and I know folks don’t seem to like the recipe example so I apologize, the next extension is: do instructions on paper that can be read by a computer to force it to draw a picture have a functional relationship to the computer? How about instructions to make a salad (assuming that it can make the salad)? (I think (at least until corrected by the responses to this post) that the answer seems to be yes)

    Finally, if those are correct is the difference between those instructions being read by a computer and being read by a person, that one is forced to do something and so is a new machine which must do it, and the other can choose whether or not to do it? Or am I missing the point that you have to include the computer in your claim so the person analogy is irrelevant?

    Disclosure: I am in the camp of software being patentable, but on the basis of something similar to NWPA’s data transformation theory, or merely on a policy basis.

  35. 355

    that isn’t necessarily connected to the computer does not have a functional relationship?

    the question is not one of “isn’t necessarily connected”

    That’s a red herring.

    The question is when it is connected, is there “a functional relationship.

    The answer, through the transitive property and the reality that the program is actually loadedon the computer is that yes, a functional relationship exists.

    End of story. Move on.

  36. 354

    Frederico is the real cuplrit – it was his early verison that was changed (not Rich’s), and it was Frederico that sought to add post enactment verbiage that did nto fit into the actual changes. Those chages were clearly accepted as to overrule Halliburton, and tot he extent that Fulkner (which was pre-1952 act) was in line with Halliburton, that too was over -ruled – this in direct contradiciton to your attemtps at reinstating a case law that was expressly overruled.

    You still seek to conflate, confuse and rewrite history based on you agenda and you ignore not only the actual facts in the paper you helped write, but the evident history that is so easliy checked to show your subterfuge.

    YOU need to read Rosetta Stone and stop making things up. Frederico had the early word – but no thte last word.

  37. 352

    AI, all I can ask you to do is read Benson one more time.  The MOT test there is stated as the court's summary of its precedent.  Benson also noted that its cases hand long required that a useful application of an abstract principle, etc., was the stuff of patents.  This dated from the 1850s at least.  Diehr said nothing that Benson did not — except to require that claims  be viewed as a whole, and to put flesh on the bare bones of the useful application "test" of Benson.

  38. 351

    Night, it is very important from the point of view of patenting software as a new machine.  It is not important at all from a process claim point of view.

  39. 349

    Night, what it the whole point of information processing unless it is useful for something?  If it is useful something, even generically described, why not tell us what it is/

    For example, data compression is useful for improving data storage  and data transmission efficiency.  So why stop your patent claim just shy of tying the processed information to a useful application?

    I can only hope that we are very close to an agreement on these issues.  You last post was quite reasonable.

  40. 348

    If you would, anon, could you explain to me why the characterization of the case law as dealing with a “functional relationship to the substrate” is incorrect or does not create a distinction between a recipe on a flash memory drive and measuring marks on a cup?

    I would understand if perhaps you were to say that software on a computer that can read and function based on the software has a functional relationship to the substrate (wherein the substrate is the computer). And therefore IANAE’s distinctions are moot.

    Assuming, to attempt to speed things up, that the above would be correct (and please correct me if it was wrong), does that not then mean that the same software on a flash drive that isn’t necessarily connected to the computer does not have a functional relationship?

  41. 347

    Ned, you should know that it does not matter that the Court merely made the same cites, it only matters what the actual ruling was based on those cites.
    Diehrs claims would fail Benson, Flook and in re Bilski.

    SCOTUS recognized this and made sure eveyrone understood it was wrong in Bilski, at page 14.

    Bensons rulings on computers, preemption/dissection, all cabined and by Diehr. Just accept it already.

  42. 346

    Hi Ned:

    Benson did not create the MOT. The USPTO created the MOT( machine implements the process) and the CAFC upheld it in in re Bilski.

    Prior to that machines and transformations have always been a guide, or clue to statutory subject matter albeit, mainly for processes in the iron age. How the iron age use of machines and transformations differed from the CAFC sanctioned MOT, was that human operators, and mental steps were all statutory parts of the process.

    As explained to you before, Diehr cabined Flook and Benson, with the DCAT Diehr Concept and Application Test.

    The ONLY Supreme Court sanctioned test and controlling analysis for 101 Subject Matter for the last 30 years!

    Since Diehr, the MOT has only been and remains merely a clue for processes of the type used in the 1800’s.

    And Bilski made you sure you were aware of that fact! ( see the cite)

    The DCAT works exactly like the Court used it in Diehr.

    1. You take the claims as a whole, including the concept.

    2. Then analyze the claim to see if there is an application to a specific industrial and/or marketplace process.

    If the answer is yes you pass 101!

    No machines, or transformations required.

    Its worked well for 30 years!

    Now you may go back to ignoring these facts. But first see the cite history as follows:

    ( Diehr) : It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. See, e.g., Funk Bros. Seed <450 U.S. 188> Co. v. Kalo Co., 333 U.S. 127, 76 USPQ 280 (1948);Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923); Cochrane v. Deener,94 U.S. 780 (1876); O’Reilly v. Morse,15 How. 62 (1853); andLe Roy v. Tatham, 14 How. 156 (1852).

    ( Bilski) Page 14 : Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.

    (Research Corp): Indeed, this court notes that inven- tions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.

    (Ultramercial): Although abstract principles are not eligible for pat- ent protection, an application of an abstract idea may well be deserving of patent protection. See Diehr, 450 U.S. at 187 (“an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection”)

  43. 345

    MAXIE: “I suppose AI will tell us that this is yet another “business method” case but, for me, it isn’t.”

    Good day Maxie:

    I don’t declare cases as Business Methods or not. Perhaps you are confused by the fact that in America ALL process and methods are commercial applications , same as any other category .

    So when it comes down to it, there really isn’t any category called business method. Its just make believe for anti patent types that want to eliminate processes as an independent category for patentable subject matter.

    Of course this make the UK look quite f o o lish and behind the time as well so perhaps this adds to your embarrassment, eh mate?

  44. 343

    AI, thanks. I appreciate all that.  However, you should know that Benson cited the same cases and said the same things regarding your DCAT quote. What really happened was that Diehr cabined Flook, which seemed to rely upon a point of novelty test.  Bilski 14-15 actually says this. However, Diehr cabined Benson in the same way only the extent that Benson operated under a point of novelty test. I don't think it did. 

  45. 342

    Ned,

    I assume then that you agree that when represented information is transformed in the computer memory that this counts in the MOT test.

    Presumably the transformed information will be used for something.

    Please don’t try to conflate issues. The issue is whether or not you agree that the information is transformed in the computer memory and whether it counts as a transformation in the MOT sense.

    J. Rich was the greatest patent judge of all time.

  46. 341

    All you advocates of the theory that a programmed general-purpose digital computer is a new machine, would you be satisfied if we required that the programming the part of the machine in a sense that it was there permanently, such that when the computer starts, the program is automatically loaded and executed?

    What I’m thinking about here is firmware. Firmware does just this. It is fixed in the machine. It automatically loads it automatically executes. As such, it transforms the general purpose digital computer into a special purpose digital computer.

    Just as the article manufacture claims had to employ “non-transitory” to distinguish over signals, we could use the word “firmware” to clearly define that the claimed programmed machine was limited to firmware such that when the computer started, it was transformed into a special purpose machine by the firmware.

  47. 340

    NED: “I invite you, Shilling, to tell us here and now how Benson was cabined, changed, limited, reduced, or whatever you want to call it. Tell us, please.”

    Hi Ned:

    Busy with real patent work but just popped in to say as usual, Flook and Benson was cabined by Diehr’s Concept and Application Test ( DCAT). Which as you know relegated the MOT ( supposedly used in Benson) to being a mere clue, and not much of a test at all.

    Further more in the wake of Bilski especially page 14, the CAFC has used DCAT as its controlling analysis/test for 101 subject matter. ( see the cites below)

    Okay, now you can go back to conveniently ignoring this fact and the law on which it is based.

    DCAT Cite history:

    ( Diehr) : It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. See, e.g., Funk Bros. Seed <450 U.S. 188> Co. v. Kalo Co., 333 U.S. 127, 76 USPQ 280 (1948);Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923); Cochrane v. Deener,94 U.S. 780 (1876); O’Reilly v. Morse,15 How. 62 (1853); andLe Roy v. Tatham, 14 How. 156 (1852).

    ( Bilski) Page 14 : Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.

    (Research Corp): Indeed, this court notes that inven- tions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.

    (Ultramercial): Although abstract principles are not eligible for pat- ent protection, an application of an abstract idea may well be deserving of patent protection. See Diehr, 450 U.S. at 187 (“an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection”)

  48. 339

    Night, sure, the only transformation taking place is in the computer, but the entire process is useful only when tied to a useful application. You cannot dissect the computer from the world and say the useless computer remains useful. Dissected from the world into the abstract, it doesn’t do anything. It is more than a waste of time, space and energy.

  49. 337

    If, If, If, If

    Read Rosetta Stone.  Your assumption here are completely backwards.  Congress enacted Faulkner v. Gibbs.  That was quite obvious give ALL of the surrounding circumstances and what Frederico said at the time.

  50. 335

    And, your argument is this:

    physical world –> represented data –> transformation —> represneted data —> physical world.

    But, if a transformation occurs if something in the physical world is represented, then a transformatin occurs in general, so the physical world steps are NOT necessary.

    Ned, I believe you may have mad cow disease. 6, information processing methods define a machine with structure (this is without quesiton to a trained engineer). The problem is that CS is so advanced it has confused people, and the trolls exploit the confusion.

  51. 334

    Functional language is not circumscribed to only use in means for, or step for, language.

    Any time functional language is used, and there is more than one element, “point of novelty” is outlawed, as the law provides that that concept can be anywhere in the claim, and only the claim as a whole can be looked at to determine the “point of novelty.” It is impermissible to attempt to determine which part of a combination claim has a “point of novelty.” This is the result of the 1952 law.

    The Dependence on 112 p6 is misplaced.

  52. 333

    IF Faulkner v. Gibbs reaffirmed Halliburton, and was decided prior to the 1952 law cahnge which overturned Halliburton, then Faulkner v. Gibbs was also overturned.

    It is a strange and decidely revisionist historical account to attempt to reinstate Halliburton when the 1952 Act was clear that Halliburton was not to be considered controlling law.

  53. 332

    >>Data->Programmed GP digital computer->data

    >>The above is different from the first example because the >>machine is not tied in any why to a specific physical >>application. It merely takes data and produces data. Such a >>machine simply consumes energy and becomes a space heater.

    The transformation of represented data is a transformatoin as the federal circuit has held and the SCOTUS as well, although theirs is a bit attenuated.

    Your brain does data —>> neural activity —> data. That is called thinking or using your brain. That is what a computer does. It transforms represented information. Informatoin takes time, energy, and space to transform. Information is a fundamental property of nature every bit as much as gravity and electricity. Transforming represented information is a transformation in the sense of the MOT as the fed. cir. has held.

    You have not addressed the fact that there is a defined structure in a information processing method that defines the machine. Anyone that is a trained engineer in cs and ee knows this. There are many possible structures that could be used, but that process defines structure. You know this.

    I’ll say it again–at the bottom of this is Benson saying that there machine is not eligible for patentability because I can come up with some symbols that look like Newton’s laws that describe the operation of the machine. That is what it is all about. Pre-1930’s thinking, which makes sense as Douglas was behind this thinking and was educated pre-1930’s.
    The operation of ANY machine can be represented with a mathematical equation.

    So, there is structure that is defined by a information processing method.

    A mathematical algorithm test is nonsense.

    A machine built to run a process is a machine.

    A toaster just sits there most of the time and does nothing.

    And, Ned just types over and over again the same nonsense. He has never answered the eE patent question. I wish I had some time or I would dig up some of your patents and make an invalidity argument based on that the funcion can be represented by mathematical equations.

  54. 331

    >>Data->Programmed GP digital computer->data

    >>The above is different from the first example because the >>machine is not tied in any why to a specific physical >>application. It merely takes data and produces data. Such a >>machine simply consumes energy and becomes a space heater.

    The transformation of represented data is a transformatoin as the federal circuit has held and the SCOTUS as well, although theirs is a bit attenuated.

    Your brain does data —>> neural activity —> data. That is called thinking or using your brain. That is what a computer does. It transforms represented information. Informatoin takes time, energy, and space to transform. Information is a fundamental property of nature every bit as much as gravity and electricity. Transforming represented information is a transformation in the sense of the MOT as the fed. cir. has held.

    You have not addressed the fact that there is a defined structure in a information processing method that defines the machine. Anyone that is a trained engineer in cs and ee knows this. There are many possible structures that could be used, but that process defines structure. You know this.

    I’ll say it again–at the bottom of this is Benson saying that there machine is not eligible for patentability because I can come up with some symbols that look like Newton’s laws that describe the operation of the machine. That is what it is all about. Pre-1930’s thinking, which makes sense as Douglas was behind this thinking and was educated pre-1930’s.
    The operation of ANY machine can be represented with a mathematical equation.

    So, there is structure that is defined by a information processing method.

    A mathematical algorithm test is nonsense.

    A machine built to run a process is a machine.

    A toaster just sits there most of the time and does nothing.

    And, Ned just types over and over again the same nonsense. He has never answered the eE patent question. I wish I had some time or I would dig up some of your patents and make an invalidity argument based on that the funcion can be represented by mathematical equations.

  55. 330

    With the 1952 act, “point of novelty” became an obsolete term for combination claims.

    This is the essence of Diehr.

  56. 329

    Let’s explore the resistors in parallel and in series with gates invention scenario.

    Let’s say we have a novel and nonobvious resistor configuration.

    Further, let’s suppose the resistor configuration is an awesome technical arrangement, which we will label as R Awesome for short.

    Further, the gate configuration is claimed in a patent application that handles financial transactions in a technically improved manner, controlling the various states of the financial items, such as bills.

    In this case, you would have a “Bill Gates states patents R Awesome.”

  57. 328

    Programmed GP digital computer->data

    The above is different from the first example because the machine is not tied in any why to a specific physical application. It merely takes data and produces data. Such a machine simply consumes energy and becomes a space heater.

    Excpet for oh, say, examples already given on a recent thread, like data compression or encryption inventions, meh, things like that.

    Oops, what was that Ned response, it had such oomph, ah yes, “I am stumped on that.”

  58. 325

    And that’s supposed to be better? You told them? Really?

    Do you tell people as well that you have your head up your _zz?

    Because you do.

  59. 324

    The presidential commission decided that patents should not extend to software per se.

    Nice. Except that commission has no authority (or accountability) to have that decision be even remotely any semblance of law.

    I think that matters.

    Just a little bit.

  60. 323

    Hagbard, you come late to the party. We had that discussion 40 years ago. The presidential commission decided that patents should not extend to software per se. The PTO then decided to allow patents on specific applications of programmed computers to produce a new, physical result. (Ultimatedly, the PTO position was confirmed in the series of cases Benson, Flook, Diehr and Bilski.)

    I think the EPC adopted this basic framework and enforces it through a two step filter.

    However, in the US, commercial forces and certain judges on the CCPA/Federal Circuit, have been pushing to have programmed computers patented per se regardless of whether they produce a new, physical result. The consequence has been chaos. See Breyer’s concurrence in Bilski where he said,

    “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 (C.A.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 3231; ante, at 3232, n. 1 (STEVENS, J., concurring in judgment).”

  61. 322

    Night,

    Let’s break it down.

    Patentable process involving a machine transformation:

    Physical Input->Machine tranformation->Physical Output

    Machine transformation can be caused by physical apparatus, circuits, or by digital processing circuits. The latter could be an ASIC, for example, or programmed GP digital computer.

    Any of the aforementioned machines should be claimable as a special purpose machine, provided in the case of the programmed GP digital computer, that the claim requires the presence of the software to cause the transformation, e.g, firmware. As such, the programmed GP digital computer becomes a special purpose digital computer because it is specially adapted for a particular, physical application.

    Now consider

    Data->Programmed GP digital computer->data

    The above is different from the first example because the machine is not tied in any why to a specific physical application. It merely takes data and produces data. Such a machine simply consumes energy and becomes a space heater.

    I am hoping here that you would not consider a computer that only produces heat to be the stuff of patents.

  62. 320

    Watch out:  There is a difference between firmware, which is transforms the machine in this sense that it operates with the environment differently, and software which uses the machine.  The firmware is always present and is part of the machine.  The machine operates differently because of the firmware.  Most importantly, the special-purpose computer interacts with its physical environment differently.

    BIOS is a form of firmware.  We all know what does.  It initializes virtually all computers on
    the market today.  It determines what hardware is connected to the computer.  It initializes that hardware.  It reads and writes to connected hardware.  If physically transforms the machine from a piece of deadweight into something that works.  I have no difficulty in treating claims to firmware in computers that actually cause the computer to interact differently with this environment as special-purpose machines.

    In contrast, software that is not firmware is software that is loaded into the computer and then is executed.  In a sense, it transforms the machine, but only temporarily.  It can be said that the user uses the machine to run the software.

    Such software can, like firmware, cause the computer to interact with its environment differently.  But because the software is not part of the computer, I don't believe there is any basis for claiming the software as an improved computer.  Rather it's patentability has to be determined on the basis of whether the use of the programmed computer in a process is otherwise patentable as a process, meaning it must do something physical within the useful arts.

  63. 318

    Diehr had before it a dedicate application of a cpu

    Once again, this is not pertinent to my point.

    I know I did not stutter.

    My post at 2:28 still stands and I have is Ned’s “games.”

    Anon is right about you Ned.

  64. 317

    Diehr had before it a dedicate application of a cpu

    Once again, this is not pertinent to my point.

    I know I did not stutter.

    My post at 2:28 still stands and I have is Ned’s “games.”

    Anon is right about you Ned.

  65. 316

    Wait,

    You complain about someone’s listening skills and then later that same day to that same person, in a response you don’t happen to like, you state “I stopped reading“?

    W

    T

    F

  66. 315

    Anon, I stopped reading after the first sentence.  But Alappat does not stand for the proposition that all programmed computers are patentable subject matter.  But that is what Rader suggests.  His bootstrapping is almost as bad as Rich saying at one time that any sequence of steps that are technological in nature are patent eligible, when by that, he meant that any process that recited the use of technology in the claim, was condemned even by his fellows on the CCPA.  The Supreme Court would have none of it.  

    The claimed subject matter, however claimed, must be limited to a useful application within the useful arts.  A programmed machine can be programmed simply to calculate numbers from numbers, doing nothing useful.  Such an
    "invention" turns a computer into a space heater.

  67. 314

    Something got lost in translation, there socky. I almost thought that you were saying something worth the time and space of a presence here on the prestigious Patently O blog.  But I was mistaken.  

  68. 313

    Diehr had before it a dedicate application of a cpu.  It had no call to discuss the distinction.  That does not mean that Diehr provides the basis for bootstrapping its holding into a general propostion that all GP digital computers are patentable every time they are programmed regardless of context.  But that is what Rader does.

  69. 312

    WOfTSS,

    You did not stutter. You have just witnessed the Ned game of trying to blow smoke, to obfusacte and to attempt to restate what you have said.

    It is clear that Ned realizes that firmware is equivalent to software, and yet is also equivalent to hardware. Ned would allow firmware to be patent eligible and is caught in his game of not wanting software to be afforded that same deference.

    He preached above about the concept of “and it equivalents” as I pointed out at 10:52, and is trapped by his own words. Of course, this concept is clearly explicated in Ultramercial, but Ned engages in the character assassination game against Rader as his line of defense there (rather than dealing with the merits).

    He has no escape from this trap. None.

  70. 311

    You think Rader’s aberations are the law?

    Ned, this is just more games from you.

    Alappat was an en banc decision. You claimed Bilski overturned Alappat, and it was pointed out to you that Bilski did no such thing, not even mentioning the Alappat case.

    Now when the CAFC has re-affirmed the Alappat case, and in particular a holding that you have always claimed was dicta and not a holding (and I am not even rubbing your nose in that error), you squawk about “bootstrapping”?

    Plain and simple Ned – the court has spoken – then as well as now. You must accept what the court tells you is law if you are any type of lawyer at all.

    If you don’t like it – that’s is fine. If you want to make an argument about changing the law, that too is fine – but for you to simply L_IE about what the law is is too much – there is no way to sugar coat and be polite when an advocate crosses the line into outright falsehoods.

    You clearly must acknowledge what the law states. To do otherwise risks any chance of you having credibility in any post on this topic.

  71. 310

    Ned,

    You would compare my “listening” to that of 6 and in the same breath claim that I have not provided (printed or published or whatever) the list of questions?

    This is unacceptable gamesmanship. I have provided these to you, even translating the “battle cries” of Bilski 11 and Bilksi 14 to proper pincites. You evaded the questions then. You have evaded the questions from a number of people, always seeming to have just one more stipulation or lack of recall or some (rather pitiful) excuse.

    Stop the games. Please – they only make you look foolish and afraid to tackle the issues.

  72. 309

    babble babble incoherent reply.

    Too much even for the Ned Translation machine (the closest we could get was “WAAAAAAAAAAAAAAH, I want my mommy“.

  73. 308

    Diehr was silent as to the firmware/software differentation.

    Did I stutter?

  74. 307

    This post by IANAE makes no sense.

    When in doubt, declare victory and keep shoveling seems to be IANAE’s method.

    The very clear case law supports Anon, and not your view.

    Anon previously laid out to you the simple transitive property (remember the simple math lecture? who can forget?) and showed that the “functional relationship” must hold true based on reality. He also showed that the “functional relationship” required was “a” functional relationship.

    The “functional relationship” simply does not support whatever twisted “teaching” you want to expound upon.

    Back to the tower with you!

  75. 306

    This post by IANAE makes no sense.

    When in doubt, declare victory and keep shoveling seems to be IANAE’s method.

    The very clear case law supports Anon, and not your view.

    Anon previously laid out to you the simple transitive property (remember the simple math lecture? who can forget?) and showed that the “functional relationship” must hold true based on reality. He also showed that the “functional relationship” required was “a” functional relationship.

    The “functional relationship” simply does not support whatever twisted “teaching” you want to expound upon.

    Back to the tower with you!

  76. 304

    Diehr was silent that a programmed computer adapted to a specific application was patentable?  I Diehr knew fully well that what it was dealing with was a programmed computer adapted to a specific application.

  77. 302

    When a proposition is devoid of respectability, what is one to do? Treat it with respect?

    Ned, this is the reason you have become a lightening rod for derisive posts.

    This has been explained to you many times. Yet such does not stop you, does it?

Comments are closed.