Avoiding Subject Matter Problems but Creating Written Description Problems

Since Bilski, the USPTO has been understandably struggling with its patentable subject matter procedures. This is especially true in the area of computer software.

U.S. Patent No. 8,196,213 issued this week to Microsoft and is directed to a method of verifying un-trusted code. The original application included claims directed toward “a computer readable storage medium” loaded with varous instructions arranged in a novel manner. In July 2011, however, the examiner and the art unit’s Supervising Patent Examiner (SPE) mailed a final rejection of the claim based upon their conclusion that the claim impermissible encompassed unpatentable subject matter under 35 U.S.C. 101.  The examiners reasoned that the storage medium classification was broad enough to include signals and that signals are unpatentable under Section 101. See 1351 Off. Gaz. Pat. Office 212 (Feb 23, 2012).

In response, Microsoft amended the claims – adding an express limitation that excludes signals.  The amended claim begins: “1. A computer readable storage medium excluding signals . . . ” This change satisfied the PTO and the patent quickly issued.

The original patent document never discusses signals and only defines computer readable media by reference to various elements “which can store data that is accessible by a computer, such as magnetic cassettes, flash memory cards, digital video disks, Bernoulli cartridges, random access memories (RAMs), read only memories (ROMs) and the like may also be used in the exemplary operating environment.” 

The Question: Should the PTO have rejected the amendment for failing the written description requirement?

 

268 thoughts on “Avoiding Subject Matter Problems but Creating Written Description Problems

  1. 266

    According to your own theory, they must have been simpletons and sophists to not use the very exact words that the Supreme Court so carefully chose.

  2. 265

    Mr. Hold, there are many, many, many, many cases that do not limit Benson to method claims.  Why?  They deem claims to machines as being drawn to methods.  Now, pray tell, just why would they do that?

  3. 263

    Hold, Benson involved, according to the Court, a claim it characterized as one for programming a computer.  But, you say that the a programmed computer was somehow not involved in Benson, that the Supreme Court was saying nothing at all about programmed computers?

  4. 262

    Don’t have to.

    Read Benson and read it carefully. That simply was not the issue under consideration.

    For someone who preaches as to which words the Court used, you do a pretty shabby job of paying attention to which words the Court used.

  5. 261

    And those that actually read the actual words so carefully and precisely chosen by the Court.

    Unless you think that the only simpletons and sophists think that the Court’s actually chosen words can be heedlessly and recklessly disregarded…

    When you play by the exact words, you d i e by the exact words.

  6. 260

    Don’t have to: it wasn’t at issue in Benson.

    Read Benson and read it carefully. At issue in Benson were process claims. That is all the Supreme Court opined about, thus that is the limit of their holding.

  7. 259

    I will agree with this to the extent of 103's statement: "Patentability shall not be negatived by the manner in which the invention was made."

  8. 256

    Mr. A Hole;

    Why don't you read and respond to what I post, not to your strawman mis-characterization of what I post.  Talk about people who do not read carefully…..

    The proposition you propose is the the same as what you propose with business methods.  Because the SC left open the possibility that a programmed computer could be statutory subject matter, you reason they HELD that they were eligible.  This kind of thinking pollutes every post you make. 

  9. 255

    Ned types it and still doesn’t get it:

    the last sentence of § 103 TO ABOLISH the test it believed this Court announced in the controversial phrase ‘flash of creative genius’

    Flash of Genius is dead. As long as it is understood that the level of patentable invention is not Flash of Genius, we will ALL be happy.

  10. 254

    I intended no insult to you regarding bootstrapping.

    Ned obviously intended no answer either (he still hasn’t given one).

    Ned’s idea of “bootstrapping” is any simple logic in areas outside of his agenda.

  11. 253

    since point 4 flows naturally from the prior points

    The Supreme Court in Benson did not think point 4 flowed naturally from the prior points and only addressed process claims.

    There is something wrong alright: Ned.

  12. 252

    without any change

    It’s a good thing then that the law (and reality) make sure that programming does in fact change the machine.

    A L A P P A T

  13. 251

    why do you think…

    1) Because they are not patent law experts.

    2) Because ideological (philosophical) factions were involved. Ignoring the reality of who sits on the bench, and thinking that law is pure and chaste because it comes from the Bench is the worst kind of naiveté.

    3) Holdings have been quoted accurately. You are getting lost in the weeds of dicta. Benson did not have a holding on programmed computers. Benson was explicit about what it’s holding in relation to programmed computers was:

    It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.

    It’s about time you stopped the farcial reading of law.

    Chrissakes, just look at Prometheus.

  14. 250

    This sounds more like Ned’s example of one labelling an entire category.

    But, but, but,… Prometheus was about medicalmethods, therefore all medical methods are ineligible.

    T O O L

  15. 249

    Computer, 

    An improved computer may indeed be patentable.  I do not dispute that at all.  But most advocates are not talking about patenting improved computers, but are instead talking about patenting software.  What they do is dress up the claim to software but adding in conventional elements with no new functionality between the software and the conventional elements.

    Just as in Benson, the USE of a GP to run the software is not patent eligible.  Flook and Bilski would add that adding conventional extra solution activity adds nothing.  Prometheus made it clear, as did Benson, that adding conventional elements without any change in how they work is not enough.

    Thus, we have had endless discussions here about the differences between a new computer and the use of an old computer to run software, but the advocates here on Patently-O refuse to even discuss the distinction, insisting that the Federal Circuit somehow overruled the Supreme Court and has held a programmed computer is patent eligible regardless of any new use to which it might be put simply because using a computer to run the software makes it a new machine.  

  16. 248

    Help me, why do you think the SC in Bilski used "not categorically excluded?"  They used similar language in Benson discussing programmed computers?

    Their language was carefully chosen and chosen for a purpose.  

    I think that to the extent you and others refuse to accurately quote the holdings of the cases, you must be doing so for a reason.  

  17. 247

    Help me, 

    I intended no insult to you regarding bootstrapping.  

    I simply pointed out just how Rich was bootstrapping in Benson.  He did this

    1. Machines are eligible.
    2. Computer are machines  Computers are eligible.
    3. Programmed computers are computers, which are machines.  Programmed computers are eligible.
    4. A method of programming a computer limited to use in a computer is patentable because a programmed computer is a machine, which is eligible.

    The Supreme Court examined only point 4, and held the claims in that case ineligible despite their limitation to computers.  But, since point 4 flows naturally from the prior points, there is something wrong in one of them.

    Obviously, it is point 3 that is wrong.

  18. 246

    Dorothy, "entire concept?"  I recall Graham acknowledging that Cuno may have been overruled, but that the rest of its jurisprudence following Hotchkiss was endorsed.  The Court did not decide that any precedent was overturned, not even Cuno.  

    Compare, from Graham,

    "The questions, involved in each of the companion cases before us, are what effect the 1952 Act had upon traditional statutory and judicial tests of patentability and what definitive tests are now required. We have concluded that the 1952 Act was intended to codify judicial precedents embracing the principle long ago 4*4announced by this Court in Hotchkiss v. Greenwood, 11 How. 248 (1851), and that, while the clear language of § 103 places emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remains the same."

    "It is undisputed that this section was, for the first time, a statutory expression of an additional requirement for patentability, originally expressed in Hotchkiss. It also seems apparent that Congress intended by the last sentence of § 103 to abolish the test it believed this Court announced in the controversial phrase "flash of creative genius," used in Cuno Corp. v. Automatic Devices Corp., 314 U. S. 84 (1941).[7]16*16 It is contended, however, by some of the parties and by several of the amicithat the first sentence of § 103 was intended to sweep away judicial precedents and to lower the level of patentability. Others contend that the Congress intended to codify the essential purpose reflected in existing judicial precedents—the rejection of insignificant variations and innovations of a commonplace sort—and also to focus inquiries under § 103 upon nonobviousness, rather than upon "invention," as a means of achieving more stability and predictability in determining patentability and validity.The Reviser's Note to this section,[8] with apparent reference to Hotchkiss,recognizes that judicial requirements as to "lack of patentable novelty [have] been followed since at least as early as 1850." The note indicates that the section was inserted because it "may have some stabilizing effect, and also to serve as a basis for the addition at a later time of some criteria which may be worked out." To this same effect are the reports of both Houses, supra, which state that the first sentence 17*17 of the section "paraphrases language which has often been used in decisions of the courts, and the section is added to the statute for uniformity and definiteness."We believe that this legislative history, as well as other sources,[9] shows that the revision was not intended by Congress to change the general level of patentable invention. We conclude that the section was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional directions that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability."

  19. 245

    That’s quite an impressive record and reputation you have built up there for yourself, eh Ned?

  20. 244

    “The programmed computer must actually do something new and useful within the useful arts to be patentable. A programmed computer that calculates BCD to binary, or plays the new song, or computes risk, is not.”

    Why not? A toaster that toasts four slices of bread is patentable over a toaster that toasst two slices of bread, at least at 101.

    So why shouldn’t a computer which is much more sophisticated and advanced than a toaster, be patentable?

    If we are promoting innovation why take a cool innovation like a programmed computer and not allow it to be patentable?

    I just do not understand the logic here.

    Now I know some are saying hey you can’t patent the song, or the BCD ( Whatever that is), but that is not what the patent is on.

    My computer plays music and for that it should be patentable, I don’t care whose song or music it plays.

    The music has a copyright, right? So people can still record it, play it , sing it print it, write it all they want.

    But programming a computer to do any of that stuff is cool as sheet and should be patentable.

    Now, I am going to make some patentable toast for breakfast.

  21. 243

    I was busy last weekend, and didn’t have time.

    What was Ned doing that he didn’t have time to answer Anon’s questions, even after a week after he was finally lead to the passage like a puppy lead to his own pile of crrp, and two weeks after the original post?

    Let’s look at a count of Ned’s posts this week only on the two Patently-O threads of AVOIDING Subject Matter Problems but Creating Written Description Problems and Survey Response: Does the Amendment Violate the Written Description Requirement?

    Jun 05 – 4
    Jun 06 – 24
    Jun 07 – 32
    Jun 08 – 15

    Grand Total – 75

    75 times of being “too busy” to be honest. 75 times after the excuse of “I didn’t see it, unbelievable as it was, was removed.

  22. 242

    But, even if you personally carefully choose the context, there are other who do not carefully choose context

    Ned, it is clear from Anon’s posts that it is you that is the one not carefully choosing context.

    Why are you having a hard time understanding this?

    You fall immediately into the same mode of improper context with your statement of “there are other who do not carefully choose context, but blatantly say that business methods or programmed computer are patentable subject matter” which is a statement of categories and not individual applications; a statement that is clearly appropriate under the eligibility context of a category discussion.

    It is as if you do not want to understand what Anon is plainly saying.

    If a discussion on eligibility is only dealing with the cateogry level, saying a category is patent eligible is correct. It is understood that for anything and everything in categories of patent eligibility. individual claims in individual applications also must pass 101.

  23. 241

    Help, the problem you may be having is that I am responding to what we here affectionately refer to as sock puppets

    Yes, I think that is the problem. I was hoping that you would respond to me instead of to others. Your explanations still do not help me understand the intended insult with your use of the term “bootstrapping.”

    Your point of novelty reply does not address the concerns I raised, and your example with music is not answered by the Prometheus case example. Prometheus was concerned with what was needed to make the application of a natural law enough to qualifiy for a patent. Your present example is along the lines of a useful art/non-useful art discussion and is inapposite to Prometheus.

    Your Flash of Genius reply is off-point and quite frankly incorrect. I did mention that Flash of Genius is something I understand. Your attempts to equate Flash of Genius with any and all views on obviousness is, pardon the pun, an obvious error. The doctrines are clearly different, and as noted, Flash of Genius was expressly abrogated by Congress when they wrote the patent act of 1952. Whether or not the doctrine has been attempted to have been revived and reinserted into patent law is quite a different matter. Clearly understanding what Flash of Genius is, and understanding the fact that it is not the same as the 1952 act of Congress obviousness law is important to prevent backsliding and corruption of law. Flash of Genius should not be revived by the courts as a mechanism for controlling any perception that the bar to granting patents is too low. That is an improper role for the courts. That is the role of Congress.

    I asked you to explain only one thing and you provided three “answers”, none of which explain the one thing that I asked.

  24. 240

    I agree that “flash of genius” could be misconstrued… So, if 103 overruled just the one case, what about all the others?

    Double strawman bonus
    1- no one said Flash of Genius could be misconstrued, so your “agreement” is bogus. Just like your advocacy for something that is not the law.

    2- no one said only one case of Flash of Genius was abrogated. The ENTIRE concept, regardless of how many cases was EXPRESSLY abrogated.

    Did you rob one of the little pigs to get that much straw?

  25. 239

    I addressed Alappat in a previous post.

    I agree that "flash of genius" could be misconstrued.  However, read in context of the cases he was relying upon, that phrase was not new to Douglas, but was rather commonplace in Supreme Court jurisprudence.  So, if 103 overruled just the one case, what about all the others?

    The better view, is that it did overrule all the others as well.  Which means, Douglas was not the culprit.  He was simply following the law as expressed by his colleagues in numbers of cases before him.

    Another, more benign view is what I said, all it means is that the work of one of ordinary skill in the art is not patentable.  But, then, how does one tell that a particular work is beyond the skill of the ordinary mechanic?  Obvious?  Kind, rather than degree?  Work of genius?  All were used by the Supreme Court from time to time.

     

  26. 238

    anon, I will look at your questions and get back to you.  I was busy last weekend, and didn't have time.

    In the meantime, why don't you simply use the language of the the SC — not categorically excluded?  It boggles the mind that you refuse to do so.  You go on an on that your choice of phraseology has an acceptable meaning in certain contexts.  But, even if you personally carefully choose the context, there are other who do not carefully choose context, but blatantly say that business methods or programmed computer are patentable subject matter.  A casual reader is not fooled by why some of the commentators here make such statements.

  27. 237

    a. programmed computers are machines, machines are PE;
    b. the program of a programmed computer is a component of machine, it too is therefore eligible.

    The premise wrong.

    Ned,

    Again with the spurious and conclusory – and unfounded – statements.

    The plain fact of the matter is that a programmed computer is a particualr machine and machines – as a category ARE patent eligible. This is actually the state of law. Alappat.

    “machine are PE” Absolutely – in the proper context of that word in relation to a category discussion. Stop conflating the category discussion with the separate individual application claim discussion that must ensue for every single claim – no matter what category.

    And to join in on the Flash of Genius issue. Your statement of “but it is the same thing” is nowhere close to being true. Not in any way, shape or form. Flash of Genius was abrogated by 103. It is sophistry to attempt to revive what was explicitly rejected by Congress.

  28. 236

    Help, the problem you may be having is that I am responding to what we here affectionately refer to as sock puppets, people who use the moniker section of a post for comments.  We at times cannot tell who we are talking to.  So our responses become mixed up.

    1. Bootstrapping: 
    a. programmed computers are machines, machines are PE;
    b. the program of a programmed computer is a component of machine, it too is therefore eligible.

    The premise wrong.

    2. PON.  
    a. Claim to a player piano with a scroll that plays music.  
    b. Claim to a player piano with a scroll that plays music.

    In a,, all player piano elements are a new combination.  The music is just explanation of what the combination does.

    In b., all the player piano elements are old.  The music is the only thing new.

    The SC says, when the only thing new is unpatentable subject matter, handled patentability under 101.  See Prometheus in its discussion of the government position.  

    Regard FoG, Douglas's views were not new, but were found in numbers of cases before him on what the difference was between the work of one of ordinary skill and the ordinary artisan.  We today call this obviousness, but it is the same thing.

  29. 235

    anon, if you do not mean categorically, do not say “ARE” without qualification.”

    “Programmed computers ARE patent eligible.”

    What does that sentence mean?
    If instructed by a Judge, what would a juror understand the phrase to mean?

    We have been through this and I am positive that I was quite clear. I outlined the entire premise in one post and responded directly to you so that your email style of viewing would not miss the post. Excuse after excuse is all I have gotten from reminder after reminder.

    In a nutshell, when discussing the term “patent eligible” the context of whether you are talking an explicit singular case or a group or category of subject matter dictates the proper understanding.

    So NO Ned, it is you that needs to use the proper meaning of the term and STOP the blatant conflation between the two different proper uses. I need no qualification on the use of eligibility when the discussion is on a category level. You need to STOP conflating the two levels of the word.

    In other words:

    What does this sentence mean?” depends on context.

    If instructed by a Judge, what would a juror understand the phrase to mean? ” also depends on context, but most likely may mean a singular instance, since a court’s case or controversy requirements still mean that a particular case is at hand in order for a Judge to be instructing a group of jurors.

    You rail on about sophistry, and yet, AGAIN, the comment section of this legal blog finds you applying sophistry by what only can reasonably be termed deliberate obfuscation of a term and in particular the application of that term out of the proper context of its meaning.

    As I discussed at least at link to patentlyo.com at May 24, 2012 at 07:49 AM, – and far more numerous places regarding your blatant misuse of “categorically” – you have been put on notice of the properness of discussing categories of items and patent eligibility as opposed to individual applications and that individual particular application’s eligibility. There is no reasonable excuse for you to continue to misuse and purposefully clud discussions with your singular/group mismatching of “eligibility.”

    Furthermore, and ever so telling, you apply this obfuscation selectively. Nowhere do you apply the passion for outlawing a category – a whole group regardless of individual claim merit or construction – as you do with business methods and software-related patent applications. And you offer no plausible, rational reason for this highly unbalanced, selective and unfounded vendetta.

    Not once, not twice, not even three times, but at least four times I and others have provided you a link to the thread, along with specific time stamps that identified this clarity of context regarding eligbility and my questions that you have refused to answer regarding this plainly overt tendency of yours in direct comparison to my steadfast and uniform treatment of patent law. You have responded to my posted questions twice – once initially and a second time on link to patentlyo.com on May 31 at 9:50 PM, but neither time – and at no time – have you actually answered my questions. “Looking at my questions,” as you state you will on that thread on June 1 at 7:21 PM is not enough.

    You say that you want a mature dialogue, but your actions say otherwise. I repeat: we have not gotten past anything if you continue to avoid answering my inconvenient questions and you continue to post spurious positions of law.

  30. 234

    Sorry, Good post and good points all.

    I accept the pretext regarding Douglas's impeachment might seem to be facially valid, but if that is all there was, I think it was woefully inadequate grounds.  Taking bribes for decisions is grounds for impeachment.  Anything below that is questionable unless it demonstrates systematic corruption.

    We all know that Ford went after Douglas because of his liberal view on the first amendment.  Silencing the opposition by bringing up criminal proceedings or impeachment threats is, in my humble opinion, much more of a problem than what Douglas was alleged to have done.  What Ford did was fundamentally wrong and must be condemned.

  31. 233

    …so you are a loser and an antagonist.

    Yippee for you.

    Here’s a hint for success (have you heard of that?): most normal people don’t like antagonizing others and creating battles they lose.

    Approval is over-rated. If you want approval, buy a puppy. If you want results, if you want success, look me up.

  32. 232

    “It is ‘retrieved’ from the far end.”

    Only that you aren’t retrieving it from the carrier wave. Instead, if you are retrieving it from the far end, you are retrieving it from some type of storage device (e.g., a hard drive, memory, etc.) in which the data is stored.

  33. 231

    It’s not a matter of winning of loosing. It is a matter of making you lawyers run around like chickens with your heads cut off. Sad part it is SO easy to do. You all get so defensive & aggressive whenever your inbred “training” is threatened. All you understand is group-think. Is it any wonder lawyers have lower approval ratings than Congress (which has too many lawyers itself).

  34. 229

    Pot, black

    fits just like “lawyer, non-lawyer” or “trained, untrained.”

    This is not a debate you will win.

  35. 227

    The dialogue of grown ups is often misunderstood by children.

    Now run along little child.

  36. 226

    The above “grown-up” discussion sounds more like a bunch of 7 year-olds arguing over a toy. Just a lot of shouting & yelling with no reasoning.

    Read all the above & tell me again WHO are the grown-ups!

  37. 224

    Why isn’t Ned screaming for the nullification of all medical method patents?

    With Bilski, one case was enough to light a fire under him to remove all business method patents.

    With Prometheus, the same should be true for all medical method patents.

    Where is the outrage? Why the selectivity?

  38. 223

    I read your post to Really and I am not any closer to understanding what you are attempting to belittle with the bootstrapping comment.

    I am also confused by your statement about parts of claim where novelty lie. First, this is dissection and second, eligible claims can exist composed completely of non-novel elements. In fact, almost all inventions are composed of non-novel elements as captured in the phrase “there is nothing new under the sun.”

    Thank you for the IBM case, but I am now confused as to why you introduce that case. What do you think the case supports?

    Also, your posts comparing Flash of Genius and 103 do not make any sense. You denigrate 103 calling it unworkable in one post and in the next call it the codification of Flash of Genius, which it is expressly not, as history is clear that 103 was written to abrogate Flash of Genius.

  39. 222

    “And YOU are the one that says YOU know the laws & rules of prosecution??”

    God, not another examiner that doesn’t know how to read.

    “phrases used in the claims must find clear support OR antecedent basis in the description.” Notice the word “or”. As such, antencedent basis is NOT A REQUIREMENT. Clear support is sufficient. A DVD, an example of a storage medium, does not include a signal. Hence, clear support has been provided. Moreover, there is no requirement for antecedent basis.

  40. 221

    “Gerald Ford … once tried to impeach Justice Douglas.”

    As alleged, Douglas accepted payment for an article published in a magazine, “AVANT GARDE” that was the successor to a magazine, “FACT,” the publisher of which, Ginzberg, had a case pending before the Federal Courts for libel. Ultimately, Ginzberg appealed an adverse opinion in which SCOTUS declined to hear the case but Douglas dissented (while not recusing himself).

    It seems to me, based upon of this version of the facts, that Ford had a legitimate concern.

    “What I think is really happening is that the USPTO is following the Federal Circuit which under Judge Rich and now under Judge Rader were and still are fighting Benson tooth and nail because they do not agree with it”
    Benson is simply bad law. The facts, as presented, are wrong, and it was written by a judge that had no clue about the issues.

    “However, you may be right that the USPTO is part of the problem because they joined the revolt when they began to issue Beauregard claims.”
    The Benson method claim 8 clearly passes 101 under MOT. The reason why Douglas considered it to be “abstract” was likely because Douglas didn’t understand the claimed process in the least.

  41. 220

    Baseball Player to Batboy, “hold the ball for me, it is from my first hit as a major leaguer.”

    Batboy (also a former patent examiner), “sure thing, I’ll store it for you.”

    [Batboy throws ball into stands]

    Baseball Player to Batboy, “what are you doing? I told you to hold it.”

    Batboy, “it was being held/stored as it was flying through the air.”

    Baseball Player muttering to himself, “f’ing id-iot”

    There is a difference between a contrived definition and a reasonable definition that is reflective of the ordinary and customary meaning given to the term by those of ordinary skill in the art — from vast experience with the USPTO, I know that they teach you the opposite.

    Sending something is not storing it.

    Your analysis fails because you forget that YOUR CONTRIVANCES DON’T COUNT. The analysis must begin with how one of ordinary skill in the art uses the term.

    I’ve seen this type of analysis hundreds of time before. You begin with the conclusion (i.e., X is construed to mean Y) and then contrive an analysis to get there. After a few twists and turns you come up with an analysis that if told to one of ordinary skill in the art, they would look at you if you had 3 eyes and 2 noses.

    “If you do not consider the wave carrying the data a storage, can you please explain why it isn’t?”
    Easy … I want to store data for later use. I send it out as a signal. 2 seconds later, I want that data. Ooops, not there anymore. That data is a thousand miles away. Hence, the data was not stored. If the data cannot be later retrieved from the alleged storage medium, then it wasn’t stored in that medium. FYI — there is a difference between retrieving and receiving.

  42. 219

    What is the dicta from Benson? (quotation marks optional)

  43. 218

    And Ned always accuses others of what he does. Picked that up from Malcom. What else did you pick up from Malcolm? Have you filled your prescription for it?

  44. 217

    You have nothing to say because you have been caught with your pants down. Again.

  45. 216

    That makes no difference to your original point about YOU interpreting the law, now does it, oh one with ZERO training?

    Perhaps you should be quiet, the grown-ups are trying to have a discussion.

  46. 215

    You may have been trained to interpret the law.
    You still do not make it.
    And YOUR interpretation is no more or less valid than the next lawyer even if you both view a decision diametrically opposite. Which, as seen here, happens often.

  47. 214

    I agree with FYI. In general, this is the way most SPEs operate.

    It’s wrong, but part of it has to do with the number of examiner’s that they have to supervise in addition to all the rest of the cr@p they have to do (sig panels, special projects, details at the academy, etc.). Not justifying the actions. Just stating the way it is. And it needs to be changed if quality is to improve.

    Problem is most SPEs have in the area of 70-100 cases to review a PP. IF they spend only 1 hour per case no time is left for even meeting with the examiner before the case is turned in or anything else. And before you say it, yes, you can find at least one error in maybe 10 minutes. THAT is not sufficient. The SPE (or other reviewer) needs to find ALL the errors & instruct as to how to correct them. Doing it piecemeal is horribly inefficient for both the examiner and the SPE.

  48. 213

    Are you familiar with what a carrier wave is?

    A carrier wave is a waveform (e.g., sinusoid) that is modified (often by frequency or amplitude – you know, like in radio). That modification imparts data to the original base waveform. That modified waveform (carrier wave + data) are transmitted & some time later received. Many definitions of carrier wave include language like the wave “carries” the data while it is being transmitted.

    How is the carrier wave that is carrying data not temporarily “storing” the data on the carrier wave? For this question, at least, never mind PTO policy or court decisions. Just use common sense.
    If you do not consider the wave carrying the data a storage, can you please explain why it isn’t? And I am talking actual function not just semantics.

  49. 210

    You and OWL Holmes have it backwards.  

    As I have explained, Congress in 1793 left it for the courts to define what the constitution meant by "invention" and "discovery."  This they did.  In '52, congress enacted 103.  Graham held that this endorsed their holding in Hotchkiss and cases interpreting Hotchkiss.  Nothing ultra vires here at all.

    See Graham for more detail.
      

  50. 209

    my god, what bootstapping.

    I have nothing to say.

    I stand for a patent system that works best, with the lowest cost for the startup.  That is where true innovation takes place and that is where patents are invaluable.

  51. 208

    From Cuno:

    "We may concede that the functions performed by Mead's combination were new and useful. But that does not necessarily make the device patentable. Under the statute, 35 U.S.C. § 31, R.S. § 4886, the device must not only be "new and useful," it must also be an "invention" or "discovery." Thompson v. Boisselier, 114 U. S. 1, 114 U. S. 11. SinceHotchkiss v. Greenwood, 11 How. 248, 52 U. S. 267, decided in 1851, it has been recognized that, if an improvement is to obtain the privileged position of a patent, more ingenuity must be involved than the work of a mechanic skilled in the art. Hicks v. Kelsey, 18 Wall. 670; Slawson v. Grand Street R. Co., 107 U. S. 649; Phillips v. Detroit,111 U. S. 604; Morris v. McMillin, 112 U. S. 244; Saranac Automatic Machine Corp. v. Wirebounds Patents Co., 282Page 314 U. S. 91U.S. 704; Honolulu Oil Corp. v. Halliburton, 306 U. S. 550. "Perfection of workmanship, however much it may increase the convenience, extend the use, or diminish expense, is not patentable." Reckendorfer v. Faber, 92 U. S. 347. The principle of the Hotchkisscase applies to the adaptation or combination of old or well known devices for new uses.Phillips v. Detroit, supra; Concrete Appliances Co. v. Gomery, supra; Powers-Kennedy Contracting Corp. v. Concrete Mixing & Conveying Co., supra; Electric Cable Joint Co. v. Brooklyn Edison Co., 292 U. S. 69; Altoona Publix Theaters, Inc. v. American Tri-Ergon Corp., supra; Textile Machine Works v. Louis Hirsch Textile Machines, Inc., 302 U. S. 490; Toledo Pressed Steel Co. v. Standard Parts, Inc., 307 U. S. 350. That is to say, the new device, however useful it may be, must reveal the flash of creative genius, not merely the skill of the calling. If it fails, it has not established its right to a private grant on the public domain."
    From, Reckendorfer (one of the cited cases),A double use is not patentable, nor does its cheapness make it so. Curtis, secs. 56, 73. An instrument or manufacture which is the result of mechanical skill merely is not patentable. Mechanical skill is one thing; invention is a different thing. PerfectionPage 92 U. S. 357of workmanship, however much it may increase the convenience, extend the use, or diminish expense, is not patentable. The distinction between mechanical skill, with its conveniences and advantages and inventive genius, is recognized in all the cases.Rubber Tip Pencil Co. v. Howard and other cases, supra; Curtis, sec. 72b.The combination, to be patentable, must produce a different force or effect or result in the combined forces or processes from that given by their separate parts. There must be a new result produced by their union; if not so, it is only an aggregation of separate elements."
    See also the cited Philips v. Detroit case:
    "It is plain, therefore, that the improvement described in the patent was within the mental reach of anyone skilled in the art to which the patent relates, and did not require invention to devise it, but only the use of ordinary judgment and mechanical skill. It involves merely the skill of the workman, and not the genius of the inventor. The following cases illustrate the subject:In Hotchkiss v. Greenwood, 11 How. 248,"The above explains what Douglas meant.  Flash of genius was not truly new, but had long been a way of distinguishing the skill of the ordinary mechanic from "invention."  The case law generally explained that difference must be one of "kind" rather than degree.  

  52. 207

    Quite the contrary, OWL Holmes nails it. In essence, the Court is taking an activist hand in writing patent law since it FEELS Congress has not made it tough enough to get a patent.

    There is no other way of looking at Court-made law. If the executive branch is faithfully applying the law made by Congress, there is no basis for the Court to say anything about the ease of obtaining a patent. If the executive branch is not faithfully applying the law made by Congress, the basis for the Court to rule a patent invalid is already available and there is no need for the Court to make new law to make it more difficult to obtain a patent.

    Quite clearly, any Court-made patent law MUST be ultra-vires.

  53. 206

    I have long and hard argued against their party line

    No, Ned, you have not.

    You cannot expect anyone to believe that you don’t get it that the real party line of big corporate is no patents for business methods and software, can you?

    Have you really drunk so much koolaid that you cannot figure that out?

    Who benefits most from no patents on business methods and software? Hint: it is not the small start-ups and entrpreneurs. It is the established big corporates who can use their might in other ways to compete beyond innovation. Innovation is the key to the small start-ups and entrpreneurs and it is NOT a leap from your agenda of denying whole sections and whole categories of patents to understanding just who you are shilling for.

    Innovation is protected by patents. Your crusade against protection for innovation leaves only one single reasonable conclusion. All else is smoke and sophistry.

  54. 205

    RE your comment of “antecedent basis is for claims, not support in the specification.”

    Maybe you should check out 37 CFR 1.75(1):

    “The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.”

    And YOU are the one that says YOU know the laws & rules of prosecution??

  55. 204

    To the extent that you do not understand the difference between Flash of Genius and 103, you are forever lost.

    You simply don’t know what you don’t know.

    I advice you to understand this difference before you post again in ignorance.

    And before you ask, my telling you won’t make you understand. This is something you have to learn on your own. It would be like a three dimensional being explaining the third dimension to a two-dimensional being.

  56. 203

    Will, you do not seem to understand that "flash of genius" was the law long before Section 103.  It meant then, and means today, something beyond the ordinary skill in the art.

    You might want to actually read the cases Douglas was citing for how they used the term.

    If anything, 103, to a degree, codifies the "beyond the ordinary skill in the art" standard, does it not?

  57. 200

    Charles, obviously you have me confused with the typical big corporate shill.  I have long and hard argued against their party line.  I favor FTI, and end to reexaminations, repeal of eBay in favor of mandatory injunctions except when the government is the infringer, and so on.  How you can leap from my support of Douglas, who if anything was anti-big business, into thinking I favored big business is quite a leap.

  58. 199

    Benson: "We do not hold that programmed computers are precluded."

    Rich, Anon, AI and numerous sock puppets: "Programmed computers ARE eligible."

    Instruct the jury.  Move on to 102/103/112.

    The sophistry never ends.  In the words of Scalia, "We are not st  'pid."

  59. 198

    IBM v. US, 298 US 131 (1936)
    http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=us&vol=298&invol=131
    "On the trial appellant offered to prove its ownership of patents which, it asserts, give it a monopoly of the right to manufacture, use, and vend the cards, separately, and in combination with its sorting and tabulating machines, of which, it insists, they are a part. It argues that the condition of its leases is lawful because it does not enlarge the monopoly secured by the patents, and that the trial court erred in refusing to consider appellant's patent monopoly as a defense to the suit.Appellant's patents appear to extend only to the cards when perforated, and to have no application to those which the lessees purchase before they are punched. The contention is thus reduced to the dubious claim that the sale of he unpunched cards is a contributory infringement of the patents covering the use of perforated cards separately and in combination with the machines. See Carbice Corporation v. American Patents Development Corp., 283 U.S. 27 , 51 S.Ct. 334; Motion Picture Patents Co. v. Uni- [298 U.S. 131, 137]   versal Film Mfg. Co., 243 U.S. 502 , 37 S.Ct. 416, L.R.A. 1917E, 1187, Ann.Cas.1918A, 959; McGrath Holding Corp. v. Anzell (C.C.A.) 58 F.(2d) 205; cf. Leeds & Catlin v. Victor Talking Mach. Co., 213 U.S. 325 , 29 S.Ct. 503."

  60. 197

    Regardless of how you feel (unworkable or not), the point of the matter is that you are advocating for something that is not law (Flash of Genius) and ignoring something that is law (103).

    Your improvident personal feelings aside, Rich is right because he wrote the law. The Supreme Court in Douglas is wrong becasue that law was expressly written to over rule the wayward Court.

    The fact that you don’t get this, or don’t want to get this does not change the reality of the situation.

  61. 196

    Help, I agree with the Supreme Court and disagree with Rich.  You should consider that Rich was just the tip of the spear and that the majority of the patent bar disagreed with Justice Douglas.  Giles Sutherland Rich was appointed to the two member committee to review the Federico draft by the APLA.   But they were to coordinate and represent not only the APLA, but also all patent bar associations in United States.  This is what they did.

    As many can tell you, Section 103 is all but unworkable as a statute.   Even after 60 years, the rules regarding obviousness are unclear.  If you wanted to improve the codification of the law of "invention," I think we might look to Europe.  They seem to have gotten it right.  

  62. 195

    Invalid for lack of written description under MPEP 2173.05(i): “Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. See In re Johnson, 558 F.2d 1008, 1019, 194 USPQ 187, 196 (CCPA 1977) (“[the] specification, having described the whole, necessarily described the part remaining.”). See also Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984). The mere absence of a positive recitation is not basis for an exclusion. Any claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. Note that a lack of literal basis in the specification for a negative limitation may not be sufficient to establish a prima facie case for lack of descriptive support. Ex parte Parks, 30 USPQ2d 1234, 1236 (Bd. Pat. App. & Inter. 1993).”

  63. 192

    fish, see my reply to "Really" just a few minutes ago.  The 102 approach to patent eligibility issues is rejected in Prometheus.  If the only novel subject matter in a claim is ineligible subject matter, the analysis has to proceed under section 101.

  64. 191

    I really like the part of your post when you said that the USPTO had overruled Gottschalk v. Benson.  What I think is really happening is that the USPTO is following the Federal Circuit which under Judge Rich and now under Judge Rader were and still are fighting Benson tooth and nail because they do not agree with it.  However, you may be right that the USPTO is part of the problem because they joined the revolt when they began to issue Beauregard claims.

    Obviously some do not agree with Justice Douglas.  I earlier mentioned that the "smartest," the "greatest" president in American history, Gerald Ford ("Poland is not under Soviet domination"), once tried to impeach Justice Douglas.  What this is say about Gerald Ford and what does this say about Justice Douglas?  

  65. 190

    Really, "You can argue that the program code doesn't distinguish them from other forms of storage medium (and hence, unpatentable under 35 USC 102). However, it is an easy argument to make that they are different."

    Before Prometheus came down, I may have agreed with you that the proper solution to the problem of Beauregard claims would have been under section 102 and not under section 101.  After all that is the approach the government advanced in its opposition to the Prometheus claims.  However in Prometheus, the Supreme Court made it clear that claiming apparently novel, but otherwise unpatentable subject matter, is not a section 102 problem, but a section 101 problem.  To understand this point, it'd be useful to read the government brief and the Supreme Court's response.

    The big take away from Prometheus on this issue is that the Supreme Court will not abide drafting gamesmanship by patent practitioners that will dress up otherwise unpatentable subject matter by adding claim elements that are old and conventional and whereby the interaction of the unpatentable subject matter with the old and conventional elements is unchanged.

    It is clear from the way Judge Rich once thought about the problem is exactly the way you currently think about the problem.  Take a look at his opinion (excerpt below) below in Application of Benson, where he concluded that the claims that the Supreme Court eventually held to be in violation of section 101 were patentable because, in his opinion their, only use was in a programmed computer, a kind of machine that was patent eligible as a matter of law because machines were one of the four classes.  This kind of thinking would believe that if the claimed subject matter is normally within one of the four classes, that one should move on to section 102 to determine whether it's patentability.

    Prometheus is decisive that this kind of analysis is rejected.

    From Application of Benson:

    "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. How can it be said that a process having no practical value other than enhancing the internal operation of those machines is not likewise in the technological or useful arts?"

  66. 189

    Are you not familiar with 37 CFR 1.75(1) “The claim or claims must conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.”

  67. 188

    The holding of Benson is the law, but only so far as it has been modified by subsequent Supreme Court decisions, notably Diehr and Bilski.

    The dicta of Benson has never been the law.

  68. 187

    the ones that make & interpret the laws. You no more do this than examiners

    One slight difference: lawyers are trained and taught to interpret the law. That’s what makes a lawyer a lawyer.

    It’s a slight difference that makes all the difference in the world.

  69. 186

    “I cannot control my spe’s desire to reopen a case that he himself signed a final action on.”

    You stumbled upon one of the many great secrets at the USPTO. You guys are not supervised.

    You write all this cr@p and think, “wow, I must be developing some really great arguments but my SPE hasn’t touched my language.” In reality, the SPE reviewed your first 10, 20, 30 (??) office actions, concluded that you are not entirely incompetent, and now rubber stamps the rest.

    If your SPE hasn’t found a single mistake, they aren’t reviewing it.

  70. 185

    It is pretty clear from the above discussion that you lawyers think that you are the ones that make & interpret the laws. You no more do this than examiners do. All of the above are just your opinions of the way it SHOULD be, not what the courts or office policy have said the way things are to be interpreted. Until the courts and/or office policy clearly change the current interpretations, your opinions are just like all other opinions. And we all know what they say about opinion… :)

  71. 184

    The thought that the Court should take it upon itself when, in it’s uncontrolled, un-elected, and unaccountable view that “the standard of invention of patents was ridiculously low, then and even now” should set about creating and enforcing doctrines of law; in essence writing law, should be a clear beacon of unconstitutional abuse of power. Put simply, the Court oversteps the constitutional delegation of authority when it decides that Congress has not written patent law strictly enough.

    More than just shades of Lochner at work.

  72. 182

    You can’t tell the difference between a storage medium and a carrier wave, and can’t be bothered to explain why storage doesn’t modify computer readable medium. Why would I waste time with you?

    Further, antecedent basis is for claims, not support in the specification. You’re too cute by half; you’re just rambling nonsense now about storing data in electromagnetic fields.

  73. 181

    It is of no small note to recognize the parties attempting to introduce non-Useful Arts like music and poetry into the discussion. Two of the so-called Vocal Minority: Ned Heller and MM.

    Such deliberate obfuscatory tactics will not work. Such obvious introductions are clear strawmen, dispatched with ease. It is hardly worth the effort to inject them as the attempted dust-kicking only serves notice to your flailing and desparate legal position.

  74. 180

    As I said many times before, there are different points of view about what makes a good patent system.

    Ned Heller is my kind of man.

    A good patent system has closed and locked doors.

    Other differnt points of view of good patent systems that Ned and I can agree to:

    I aim to cure the patient by killing him.

    The only valid patent is one that has not yet appeared in court before me.

    It takes a flash of genius to actually earn a patent.

    Only the rich deserve to have patents, the answer to too loose a standard for patents is to make them ridiculously expensive to obtain.

    I am looking out for the start-up and small entrepreneur by removing patents as an option, since patents are a great equalizer to the power of big established firms. We should make them very expensive to get, water down their power as much as possible and limit the fields of endeavor that are even eligible for patenting to only those things that were known in the 18th century. New onrush of technology is too difficult to judge for patentability and the Office is just not equipped to do so, so that kind of newness was clearly not meant to be covered by the patent system. That is a good patent system. It only so happens to be a point of view of a good patent system for the entrenched concerns for whom Ned shills, but that is a mere coincidence, trust me, after all, would I lie to you?

  75. 179

    The Supreme Court did the following to Rich in Benson:

    “We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents. It is said that the decision precludes a patent for any program servicing a computer. We do not so hold.

    The report of my [philosophical] “death” was an exaggeration.

    You are a poor student of history to think otherwise. Why else do you think the Supreme Court dare not destroy my work post-Benson?

  76. 177

    Flash of Genius.

    This I understand.

    It was an attempt by the activist court to heighten the standard of invention for patentability. It was also expressly rejected by Congress in 1952 as one of the few items in the patent act of that year that went beyond mere codification of the existing case law and was deliberately done to override the Supreme Court efforts.

    Whether or not non-obvious is vague or subject to hindsight is rather besides the point. Congress, through Rich, deliberately set in place section 103. Help me understand why you seem to be attempting to treat the actual law in a demeaning manner while excusing and in a sense elevating Flash of Genius.

  77. 176

    See the bootstrapping?

    Obviously, you mean to say something derogatory, but it is unclear to me what your insult is.

    I look up “bootstrapping” and find:

    boot•strap
    noun, adjective, verb, boot•strapped, boot•strap•ping.

    noun
    1. a loop of leather or cloth sewn at the top rear, or sometimes on each side, of a boot to facilitate pulling it on.
    2. a means of advancing oneself or accomplishing something: He used his business experience as a bootstrap to win voters.

    adjective
    3. relying entirely on one’s efforts and resources: The business was a bootstrap operation for the first ten years.
    4. self-generating or self-sustaining: a bootstrap process.

    verb (used with object)
    5. Computers . boot1 def. 24 .
    6. to help (oneself) without the aid of others: She spent years bootstrapping herself through college.

    Idiom
    7. pull (oneself) up by (one’s) bootstraps, to help oneself without the aid of others; use one’s resources: I admire him for pulling himself up by his own bootstraps.

    I don’t understand the point you are trying to make.

  78. 175

    From the man who thinks Prometheus was a great decision, the calibre of your legal acumen is plainly evident.

    (and that is not a good thing)

  79. 174

    Do keep in mind where Dudas came from. He was nominated by a republican president. If Obama fails in retaining his position, there is a chance that Kappos will be out and a new director will be put in his place.

    I have my doubts that there will be a collective sigh of relief if Kappos is replaced…

  80. 173

    It would have been like 5 wins by now. I cannot control my spe’s desire to reopen a case that he himself signed a final action on.

  81. 172

    “1. Why?”

    Why not? If you’re wondering what would spark them into action, meh, I know how to rouse a rabble sir. The list of grievances here is long. Indeed, it appears that the “millenium pay” dispute just now wound down with the court of appeals denying reconsideration and en banc consideration. Management does seemingly everything in its power to f itself over and f over examiners to boot. If not for your avg joes constantly nipping at them you’d have an agency that works even worse than the one you have now.

    “2. Are such strikes legal?”

    No, because they say “ooooo you’ve got a union, you can’t strike! That’s the deal!”

    “3. If 2 is no, do you remember the Air Traffic Controllers?”

    Vaguely and I couldn’t care less about them. Although from what I understand they turned down a very sweet offer that was put on the table. Examiners would take the sweet pot. Also, there are great lessons to learn from them. First you do a sick-out obviously, then you do a vacation-out, then, finally you do a opps your agency is empty-out. And, during the final stage, you do not announce a “strike”, if anyone comes to your member’s houses telling them with a court order not to strike, the individual simply says that they’re not striking and that they may or may not have resigned the position to which they are referring.

    Don’t forget Ned, the “customers” of the air traffic controllers weren’t made up of 100% lawltards that do nothing but whine.

  82. 170

    “Why can you not get that”
    Because there is a difference between holding and transmitting. If you took your head out of Kappos’ rear end (aka, the “Memo”) and actually look at the evidence, you would see that. You are a slave to an interpretation THAT DOES NOT EVEN MENTION THE WORD STORAGE. If you wonder why attorneys don’t respect Examiners is because you don’t think for yourselves. You are good (sometimes) at doing what you are told to do but if something out of your comfort zone happens (e.g., you encounter a phrase, i.e., storage medium, that is not encompassed by your instructions, you fall apart). If you are right, explain to me how the BPAI came down like it did. They all were decided since the Nuitjen decision and many came after the Kappos memo.

    “Also, if some define it one way & others, even if most, define it another that is an indicator that there is some ambiguity to the definition of the term.”
    No … a few instances of misuse of the term do not change how a term is interpreted. I suggest you read MPEP 2111 and 2111.01. Think about the word “customary.”

    “When terms like ‘storage medium’ ARE defined in specs & argued (or at least attempted to be argued) in court or infringements cases as including transmitted data & carrier wave storage, how it the interpretation NOT reasonable?”
    When you find one of those cases, come talk to me.

    “Signals (rightly or wrongly) have been ruled non-statutory by the courts.”
    Except that this particular court (i.e., Nuitjen) made it pretty clear that their analysis regarding signals did not apply to storage medium. I find it laughable that the Nuitjen decision, which is relied upon by the USPTO to reject a storage medium claim, recognized the difference between a claim to a storage medium (statutory subject matter) and a signal (held not to be statutory subject matter).

  83. 169

    “I gave you 2 ways that the term would be considered to be non-statutory (lack of explicit antecedent support for the claimed term in the spec and the Kappos memo).”
    Eh? There is no requirement for antecedent basis in the specification. Moreover, it has nothing to do with 35 USC 101. Again, the Kappos memo does not mention STORAGE medium.

    “you are effectively supporting my assertion that the spec also not defining that term it should be given the broader interpretation.”
    Given something a “broader interpretation” requires that interpretation be reasonable and consistent with how those of ordinary skill in the art use the term. The fact that it isn’t defined doesn’t give you carte blanche to work outside those confines.

    Why don’t you provide some evidence as to what is the ordinary and customary meaning for “storage medium.”

  84. 168

    To: Right hand,

    Any one of those devices, coupled to an appropriate interface, intrinsically outputs a signal. What the specification does not teach is the exclusion of a signal.

    IMHO, the examiner and the SPA were wrong in rejecting this claim as being ineligible under 101. They were also wrong in not rejecting the claim, as amended to contain the exclusion, under 112 for want of a written description.

    Query: Would you feel comfortable in asserting this claim against an accused infringer?

  85. 167

    Once again Homer has it right:
    “If you don’t like your job, you don’t strike. You just go in every day and do it really half-assed. That’s the American way.”

    (Clip available e.g. at link to moviewavs.com – I guess that will bring us examiners down to quarter-assed or something.)

  86. 166

    You tipped your hand again, “Mooney”.

    Your action was unfortunately typical, and has not gone unnoticed.

  87. 163

    All of that from my comment about you being obtuse with music and the Useful Arts?

    Not only are you obtuse, you are more than a bit over reactive and over dramatic.

    Methinks thou protest too much.

  88. 162

    “There is no holding involved.” WRONG They are being held WHILE they are being transmitted as a signal. Why can you not get that?? What happens before or after is immaterial. It is the time of transmission when they are stored (i.e, while they are just a signal).

    You say only a few firms use bad boilerplate. Some do – some don’t. Most just leave it open ended. Thus, office policy is what was in the Kappos memo (I don’t make it – I just have to follow it until new guidance comes along. So don’t blame the messenger). It didn’t cover all possible claim terms, but the important point is that if the spec doesn’t explicitly define the media as being ONLY hardware (or as excluding signals) it is to be given the interpretation that it covers BOTH transitory and non-transitory subject matter. If you don’t like the open ended definitions being interpreted as including both, complain to Kappos.

    Also, if some define it one way & others, even if most, define it another that is an indicator that there is some ambiguity to the definition of the term.

    Corrected sentence (that’s what I get for not proofreading -though the meaning should still have been clear if you cared to read carefully) –
    When terms like “storage medium” ARE defined in specs & argued (or at least attempted to be argued) in court or infringements cases as including transmitted data & carrier wave storage, how it the interpretation NOT reasonable?” NOW you can answer.

    If you don’t like how I define the carrier wave containing/storing/embedding/encoding/etc. the data how would YOU define it?

    If you do not consider the data being stored on a carrier wave while it is being transmitted, how would you define it? What is happening to the data from the time it is transmitted to the time it is received? This is really the crux of the issue.

    As to the last 3 paragraphs, you clearly missed my point. I am not saying such would be non-statutory. I am arguing that as a “fleeting storage” to show that it is NOT the length of time that the data is stored by HOW it is stored that is really at issue. The use of a hardware store is clearly statutory. Signals (rightly or wrongly) have been ruled non-statutory by the courts. Thus, storing data on/in a carrier wave is non-statutory.

    I’ll reiterate –
    Data is being held WHILE is is being transmitted as a signal. Why can you not get that?? It is the time of transmission when they are stored (i.e, while they are just a signal).

  89. 161

    “The historic technology known as ‘delay line storage’ used signals as a form of storage by bouncing them back and forth as a continuous echo.”

    You forget that you needed HARDWARE to make those signals bounce back and forth. Although the signals were part of the alleged storage, a transistory propagating signal alone is incapable of being storage. Instead, the storage necessarily required some type of storage.

  90. 160

    Gottschalk v. Benson has already been effectively overruled — by the USPTO. The claim at issue in that case would sail through the USPTO with ABSOLUTELY NO PROBLEM. It passes the machine or transformation test with ease.

    The problem with Gottschalk v. Benson is that it was written by 74 year old Douglas who probably never saw a computer in his whole life. This is the same justice that issued an opinion the same year as Gottschalk v. Benson in which he (in)famously argued that “trees have standing.” Sorry, I don’t give much credence to a decision written by an over-the-hill justice that had absolutely no clue about the issues. The average 8 year old likely knows much more about computers today than Douglas did when he wrote the opinion.

    Gottschalk v. Benson is effectively dead. The sooner you deal with that, the better off you’ll be.

  91. 159

    Not at all. I just disagree that “storage” inherently means that it inherently does NOT include a signal.carrier wave. None of you have successfully addressed & rebutted that.

    I gave you 2 ways that the term would be considered to be non-statutory (lack of explicit antecedent support for the claimed term in the spec and the Kappos memo). By arguing that the Kappos memo doesn’t address the term “computer readable storage medium” you are effectively supporting my assertion that the spec also not defining that term it should be given the broader interpretation.

    Bottom-line – the spec does not specifically provide explicit antecedent basis for the claimed term.

  92. 158

    It is patent eligible under 35 USC 101. It is either a manufacture or a tangible part of a machine.

    A hard drive, a computer memory, a flash drive, a DVD, and a CD are all patent eligible under 35 USC 101. Storing program code on them doesn’t convert them into unpatentable subject matter under 35 USC 101.

    You can argue that the program code doesn’t distinguish them from other forms of storage medium (and hence, unpatentable under 35 USC 102). However, it is an easy argument to make that they are different.

  93. 157

    “The ‘some time’ can be ANYTHING from forever down to the smallest amount of time measurable (let us say less than a nanosecond.”

    There is a reason they put “reasonable” into the requirement for claim construction — for the very purpose of addressing your type of analysis. You’ll twist the ordinary meaning of a term until it is unrecognizable. Propagating signals are not “held until some later time” — they are transmitted. There is no holding involved.

    “Are you suggesting that all cases that define storage medium (or a CRM) as including a signal be objected to as giving the term a meaning repugnant to the standard meaning of the term in the art?”
    Certainly … there are just a few of them and most appear to be generated by a couple of law firms that don’t know how to prepare accurate boiler plate. On the other hand, I can point to dozens and dozens of different patents (from many law firms and applicants) over the years that clearly and unmistakably distinguish between a storage medium and a transmission medium (e.g., a transitory, propagating signal).

    “Correct on claim construction being reasonable. When terms like “storage medium” and defines in specs & argued (or at least attempted to be argued) in court or infringement as including transmitted data & carrier wave storage how it the interpretation NOT reasonable?”
    Write a cogent sentence, and I’ll answer.

    “Clearly, they are stored (embedded or encoded in you prefer – in this context all are substantially equivalent) in the carrier wave.”
    Care to provide any evidence to support that definition? Or are you stating “[p]ure conclusion without support.” I’m going with the later.

    “How does what you quote change that cutting the power (instantaneously after data storage) to a RAM not make the storage ‘fleeting’ (your term)?”
    I guess you missed the “devoid of matter” part. You see, whether it is RAM, ROM, a hard drive, DVD, CD, or any number of the storage mediums listed in the 8,196,213 patent, they are NOT devoid of matter. As such, to the extent that your memory may require constant cycling to store the data, the memory is NOT a non-transitory propagating signal.

    I suggest you read Nuitjen about a dozen times – try to understand the logic underlying the Federal Circuit’s determination that a signal was not patentable subject matter.

    Regardless, the BPAI has held on many instances (I’ve already reproduced the appeal nos) that a storage medium is statutory subject matter.

  94. 156

    anon, if you do not mean categorically, do not say "ARE" without qualification.  

    "Programmed computers ARE patent eligible."

    What does that sentence mean?  If instructed by a Judge, what would a juror understand the phrase to mean?

  95. 155

    SC, Benson… known as the worst case?  Infamy?

    We truly sit on opposite sides of that table.  Benson was brilliant.  Easily the best of all the 101 cases since '52.

  96. 154

    “Since the actual CLAIMED term does not have specific antecedent basis in the original spec it is proper to give it its broadest reasonable interpretation and that interpenetration is what was explained in the Kappos memo of 2/2010”

    Except that the Kappos memo does NOT mention a computer readable STORAGE medium. The Kappos memo only discusses “computer readable medium” or “machine readable medium.” A proper claim construction must consider how adding the term “storage” modifies “computer usable medium.”

    Of course, all that requires analysis that is outside of the “Memo.” If you are like most Examiners, when that happens, all the gears grind to a halt.

  97. 153

    "Failed flash of genius."

    Did you know that was essentially a quote from other cases long prior to Douglas? It was what the SC used to require to distinguish invention from the work of the ordinary artisan.

    Non obvious?  

    Vague as flash of genius, as we all know.  It too is subject to hindsight.

    Trivial?  Coined by Jefferson, but apt.

    Douglas was, simply, brilliant; and right on so many, many issues.  We owe a lot of what we are today to that one man.

  98. 152

    Hey bi got.  Yeah, I am talking to you.  Douglas was against abuses of the patent system.  Your post seems to suggest that he was against the patent system as a whole.  Did he ever say that?

    BTW, what IS your position on the IBM card case?

  99. 150

    Go, B-claims are unaffected?…..

    Really?

    What did we hear from the Justices when the Solicitor tried to argue that had the Bilski claims been drafted as B-claim that there would have been no statutory subject matter problem?

    It certainly was not a nod of approval.  It was more like what Scalia said to the SG in his recent argument about Obamacare, "We are not stu  pid."

  100. 148

    Let me clarify (like our politicians love to do :) )

    The term “storage medium” or “storage media” does not appear in the spec.
    The term “computer readable medium” DOES appear and, it can be argued as I indicated above, that it may have been sufficiently defined in the spec as being statutory. (Though the 2nd passage I quoted above does raise an issue if the earlier definition in the spec is limiting or not, since this last paragraph appears to broaden the definition).

    By having the claims recite “computer readable storage medium” it actually confuses the issue & makes the antecedent basis in the spec for the claimed term less definitive and opens it up to a more liberal (though still reasonable) interpretation. Since the actual CLAIMED term does not have specific antecedent basis in the original spec it is proper to give it its broadest reasonable interpretation and that interpenetration is what was explained in the Kappos memo of 2/2010.

  101. 147

    If you insist on arguing that “the MSFT spec language differentiates between a storage medium (not including signal) and a communication media which includes a signal.” then PLEASE show where you find actual support for this interpretation. Otherwise, it puts you in the same boat as those others in this thread that are arguing without any support for their position.

  102. 146

    Sorry, but no. You are incorrect.

    Doing a text search of this patent, the terms “storage medium” and “storage media” do NOT appear anywhere except the claims. Thus, the spec can not be used to define a claimed term that does not appear in the spec.

    Further, the term “medium” also ONLY appear in the claims. Not in the spec.

    The closest that there is any definition is:

    “The drives and their associated computer readable media provide non volatile storage of computer readable instructions, data structures, program modules and other data for the computer 20. Although the exemplary environment described herein employs a hard disk, a removable magnetic disk 29 and a removable optical disk 31, it should be appreciated by those skilled in the art that other types of computer readable media which can store data that is accessible by a computer, such as magnetic cassettes, flash memory cards, digital video disks, Bernoulli cartridges, random access memories (RAMs), read only memories (ROMs) and the like may also be used in the exemplary operating environment.”

    The spec also states:

    “The foregoing detailed description has set forth various embodiments of the systems and/or processes via examples and/or operational diagrams. Insofar as such block diagrams, and/or examples contain one or more functions and/or operations, it will be understood by those within the art that each function and/or operation within such block diagrams, or examples can be implemented, individually and/or collectively, by a wide range of hardware, software, firmware, or virtually any combination thereof.”

    So, while it probably does support the interpetaion that a “computer readable medium” is only hardware (based on the “non volatile storage” discussion) statutory, this is NOT the same as the claimed “storage medium.

  103. 145

    Ned, once again you are engaging in fallacious 101 reasoning.

    You have twisted the logic with the addition of and over reliance on “per se.”

    According to the proper application of that logic, nothing in ANY category is ever PER SE eligible. Your SELECTIVE treatment of your personal vendetta is thusly misplaced. Please stop the word tricks as they fool no one.

  104. 144

    Please don’t tell patent prosecutors that a box isn’t enough for a computer programmer to recreate the invention.

    On the somewhat related note, many computer claims should be treated as MPF as they are claimed completely functionally. There is very little difference between “means for …,” “processor for …,” “[made up word] for …”

  105. 143

    Your definition of “storage medium” only says “until sometime later”. The “some time” can be ANYTHING from forever down to the smallest amount of time measurable (let us say less than a nanosecond). The term “fleetingly”, even using your definition, will fall within this range.

    There is absolutely nothing in your definition that would prevent the data being transmitted on a signal/carrier wave. “which data can be copied and held until some later time, and from which the entire original data can be obtained.” is satisfied by a carrier wave/signal just was well as by a ROM or DVD.

    As to the “many specs”, blame your comrades in the law profession for trying to make this the definition. Depending on the art you work in, you will see this in a large percentage of your cases. Maybe YOU don’t define it this way, but many others do.

    Are you suggesting that all cases that define storage medium (or a CRM) as including a signal be objected to as giving the term a meaning repugnant to the standard meaning of the term in the art?

    Correct on claim construction being reasonable. When terms like “storage medium” and defines in specs & argued (or at least attempted to be argued) in court or infringement as including transmitted data & carrier wave storage how it the interpretation NOT reasonable? So, are you saying that the Office is being unreasonable or your fellow lawyers?

    If, as you argue, “Carrier waves do not store data — they transmit data.” then how is the data moved from the source to the destination? Clearly, they are stored (embedded or encoded in you prefer – in this context all are substantially equivalent) in the carrier wave. The wave “holds” or “contains” the data & “carries” it from the origination to the destination. Functionally,k the wave is performing the process of storing the data within itself until it reaches the destination.

    Your last paragraph, at least as written, makes no sense. Try it again. How does what you quote change that cutting the power (instantaneously after data storage) to a RAM not make the storage “fleeting” (your term)?

  106. 142

    To the poll I would answer both #2 and #4 are (equivalent) reasons why such changes are allowed without changing the priority date. It should be allowed for the same reason that simply removing a claim should be allowed. It discloses nothing new, and claims nothing new, it merely removes a claim variant, claiming less.

    The main limitation on this is that in the final claim language, each claim must be embodied in both the originally disclosed description and must match an originally disclosed claim. So if the originally disclosed description was of a unicycle adding “excluding unicycles” would not be valid; and if the original claims did not include a claim of “traveling at night”, then “and furthermore travelling at night” cannot be a final claim.

    Now that does not imply that the application in question doesn’t fail for any other reason than this issue of implicit applicability to non-permanent signals. I have not examined it and I am not a patent professional.

    P.S.

    The historic technology known as “delay line storage” used signals as a form of storage by bouncing them back and forth as a continuous echo. And the still used transmission method of storing a signal on a physical medium and then physically transporting that medium shows the opposite overlap between storage and signal mediums.

  107. 141

    Benson is known as one of the worst patent decisions of all time. It is too soon to see how low Prometheus will sink in infamy and if it will displace Benson.

  108. 140

    Ned Heller states:

    As well, the standard of invention of patents was ridiculously low, then and even now. A patent system that so routinely issues patents that are blatantly obvious not only harms society, but brings the whole system into disrepute.

    Douglas was a friend to the patent system because he was an enemy to monopoly and to patent misuse.

    This is nothing more than the failed Flash of Genius standard. It is a bogus elitism that has no place in modern society.

  109. 139

    Claims to old sheets of paper with new poems written on them fall squarely within the scope of 101

    Agree or disagree, suckie?

    Maybe you can take a timeout from shrimping Diehr and let us know what you think. Or maybe that’s not possible.

  110. 138

    how does it store if it’s transitory? It may contain, but that’s not “storage”.

  111. 137

    MSFT’s standard spec section on this does not include the words “transient” or “non-transient”, so there is a written description problem when you try to claim those things. That’s why the attorneys don’t want to follow the PTO guidance on non-transitory.

  112. 136

    Yes, the MSFT spec language differentiates between a storage medium (not including signal) and a communication media which includes a signal.

  113. 135

    IANAL but can read and write software and the only way to(sic) “to satisfy the written description requirement…. “an applicant must convey with reasonable clarity to those skilled in the art that…he or she was in possession of the invention””
    The only way a software programmer “the skilled one” can tell what software (“the invention”) does is reading the code…can be pseudo-code, C, assembler or whatever. Is the whole code that descrives the invention included in every software patent?
    It must!

    Chears!

    Martin.

  114. 134

    Onward, is it your position that programs are within the Useful Arts as a matter of law?

    Why isn’t a programmed computer that plays music patent eligible as a new machine?

    You guys can’t have your cake and eat it too.

    The programmed computer must actually do something new and useful within the useful arts to be patentable. A programmed computer that calculates BCD to binary, or plays the new song, or computes risk, is not.

  115. 132

    A. Dufresne, I think you do see my point, however.

    Your logic:

    1. A musical score is not patent eligible, therefor a programmed player piano is not patent eligible as a new machine, and neither is a article of manufacture claim to a programmed scroll.

    You implicitly assume that a B-claim is, however, eligible, per se. This assumes that programs are eligible, per se and/or that programmed computers are patent eligible, per se.

    But, we know that programs are not patent eligible, per se. See, Benson. Therefor, something is wrong with your logic.

    To be patent eligible, the programmed, general purpose digital computer must DO something NEW and useful.

    Rich’s view of 101, which you seem to espouse as well, has been rejected.

  116. 131

    Douglas was a friend to the patent system because he was an enemy to monopoly and to patent misuse.

    WRONG. He equated all patents with monopolies. It is no error that the attribution of the only valid patent is one not yet in front of him applies.

    Pull you head out of that dark and smelly place.

  117. 130

    “Debate” implies that you have a solid premise from which to debate from.

    You don’t.

    All you have is an illicit agenda.

  118. 129

    btw, what was overruled in Benson was a method claim. B-claims, not being method claims, are unaffected.

  119. 128

    This effectively overruled even the notion

    Are you even a lawyer?

    Stop making up such utter crrp.

  120. 127

    The transient attribute of signals is the problem.

    Wrong.

    Everything is relative and “transient.” There is NO legal anchor for the “transient” “problem.”

  121. 126

    I don’t think so, no.

    The medium is the CD, memory stick, hard drive, air or “ether”. The signal carries the information carried thereon. The signal is not the medium.

    …Even if the medium is the message.

  122. 125

    Sorry, you parrot Rich’s views very well. If the claim nominally falls into one of the four classes, move on to 102/103/112.

    Thus in Rich’s view, a programmed computer is patent eligible per se. From this, Rich concluded that processes that can only be used in computers were patent eligible. And, while he never got to opine on the topic, Rich would also have held B-claims “patent eligible” at least to the extent they were working components of a eligible machine.

    See the bootstrapping?

    Read this from In re Benson:

    “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. How can it be said that a process having no practical value other than enhancing the internal operation of those machines is not likewise in the technological or useful arts? We conclude that the Patent Office has put forth no sound reason why the claims in this case should be held to be non-statutory.”

    link to scholar.google.com

    However, In re Benson was overruled by Gottschalk v. Benson. This effectively overruled even the notion that programmed computers without more are patent eligible. It further overrules the notion that B-claims are patent eligible as components of an otherwise patent-eligible machine because the assumption that programmed computers are eligible without more is false.

    Programmed, general purpose digital computers are not patent eligible per se.

    Programs are not patent eligible per se.

    And, certainly, B-claims are not patent eligible per se.

    Benson is good law. Rich was overruled. The PTO is in error. And the person who made the decision to authorize B-claims needs to be named. The guy is either incredibly dense or ….

  123. 124

    Are you arguing that an unrefreshed DRAM is or should be non-statutory and that a refreshed DRAM is or should be statutory?

  124. 123

    Microsoft could have just as easily claimed “non-transient data signals” or “non-transient data”. “Signals” is not the issue. Computer data is inherently composed of signals. The transient attribute of signals is the problem.

  125. 121

    No, I don’t see that as silly at all.

    If the EPO evaluates my spect and takes the position that I didn’t disclose unicycles when I go to claim them, then it can’t turn around and say unicycles are in my spec when I want to disavow them.

    You can’t have it both ways. Its a unicycle, not a magical unicorn. Its either there or it is not.

  126. 120

    Friends like….

    As I said many times before, there are different points of view about what makes a good patent system. I tried hard to oppose FTF because I believe FTI was a better system for the small inventor/startup.

    Douglas was an anti-trust guy, and tore into what he perceived to be abuses in the patent system where the lawful monopoly was illegally extended. I think he was right, not only about that, but about the abuses of power exhibited in antitrust cases of that era involving the likes of IBM and its cards, the motion picture companies and its patented projectors, an a lot more.

    As well, the standard of invention of patents was ridiculously low, then and even now. A patent system that so routinely issues patents that are blatantly obvious not only harms society, but brings the whole system into disrepute.

    Douglas was a friend to the patent system because he was an enemy to monopoly and to patent misuse.

    Stevens, although well intentioned and also an anti-trust guy, was not Douglas’ equal in any respect. His dissent in Diehr shows just how misguided Stevens could be at times.

  127. 119

    with new poems

    See above re: obtuseness, and then stop with the red herrings.

  128. 118

    If they aren’t manufactured, where did they come from. Something generated them. They are too articles. Look up the word article.

  129. 117

    relying on Useful Arts as a distinction is, I think, unavailing.

    Unavailing to your unholy agenda, sure. But if you want to follow the law, well then, it’s mighty availing.

  130. 116

    suckie: The reason why Beauregard claims are still around is that they squarely fall within the scope of 35 USC 101.

    Claims to old sheets of paper with new poems written on them fall squarely within the scope of 101 but … such claims certainly aren’t “around.”

    Something is wrong with suckie’s “logic.”

    Again.

    LOL.

  131. 114

    Vocal Minority is about right.

    40% of all posts on this thread as 4 PM come from the anti-software patent vocal minority of four individuals: Ned Heller, 6, MM, and IANAE.

    STFU already.

  132. 113

    Me, understand the Useful Arts? I take it that that would be your line of defense in court or the PTO….

    However, consider that te just had a case, Bilski, that refused to read into the statute any limitation on patentable subject matter other than

    “laws of nature, abstract ideas, mental steps, etc….”

    I relying on Useful Arts as a distinction is, I think, unavailing.

    However, perhaps your argument is that a programmed player piano is not a new machine?

  133. 112

    At least you got the functional relationship correct. Now all you need is to understand the Useful Arts (and also understand that there is no technological arts test).

  134. 111

    Like MM, 6, and Max Drei, Ned has an agenda that ignores both law, facts, and common sense.

    Debating Ned is a waste of time. Mocking Ned, however, is quite a worthwhile pursuit.

  135. 110

    The whole discussion here is proof that anti-software patent advocates are junk.

    Fixed.

  136. 109

    I hold up a DVD or a flash drive, both of which is encoded with a program, in court and argue “Judge, the defendant argues that these articles are somehow not an article of manufacture or device … but some type of abstract idea. Do you believe that?” You might get some anti-software judge that actually believes it, but most recognize a difference between an abstract idea and a DVD.

    You can also include a demonstration of where a computer is incapable of perform a method (corresponding to the limitations) prior having the DVD/memory inserted therein and capable after.

    Anybody who thinks a computer readable storage medium is not basing their analysis on common sense and facts but based upon an attempt to get rid of software-related patents. The reason why Beauregard claims are still around is that they squarely fall within the scope of 35 USC 101.

    You need only look at the Nuitjen decision to see why signals are considered not patentable subject matter under 101 while a storage medium is patentable subject matter under 101.

  137. 107

    The whole discussion here is proof that these sorts of patents are junk.

    There is nothing new here. How about we start folling the law and only giving out patents for NOVEL ideas that are NON OBVIOUS and ADVANCE the state of the art?

  138. 106

    You forget to mention that Douglas (and his protege Stevens) are known to be the most anti-patent Justices to ever sit on the bench.

    And you have the gall to annoint these for sainthood and call yourself a friend of the patent system.

  139. 105

    He PE, do you think the following patent eligible:

    1. Article of manufacture, comprising:

    player piano scroll encoded with a musical score comprising — following by the notes to a song.

    After all, the encoded notes have a functional relationship to the scroll and the scroll to the player piano.

  140. 104

    They also enable embodiments that exclude bigfoot, unicorns, and intelligent discourse from MM. What is your point?

    Let me also refer you to Kappos’ memo on the issue.

    A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. $ I01 by ad&ng the limitation “non-transitory” to the claim. CJ: Animals -Patentability, 1 077 0)Gaz. Pat. Ofice 24 (April 21, 1987) (suggesting that applicants add the limitation “non-human” to a claim covering a multi-cellular organism to avoid a rejection under 35 U.S.C. 5 101). Such an amendment would typically not raise the issue of new matter, even when the specificationis silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se. The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signalper se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure. See, e.g.,Gentqv Galleiy, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998).

  141. 103

    And, of course, 5) Benson was a product of Douglas, who FDR (elected 4 times) wanted to be VP/President and who Ford (our only unelected president) tried to impeach, and which decision was excoriated by the patent bar God, Rich.

    But Rich is gone, gone with the wind. His squire, Rader, has been called on the carpet. Don Quixote can tilt all he wants, but he his a laughingstock.

  142. 102

    “Naturally, 6 never takes responsibility for his screw-ups.”

    No doubt. That would seriously cut into his time posting on this blog. The (innovation) tax payers only get to pay him to do one thing at a time — as such, he chooses to blog instead of take responsibility for his cr@p rejections and his cr@p legal analysis.

  143. 101

    Let me refer you to the McGraw-Hill Dictionary of Scientific and Technical Terms. If you are not aware of this book, you need to be. The Federal Circuit frequently cites this book when they do claim constructions.

    Under the computer science definition for “storage medium” is the definition of “[a]ny device or recording medium into which data can be copied and held until some later time, and from which the entire original data can be obtained.” Contrast that definition with the Federal Circuit’s statement in Nuitjen that “[i]n essence, energy embodying the claimed signal is fleeting and is devoid of any semblance of permanence during transmission.” Specifically contrast “held until some later time” with “fleeting and is devoid of any semblance of permanence during transmission.”

    “which many specs recite as a ‘storage medium.'”.
    Hardly. I’ve seen the rare few that employ poorly written boilerplate, and poorly written boilerplate does not change the fact that “storage medium” has an art recognized definition. For every one of these “many specs” you identify, I can find 100 that clearly distinguishes between a storage medium and a transmission medium.

    Claim constructions are based on reasonableness — asserting that a carrier wave is storage is not reasonable. Carrier waves do not store data — they transmit data.

    “Put data in a RAM & cut the power – POOF, no more storage.”
    Sorry … that does not fit Nuitjen’s analysis that “the signal is encoded on an electromagnetic carrier and transmitted through a vacuum —- a medium that, by definition, is devoid of matter.”

  144. 100

    IF ITS TRANSITORY, ITS NOT MUCH OF A STORAGE MEDIUM NO IS IT?<<< Isn't a signal an example of a transitory storage medium? (In any case, the '213 patent includes method claim 7 and system claim 16 in addition to the Beauregard claim.)

  145. 99

    4) Understood that dicta in Benson was not “the law.”

  146. 98

    Completely daft response as the meaning of a term is under discussion, not whether or not hte defined term has been invented by others.

    Try to keep up now.

  147. 97

    The signals under discussion are not manufactured? Do they spontaneously erupt?

    What a tool.

  148. 96

    Whoever at the PTO authorized B-claims in the first place either

    1) was mislead by a demonstration;
    2) did not understand Benson; or
    3) understood both, and deliberately chose not to follow the law.

  149. 93

    Micro$oft does have a history of not wanting to include the term “non-transitory” They prefer to go other routes as seen in this case.

  150. 90

    Where do you get that “storage is not” fleeting? Storage can be long-term for transitory/short-term. Put data in a RAM & cut the power – POOF, no more storage. Same with carrier waves (which many specs recite as a “storage medium”). When no longer being transmitter or powered, they no longer exist.

    Again, where is your PROOF that “storage is not” fleeting? Pure conclusion without support.

  151. 89

    New poll: (Make sure to answer yes to all):

    ___ The insanity of the PTO is merely transitory (yes/no)

    ___ The insanity of the PTO is non-transitory (yes/no)

    ___ I have not bothered to look up the dictionary definition of “signal” (yes/no)

  152. 88

    Malcolm, why is being anti-public-employee union racist? Even FDR opposed public employee unions.

    link to nytimes.com

    ““It is impossible to bargain collectively with the government.”

    “That wasn’t Newt Gingrich, or Ron Paul, or Ronald Reagan talking. That was George Meany — the former president of the A.F.L.-C.I.O — in 1955. Government unions are unremarkable today, but the labor movement once thought the idea absurd.

    “The founders of the labor movement viewed unions as a vehicle to get workers more of the profits they help create. Government workers, however, don’t generate profits. They merely negotiate for more tax money. When government unions strike, they strike against taxpayers. F.D.R. considered this “unthinkable and intolerable.”

    “Government collective bargaining means voters do not have the final say on public policy. Instead their elected representatives must negotiate spending and policy decisions with unions. That is not exactly democratic – a fact that unions once recognized.

    “George Meany was not alone. Up through the 1950s, unions widely agreed that collective bargaining had no place in government. But starting with Wisconsin in 1959, states began to allow collective bargaining in government. The influx of dues and members quickly changed the union movement’s tune, and collective bargaining in government is now widespread. As a result unions can now insist on laws that serve their interests – at the expense of the common good.”

    See also,

    link to frankwarner.typepad.com

  153. 87

    “Examiners would strike. Immediately.”

    1. Why?

    2. Are such strikes legal?

    3. If 2 is no, do you remember the Air Traffic Controllers?

  154. 86

    Does the spec actually “explicitly exclude” signals or does it, as is the usual case, say something like “the storage medium includes RAM, ROM, DVD, and EEPROM, for example”? If so, this is open ended & includes all other types of storage media.

    As stated elsewhere in the thread, many applications, including those fairly recently filed, define “storage media” and CRM as including signals and carrier waves that contain the signal or program. Thus, the term must be given the broadest reasonable interpretation, which includes signals.

    Some applicants DO explicitly differentiate between hardware & signal types of storage means and these are supposed to be interpreted accordingly.
    For example, they may state in the spec that a CRM includes transmission storage media that is for the the storage of the program instructions in a carrier wave and memory storage media for hardware storage where the program instructions are stored in a physical, hardware device. This would be sufficient to distinguish which is being claimed.

  155. 84

    Even Rader could not find a reason to uphold the Bilski claims.

    Rader goes astray and tilts at windmills when he seeks to expand the envelop of patentable subject matter to include programs and mental steps.

  156. 83

    IF ITS TRANSITORY, ITS NOT MUCH OF A STORAGE MEDIUM NO IS IT?

    What if the stored information is transitory, but the information remains stored as long as you keep reminding the storage medium of what it’s storing? What if you have to keep reminding it several times a second?

  157. 82

    Would one of ordinary skill know that since the spec is a patent application, and since patents cannot cover ineligible material, that the reference to ineligible material should not be read into the term in the first place?

    The spec is a patent application. Since “patents cannot cover ineligible material”, it is the examiner’s job to make sure that the application does not become a patent until the defect is remedied.

    One of ordinary skill would know that patents cannot cover old or obvious material, but that doesn’t stop examiners from taking broadest reasonable interpretations and mailing 102/103 rejections as they see fit. Why should 101 be any different?

  158. 81

    Signals are articles of manufacture. Why aren’t they statutory?

    Because they are neither articles nor manufactured.

  159. 80

    How signals were excluded from 101 is very important to the discussion as it classifies the signals as something else.

    It’s a 112 discussion, not a 101 discussion. Besides, a claim term can mean whatever the applicant wants it to mean (as long as he plans ahead), regardless of what it previously meant in a litigation involving an unrelated patent.

  160. 78

    It is their position, and yours apparently, that the applicant must list all of the things that his invention is not in the original application in order later disavow any absurd interpretation the Office might later apply.

    It is my highly controversial position that the specification must support a claim that does not cover anything unpatentable. If the PTO’s interpretation is “absurd”, that’s what examiner interviews and appeals are for.

    If unicycles aren’t there if i want to claim them, then they aren’t there when I want to disavow them.

    If you claim a “wheeled vehicle”, you are claiming a unicycle as a member of the class you have described. However, you don’t have support to specifically claim (or exclude) a unicycle. If you don’t have a specific exclusion in your spec to rely on, you can still distinguish structurally around unicycle art by, e.g., claiming a second wheel. You can amend the claim to recite “cars, bicycles, motorcycles, ATVs…” as long as those are listed in your spec, and get around unicycles that way.

    But surely you can see how silly it is to point to all those examples and say “none of those are unicycles” to support such a specific carve-out in a patent claim.

  161. 77

    0 losses*

    * = that 6 will take responsibility for. Naturally, 6 never takes responsibility for his screw-ups.

    Sigh, must be that generational thing.

  162. 76

    ” which forces people to draft and claim inventions in ways to satisfy the courts”

    Whether or not they are satisfied is to be determined*

  163. 75

    “For example, a downloadable signal carrying an audio or video recording is the modern equivalent of a disc, CD or DVD. ”

    Signals which are “downloadable” and which are “the equivalent” of a disc, CD or DVD have been around since Tesla first invented upon the the RADIO bro. Trust me, there’s nothing all that modern about it.

  164. 72

    The statue is very clear and straight forward. It is almost impossible to draft a claim that isn’t statutory under 35 USC 100 and 101. Its the nonsense issued by the courts cause the drafting problem. Signals are articles of manufacture. Why aren’t they statutory?

  165. 71

    suckie:

    “a set of instructions”

    Sort of like any process patent then…

    Man, this blog has the d-mbest trolls.

  166. 70

    Would one of ordinary skill know that since the spec is a patent application, and since patents cannot cover ineligible material, that the reference to ineligible material should not be read into the term in the first place?

    After all, the PHOSITA also has common sense, and it is only common sense to exclude ineligible material from a patent application…

  167. 69

    Yeah, I ran into this same warped reasoning in dealings involving the EPO.

    It is their position, and yours apparently, that the applicant must list all of the things that his invention is not in the original application in order later disavow any absurd interpretation the Office might later apply.

    In your example, I assume the invention includes inventive step and in not obvious even in light of unicycles, otherwise, we wouldn’t be quibbling over whether non-unicycles was mentioned in the original filing. If thats the case, and unicycles were not mentioned in the spec, then why read a claim of unicycles into the spec (as the EPO does). Isn’t that going beyond the original disclosure? If I wanted to add a claim to unicycles, wouldnt the same EPO go off on an extends beyond the original disclosure?

    If unicycles aren’t there if i want to claim them, then they aren’t there when I want to disavow them.

    If I have to list everything my invention is not, applications will get very long indeed.

  168. 68

    Rader is now on the Supreme Court’s “radar.” Unless he changes his tune, everything he writes on 101 is going to be vacated and remanded.

    Exactly which CAFC judge did the Supremes have on their “radar” and take for its position in Bilski?

  169. 67

    You are so full of malarchy IANAE. The reality is that the courts have caused about 90 percent of the problems by their 101 nonsense which forces people to draft and claim inventions in ways to satisfy the courts.

    It just pushes out of your eyes and ears on most days IANAE.

  170. 66

    IBP Walker wins the recall election. It is why I have been so quiet on this board, and elsewhere, for the past while.

    Your time has passed, and you guys get left further behind, daily.

    Right. Because Scott Walker is turning Wisconsin into a paradise … in the minds of ignorant white suburban racists, anyway. It’s the dream of every state in the Union: let’s be more like Tennessee!

    Of course, if Walker had lost, all we’d be hearing from the Repukkkes and their cheerleaders is that the stage was set for some remarkable “blowback” in November.

  171. 65

    The problem is that the information on the storage medium ARE signals.

    This rejection is usually expressed as a concern that the claim encompasses “transitory” signals, which the Supremes, in another ill considered opinion, ruled are non-statutory.

    Of course, signals are almost by definition, articles of manufacture and are statutory.

    What Microsoft should have recited is a non-transitory storage medium…..

    Of course the insanity of the Courts ruling and the Offices implementation is: IF ITS TRANSITORY, ITS NOT MUCH OF A STORAGE MEDIUM NO IS IT?

  172. 64

    IANAE: “The law on 101 can be whatever you want it to be.” Not really. How signals were excluded from 101 is very important to the discussion as it classifies the signals as something else.

  173. 63

    Meeting the written description requirement does not require literal support in the spec. The question here is whether one of ordinary skill in the art would recognize from the spec that applicant had possession of what is claimed. In other words, would one of ordinary skill know that the invention could specifically exclude signals after reading the spec? So it boils down to what is the skill level of one of ordinary skill.

    Grasselli is good case law, but see also Ex Parte Peaks 30 USPQ 2d 1234, 1236 (BPAI 1993).

  174. 62

    the standard MSFT language on storage medium does NOT include a signal as storage medium, but as communication media.

  175. 61

    FYI, the specification also specifically excludes signals from a STORAGE medium.

  176. 60

    Morely, just to clarify, I will set forth Benson's claim 13, and two alternts.  Which, if any is patentable and why?
     
    From Benson:
     
    "Claim 13 reads:
    "A data processing method for converting binary coded decimal number representations into binary number representations comprising the steps of…."  (The steps then follow.)
     
    Alternate 1
     
    13. A non transitory computer readable media, comprising a program which when excuted performs the steps of…" (The Benson steps then follow.)
     
    Alternate 2
     
    14. A programmed computer, comprising:
     
    The Benson steps, but adding the words "means for" before each step.

    ?
     
    See you in court.
     
    BTW, Rader is now on the Supreme Court's "radar."  Unless he changes his tune, everything he writes on 101 is going to be vacated and remanded.
     
     

  177. 58

    Your arguments 1, 2, and 4 are patently false.

    Your argument 3 is circular and merely states your conclusion for that section of law.

    LEGAL FAIL

  178. 57

    1.  Section 101.  Printed matter doctrine.

    2.  Section 112.  Claimed program has no functional relationship to the article of manufacture.

    3.  Section 271(b).  To the extent that a program is a component of a programmed computer, the sale of the program would ordinarily constitute contributory infringement.  Treating the article of manufacture as the claimed subject matter, rather that the program, essentially bypasses §271(b).  The essential requirement of §271(b) that is avoided by using direct infringement theories of infringement, rather than contributory, is knowledge of the patent.

    This, of course, was the intention in creating Beauregard claims.

    4. §101.  The claim operates under the assumption that a programmed computer is statutory subject matter without more.  It is not, and never has been.

     

  179. 56

    “non-transitory” is false, a bogeyman with no anchor in the law.

  180. 55

    Interesting discussion, between IANAE and PC. No judge sits atop the EPO, so no judge can control EPO jurisprudence on what subject matter is eligible and patentable in Europe.

    When judges assail the EPO with “You can’t do that (like issue patents on signals or new uses for old molecules, or old method + new thought), because it has horrific consequences for patent infringement litigation” the EPO doesn’t care, but just keeps going.

    While in general, I abhor bifurcation of infringement and validity litigation, I do think the unforeseen consequence of the 1973 European Patent Convention, to set up the EPO free from supervision by any supreme court, has brought enormous benefit to patent law in Europe.

  181. 54

    I prefer mistake in reasoning to references to wich hunts.

    Your preference does not accord with reality.

  182. 53

    Or they should have tried language such as “A computer readable storage device”, which in no way could be considered including a “signal”. But without having looked at the prosecution history, an after-final request for reconsideration, interview, and/or notice of appeal and/or pre-appeal conference request probably should have been pursued instead of using negative limitations unnecessarily.

  183. 51

    The original claim language should have passed muster under 101. “A computer readable *storage* medium” requires that the medium be capable of storing information. A transitory signal (i.e. a carrier wave), which was presumably interpreted as encompassing the claim, cannot reasonably be considering as “storing” anything. A transitory computer readable medium, rather, only *transmits* information. It’s gone as soon as the medium is.

    They should have pushed back a bit on the language, or at the very least included the office-sanctioned “non-transitory” language if they were unwilling to do so, as wonky as the language is. Now they’ve got a questionable 112 problem that they didn’t need to introduce.

  184. 49

    that excludes sailboats.

    Whew, I was worried that one having ordinary skill in the arts might be confused on that point.

    eyeroll

  185. 48

    a set of instructions

    Sort of like any process patent then…

  186. 47

    a downloadable signal carrying an audio or video recording is the modern equivalent of a disc, CD or DVD.

    A downloadable signal is transmitted from the contents of a storage medium, and received into the contents of another storage medium.

    There’s nothing wrong with claiming inventions involving computers. The problem is when people draft dubiously statutory claims to try to push the boundary of who they can sue for direct infringement. They should fully expect that some of those attempts will fall outside the realm of enforceability.

    Furthermore, if they’re all pushing the boundary in the same direction, they should expect all of their risks to be highly correlated, no matter how “narrow” the risk to each individual claim.

  187. 46

    I prefer mistake in reasoning to references to wich hunts.

    However, an electrical signal is at least arguably as manufacture, and the contrary arguments seem to me not to refeect technical reality. For example, a downloadable signal carrying an audio or video recording is the modern equivalent of a disc, CD or DVD. Very analogous reasoning was used by the EPO in its well-known Vicom decision: the invention was for digital filtering of images and in the past such filtering had been carried out using resistor-capacitor networks or networks with active devices.

  188. 45

    All of these examples enable an embodiment that excludes signals.

    All of those examples enable an embodiment that excludes sailboats.

  189. 44

    You know, the reality is that if this violates 112, then the law that says that signals aren’t eligible for patentability is wrong. Think about it.

    Okay, I’ve thought about it. I’ve come to the conclusion that violating 112 is a drafting problem and not a problem with the law. The law on 101 can be whatever you want it to be, and “class C, which may include for example a, b, c, d, e, f” will never support a claim to “class C with the exception of g”.

    I’m actually slightly more appalled by the suggestion above that “class C, which may include for example a, b, c, d, e, f, g” could support a claim to “class C with the exception of g”. Think long and hard about why.

  190. 43

    There is very little in the European equivalent of the Prometheus patent.

    But in the later patent’s file wrapper the Examining Division made it clear that the interpretation of the test method is a technical feature of the method. There is, however, nothing beyond what was quoted in the article.

  191. 42

    my claim is not infringed by the mere act of continuously broadcasting those instructions.

    I suppose not, but you’d have a hard time continuously broadcasting them if you didn’t have them stored somewhere.

    Besides, you know how I feel about claiming a set of instructions in the first place. We’re more or less of the same mind on that point, as I recall.

  192. 41

    To the extent that it exists, eliminating that option is a (relatively simple) matter of rescinding 2 executive orders.

  193. 40

    There is a difference here.

    The specification of this patents states “Although the exemplary environment described herein employs a hard disk, a removable magnetic disk 29 and a removable optical disk 31, it should be appreciated by those skilled in the art that other types of computer readable media which can store data that is accessible by a computer, such as magnetic cassettes, flash memory cards, digital video disks, Bernoulli cartridges, random access memories (RAMs), read only memories (ROMs).”

    All of these examples enable an embodiment that excludes signals.

  194. 39

    Not a bad idea. Now I just need a client to agree with that strategy.

  195. 38

    Someone must be getting reversed at lot at the BPAI …. tool

  196. 37

    B claims will be declared invalid

    We have enough empty legal reasoning with MM, so please provide a rational legal reason why B claims will be declared invalid.

  197. 36

    If, in a chemical case, my claim directed to a formulation,

    1. A formulation comprising: A; B; and C.

    is rejected under 102 based on a reference that teaches A, B, C, and diethyl succinate, may I amend the claim to exclude diethyl succinate if “DES” is not mentioned in the original specification?

    Would the answer change if I merely amended the preamble to the claim so that the claim reads

    1. A formulation, excluding diethyl succinate, comprising: A; B; and C.

    be allowable? I think not.

    See Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983), aff’d mem., 738 F.2d 453 (Fed. Cir. 1984), which requires that a negative limitation must have some written description basis for the exclusion in the specification. Absent such a written description the negative limitation should not be allowed – even if there is no reason why DES would have been in the formulation.

  198. 35

    I typically ask examiners if they would allow me to use prosecution disclaimer to get around 101 issues like this. Some are OK with the idea. Just put it clearly in the remarks. Similar effect, but doesn’t raise WD issues like the claim amendment Dennis features—assuming the client is OK with the effect.

  199. 32

    The problem is the law refusing to bend to technology. That is probably why patent law is so hard as it forces the courts to bend and grow. First, this does not create a 112 problem. One need not describe what is known in the art. This is part of the witch hunt to exclude software.

    You know, the reality is that if this violates 112, then the law that says that signals aren’t eligible for patentability is wrong. Think about it. Think long and hard about that statement and you will see why this is a witch hunt and not a scholarly search for the truth.

    I feel like I need a bath after reading an opinion or comments by the anti-software crowd. That is because they try to bend the law to exclude software rather than trying to understand the nature of the technology and have the law accomodate the technology.

  200. 31

    RM,

    Why let facts get in the way of a philosophical crusade? The vocal minority doesn’t.

  201. 30

    Nuijten, which is often cited in these signal cases, actually has this quote in footnote 6:

    “Of course, such a signal could be stored for later use, but the result of such storage would be a “storage medium” containing the signal. Such a storage medium would likely be covered by allowed Claim 15 of Nuijten’s application, which is not before us on appeal.”

    The claims that didn’t make it in Nuijten were the ones that boldly recited “A signal”. Not the case here.

  202. 29

    Maybe it’s better to recite “A computer readable medium of the type that complies with section 101” and just get it over with. Then somewhere in the spec say “There are may kinds of computer readable media, including those not compliant with section 101 and those that are. I only intend the latter; the former are hereby dedicated to the public.”

  203. 28

    “Without POPA and accompanying regulations examiners would strike. Immediately.”

    Hint number 325,689,445,201 that 6 is a clueless person.

  204. 27

    Nice post Paul. Readers, to get signal protection in First to File Europe you need, as Paul says, the subject matter of the signal claim to be directly and unambiguously derivable from the PCT as filed. Adding that subject matter after the filing date, ie during the international phase, or later, is simply too late.

    Even if you cannot justify ROW drafting in the pro, it might still be worth getting ROW drafting input (from Paul perhaps) BEFORE filing the PCT. Of course, as Paul says, if it ain’t in your pro you don’t get Paris priority. And if there are relevant events intervening, during the Paris year, that absence might be fatal to your patentability in Europe.

    Same goes, of course, for all your Europe-patentable business method and software subject matter.

    Paul, I also liked your piece on PvM and obviousness in CIPA May 2012. I take it that the issued EPO claim not only solves a technical problem but also (to get over the patentability hurdle) solves it through the use of technical means. I can swallow the former, but I’m still not quite convinced about that latter. Was it touched upon, I wonder, in the EPO wrapper?

  205. 26

    Under European law unsupported disclaimers are permitted inter alia to exclude unpatentable subject matter i.e. for the very purpose a disclaimer was used in this case.

    And once again, for US colleagues, signals ARE patentable subject matter in Europe. But you need no have the language in the provisional and in the International specification in order to claim signals over here.

    And is there no-one willing to make a serious challelge to the iniquitous decision in Nuijten?

  206. 25

    “of that claim under 35 USC 101 was REVERSED by the BPAI.”

    Because the board are a bunch of toolbags.

  207. 24

    “Soon your cherished public policies and public-sector unions will be nothing but an historical curiosity.”

    I wish. Without POPA and accompanying regulations examiners would strike. Immediately.

  208. 23

    The problem is that there are a large number of applications where STORAGE medium has been written to include signals (pre-Nuijten) making the broadest reasonable interpretation to include signals.

    I’m also seeing a significant number of board decisions that are coming out that say storage medium can include non-statutory signals.

  209. 22

    Appeal No. 2008-004853, Appeal No. 2009-011732, Appeal No. 2009-007211, Appeal No. 2009-007202, and Appeal No. 2010-000151 all involve decisions of the BPAI in which a rejection of a Beauregard claim under 101 was reversed based upon the claim reciting a storage medium. Signals aren’t storage. Signals are fleeting – storage is not.

    The whole issue of signals is derived from In re Nuitjen. In that decision, the Federal Circuit wrote “[i]n essence, energy embodying the claimed signal is fleeting and is devoid of any semblance of permanence during transmission.” In a footnote accompanying that statement, they also wrote “[o]f course, such a signal could be stored for later use, but the result of such storage would be a ‘storage medium’ containing the signal. Such a storage medium would likely be covered by allowed Claim 15 of Nuijten’s application, which is not before us on appeal.”

    FYI – claim 15 of Nuijten’s application was directed to a storage medium and the rejection of that claim under 35 USC 101 was REVERSED by the BPAI.

  210. 21

    Mooney and 6:

    Walker wins the recall election. It is why I have been so quiet on this board, and elsewhere, for the past while.

    Your time has passed, and you guys get left further behind, daily.

    Soon your cherished public policies and public-sector unions will be nothing but an historical curiosity.

    Just wait for the next important wave–unilaterally renegotiating defined-benefits packages, regardless of whether or not they have technically “vested”.

    Like I said, it is a hill to die on. It is all-important at the current moment, insofar as public policy is concerned. And this is just the beginning.

  211. 20

    “if the specification as a whole is defining media as physical storage, then the amendment is supported by inherent disclosure in the specification. The amendment “excluding signals”, “not a signal” or similar is an inherent feature of the physical media described in the specification. Claim limitations can be supported by inherent disclosure as discussed in MPEP 2163. _IF_ it is assumed that the media for a given specification cannot include signals or is by nature necessarily exclusive of signals, then this amendment is supported.

    Even when the spec describes media with examples of both physical storage and signals, this amendment could be OK. MPEP 2175.05(i): “If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.” This section also mentions, “a lack of literal basis in the specification for a negative limitation may not be sufficient to establish a prima facie case for lack of descriptive support”.”

    That is correct, which is also why you guys can feel free to throw idi ot examiners for a loop in your applications for whatever method by tacking on a “and not blasting off to the moon” step in the claim. You can do it in pretty much any app thanks to the CAFC’s idi otic interpretation of negative limitations. Perhaps one day they will recant.

  212. 19

    Have used similar claim amendments in several issued patents and have considered this to usually be OK.

    If the specification as a whole is defining media as physical storage, then the amendment is supported by inherent disclosure in the specification. The amendment “excluding signals”, “not a signal” or similar is an inherent feature of the physical media described in the specification. Claim limitations can be supported by inherent disclosure as discussed in MPEP 2163. _IF_ it is assumed that the media for a given specification cannot include signals or is by nature necessarily exclusive of signals, then this amendment is supported.

    Even when the spec describes media with examples of both physical storage and signals, this amendment could be OK. MPEP 2175.05(i): “If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.” This section also mentions, “a lack of literal basis in the specification for a negative limitation may not be sufficient to establish a prima facie case for lack of descriptive support”.

    If there is no definition of media in the specification, then using the definition of a person of ordinary skill, this should also be OK (I’ve done exhaustive research going back to the 1970s on the history of the terms “media”, “computer medium”, “storage media”, etc.). The ordinary meaning inherently is exclusive of signals per se.

  213. 17

    signal is a “medium”, but not a “storage medium”,

    So we all agree that if I claim “computer-readable instructions on a storage medium”, my claim is not infringed by the mere act of continuously broadcasting those instructions.

    I don’t have a problem with that … as long as we’re all in complete agreement. ;)

  214. 16

    Some apps specifically specify that it can be a signal. Technically Kappos et al. directed the PTO folks to not read signals in if there was no disclosure that it could be signals. It appears however that his “policy” is not being followed in terms of claim construction in all instances. Again, not referencing any given application specifically.

  215. 15

    The Google case did not include the term “storage”, which is the focus of Paul’s discussion.

    Pay attention, MM

  216. 14

    Malcolm, if the corresponding structure recites a number of specific apparatus, but not signals, and the claim is limited to non signal media — which is what is actually disclosed, I should think there would be no problem with the claim.

    “Excluding signals” is bad form, but arguably supported in this case.

  217. 13

    If it is unreasonable to one of ordinary skill in the art to interpret “storage medium” broadly enough to include “signals” to begin with, then it should be arguable that adding “excluding signals” to the claim to keep an examiner happy has no effect on the claim, and thus is not “new matter”

    New matter is a spec problem, not a claim problem. Lack of written description is the corresponding claim problem, and this amendment has it.

    A signal is a “medium”, but not a “storage medium”, and I’d be happy to appeal that point (it shouldn’t be necessary in more than a few cases or a single one that goes to the Federal Circuit) if it weren’t for all the other reasons Beauregard claims are snuffing it on appeal these days.

  218. 11

    link to groklaw.net

    Google is seeking to immediately knock out one of the remaining six patents asserted in this case, this time by summary judgment. In a letter to the court filed yesterday Google asks that claim 14 of U.S. Patent No. 6,192,476 be found invalid on the grounds that it claims unpatentable subject matter. (715 [PDF; Text])

    Google’s argument stems from the court’s determination a few weeks ago that the term “computer-readable medium” includes transmission media. (Google Wins on Claim Construction Issues) Google asserts that, by that interpretation, the claim became invalid. Google points to the finding in In re Nuitjen:

    Pay attention, Paul.

  219. 10

    6, I agree that when and if push come to shove, B claims will be declared invalid as claiming medium, particularly as they are a glaring attempt to end-run 271(b) and seem to violate, at least for this reason, Congressional policy as expressed in this statute.

  220. 9

    If signals were a storage medium, they’d be statutory.

    Because all “mediums” are per se eligible? Or just “mediums” in (or on) which data can be “stored” for some indetermined length of time?

    The problem lies with the term “storage medium” itself. The term “composition for recording computer instructions” is far more accurate, of course, but would lead to heads exploding everywhere.

  221. 8

    Dennis, “not invalid” is the right answer because one can never declare a claim valid.

    I check the “is valid” box, but recommend some rewriting of the question.

  222. 7

    An appeal of every such rejection might be safer than this kind of amendment, but that is expensive and time consuming. If it is unreasonable to one of ordinary skill in the art to interpret “storage medium” broadly enough to include “signals” to begin with, then it should be arguable that adding “excluding signals” to the claim to keep an examiner happy has no effect on the claim, and thus is not “new matter” and thus should not require all applicants to start adding a written description of “not a signal” to every specification description of every computer related component.

  223. 5

    It’s a WD problem as clearly as if a preamble of “a wheeled vehicle” were amended to “a wheeled vehicle excluding unicycles“, in a spec giving examples of cars, motorcycles, etc. but making no mention of unicycles.

    However, I don’t see how it’s reasonable to interpret “storage medium” broadly enough to include signals. If signals were a storage medium, they’d be statutory.

  224. 4

    the PTO’s official position on whether this whole “excluding signals” nonsense amendment creates a WD matter in and of itself is that it does not.

    Since when has the USPTO not gone out of its way to coddle B-claim applicants?

  225. 3

    Paul Morgan: why “a computer readable STORAGE medium” is considered a “signal” is beyond me

    Because in PM’s universe, no plaintiff or patent applicant would ever define “storage medium” so broadly.

  226. 2

    In Re Nuijten is the case in which the CAFC held that “signals” are not patentable subject matter.
    But why “a computer readable STORAGE medium” is considered a “signal” is beyond me. Has the CAFC or any other court ever so held?

  227. 1

    While I cannot comment on a given specific claim I will say that, so far as I’m aware no case involving a B claim has ever provided sufficient WD for all the little instruction structure species which they intend to claim in their huge functionally recited genus.

    I can also say that the PTO’s official position on whether this whole “excluding signals” nonsense amendment creates a WD matter in and of itself is that it does not.

Comments are closed.