“No” to Software Patents Per Se: Software is Only a Means to an End.

Guest Post by Martin Goetz

In Dennis Crouch's July 29, 2012 Patently-O essay "Ongoing Debate: Is Software Patentable?" he concludes by writing "It is simply ridiculous that after 40 years of debate, we still do not have an answer to the simple question of whether (or when) software is patentable"

One of the main reasons for this long debated argument about the patentability of software is that the wrong question is being debated. The current debate is mainly on the question "Should software be Patentable? And whether software, in the form of a computer program, is patentable subject matter?" Software is just a means to an end.  The debate should be about the invention.  

If the debate was on the question "Is an invention that is patentable in hardware, equally patentable if implemented in software?" there would be much less controversy. Hardware implemented inventions have been issued for well over a hundred years, long before the advent of the digital computer.

Back in October 2011 I wrote an article for a UK publication "Should software be patentable? That's the wrong question to ask". Because of the many comments to that article, many of which were critical of my arguments, I was asked for a follow up article "Pioneer Goetz rebuts software patent critics". In these two articles I tried to stress that software (a computer program) is purely part of a proper disclosure

Article 29 of the US Patent Office's application guidelines covering "Disclosure Obligations" states "…An applicant for an invention shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art and may require the applicant to indicate the best mode for carrying out the invention…."

Clearly, if the best mode is a computer program, then that disclosure would be described through diagrams, flow charts, and descriptive text. In many inventions, the best mode is a combination of hardware and software. (Or if the best mode is not hardware and/or software but cams, pistons, and flywheels or water or wind power, so be it.)

If the Patent Office's examiners focused on the invention, and not on how the invention was disclosed, it would reject many, if not most Software and Business Method Patents. Unfortunately, the Patent Office is bound by a plethora of confusing Supreme Court and lower courts decisions and opinions. Yet, the US Patent Office does have flexibility in how it interprets the US Supreme Court's many rulings. This gets us back to the US Patent Office and its examiners who must be better trained to recognize true inventions. Easily said, and a gigantic challenge for the US Patent Office. But, unfortunately, that is where we are today.

Postscript: Back on November 30, 2009, Patently-O published my blog "In Defense of Software Patents" in response to the editorial "Abandoning Software Patents" by Ciaran O'Riordan, Director of End Software Patents (posted on Patently-O on November 6, 2009) which had as its premise that software companies are trying to protect "software ideas". In that article I commented on the Bilski Opinion as well as gave some concrete examples of software-only patents as well as hardware/software patents. That article also received hundreds of comments, many being negative, and in response in September 2010 I had a follow up article "In Defense of Software Patents – Part 2". Both those articles explained why software companies and other companies should not be denied patent protection on true inventions solely because part or all of the disclosure involves a computer and a computer program. It goes on to describe why many software companies are high technology companies that employ many highly educated people fully capable of inventing.

Dennis Crouch

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

339 thoughts on ““No” to Software Patents Per Se: Software is Only a Means to an End.

  1. I know that 5 ^^^^^ and 4### and 3**** on a DVD is not the same as I measure and cut to spec. So you really aren’t telling me Jack. Why you say? Because I don’t understand Software, although I do understand the difference in the Math.

  2. jesse,

    More patent fail: “So why aren’t legal arguments patentable? Obviously they would be “Business Process” patents.

    Clearly, you are clueless in the land of law. I suggest that you attempt some minimum level of knowledge before you join the conversation. Would you attempt brain surgery after staying at a Holiday Inn for one night?

    Products of mathematics are not.

    You couldn’t be more wrong. Applied math is most definitely patent eligible – try to remember that there is a significant difference between applied math and just math. And don’t be too upset, you aren’t the first to make this mistake, and you won’t be the last.

  3. So open a Business Process Office in the US. Just think more to spend on PORK. Allow Three to five Years on the Darn things. Charge a fortune and be done with it then.
    I just build things.

  4. So why aren’t legal arguments patentable? Obviously they would be “Business Process” patents… Just look at IV for an example.

    It is the same thing. At least then the legal industry would be tied up in knots preventing useless work from destroying industry.

    Mathematics is a language. Programming uses mathematical languages to describe actions. The description is not the same as the action. Nor are the actions physical.

    Reality bites. You need to learn the difference between engineering and mathematics. Products of engineering are patentable. Products of mathematics are not.

    Languages are abstract and cannot be patented. Language expressions are abstract and cannot be patented. Copyrighted, maybe (depends on the situation).

    You should recognize your limitations when it comes to logic. Engineers use it every day. Evidently, lawyers don’t.

  5. And this has nothing to do with EGO or being foolhardy. You have two choices, and they don’t depend on whether I get help or not. You either have a Patent System or you don’t. You either have a legitimate Piggy Bank or you don’t. If you have a Piggy bank system like … then you play fair this time. If you don’t well lets all just kiss our @sses goodbye.
    The Patent System pays twice. The Piggy Bank and then hopefully manufacturing in the USA first. Without it someone gets paid and it ain’t the USPTO Piggy Bank. Do you honestly think that will work. Are you going to tax us to death and the jobs won’t be here because you don’t have enough sense to tax the Jobs that leave here. This is childs play. But you are all to busy fighting over who gets to be the Bully. The only bully here should be the government demanding Jobs stay here first, and then there if it is only cheaper to each American that way. But not if it is cheaper to the Company that just wants all of it. That is UN AMERICAN! And you all wonder why we are sick of congress!

  6. Really think about it. Buck Rogers the shows were Abstract in nature. Star Trek also. Where would we be if we were still Fred Flintstone. And as for the Jetsons they were awesome. Whete\her we like it or not, you can’t stop time!

  7. Why don’t you all stop this BS about Software. Remember the first Cell Phone.. Now look at them. That is PROGRESS.
    Remember the first Computer, now look at them. That too is Progress. After much thought why should you have to build a Computer for each application? That would not be PROGRESS!
    Either accept them or find a special area for them with different rules. Maybe lowering the amount of time for their license would be a start. Why? Because software is easier to build, easier to apply, and is constantly changing. Where as a Washing Machine or a Television take years to really change. As soon as the flat screen came all the Cell Phones and TV’s and Computers fed off that. So where would we be without the flat screen? That’s called progress. You all are acting like a bunch of ninnys, while we are are watching.

  8. “Mr. 101, I think most would agree that a process for curring rubber is not a business method.”

    Mr. Heller, I think “most” would agree you don’t think for “most” of them.

    And why can’t a method for curing rubber be a business?

    “Can we agree then that claims that only manipulate abstract concepts such as price, quality, risk, and the like are not eligible because of their abstractness?”

    Unless it’s a court created Judicial exception of Math, If you can manipulate it, it’s not abstract.

  9. Plus, I think the warning in Prometheus needs to be better understood about the danger of eviscerating all subject matter, as everythIng is an abstraction at some level.

  10. Plus, I am not sure that “physical” is the right word for “not mental” or “not in the mind.” one of the post Bilski CAFC cases (and one of the not pro-software ones) stated only that the item needed to be not reasonably done in the mind, indicating that claims to advanced and or high speed (higher than human speed) calculations would be patent eligible.

  11. Likewise, the reference to novelty of the claim is a bit misleading, as that leads to th errant “Point of Novelty” and the point of novelty of any claim is the claim as a whole. Thus, as is well known, claims are allowed to have steps that are performed fully in the mind (mental steps), as long as the claim as a whole is not performed entirely in the mind.

  12. Likewise. At least to those in the art, Quality can be defined to be something non-abstract.

  13. Mr. 101, I think most would agree that a process for curring rubber is not a business method.  That does raise a good question as to the proper definition of a business method.  I just checked around for one.  None exists.

    Can we agree then that claims that only manipulate abstract concepts such as price, quality, risk, and the like are not eligible because of their abstractness? I do not know whether the claim has to be fully performed in the mind, but I think the novelty of the claim must be a mental step or information, and not some physical act.

    This is not simple, which is why we seem to struggle with it.

  14. Fish, I don't think they held that the claim did not violate the then analog of 112.  What they held was that it was impossible that such a broad claim could be supported by any specification.  Further, to allow such a claim would materially retard the progress of the useful arts because it would literally cover the future inventions of others.

  15. [r]epeatedly mistaking his own judgment for axiomatic fact.

    Then you two have something in common.

  16. patent law fail for jesse.

    The conceptual arrangment of parts need not be made concrete and it does do something before it is made concrete. It is called a constructive reduction to practice and is enough to earn patent rights – very much contrary to your uninformed assertion of “being abstract.”

    jesse, you should recognize your limitations before playing with the big boys.

  17. In having perused this thread, a few things came to mind:

    1) First and foremost, it reinforced, again, my conclusion that the MM poster isn’t worth my time.

    2) The David Stein poster, while he seems to believe that he is onto something really fundamental, is barely scratching the surface, epeatedly mistaking his own judgment for axiomatic fact.

    3) Wading into discussions like this in any meaningful way is exceedingly time-consuming.

    4) The endless discussion and disagreement about patent law are not terribly compelling, as the body of law does not progress as a result.

  18. Nope – you have a failure of logic.

    “It is “just symbols” in the same way that a hardware patent is “just a conceptual arrangement of parts,”

    Big fail there… a “conceptual arrangement of parts” does nothing until it is made concrete, and a concept – being abstract – is not patentable.

    The concrete arrangement of parts is not abstract – it actually exists.

  19. Once again Ned Heller, asked and answered. Your blindness continues to swirl around the fallacy of use without change. Read Alappat once more.

    You really epitomize the adage, “There are none so blind as those who chose not to see.”

  20. “Are you saying, NED HELLER, that since the Supreme Court in Morse found that the Morse claim did not violate 112 and that 112 has apparently not changed since Morse that therefore the Morse claim should survive 112 today?”

    Of course Morse claim would not survive 112 today. But you have backed Ned into a corner with logic and the law, therefore he will not provide you with an honest answer, if he answers you at all.

  21. “I’m 100% sure that person isn’t me; and (2) I’m 99% sure that person has the words “integration” scribbled on…..”

    Would that be Justice Breyer that wrote “integration” into the Court’s 9-0 Prometheus decision?

    Or maybe Director Kappos that wrote “integration” in the new USPTO Official Guidelines?

    You may return to your melt down now and continue scribbling crude remarks on the blog.

  22. Uncirculated, you rather miss the point of the equivalence. Try thinking without your anti-patent hat on for a moment and realize that people have a right to claim their inventions under the law.

  23. Nah, just another joke at your expense, suckie.

    The one sinking to new lows of “humor” in order to make themselves feel better (hint: that’s you MM) is the one being laughed AT.

    It’s a sure sign of utter patheticness when you have to be that crass.

  24. We remember, suckie.You lost. 9-0.

    More LOLZ at the self-defeating MM. Even the Office laughs at MM as it puts out its Official Guidance supporting 101 Integration Analysis, and mentions MM’s “theory”…

    …wait…

    …wait…

    …wait…

    not at all.

    S C O R E !!!!!!!!

  25. suckie WOW, that sure was some melt down.

    Nah, just another joke at your expense, suckie.

    It’s certainly the case that someone has been “melting down” since the Prometheus decision but (1) I’m 100% sure that person isn’t me; and (2) I’m 99% sure that person has the words “integration” scribbled on the wall of his bedroom, right underneath his Star Wars: Episode V poster.

  26. This type of vitriol is just one of the reasons why we should be suspicious of the pro-software patent lobby. However I do appreciate the clarification from various posters above that software and hardware are equivalent. As such, you guys can go back to claiming hardware, which the patent community has found much less controversial, and stop trolling with software claims, right?

  27. Says you 6 as you respond twice.

    Pwned.

    Face it, not giving a response to such points is no better than not being able to give a response to such points.

  28. I was responding to the point

    Problem is Ned, you were responding in your typical bogus manner that countless people have taken you to task for. You cannot use a singular example and label a whole category based on the single example. That’s why Prometheus as a single example of medical methods does NOT portray ALL medical methods as Laws of Nature.

    For some G-foresaken reason you cannot resiste the urge to make this same mistake ad infinitum.

  29. MM, A.K.A., Malcolm Mooney Writes: ” Maybe now is a good time to put away your pedo mags and start gumming that picture of your mommy again.”

    WOW, that sure was some melt down. I actually kinda feel sorry for you.

  30. The trolls weren’t up to the task, David.

    Except they were. Even his fallacy questions were defeated by Logic Steps.

    T O O L

  31. suckie I read about claims as a whole, which is the mandate from Diehr

    Right. That was the b—-s-t you spewed for two years that was supposed to save the claims in Prometheus from ineligiblity.

    We remember, suckie.

    You lost. 9-0.

    Nurse Ratched’s shift is starting. Maybe now is a good time to put away your pedo mags and start gumming that picture of your mommy again.

  32. suckie I noticed you failed to cite any passage or holding from Prometheus, or any Court case for that matter, that supports your opinion.

    The cites are incredibly easy to find and I’ve done so scores of times in the past but what’s the point of providing them yet again for you, suckie? Like the creotards you emulate, you’ll just pretend that the words mean something else. In your bizarro world, up is down and black is white, whenever you want that to be the case.

    We’ll see if David Stein comes to your defense. I don’t think he’s that st—-pid but who knows? Surprise us, David! Are you willing to stand with the world’s d—-est blog troll (suckie aka [insert d—-ss pseudyonym here]) and its inane sockpuppets? Let us know, David.

  33. Mr. Heller: “Why don’t you get it through you very thick skull that I am resisting your assertion that BMs are eligible without any qualifiers whatsoever.”

    I have never made any such assertion. Every category is subject to the same conditions and requirement of Title 35 of the United States Code.

    Mr. Heller:I do not claim that the SC has held them to be categorically excluded.

    You do claim they have never been categorically included which is a straw man argument since, Business Methods are a process like ANY other process, and therefore are one of the four enumerated categories of patent eligible subject matter.

    Mr. Heller: The continue to hold that abstract ideas are, however.

    Which is irrelevant since business methods are not de facto abstract ideas.

  34. SECTION 6. And be it further enacted, That any person or persons, having discovered or invented any new and useful art, machine, manufacture,
    or composition of matter, or any new and useful improvement on any art, machine, manufacture, or composition of matter, not known or used by
    olbers before his or their discovery or invention thereof, and not, at the time of his application for a patent, in public use or on sale, with his consent
    or allowance, as the inventor or discoverer; and shall desire to obtain an exclusive property therein, may make application, in writing, to the
    Commissioner of Patents, expressing suc.h desire, and the commissioner, on due proceedings had, ~ay grant a patent therefor. But before any inventor
    shall receive a patent for any such new invention or discovery, he shall deliver a written description of his invention or discovery, and of the
    manner and process of making, constructing, using, and compounding the same, in such full, clear, and exact terms, avoiding unnecessary prolixity,
    as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound
    and use the same; and in case of any machine, he shall fully explain the principle, and the several modes in which he hal\ contemplated the application
    o~ that principle or character by which it may be distinguished from other inventions; and shall particularly specify and point out the part, improvement, or combination, which he claims as his own invention or discovery….

  35. MM:Please link us to your most impressive pre-Prometheus wankery on the subject. Thanks.

    You mean like this link you posted from the USPTO on Integration Analysis, in view of Prometheus?

    link to uspto.gov

  36. “The Dierhbot Myth of the absolute prohibition on “claim dissection” was completely decimated in Prometheus, ”

    Hello MM:

    I did not read that in Prometheus. But I did read about “integration” which is of course is the antithesis of dissection. And I read about claims as a whole, which is the mandate from Diehr. Would you like me to cite the actual text from Prometheus, as I have done many, many, many times? Or have you had enough embarrassment for the month?

  37. Just because….

    Why don't you get it through you very thick skull that I am resisting your assertion that BMs are eligible without any qualifiers whatsoever.  I do not claim that the SC has held them to be categorically excluded.  The continue to hold that abstract ideas are, however.

  38. Hello MM:

    I just read Prometheus again and NOTHING you have stated is in the case. Which is probably why you can’t cite any passage, or holding from the case to prove what you say. You can’t even cite the actual Prometheus claims as an example.

    If you ever wonder why the entire online patent professional community ignores you, it’s probably because they are too busy laughing at you to respond.

  39. I noticed you failed to cite any passage or holding from Prometheus, or any Court case for that matter, that supports your opinion.

    MM, just saying stuff does not make it true.

  40. “OH, now I get it. Diehr is a business method,”

    Well, let’s analyze it.

    1. The process for curing rubber is not a sport.

    I didn’t see curing rubber in the olympics.

    I don’t know of any curing rubber teams anywhere in the word.

    I never heard of a professional curing rubber player.

    So nope curing rubber is not a sport.

    2. The process for curing rubber is not a visual/liberal art.

    I never saw any curing rubber exhibits in any art museum.

    I never heard of any Bachelor of Fine Art Degrees in curing rubber.

    I never went to a curing rubber concert.

    So nope curing rubber is not a visual/liberal art.

    But one thing we know for sure is that the method for curing rubber in Diehr is a business, for business, applied to business, and ONLY business, thus it is logically and factually a business method.

    Same can be said of Ultramercial, Research Corp, Alice, and many, many, more claims from 101 Patent cases.

    Of course if you wanna play around with hypothetical coffin making methods we can do that too, the logic and the law works the same.

  41. suckie
    Except the claims were not in that form [oldstep]
    +[newthought].

    As construed, the method claim had two steps.

    [step1]+[step2]

    The first step was deemed old and conventional.

    [oldstep]+[step2]

    The second step was deemed to be a step of thinking about what the data obtained by step 2 “means.”

    [oldstep][newthought]

    End of analysis.

    How much crank do you smoke, suckie, and how often? Again, I’ve not encountered such habitual pathetic dissembling outside of, say, a creationist bulletin board. Can’t you just recite your b.s. in your church of choice, suckie, and leave the rest of us alone?

  42. Are you saying, NED HELLER, that since the Supreme Court in Morse found that the Morse claim did not violate 112 and that 112 has apparently not changed since Morse that therefore the Morse claim should survive 112 today?

  43. Just because Bilski’s Business Method claims were held to be ineligible, does not mean ALL Business Method claims were held to be ineligible.

    That’s faulty logic on your part. And definitely NOT what the Court held.

    Furthermore if Bilski’s claims had been “integrated” they would have passed 101.

    You admitted as much yourself on this blog.

  44. A hammer is a machine, just to be pedantic.

    A general purpose computer is also a machine, but one which can do different things depending on the software, such that the combination of the two as a whole may form a novel machine if the software is novel. Hence, Beauregard claims.

    Also, any such machine made up of computer plus novel software can be replaced with a dedicated purpose patentable machine, but it’s no longer efficient to do so, and this should not negatively affect patentability. If it did, that would be exalting form over substance.

  45. MM: “My opinion is that all claims in the form [oldstep]+[newthought] are ineligible, for very easy to understand reasons. Prometheus supports my view as the claims in Prometheus were indisputably of that form.”

    Except the claims were not in that form. Prometheus claims were in the form of L o N/Concept, Application. What was needed according to the Court, was Lo N/Concept, Application, and Integration. Thus the claims failed Diehr’s “Integration” analysis, and were therefore ruled by the Court to not be an “Inventive Application.” Of that there can be NO dispute.

    See From the Syllabus in Prometheus: “The Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole.” (12 MAYO COLLABORATIVE SERVICES v. PROMETHEUS LABORATORIES, INC. describing Diehr. Opinion of the Court) Emphasis added.

    The Prometheus ruling on Integration is further manifested by the USPTO Guidelines, especially at #4 providing an example of how Diehr’s claims are “integrated” and therefore are an “inventive application” of the equation that is the focus of that patent.

    “4. This claim ( Diehrs) would pass Inquiries 1-3 in the above analysis as it is a process that includes the Arrhenius equation as a limitation, with additional steps that “integrate” the Arrhenius equation into the process and are sufficient to narrow the scope of the claim so that others are not foreclosed from using the Arrhenius equation in different applications.” ( Emphasis Added) link to uspto.gov

    MM, if you were not such an Intellectual Coward, and performed “Integration Analysis” on Ultramercial’s claims according to the USPTO Guidelines, you would know this by now, and not be wasting time making up nonsensical, and illegal dissection theories.

  46. DavidStein Do you deny that it has been uniformly upheld in every major 101 patent decision since then?

    The Dierhbot Myth of the absolute prohibition on “claim dissection” was completely decimated in Prometheus, David

    So, yes, I do deny that it has been “uniformly upheld”, at least to the extent that the case mattered to anybody.

    Are you also going to engage in revisionist history like our patent trolls, David?

    Please link us all again to your discussions of the eligility of Prometheus’ claims (prior to the Supreme Court decision). Or better yet, copy and paste your prediction regarding the outcome of the case here.

    As you know, I predicted the outcome with 100% certainty. And I was 100% correct. Why was that case? Because I’m not a patent True Believer like the wankers here and elsewhere. That means I can use my brain to think rationally about the undesirable (indeed: illegal) effects of, say, a holding that Prometheus’ claims are eligible because “Diehr says that any analysis of the prior art is not allowed during a determination of eligibility under 101.”

    Yes, the Supreme Court could have held that [oldstep]+[newthought] claims are anticipated per se because the [newthought] step must be ignored for 102 purposes. I discussed that alternative a hundred times as well and challenged our trolls here to show me some case law supporting that position. More importantly, I challenged our trolls to explain to us what the f— difference it could possible make whether the [oldstep] was ignored for eligiblity purposes or whether the [newthought] step was ignored for anticipation purposes.

    The trolls weren’t up to the task, David.

    Were you? Please link us to your most impressive pre-Prometheus wankery on the subject. Thanks.

  47. Mr Heller: “give me one example of the business method claim that is not abstract.”

    I think I already did this but am happy to do it again.

    DIEHR!

    Would you like another?

  48. “The examiner finds that abilities are not within an enumerated category and thus the claim is rejected under 35 U.S.C 101 for failure to belong to a statutory class.”

    Hmm..if computer code as claimed can’t execute wouldn’t that be an enablement issue under 112?

    Besides just because an applicants invention does not have the “ability” to function as described and claimed does not mean the entire art field is patent ineligible, does it 6?

  49. DavidStein this is the law under which we operate

    Exactly what is “the law” under which we operate, in your opinion, David?

    My opinion is that all claims in the form [oldstep]+[newthought] are ineligible, for very easy to understand reasons. Prometheus supports my view as the claims in Prometheus were indisputably of that form.

    Can you remind me what your view was of Prometheus and how the case would be decided prior to the decision? I mean, you seem to fancy yourself some sort of expert on “the law” as it relates to patents. Does history support this view of your own talents?

  50. “If the claims pass 112, then you know what the claimed invention is and can decide whether it passes 101.”

    Exactly! Either Mr. Heller is incredibly dishonest, or incredibly ignorant when it comes to patent law basics.

  51. Breyer’s concurrence positively cited Diamond v. Diehr twice.

    Sure. For extremely trivial propositions.

    But the Diehrbot Myth was utterly disemboweled.

    So tell us, David: do you agree that all claims in the form [oldstep]+[newthought] are ineligible? If not, can you provide an example of a claim in that form that is eligible and explain why it is eligible after Prometheus?

    You see, David, I predicted the result in Prometheus including the disembowling of the Dierhbot Myth.

    What did you predict, David?

  52. “Mr. Expert, you declared that his methods cannot be abstract. ”

    “his?” Whose methods are you talking about? Bilski’s?

    Bilski’s claims were beneficial to conducting business, this is true. But that is NOT the reason they were declared abstract, as proven up thread.

    Now who else are you talking about?

  53. If you do not provide an enabling disclosure with “written description” for any “invention” and claim it with definite claims, the claims do not pass 112.

    If the claims pass 112, then you know what the claimed invention is and can decide whether it passes 101.

  54. BTW, Bilski’s claims were declared abstract because they were essentially math equations. The fact that the claims were beneficial to conducting business had nothing to do with it!

    Business methods were upheld by the Court as patent eligible subject matter. You lost that case and debate! Remember?

  55. “Mr. Simple Q, I was responding to the point made by our 101 Expert that business methods cannot be abstract.”

    I simply asked you to show me an example of a business method performed entirely within one’s own mind. And you failed. It’s that simple.

  56. Mr. Expert, you declared that his methods cannot be abstract.  In point of fact they can.  I would further submit that most of them are.  I can't even conceive of one that is not.

    If you disagree, give me one example of the business method claim that is not abstract.

  57. Fish, yes it does.  But you miss the point about abstractness.  If you claim a principal in the abstract, you do not have to provide any examples.  The claims cover all examples, all embodiments, without any teaching a specific methods or means of implementation.  This is principally why the Supreme Court said that abstract claims are nonstatutory.

  58. Mr. Heller: “Mr. 101,

    “The Bilski claims were declared abstract, yet they claimed a BM.”

    And Prometheus claims were declared a L o N, yet they claimed a Medical Method.

    So what’s your point? Oh that’s right. You don’t have a point because you backwards, and in circles.

    Mr. Heller: “Also, stop relying on Ultramericial. That case no longer exists. It is GVRed.”

    Yes, in view of Prometheus, “integration” which is now arguably the new analysis for patent eligibility, and thus relevant to the discussion of all 101 issues. Although you are too much of an intellectual coward to argue for or against, even though the USPTO guidelines instruct you to use “Integration” in 101 analysis.

  59. Yes. And under Mr. Hellers logic all Medical Methods are now L o N and not patent eligible subject matter.

  60. “You are an intellectually dishonest person that plays off the ignorance of the public and judges. What I said above is what I as taught at the top engineeringn schools in this country.”

    I do believe you are giving Mr. Heller far too much credit. He is most likely as ignorant as public and judge when it comes to understand these topics.

  61. “Sounds more like enablement, written description and/or definiteness issues under today’s statutes”

    That’s exactly what it is, 112. But Mr. Heller is dishonest and purposely seeking to comflate 112 and 101 issues.

  62. “In this case, it may later be determined that the respondents’ process is not deserving of patent protection because it fails to satisfy the statutory conditions of novelty under § 102 or nonobviousness under § 103.””

    Yes, it may later be determined that it fails 102 or 103, when and if they have better prior art.

  63. I would be happy to evaluate it as an “ability”.

    Here’s my evaluation:

    Applicant argues that the “true character” is what the instant invention should be evaluated with respect to under 101. Applicant argues that the “true character” is an “ability”, specifically an ability to execute. The examiner finds that abilities are not within an enumerated category and thus the claim is rejected under 35 U.S.C 101 for failure to belong to a statutory class.

  64. the Supreme Court has generally been adverse to special rules to categorically exclude subject matter.

    Generally? How about closer to the truth and outright against it based on category. Even their judicial exceptions apply across the categories.

    That being said, why not figure out why they say it instead of focusing on how to circumvent their wisdom? Instead of making things complicated just because you don’t like software patents, just realize that patents are for protecting function and copyright is for protecting expression.

    Accept this and stop trying to make things more complicated.

  65. “MOT is not a requirement for patent eligibility” Bilski, 9-0.

    “MOT is not enough to make a claim patent eligible” Prometheus, 9-0.

    Time to bury MOT (at the very least, how Ned Heller attempts to use it).

  66. “And if this cannot be done by the means he describes, the patent is void.”

    Sounds more like enablement, written description and/or definiteness issues under today’s statutes

  67. The Bilski claims were declared abstract, yet they claimed a BM.

    Are you telling me that once again you are inviting the comparison of the Prometheus claims were ruled a Law of Nature, yet they claimed a Medical Method ?

  68. Ned,

    Didn’t you just ask the same question and get an (obvious) answer the exact opposite of what you want the answer to be?

  69. Reiner, indeed. IBM recognized this when it proposed utility-model type protection for software, essentially a mode of “copyright” protection that would include functional elements against wholesale copying. Software needs to be protected against copying. But it also not clear that it should be protected against independent development.

    Regarding special rules to ban the use of utility patents to patent software, the Supreme Court has generally been adverse to special rules to categorically exclude subject matter. They probably do so out of wisdom. I think it is best to follow the Supreme Court guidance on this.

    That being said, one could achieve pretty much the same thing by defining a special defense for software: We could require that proof of infringement of a software invention would require proof of copying.

  70.  And there you have the MOT, transforming or reducing an article to a different state or thing

    Ned, do you not realize that MOT is just a clue, neither necessary nor sufficient for 101 purposes?

  71. Night, from a patent law point of view, what is the difference between claiming a law of nature or principle in the abstract? You say that discussing a law of nature as an abstract concept is outrageous, but under the O'Reilly v. Morse case, they appear to be the same thing from the point of view of the patent law. A claim to either, not limited to a particular application described in the specification, is nonstatutory.

  72. Mr. Shooting up,
     
    In numbers of discussions that have taken place over quite a bit of time, you have refused to describe physically what you mean by configured. I ask you questions involving real situations to determine what you mean. Still, you refuse to answer the question.
     
    Simply waving a magic wand and declaring that this machine is configured and that machine is not by some magic that you only know about and cannot or will not explain is not sufficient. If there is a difference between using a computer and a computer, please explain the difference.
     
    Just for example, will you answer this very simple question: if you sell a general purpose digital computer that the owner occasionally uses to run software that has been patented as a programmed computer do you infringe?
     
    Obviously the answer is no, so I hope you would agree that in this situation there is no programmed computer.
     
     

  73. Mr. 101,
     
    The Bilski claims were declared abstract, yet they claimed a BM.
     
    Also, stop relying on Ultramericial.  That case no longer exists.  It is GVRed.
     

     

  74. Fish, you think the law or statutes are different?  They are the same.  Section 101 has been with us since 1790/93.  The Tatham and Morse case are fundamental are still followed.

  75. Really, 6?
     
    From the case:
     
    "In this case, it may later be determined that the respondents' process is not deserving of patent protection because it fails to satisfy the statutory conditions of novelty under § 102 or nonobviousness under § 103."
     
    Aguendo, the process claimed was not new.  But even so, it passed 101.  Why?
     
    "On the other hand, when a claim containing a mathematical formula implements or applies that formula in a structure or process which, when considered as a whole, is performing a function which the patent laws were designed to protect (e. g., transforming or reducing an article to a different state or thing), then the claim satisfies the requirements of § 101.

     
    And there you have the MOT, transforming or reducing an article to a different state or thing.
     
    What does this mean but that the math is applied to "transform …an article into a different state or thing?"  And what does different mean? 
     

     

  76. “then do we explain the FACT that software does work to effect a change in a machine?”

    With words?

    “That the FACT that a new machine is created ”

    Says who? Some lay judges just hankerin’ for a supreme court to tell em what for?

    Under their “logiclol” I create a new violin every time I play one. I’m creating a new keyboard as I’m typing right now.

  77. I don’t have time to answer this again, Ned. But, it is not a practical application isuse, but scope of enablement issue. Additionally, the mixing up of equations that represent physical laws with equations that represent how to connvert from BCD to binary is outrageous.

    You can’t, Ned, go to the court for an explanation of the physical world or engineering. If you cared to understand these issues, you would drop all references and thoughts to the court and try to understand what is going on.

  78. I agree with the theory of the post, but not with software patenting practice.

    Software patents are not a problem per se, but due to the fact that often just ideas are patented, no true inventions, and improperly enabled. Research shows that programmers do not use patents are a source of inspiration, which is one of the purposes of the patent system, and something that really works e.g. in chemistry. Furthermore, often just tiny parts of an eventual (software) products are patented, which causes the “tragedy of the ANTIcommons”, and makes them very susceptible for “strategic patenting” practices and “patent wars” (the recent fight between smartphone manufacturers as a fine example). Having said this, economists found similar problems with patents in other “complex product” fields like semiconductor hardware (Hall & Ham-Ziedonis)

  79. “If you really want to twist his knickers, ask him about integration, the Office official guidance and the absence of his [oldstep] + [newthought] theory in any legal discussion post Prometheus (other than his own posts).”

    Just in case MM forgot, here the link! :)

    link to uspto.gov

  80. “Do you deny that it has been uniformly upheld in every major 101 patent decision since then?”

    No, David, I do not deny this. How can anyone deny it? Especially with the Court case law being so clear that Diehr is upheld, and the single example from the Court of what exactly IS 101 statutory subject matter!

    Permit me please to give some examples from the case law for the benefit of our less astute commenters:

    In Bilski the Court established that Diehr controlled and cabined Flook and Benson by stating on page 14: “Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook.”

    That ruling put an end to any debate about Flook’s dissection and Benson’s unlimited pre-emption powers. And just to make sure EVERYONE knew what they meant the Court followed that by specifically citing Diehr’s holding:

    “Diehr emphasized the need to consider the invention as a whole, rather than “dissect[ing] the claims into old and new elements and then . . . ignor[ing] the presence of the old elements in the analysis.” Id., at 188. 561 U. S. ____ (2010) 15 Opinion of the Court” Bilski V Kappos.

    Then, we have Prometheus continuing to uphold and rely on Diehr by stating:

    “Diehr” and Flook, the cases most directly on point, both ad- dressed processes using mathematical formulas that, like laws of na- ture, are not themselves patentable.” ) (Emphasis added)

    And once again, to make sure no one was confused about Diehr being overturned or overlooked, the Prometheus Court specifically said:

    “The presence here of the basic underlying concern that these patents tie up too much future use of laws of nature simply reinforces our conclusion that the processes described in the patents are not patent eligible, while eliminating any temptation to depart from case law precedent. 566 U. S. ____ (2012) 19 Prometheus”

    And finally to drive the nail in the coffin of the hopes and dreams of the anti patent crowd the Court in Prometheus relied on Diehr as authority to introduce “Integration Analysis”. I quote:

    “”The Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process integrated the equation into the process as a whole. ”

    This followed by the pouring of salt in MM’s wounds by the USPTO using Integration in it’s 101 statutory subject matter analysis:

    link to uspto.gov

  81. 1. Your fallacious “use” is noted. The answer is yes because the machine is configured with software, making it a particular machine.

    2. Your question is nonsense as the server is configured with the software so ‘nearness’ is a non-sequitur.

    3. Same answer as 1.

    4. Same answer as 1; actual ‘use’ of the software is a different question than infringement (i. e., make, use, sell) of the software or the configured machine, and of course, depends on the actual claims under which infringement is pursued.

  82. “Mr. Expert, I think the point is that one can state the business method without stating any particular apparatus or methods or means for carrying out the business method.”

    WRONG! That would be stating a concept.

    Concepts are the beginning of every invention, not just so called business methods. For example:

    You can state a “concept” for a machine.

    You can state a “concept” for a composition.

    You can state a “concept” for an article of manufacture

    You can state a “concept” for a process, any process including a so called Business Method.

    In Ultramercial the court and the inventors have agreed the concept is:“Using advertising as currency”.

    But the “concept” or general idea, is NOT the invention!!!

    There needs to be an application of the concept, and in the specific case of a process, that application is represented by a series of steps. Finally, to complete the claims, “integration” of the concept into the process as a “whole” is required. This transforms the claims into an inventive application of the concept, and thus makes the claims patent eligible and not an abstract idea.
    See ( Diehr, and Prometheus relying on Diehr for integration)

    Also, if you had not been such a coward, and just taken the challenge to perform “Integration Analysis” on Ultramercial’s claims by using the Official USPTO Guidelines on “Integration”, you would know this by now.

    BTW, your citing of what is essentially a description of the indefiniteness of Morse’s claim 8 is irrelevant to the patentability of business methods

  83. ” how do you feel about the ability to patent a bullet without a gun, or does your aversion to patenting component inventions only extend to certain art fields?”

    Ahhh…now that is an excellent question!

    But alas, these types of questions NEVER get answered.

    Maybe Miles will break the mode and respond.

  84. Not only positively cited, but BEST case on point.

    If you really want to twist his knickers, ask him about integration, the Office official guidance and the absence of his [oldstep] + [newthought] theory in any legal discussion post Prometheus (other than his own posts).

  85. It seems to me that the focus needs to be on the Supreme Court and Congress – not the Patent Office, which is only carrying out their decisions. Although the above article suggests that the Patent Office is free to interpret Supreme Court decisions, clearly those interpretations need to be consistent with the CAFC, also. Additionally, although the above article suggests that the Patent Office interpret Supreme Court decisions differently, it does not clearly point out the legal underpinnings for the different interpretation that it suggests. If the Author has already done this in his prior article, perhaps reminding the reader, in just one or two sentences what that legal underpinning is would be good. Further, it would seem that a claim that is broad enough to encompass subject matter that is not patentable under 35 USC 101 is in fact not patentable under 35 USC 101 even if it also encompasses material patentable under 35 USC 101, see In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) (the claim was broad enough to cover a mental step although it could be practiced by other means), but yet this article seems to suggest that the US PTO should ignore that (again if the Author has shown why this is not a problem in other articles, perhaps a one or two sentence reminder would be appropriate in this article). Consequently, if In re Prater is good case law on this issue, expecting the US PTO to grant patents on subject matter that is capable of being implemented purely by software where no machine-tie in or transformation is recited (and where there is no other reason why the recited claim meets 35 USC 101), may be a bit much.
    It would seem that the CAFC tried to correct this problem on its own, by giving what the Supreme Court would seem to now categorize as creative interpretations to Supreme Court precedent, but (although I applaud the CAFC for the attempt) that did not work so well.
    Although I like the idea of the US PTO giving software-favorable interpretations to Supreme Court and CAFC law, the one suggested by this article does not seem as though it would work very well.
    On the other hand, I would agree that to equate every algorithm with a law of nature on par with E=MC^2 or an abstract idea – ignoring the human creativity and practical, industrial usefulness of the algorithm, as the Supreme Court does – aught to be wrong. However, I think the majority of the onus of correcting that belongs to Congress and/or the Supreme Court.

  86. Miles, how do you feel about the ability to patent a bullet without a gun, or does your aversion to patenting component inventions only extend to certain art fields?

  87. @Ned Heller — I meant under today’s law and statutes (and not any 1850s equivalent) the Morse claim would be rejected under Section 112,

  88. “I think the PTO and Stevens both urged that nothing had been invented but the programmed computer calculating the math.”

    If they did then they didn’t have the art to back that up. Stevens for sure didn’t, did you read the hypothetical “prior art” he would have “applied”?

    “But, the majority said that even if this were true (and they did not agree that it was true) the use of the programmed computer in the “old” process modified it to produce a new result.”

    Nowhere did they say such nonsense Ned, you need to learn to read in context.

    You surprise me every month with your ability to correctly learn the right 101 analysis and forget it not a week later Ned. You’re truly a sight to behold.

  89. “.. and in that time, I’ve had several hundred patents issued in the computer arts and made millions of dollars.”

    Bragging about how big of a scofflaw thief you are is beneath you :(

  90. Mr. Expert, I think the point is that one can state the business method without stating any particular apparatus or methods or means for carrying out the business method.  When this is true, one really doesn't need a specification.  One can simply state the business method in the claim, and that is all that is required to communicate the scope of the invention.

    O'Riley v.  Morse
    "The provisions of the acts of Congress in relation to patents may be summed up in a few words.
    Whoever discovers that a certain <b>useful result</b> will be produced, in any art, machine, manufacture, or composition of matter, by the use of <b>certain means </b>, is entitled to a patent for it; provided he specifies the means he uses in a manner so full and exact, that any one skilled in the science to which it appertains, can, by using the means he specifies, without any addition to, or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void. And if it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more. And it makes no difference, in this respect, whether the effect is produced by chemical agency or combination; or by the application of discoveries or principles in natural philosophy known or unknown before his invention; or by machinery acting altogether upon mechanical principles. In either case he must describe the manner and process as above mentioned, and the end it accomplishes. And any one may lawfully accomplish the same end without infringing the patent, if he uses means substantially different from those described.
    Indeed, if the eighth claim of the patentee can be maintained, there was no necessity for any specification, further than to say that he had discovered that, by using the motive power of electro-magnetism, he could print intelligible characters at any distance. We presume it will be admitted on all hands, that no patent could have issued on such a specification. Yet this claim can derive no aid from the specification filed. It is outside 120*120 of it, and the patentee claims beyond it. And if it stands, it must stand simply on the ground that the broad terms above-mentioned were a sufficient description, and entitled him to a patent in terms equally broad.  "  In our judgment the act of Congress cannot be so construed."
     

     

  91. “play lawyer”

    Nah, I just play examiner. Super examiner it is true, but examiner even so. I’ll leave the lawltar ding to the lawlta rds.

    Nobody here has made even a half decent “argument” in favor of the OT. They’re too stup id to :( And even if they did, arguments are for naught in the face of da lawl, which is what I deliver.

  92. I think that the other part of this argument maybe that you have a black box, with certain claimed functionality. You don’t know which technology (of those that David Stein listed) implements the invention, and, worse maybe, the medium in which or by which it is implemented changes through time (which is often true in certain types of electrical devices). If you draw the line somewhere between custom circuitry and software implemented on a general purpose computer, does that mean that someone’s black box that infringes the wording of the claims is somehow non-infringing (and the claims to them invalid) if the otherwise infringing black box utilizes a general purpose computer, but is just fine if implemented using custom circuitry?

  93. Then you Ned Heller, concede the fact that ” BMs, being generally abstract”, is quite impossible. Since you failed to show me one business process you can perform entirely in your mind.

  94. Interesting theory. At first, I thought that you had missed the boat, when the more physical manifestations of software are in systems and floppy disk type claims. But, at the level I think that you are talking, you are correct – software code is essentially instructions on how do to something. The confusion, maybe, is that theoretically, the code can possibly be done in your head. Of course, most of the time that I run into that argument, it is pretty incredulous, since it would be quite hard for a human to process, say tens or hundreds of millions of records. Yes, they could do some, but not with an error rate and volume that would provide meaningful results.

  95. 6, I think the PTO and Stevens both urged that nothing had been invented but the programmed computer calculating the math. But, the majority said that even if this were true (and they did not agree that it was true) the use of the programmed computer in the “old” process modified it to produce a new result. I think this is a fair read since they specifically relied on Benson’s MOT.

    In other words, applied math is entirely patent eligible. But this concept was not at all revolutionary even at the time of Diehr. It was discussed even in Benson. Ditto Morse and Le Roy v. Tatham, where it was said that it was applications of principles (laws of nature) that were patentable.

  96. Why are we wrong? 
     
    The disovery of E=MC2 is quite a discovery, indeed.  But then we have O'Reilly v. Morse that say that only practical applications of this principle can be patented.  Why? 
     
    "
    The provisions of the acts of Congress in relation to patents may be summed up in a few words.
    Whoever discovers that a certain <b>useful result</b> will be produced, in any art, machine, manufacture, or composition of matter, by the use of <b>certain means </b>, is entitled to a patent for it; provided he specifies the means he uses in a manner so full and exact, that any one skilled in the science to which it appertains, can, by using the means he specifies, without any addition to, or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void. And if it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more. And it makes no difference, in this respect, whether the effect is produced by chemical agency or combination; or by the application of discoveries or principles in natural philosophy known or unknown before his invention; or by machinery acting altogether upon mechanical principles. In either case he must describe the manner and process as above mentioned, and the end it accomplishes. And any one may lawfully accomplish the same end without infringing the patent, if he uses means substantially different from those described.
    Indeed, if the eighth claim of the patentee can be maintained, there was no necessity for any specification, further than to say that he had discovered that, by using the motive power of electro-magnetism, he could print intelligible characters at any distance. We presume it will be admitted on all hands, that no patent could have issued on such a specification. Yet this claim can derive no aid from the specification filed. It is outside 120*120 of it, and the patentee claims beyond it. And if it stands, it must stand simply on the ground that the broad terms above-mentioned were a sufficient description, and entitled him to a patent in terms equally broad. In our judgment the act of Congress cannot be so construed."

  97. Night, see the quote from Morse. 
     
    E=MC2 only requires its calculationg.  Data gathering by whatever means need not be described.  The use of the relationship is not described.  All uses are covered.  This is a perfect example of what Morse had in mind when it said,
     
    "
    The provisions of the acts of Congress in relation to patents may be summed up in a few words.
    Whoever discovers that a certain <b>useful result</b> will be produced, in any art, machine, manufacture, or composition of matter, by the use of <b>certain means </b>, is entitled to a patent for it; provided he specifies the means he uses in a manner so full and exact, that any one skilled in the science to which it appertains, can, by using the means he specifies, without any addition to, or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void. And if it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more. And it makes no difference, in this respect, whether the effect is produced by chemical agency or combination; or by the application of discoveries or principles in natural philosophy known or unknown before his invention; or by machinery acting altogether upon mechanical principles. In either case he must describe the manner and process as above mentioned, and the end it accomplishes. And any one may lawfully accomplish the same end without infringing the patent, if he uses means substantially different from those described.
    Indeed, if the eighth claim of the patentee can be maintained, there was no necessity for any specification, further than to say that he had discovered that, by using the motive power of electro-magnetism, he could print intelligible characters at any distance. We presume it will be admitted on all hands, that no patent could have issued on such a specification. Yet this claim can derive no aid from the specification filed. It is outside 120*120 of it, and the patentee claims beyond it. And if it stands, it must stand simply on the ground that the broad terms above-mentioned were a sufficient description, and entitled him to a patent in terms equally broad. In our judgment the act of Congress cannot be so construed."

  98. Night, We may want to consider the below quote from Morse on the issue of whether BMs are abstract.  Just what is about a BM is it that has to be made?  If the claimed process does in fact require physical steps be taken in a specific order, perhaps the claim is not abstract, but eligible.  We just had such a case, and I agree with the result.
     
     
    From O'Reilly v. Morse:
    "
    The provisions of the acts of Congress in relation to patents may be summed up in a few words.
    Whoever discovers that a certain <b>useful result</b> will be produced, in any art, machine, manufacture, or composition of matter, by the use of  <b>certain means </b>, is entitled to a patent for it; provided he specifies the means he uses in a manner so full and exact, that any one skilled in the science to which it appertains, can, by using the means he specifies, without any addition to, or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void. And if it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more. And it makes no difference, in this respect, whether the effect is produced by chemical agency or combination; or by the application of discoveries or principles in natural philosophy known or unknown before his invention; or by machinery acting altogether upon mechanical principles. In either case he must describe the manner and process as above mentioned, and the end it accomplishes. And any one may lawfully accomplish the same end without infringing the patent, if he uses means substantially different from those described.
    Indeed, if the eighth claim of the patentee can be maintained, there was no necessity for any specification, further than to say that he had discovered that, by using the motive power of electro-magnetism, he could print intelligible characters at any distance. We presume it will be admitted on all hands, that no patent could have issued on such a specification. Yet this claim can derive no aid from the specification filed. It is outside 120*120 of it, and the patentee claims beyond it. And if it stands, it must stand simply on the ground that the broad terms above-mentioned were a sufficient description, and entitled him to a patent in terms equally broad. In our judgment the act of Congress cannot be so construed."

  99. Fish,
     
    The Supreme Court said there was no problem under 112 with that claim as the claim does not need any description of how to make and use.
     
    Do you need a quote? 
     
    Curtis was also of  the same view.
     
     

  100. I’ll remind you that your beloved Diehr decision was written on paper. I’ll let you guess which kind of paper. Diehr is the Bowers v. Hardwick of patent jurisprudence.

    Do you deny that it has been uniformly upheld in every major 101 patent decision since then? State Street Bank, Bilski, Prometheus, etc.

    You’re free to disagree with its rationale, but you cannot reasonably deny that this is the law under which we operate. And if you have any evidence whatsoever that it’s going to change any time soon, I’d like to see it.

    I’m pretty sure Breyer already knows which kind.

    FYI, Breyer’s concurrence positively cited Diamond v. Diehr twice.

  101. Mr. Shooting up, tell us
     
    1. If MS has patented software on a server and you use that software, are you infringing a programmed machine claim?
    2. How close to the infringer's machine must the software be?
    3. What happens if one company owns the software and another uses it on a a machine he owns?
    4. If the software is located on a server, do you infringe when you sell the computer that uses the software?  What about the server that never uses the software?
     

     

  102. Except that there are thousands of ways to accomplish that in a wide variety of different contexts that don’t disclose a drop down menu on a display.

    Agreed. 99.999% of them are obvious to a ten year old, and the ones that aren’t obvious are sucky solutions that nobody wants.

    Just like in meatspace. There are thousands of different ways to present a menu to a customer who enters the restaurant. Virtually none of them warrant patent protection since, oh, the Last Supper or thereabouts.

  103. You now have a claim to a robot-readable piece of paper that causes the robot to cook food. And that’s a claim that the USPTO, CAFC, and SCOTUS would all allow, today, under the current state of the art.

    Do you want to bet on that David? I’ll put $5,000 down without blinking that you’re wrong.

    Also, I’ll remind you that your beloved Diehr decision was written on paper. I’ll let you guess which kind of paper. I’m pretty sure Breyer already knows which kind. Diehr is the Bowers v. Hardwick of patent jurisprudence.

  104. “Get off my lawn, 6.”

    The trolls are bickering over who is the biggest troll.

    “Late 2007/early 2008 I take to the interwebs.”
    … and in that time, I’ve had several hundred patents issued in the computer arts and made millions of dollars.

    Life is rough ….

  105. Bab-oon writes:

    “Because nobody ever imagined that it would be useful to keep information hidden until a user of the information desired to access it.

    Except that there are thousands of ways to accomplish that in a wide variety of different contexts that don’t disclose a drop down menu on a display.

    Don’t you have lice to pick off of 6 or Ned?

  106. “I’m not looking to ‘win points’.”

    No … you just want to play lawyer. Unfortunately, too many lawyers hear either like to feed trolls or (if they are smart) use you as a tool to make their arguments as you are the perfect patsy.

  107. “Unsubstantiated dismissal punctuated with childish and unprofessional insults”

    You’ve touched upon the core of 6’s analysis. Don’t expect anything more and you won’t be surprised.

  108. Not getting my Model materials back is going to be your problem. I delivered them,and waited over 3 months, now 4 months, SOOOOOOOOOOOOOOOOOOOOOOOOOOOOOOOOO, why aren’t They delivered back to me yet? The building is the easy part. One on top of the other seeeeeeeeeeeeeeeeeeee?

  109. I stand corrected NWPA. Software is an ingenius way of doing what hardware could in it’s place. so when you think about it, Software itself is ingenius. Instead of having to make the Machine, you have compensated for it. Which by any Patent standard is IMPROVEMENT.

  110. See, this is wrong, Ned. First, the biggest problem you have is that are drinking the cool of the SCOTUS and Fed. Cir. Throw out all the legal opinions and focus on reality. Focus on science and engineering. Start there and see where you end up.

    The end result? So, reality is what a judge says it is? That is why this hasn’t been settled and why it has take almost 50 years of loopy arguments. I am afraid Ned, Stevens, Douglas, Stern, that you are wrong. Some of you hae spent a life at being wrong. We will loop forever, until we throw out Benson and focus on the inventions and what they are.

    One aspect of this that is huge is that the type of computations are different if a monkey is performing them compared with a computer. The nature and way in which the computations are performed changed. That invalidates your argument.

  111. Here we go again. You have used this word abstract. What does it mean?

    E=MCC is abstract? Really? How? I know how to apply it. I know what it means.

    Actually, all of these posts has finally made me realize how to distinguish between the e= equation and Benson. The e= equation goes to characterizing a physical law that we humans believe. That is not the case in Benson.

    Adjusting a price at an exchange is abstract? Physics says it is not. Reality says it is not.

    You have merely picked a word and attached a meaning to the word to provide a circular argument.

  112. Ned: that is an invention. What does abstract mean in your sentence above?

    You would like to have this word “abstract” mean that something isn’t patentable and then you use the word circularly. There is no meaning with integrity to the word abstract as used by the SCOTUS. It is being used as a word that says we believe that this broader than someone should get and we don’t understand the technology and so we are just going to say it is abstract. We are hijacking a old world and attaching a new meaning to it.

  113. Miles: the point is that software is hardware is software. That the general purpose computer and software is just one way of realizign the invention. It coudl be all hardware. The software is then a component of a machine.

    The reason we that have engineering training are so frustrated is that many judges and people like you continue to force the new into the old.

    Respect the technology. Figure out what it is and stop trying to force an understanding based on pre-1920’s understanding and technology.

    You are like J. Stevens who says make me understand in terms of how I view the world. The answer is that you view the world wrong. Think about the pople and Galileo. You are the pope.

    Why some of the engineers get so angry is that you are so arrogant not to take the time to understand the technology.

  114. Here is Morse’s claim — just reject it under 112

    Eighth. I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims; the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed for marking or printing intelligible characters, signs, or letters, at any distances, being a new application of that power of which I claim to be the first inventor or discoverer.

  115. Hmmmm…..I don’t see anything meta physical about a process, especially one that has been applied and integrated. On the hand the essentially metaphysical question of the pre-emption of abstract ideas has no place in the objective analysis of patent law.

  116. “Patentability under 112, 102, 103 and yes 101 should be decided on the invention as claimed, not on some so-called underlying inventive concept..”

    This can’t be emphasized enough!

  117. “Unsubstantiated dismissal punctuated with childish and unprofessional insults aren’t winning you any points.”

    I’m not looking to “win points”. I’m looking to help you understand yourself better so that you will eventually arrive at “right-thinking” on your own. I may have worded it a bit strongly, but it pains me to see a professional lower himself as low as you do in taking on these quasi-religious “beliefs” that you espouse when patents are a rather for srs matter.

  118. That’s funny, I just got through “not allowing” something very similar to such a piece of paper not a few weeks ago.

  119. “Can you show me the portion of 101 that specifies “a process involving something physical?” ”

    It does not have to be explicit that you cannot patent meta-physical things. :(

  120. your post talking about software systems that improve the operations of machines. Such are patentable as particular machines.

    That’s not the proper legal definition of ‘particular machine.’ See Alappat.

    You also err with a false distinction of “with” as opposed to “in.” Your “with” is an attempt to ‘use’ software without a machine change as that is not what is understood in the art by the phrase “configured to.” All machines with software “configured to” have been changed from general purpose machines to particular machines. This is understood to be both a factual and legal understanding and is not up for debate.

  121. … as long as method X itself has claims that properly pass the patent eligibility tests (of course, said tests conducted on a claim as opposed to category basis).

  122. Unsubstantiated dismissal punctuated with childish and unprofessional insults aren’t winning you any points.

    Classic MM, otherwise known as “swagger” “Enjoy it.

  123. David, Goetz almost gets it right, in my view. The ivention is in the new result achieved. But he then fails when he asks the question: “Is an invention that is patentable in hardware, equally patentable if implemented in software?” This makes the assumption that an a programmed computer is patentable as such, and ignores what the programmed computer is doing.

    He doesn’t assert that point in his post, but it’s easy to reach that conclusion from the direction of his argument.

    However, notice the title: “No” to Software Patents Per Se. While he should have stated it outright, I interpret his comments as: “Patents should not be allowed for “software configured to (x),” but should be categorically allowable for “a method of (x), irrespective of the implementation of that method.”

  124. Unsubstantiated dismissal punctuated with childish and unprofessional insults aren’t winning you any points.

    6, I think that you do have some interesting viewpoints and a valuable perspective, so I really don’t want to see you put yourself on my and others’ Malcolm Mooney list of people not worth engaging. But you’re heading there with posts like this one.

  125. Generally speaking, a process for making food is going to patent eligible. A piece of robot-readable paper comprising a recipe identical to that process is not going to be patent eligible.

    (1) Take the method of Diamond v. Diehr.

    (2) Change the method so that instead of cooking rubber, the method cooks a food product.

    (3) Implement the method as software.

    (4) Encode that software onto a computer-readable storage medium made out of paper.

    You now have a claim to a robot-readable piece of paper that causes the robot to cook food. And that’s a claim that the USPTO, CAFC, and SCOTUS would all allow, today, under the current state of the art.

  126. “I think he’s pointing to the issue with the “problematic” software/business method patents being that they are merely automating a known, manual process..”

    Well if that is the problem then nothing that is automated will pass 101, since everything that is automated is automating a known, manual process. Of course such “backwards” thinking would go well with the anti patent crowds crusade against business methods, software, and patents in general.

  127. Well, since signals and mental processes are patentable and the invention has to have a substantial utility, it’s not a stretch at all to require something physical in an invention.

    It is a “stretch” – and by that, I mean a violation of the law – to read the word “physical” into 101 as a qualification of the term “method.” It’s not there for a reason. Courts cannot arbitrarily read significant language into a statute.

    We were talking about compositions, i.e., “instructions” for computers, where the instructions are printed in on object. Or were you talking about instructions carried by signals? That’s even easier to deal with.

    You suggested that compositions are patentable if they recited a (novel + useful) specific composition of atoms – the definition of a composition.

    My reply was that methods are patentable if they recited a (novel + useful) specific sequence of steps – the definition of a method.

    I don’t believe that “a set of instructions” is patentable. I believe that a method is patentable due to the plain language of 35 USC 101. Whether that method is implemented as instructions executing on a processor, the operation of a hardware circuit, the assembly of cogs in a mechanical device, etc., is irrelevant – that’s just PHOSITA’s selection of an implementation of the method.

  128. What is it’s “true character”? Other than written language typed on a computer screen or printed on a CD of course.

    The ability to execute, once integrated.

  129. Mr. Heller:

    I I could describe any number of different physical acts of exchanging dollars for a promise, as could you.

    But may I ask, what would be the point?

  130. Fish,  the way the SC described it in Morse.  Something that is simply a principle.  One does not need a specification because there is no need to descibe how to build or make anything.

  131. 6, Pre-emption has been appropriately fenced in by Integration, just as Benson was cabined by Diehr.

    Prometheus said: “”The Court pointed out that the basic mathematical equation, like a law of nature, was not patentable. But it found the overall process patent eligible because of the way the additional steps of the process “integrated” the equation into the process as a whole. Those steps included “installing rubber in a press, closing the mold, constantly determining the temperature of the mold, constantly re- calculating the appropriate cure time through the use of the formula and a digital computer, and automatically opening the press at the proper time.” Id., at 187. It nowhere suggested that all these steps, or at least the combination of those steps, ( Combination of Steps being Integration.) were in context obvious, al­ ready in use, or purely conventional.

    And so the patentees did not “seek to pre-empt the use of [the] equation,” but sought “only to foreclose from others the use of that equa­ tion in conjunction
    ( Conjuction being Integration ) with all of the other steps in their claimed process.” Ibid. Emphasis Added

    For further instruction on “Integration Analysis” and the limiting effects on Pre-emption see link to uspto.gov

  132. Your “exchanges dollars for a promiss,” ….

    can’t be performed entirely in one’s mind.

  133. David, your post talking about software systems that improve the operations of machines. Such are patentable as particular machines. There is or should be no issue here of eligibity.

    The problem come in when one tries to claim an abstract method using software. I would hope you would agree that an abstract method, e.g., E=MC^2, does not become eligible simply because I call for its caluclation on a GP digital computer?

  134. David, Goetz almost gets it right, in my view. The ivention is in the new result achieved. But he then fails when he asks the question: “Is an invention that is patentable in hardware, equally patentable if implemented in software?”

    This makes the assumption that an a programmed computer is patentable as such, and ignores what the programmed computer is doing. Thus if the programmed computer is doing something abstract, as in Benson, it still remains unpatentable.

    Thus, it is entirely irrelevant that a programmed computer is an embodiment. The invention is the new functionality of the programmed computer in some application.

    (Note, I am talking here about software and not about firmware or other permanently resident programming that can make the machine particular.)

  135. Miles: “I’m afraid the debate can’t be simply reduced to this skewed question: “Is an invention that is patentable in hardware, equally patentable if implemented in software?”

    Agreed. The problem is the word “in.” It should be “with.” The question makes an assumption that includes a fallacy.

  136. David, simple, if you start with something clearly eligible, data compression, then it makes no difference what form the engine that does the compression.

    To the contrary, if you start with something clearly ineligible, manipulation of risk, it makes no difference if the critical computations are performed by trained monkeys or by a programmed computer.

    The issue is exactly what Goetz said it was: what is the end, the result? If that is eligible, then the programmed computer to implement that end is patentable in that context.

    The context is everything.

  137. Hello anon:

    I thought you made a very good and insightful post. Not sure why the vocal minority, ( especially MM and Ned )did not have the courage to reply. I tried to respond honestly and to the best of my knowledge, at the time. Here is my reply post again:

    “Please be aware that not every software claim, will be automatically included as statutory subject matter under “Integration Analysis”. Neither the Court, the Office, nor myself have said such. Prometheus made it very clear that you can’t simply state a concept then in effect say apply it, by reducing it to steps. Such would be overly inclusive. The Court in Prometheus said there needs to be something more. And that something more is “integration”. The new Office Guidelines have taken us a long way in understanding the practical steps for performing Integration Analysis, while taking into account the analysis from previous cases, such as M o T and pre-emption. Those that resist reading and applying the Office Guidelines on Integration Analysis, presumably because of the “overally inclusive” fears you expressed above, do a disservice to the themselves and/or their clients.

    However, Anon. what’s equally important to understand is that “Integration Analysis” IS inclusive; which is in accord with 101’s broad patent-eligibility principles. Nothing in our Constitution, Congressional record, or Court case law has changed this and for good reason. If the laws were narrowed with the tools of overly restrictive tests like M o T or various dissection methodologies like unlimited pre-emption, or selective surgical mental steps test, the door could be slammed shut on the on rush of new technologies, ideas, and ways of doing business that our world and global economy are dependent on for existence and prosperity. Like the Court said in Bilski:

    ” a rule that broadly-phrased claims cannot constitute patentable processes could call into question our approval of Alexander Graham Bell’s famous fifth claim on “‘[t]he method of, and apparatus for, transmitting vocal or other sounds telegraphically, as herein described, by causing electrical undulations, similar in form to the vibrations of the air accompanying the said vocal or other sounds, substantially as set forth,’” The Telephone Cases, 126 U.S. 1, 531 (1888).”

    Bell’s claims as well as Morse’s claims 1-7, would pass concept, application, and integration, while the infamous claim 8 would fail. Diehrs claims 1-11 all pass concept, application and integration but claim 11 fails M o T, as well as an unlimited Benson based pre-emption analysis. ( See Stevens Dissent in Diehr arguing claim 11 fails Benson). While Prometheus claims passed M o T but failed concept, application and integration.

    What we learn from the above is that no ones pet category or subject matter is eliminated or unduly favored under Integration, while at the same time the broad door for 101 statutory subject matter is left open. Indeed, “Integration Analysis” is truly the key to a objective approach for establishing what is 101 statutory subject matter, and as the Prometheus Court said, “determining a process is an inventive application of a concept.”

    That 101 Statutory Subject matter turns on “Integration” after concept and application is a broad stroke of genius and much needed guidance provided to us by the Court. Let us all hope that the Patent Community opens it’s eyes so that we can all benefit from the new light.

  138. E=MC^2 is abstract.
     
    Communicating at a distance using EM is abstract.
     
    Exchanging contracts to balance risk is abstract.
     
    Adjusting price in exchange for a promise is abstract.
     
    1+1=2 is abstract.
     
    The statutes require one to describe how to make the claimed invention.  How do you make 1 + 1 = 2?
     

     

  139. We have seen two guests post follow ups to Dennis’s post on software patent eligibility.

    One, hopelessly misguided (Prof. Sheppard), the other much closer (Mr. Goetz – who is obviously a bit more knowledgeable about the subject matter than the first guest poster).

    However, my post from Dennis’ original thread still hits the mark. I repeat it here for the benefit of all.

    And a note on intellectual honesty: only 101 Integration Expert had the balls enough to comment back on my post. Very telling!

    Without further ado…:

    The real answer to the question of whether software is patent eligible is yes.

    Software is patent eligible as a general category because software is a component to a machine, made by man to have a specific and credible utility. That is what software is.

    But like ANY 101 question, the answer at the category level is NOT ENOUGH.

    It NEVER is.

    What this boils down to is that the question is not being properly asked.

    One cannot ask a 101 question at the category level and expect a 101 answer that applies to all individual claims.

    This is because the judicial exceptions must be looked at at the individual claim level.

    It is a mistake often repeated (even by those who should know better – ahem, Dennis) to conflate the category question and the individual claim question.

    While creating multi-hundred post threads is nice, engendering continued conflation and confusion should be avoided.

    The real question is: Is any individual software claim patent eligible?

    The answer is (the great and typical legal answer): it depends.

    At a base level, the rebuttable presumption is that a software claim is patent eligible. But the presumption must be checked at the individual claim level. Just like any process or method (be it a business method or a medical method – let’s leave the crusades at the door, Ned) or just like any composition of matter (be it different in kind from a Product of Nature or not, let’s not try to separate one backyard from another, Malcolm), the manufacture of a software claim must be individually screened against the judicial exceptions, and not every software claim will pass (let’s not be overally inclusive, 101 Integration Expert.)

    If you ask the wrong questions, you cannot get the right answers.

  140. suckie Your entire “recipe” argument was shown to be a fallacy not once or twice, but repeatedly over the course of two years when you trotted it out every few months by Noise Above Law.

    Gotta love the revisionist history, suckie. You can resurrect your suckpuppets, you know. Nobody except you clings to this imaginary fantasy of yours regarding any “fallacy.” Why not just spout some blather about “integration” and take a dump in the punchbowl like you usually do?

  141. 6,

    I think you will agree (everyone except the overly self indulgent has) that the judicial exceptions apply no matter which enumerated category a claim is written to. Further, I am sure that you are aware that the Supreme court has explicitly stated that 101 is not to be used as a denier of patent eligibility to entire categories of invention.

    With this understanding, even given your far too broad exemption doctrine (which was specifically warned Against in Prometheus), even you must understand that trying to categorically deny patent eligibility based on category or type (rather than employing the exceptions at the individual claim level) runs afoul of what the Courts have directed.

  142. MM,

    You ask others to grow up yet insist on plying tricks long discredited. Your entire “recipe” argument was shown to be a fallacy not once or twice, but repeatedly over the course of two years when you trotted it out every few months by Noise Above Law.

    You turned to blind ignorance (the famous Sam Hill comments) as you were shown the proper legal understanding of the ability to claim “writing” in patent applications due to the proven functionally related exception.

    Time for you to grow up and stop wasting everyone’s time on stale and disproven arguments.

  143. DStein

    Modern technology is inherently and increasingly interdisciplinary. Scientists and technologists are constantly taking ideas from one field of endeavor, and using them in different contexts. There is no rationale for confining an invention to a specific context – or of defining the breadth of that context.

    Equally true of science at any point in history.

    older practitioners (including the patent meddlers on the Supreme Court) endlessly categorize inventions as “the electrical arts,” “the software arts,” “the chemical arts,” etc., while younger practitioners consider these categories quaint anachronisms.

    I’m pretty sure the Patent Everything trolls who hang out here are older than the rest of us.

  144. DavidStein Method of making food are patentable.

    I never asserted otherwise. You need to step up your game, David. Reading comprehension.

    Generally speaking, a process for making food is going to patent eligible. A piece of robot-readable paper comprising a recipe identical to that process is not going to be patent eligible.

    Do you understand, David? Do you disagree that this is (at least) the current state of the law? Do you believe that the law should be changed to allow the patenting of pieces of robot-readable paper with instructions for making new hamburgers? If so, simply recognize that you are in the very very tiny minority of Patent True Believers. There is no reason to take such people seriously.

    Likewise, there is no reason to take people seriously who can’t have a conversation on this subject and not readily comprehend the issues being discussed.

    So grow up, David. You and Marty both.

  145. Can you show me the portion of 101 that specifies “a process involving something physical?

    Well, since signals and mental processes are patentable and the invention has to have a substantial utility, it’s not a stretch at all to require something physical in an invention.

    by the same token, a method is eligible if it provides a set of steps that, performed together, achieve a useful result that is objectively distinct from prior art.

    We were talking about compositions, i.e., “instructions” for computers, where the instructions are printed in on object. Or were you talking about instructions carried by signals? That’s even easier to deal with.

    If you want to change the subject, go ahead. I understand that tactic is very useful in this context. Our trolls do it all the time.

  146. What is it’s “true character”? Other than written language typed on a computer screen or printed on a CD of course.

    Pretend for a brief moment that 6 is correct and that the full extent of any character involved does not get by the exceptions to the printed matter doctrine (some, no wait, ANY functional relationship). How then do we explain the FACT that software does work to effect a change in a machine? That the FACT that a new machine is created from a general purpose machine when that software configures the base machine and enables that base machine to do something that it could not do if the software did not configure the machine?

    Someone once made a challenge on this blog to explain this simple fact pattern, and no one ever has. I invite those that once again ignore this simple fact to explain how this change can take place in the absence of some functional relationship.

    As someone also said, what you don’t say speaks volumes and when you don’t say it yells so loudly I cannot hear anything else you say. Explain (or not), what you say (or don’t), you have the floor.

  147. “When confronted with the question of whether “software was just math,””

    When, precisely, did that come up in Diehr? Iirc, they were quite explicit that there was more to the claims than math, indeed, there were temperature measurements and auto-opening explicitly recited.

  148. “according to the”

    law.

    “That is the type of specific principle that I’m asking you about.”

    I know you want the preemption doctrine to be all about some certain “specific principle” other than the only principle it is about. It is about only one principle bro, ensuring that you do not, either straight up, or by hook or crook, patent on judicially excepted subject matter. I know that you feel like it is hard to determine what is judicially exempt subject matter, but that is on you bro. Some of us are not afflicted with this problem. And perhaps someday, you’ll get your mind right. Perhaps you are asking for assistance in getting your mind right, but I’m afraid that I cannot offer further assistance. If you require in depth personal, and perhaps in person, tutoring then I’m afraid I’ll have to charge.

  149. Excuse me for the question: I understand the objection to software patents being unpatentable subject matter as they are some form of natural algorithm. However, I wonder if anyone, during their trips in the forest, saw the famous spreadsheet tree?

    In short – software is like any other invention. Not means nor hardware bound. Software inventions ARE INVENTIONS, nothing short of that! They serve exactly what the purpose of patents should have been before it has been stolen by the US congress, including the newest attempt: To PROMOTE the useful arts.

    Shalom

  150. Thanks David for clearing that up for us!

    Your definition of abstract is better than the judicially created one which means we will just pick whatever we want and exclude large swaths of patentable subject against the congress’s intent.

    Abstract boys and girls has a clear meaning in engineering! Read my post above. We are taught to find the right level of abstractness and work there. You need only know how to walk up and down the abstraction ladder.

    You see my little paid monkey posters, the problem you are having in excluding information processing algorithms is that you are mischaracterizing reality. That never ends well. (Ned you are a dope. and a dishonest monkey.)

  151. Ned, what does abstract mean? You openly admit that this is a legal term that has some strange definition approxiately meaning “too broad.”

    Abstract in engineering is encouraged. As long as one can walk up and down the abstract ladder. That is the goal in engineering. An abstract representation of solving a problem means that you can walk up and down the abstraction layer and solve all the problems under it.
    That is a good thing that should be elible for patentaility.

    You are an intellectually dishonest person that plays off the ignorance of the public and judges. What I said above is what I as taught at the top engineeringn schools in this country.

  152. While you’re all here crying about Software, I am inventing something that will be worth so much to the USA it may become a “Secret”. And will be worth wayyyyyyyyyyyyyyyy more than a Billllllllllllllllionnnnnnnnnnnnnnn Dollars. It will be the answer to many woes.

  153. “Where along that spectrum would you draw a dividing line between eligible and ineligible subject matter? ”

    Hello David:

    I would say Prometheus “Integration Analysis” takes us a long way to answering all your questions. The best way to demonstrate this is to use Ultramercial’s claims as an example of how to apply the analysis, since those claims are software and computer related. And the Court remanded the case back to the CAFC in view of Prometheus, integration.

    In Ultramercial the court and the inventors have agreed the concept is:“Using advertising as currency” Claiming a concept without applying it is considered an abstract idea. Abstract ideas, like a law of nature, or physical phenomena, are not patentable subject matter. Flook like Bilski only claimed math equations and thus claimed abstract ideas. The steps of the process did not “integrate” the concept into the process as a whole.

    So the question before the CAFC is as follows:
    Is Ultramercial’s claims an abstract idea in view of Prometheus?

    The answer is clearly no.

    The claims in Ultramercial are an inventive application of the concept. We know this is correct because of the way the steps of the process “integrate” the concept into the process as a whole. See Prometheus citing Diehr and Flook:
    “ Diehr and Flook, the cases most directly on point, both ad- dressed processes using mathematical formulas that, like laws of na- ture, are not themselves patentable. In Diehr, the overall process was patent eligible because of the way the additional steps of the pro- cess integrated the equation into the process as a whole. 187. These additional steps transformed the process into an inventive application of the formula.” (Syllabus Prometheus V Mayo 566 U. S. ____ (2012) )

    If Ultramercial’s claims were a mere application of a concept without integration they could read as follows:

    a method for using advertising as currency.

    
1. offering a service


    2. accepting advertising as payment

    And if the specification to the above claims offered no further definition of the terms then the CAFC could rightfully rule Ultramercial’s claims to be an abstract idea based on the “integration analysis” used in Prometheus and referenced to Diehr. The claims would in effect be no more than simply stating the concept and saying apply it. See Prometheus as Authority (Still, as the Court has also made clear, to transform an un-patentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words “apply it.” See, e.g., Benson, supra, at 71–72.) (( Opinion of the Court 3, Prometheus V Mayo 566 U. S. ____ (2012) )

    Ultramercial’s claims integrate the concept with 11 steps that when viewed as a whole and as an ordered combination offer more than the parts do separately.

    See Prometheus explaining why the claims as a whole are not fully integrated:
    “Finally, considering the three steps as an ordered combination adds nothing to the laws of nature that is not already present when the steps are considered separately.” ( Opinion of the Court 11, Prometheus V Mayo 566 U. S. ____ (2012) )

    Ultramercial’s steps can’t be completed in the mind and are not mental processes. The concept of the claim is still free to use in all fields and technological environments. Therefore the invention does not violate the pre-emption analysis from Benson. That the claims may be beneficial to conducting business on the internet is not a judicially created exception to statutory subject matter. Also that the claims do not provide detailed workings of conventional transformations, apparatus, and machines are also no barrier to statutory subject matter. Therefore the CAFC and The USSC should hold Ultramercials claims as statutory subject matter because the steps of the process “integrate” the concept into the process as a whole and thus transform the claims into an inventive application of the concept.

  154. The problem is that rich people do not like this answer so they keep searching for some means of distinguishing mathematical algorithms from non mathematical algorithms.

    Diamond v. Diehr: When confronted with the question of whether “software was just math,” the CCPA and Supreme Court ruled that a functional result achieved by configuring a computer to apply math was not “just math,” and therefore patentable.

    The proposition that “software is just math” has been squarely presented to the CAFC and Supreme Court in every major 35 USC 101 case since then, and they have consistently and uniformly rejected that blanket conclusion.

    The judges were not “confused” into answering this question in any particular way. They were asked directly to adopt your proposition, and they have squarely rejected it every time. No “rich people” or “word games” interfered with their decisions.

  155. I would go for that only if the patent on the code superceded the copyright on the code, so that it would come fully and completely into the public domain on expiration of the patent. The law would have to be written in such a way that Congress cannot continually increase the term so as to achieve an eternal patent.

  156. The facts are that software is mathematics and under section 101 it cannot be patented. The problem is that rich people do not like this answer so they keep searching for some means of distinguishing mathematical algorithms from non mathematical algorithms. Since there is no such thing as non-mathematical algorithms, these attempts always lead to self contradiction.

    Until the rich people stop playing word games and trying to confuse judges into ruling that black is white and white is black there can be no progress.

  157. “They are not the invention. ”

    That’s your tard-view. Us people in real life know better. As posted up thread by someone, there is a difference between what is being described and in how it is being described. Although this is wholly lost upon you because you are a patent lawl ta rd. And you always will be. It is a problem with your world-view. And until it is cured, you will forever wonder why those cr azy courts are picking on your software patentlols.

    “The invention is a particular solution to a particular problem.”

    Argue that in a case before me and your patent falls even faster to 101 brosensky. I recommend against such nonsense. Stick to the party line and maybe the CAFC will succeed in bailing you out for another decade.

    “His point is that the invention can be implemented many ways – software, electrical hardware, a hybrid, mechanical parts, whatever”

    And his point is quite irrelevant to the law. Some of those implementations might be patent eligible and others may not be, all depending on how he, subjectively, chooses to claim them.

    “The invention is the functional concept taught by the specification. ”

    Write that “functional concept” down for me in a given app and I’ll throw it back in your face via a 101 so fast it’ll make your head spin. Just as all examiners should be currently. Trust me, stick to the party line, deviate just a little and you lose big time.

    “The author’s point is that discussions of embodiments are part of the “best mode,” not part of “the invention.””

    Perhaps you are right, he is a tar d after all. :( Or perhaps he really didn’t have a point, he simply wanted to blather like he always does about how he’s just “misunderstood” and that’s why all the kids are picking on him and his software.

  158. New compositions of matter are eligible provided they are claimed structurally, such that they are objectively distinct from the prior art based on their physical (not functional) attributes.

    And by the same token, a method is eligible if it provides a set of steps that, performed together, achieve a useful result that is objectively distinct from prior art.

    For example: “A method of processing data to achieve [ desirable result], the method comprising: manipulating the data in [specific way].”

    Or even better: “the method comprising: executing instructions on a processor that cause the processor to manipulate the data in [specific way].”

    Oh, you don’t agree? It has to be “physical?” Can you show me the portion of 101 that specifies “a process involving something physical?” Or does it just say, “a process?”

  159. Nothing, your claim language will do it. Or else your FPGA will stand or fall with your firmware.

    …according to the subjective, artificial, and unsubstantiated criteria that you have drawn up in your head.

    The theory of gravity is a specific principle. If you drop a ball of a certain mass from a certain height on the planet Earth, barring other conditions like wind, I say that it will fall with a certain acceleration. This is just what I think *should* happen. We cannot reasonably disagree here. The theory specifies exactly what will happen, every time, unless other conditions intervene.

    The requirement of 37 CFR 1.72 that the abstract must not exceed 150 words is not reasonably open to debate.

    The definition of a “composition of matter” in 35 USC 101 is pretty well-settled. I don’t recall any recent debate about whether something does or does not qualify as a “composition of matter.”

    That is the type of specific principle that I’m asking you about. The words “abstract” and “preemption” do not state anything about the difference between a programmed firmware chip and an FPGA.

  160. It’s pretty easy. New compositions of matter are eligible provided they are claimed structurally, such that they are objectively distinct from the prior art based on their physical (not functional) attributes.

    You forgot one key word: effectively.

    If not effectively different, the slight structural differences may not be enough.

  161. 6 Not to mention my preaching on exactly the correct meaning of the infamous paragraph from Diehr supposedly about dissection.

    Get off my lawn, 6.

  162. “I have two questions:”

    So when I answer these two questions will you be good to go and not have to ask anyone about this ever again?

    But before we commence, let me remind you that where I’m really drawing the line is in the way you draft these types of claims.

    “Do you understand how FPGAs and firmware operate, and the degree of overlap between these technologies?”

    Yes, and “there is 0 overlap between these technologies save for their FUNCTIONS”.

    “Do you understand that you can configure an FPGA as a general-purpose processor and an instruction store feeding instructions into it – that such a solution, although a 100% FPGA-based solution, operates identically to traditional firmware?”

    Yes, depending on your definition of “operates”. I will presume you mean simply “functions”. Obviously an FPGA and firmware on a gp comp system “operate” differently though they may well both achieve the same “function”.

    “What is the specific principle of mathematics or the specific section of 35 USC 101 that differentiates firmware from an FPGA?”

    Nothing, your claim language will do it. Or else your FPGA will stand or fall with your firmware. If you so choose to draft your FPGA claim in such a way as to preempt all use of your algorithm on all FPGA configs that just so happen to function in x manner, rather than just one (or perhaps a small few species) physical FPGA config that is specifically set forth in your spec, it will go right on down with the firmware claim. Presuming you draft your firmware claim in standard format.

    “Do you have anything more than the single word “abstract,” and your subjective view of what that means?”

    Yes, in a given app I will have the claim language, and a construction thereof, along with an analysis of what is covered by such, and a comparison to the judicially exempt subject matter I believe to be an issue.

    You good to go Davie?

  163. Yeah, it was “an idea which is abstract”. :)

    Or better still, anything that “isn’t concrete.” :)

    But wait! We have a clear definition in 37 CFR 1.72: “Abstract” is defined as “A brief summary of the technical disclosure in the specification, commencing on a separate sheet, preferably following the claims, under the heading ‘Abstract’ or ‘Abstract of the Disclosure,’ not exceeding 150 characters in length.”

    It follows that everything in the patent application outside of the “abstract” is not “abstract.” How silly of us to have missed this! Case closed.

  164. Because software patent claims aren’t tied to a particular implementation they have an uncanny ability to morph and cover systems and computers that were not in the possession of the inventor at the time.

    Modern technology is inherently and increasingly interdisciplinary. Scientists and technologists are constantly taking ideas from one field of endeavor, and using them in different contexts. There is no rationale for confining an invention to a specific context – or of defining the breadth of that context.

    Perhaps this is the greatest conceptual divide in patent law: viewing technology either as a set of discrete, well-defined specialties, or as a continuum of knowledge. This seems correlated with age: older practitioners (including the patent meddlers on the Supreme Court) endlessly categorize inventions as “the electrical arts,” “the software arts,” “the chemical arts,” etc., while younger practitioners consider these categories quaint anachronisms.

  165. “Can you identify a principle of law that specifies where the line must be drawn?”

    Yes. Preemption.

    I didn’t realize just how simple of an answer you were looking for. My bad.

    “our “principle” is your gut instinct, backed with a vague reference to math and a vague reference to 101. ”

    No, it is not. It is my claim construction backed by an analysis of what is encompassed thereby which is then compared to all abstract ideas and other judicially exempt subject matter in the universe.

  166. DavidStein:

    Where along that spectrum would you draw a dividing line between eligible and ineligible subject matter?

    It’s pretty easy. New compositions of matter are eligible provided they are claimed structurally, such that they are objectively distinct from the prior art based on their physical (not functional) attributes. If they are not properly claimed, they are either ineligible as abstractions or indefinite. Take your pick.

    Does any of this sound famililar? It should. And the eventual outcome is going to be even more familiar.

  167. “I’m not suggesting the hammer was the pinnacle of innovation.”

    Mr. Miles,

    With all due respect you ARE suggesting, rather strongly, that a hammer is more deserving of being called an invention than a line of code.

    I would simply like to know, in your opinion, why the hammer is more deserving than the line of code?

    Now if you are equating, painting, drawing, and perhaps beating sticks together to make a rhythm, ( cave man music), with designing a functioning line of code, then you are making the mistake of confusing liberal arts, with useful arts.

    Liberal art such your caveman creations are an entirely subjective process from beginning to end. Liberal Arts are not eligible for patents.

    Designing a functioning line of code, A.K.A. Software, is an objective process that when executed produces a concrete guaranteed result every time.

    It does not matter what you think of the software. Whether you think it is complex or easy, brilliant or junk. Whether you see it as worth millions or worthless. When executed, software produces a concrete guaranteed result every time.

    Thus software is a useful art worthy of patent, as are business methods

  168. All embodiments encompassed within “the invention” are “the invention” just as much as any other embodiment or description thereof is.

    They are part of the specification, as an explanation of one possible application of the invention. They are not the invention. The invention is a particular solution to a particular problem.

    If that be his argument, which I can find no indication of in his post…

    How about this: “If the best mode is a computer program, then that disclosure would be described through diagrams, flow charts, and descriptive text. In many inventions, the best mode is a combination of hardware and software. (Or if the best mode is not hardware and/or software but cams, pistons, and flywheels or water or wind power, so be it.)”

    His point is that the invention can be implemented many ways – software, electrical hardware, a hybrid, mechanical parts, whatever. These are all just examples of the “best mode” – examples of embodiments of the invention.

    In addition to describing the invention (with enough specificity to satisfy the written description requirement), a patent disclosure has many other, different elements:

    • A title
    • Enabling subject matter (i.e., providing details to enable PHOSITA to use the invention)
    • Descriptions of the attached figures
    • A best mode of implementing the invention
    • A declaration by the inventors
    • Cross-references to related applications
    • An Information Disclosure Statement identifying related references
    • Assigment documents

    …etc.

    These are all part of the disclosure, but they are not part of “the invention.” The invention is the functional concept taught by the specification. The other parts support the disclosure of the invention and satisfy other requirements of the patent process.

    The author’s point is that discussions of embodiments are part of the “best mode,” not part of “the invention.”

  169. “has never learned to examine software patents properly”

    What part of examination of software patents is done improperly NWPA? Other than failing to invalidate pretty much all of them under 101?

    “what the software patent really are.”

    What are they really?

    “If the courts treated software as its true character”

    What is it’s “true character”? Other than written language typed on a computer screen or printed on a CD of course.

  170. Another big difference is that software is nothing but a collection of symbols being processed just like you read a recipe. Until you actively interact with external elements (such as knives, forks, bowels) all you are doing is scanning symbols.

    A hammer is a collection of atoms. Even if it has a novel invention – e.g., a particular claw shape that removes nails well – the hammer and claw just sit there, all on their own, until used for the specified purpose.

    A chemical invention is a recitation of a structure of atoms. The invention isn’t even the atoms themselves – it’s just the concept of arranging atoms in a way that provides some functionality in some chemical environment. You still need a human to make the chemical and to introduce it in the specified environment.

    A hardware design is just the concept of an arrangement of circuit components. The concept of the arrangement does nothing – it isn’t even physical. Even after it’s translated into a piece of hardware, the hardware itself also does nothing on its own – it sits there on the shelf, inert, unless a user positions it in a device, configures it, and arranges a supply of power.

    By the same token – even if software instructions are “just symbols,” a user can provide those software instructions to a processor that’s capable of executing them to achieve a functional result. It is “just symbols” in the same way that a hardware patent is “just a conceptual arrangement of parts,” that a chemical patent is “just a conceptual arrangement of atoms,” and that a hammer is “just the concept of a physical structure.” The action of implementing of these concepts in the physical world provides an embodiment, but the invention is the concept motivating that action.

    That’s why we call it intellectual property – it’s not about the actual hammer, drug, circuit, or software, but the concept embodied by it.

  171. “A line of code is not a hammer.

    A hammer is an article of manufacture. A line of code is a portion of a process. Of course they are different, but both are specified as statutory subject matter under 35 U.S.C. 101.”

    Agreed!

  172. I should also note bad, that I’ve personally done more meaningful patent work from my intertubes in less than 5 years than you will ever do, in your life. Late 2006/early 2007, I take to the intertubes to preach on 103. KSR decided not long thereafter. My view of the law is established as what the law is, compared to the old guard’s TSM views (which notably were applied by the lower court and were the standard view of pretty much all patent professionals at the time).

    Late 2007/early 2008 I take to the interwebs to preach on 112 2nd being misapplied and B claims. Miyazaki is handed down, and B claims begin their slow demise as understanding starts to permeate the system where before many lawl tards did not understand things well enough to argue them properly. I preach on official notice at the same time, the office adopts that as the official view later that year. Also around that time I preach on the claims and con rules, later only to be stymied by a weak willed director. I further preach, before the In re Bilski decision, that preemption is the only thing that the law requires as criteria for what is patent eligible and what is not. Later, that decision comes out and lo and behold, preemption rules the day. That point later made more explicit in Prom.

    Round abouts of 2009 I preach on the proper interpretation of 112 1st, in direct contradiction to what many tar d attorneys spout off on these boards, and irl cases. Ariad is handed down settling yet another dispute in my favor.

    That is but a small sampling. But it is no accident that I looked over Diehr’s claims and how the references were applied to them at the PTO prior to the USSC noting such and then the office using them as an example in their guidelines. Not to mention my preaching on exactly the correct meaning of the infamous paragraph from Diehr supposedly about dissection.

    I continue to this day preaching my new school patent religion to fight you old ta rds that have lost your way.

    Influential people lurk this board, and the fact that on nearly every issue that I meaningfully address the law is suddenly that way a little bit later should not be lost upon you.

    Be clear, I get substantial lulz from wrecking your old school nonsensical views of the law. And presenting how to do so clearly and succinctly for interested parties that might just so happen to be listening.

  173. Mr. Heller, commerce and industry is diverse and there is no one desirable model. As for as patent claims go you can pick and choose virtually any process that is useful for business. Certainly the most famous business method to reach the Supreme Court, has to no doubt be, Diehr’s process of curing synthetic rubber. As for as your notion that, ” BMs, being generally abstract”, that is quite impossible. If you disagree, show me one business process you can perform entirely in your mind?

    :: Silence::

  174. 6, my question was not: “Can you draw a line in the sand?” Sure – anyone can. Draw it between (I) and (J). Done.

    My question was: Can you identify a principle of law that specifies where the line must be drawn? Your “principle” is your gut instinct, backed with a vague reference to math and a vague reference to 101. You have failed to understand the question.

    Let’s look at the line that you chose: “firmware storing instructions” = bad; “FPGA configured to implement instructions” = good. I have two questions:

    1. Do you understand how FPGAs and firmware operate, and the degree of overlap between these technologies? Do you understand that you can configure an FPGA as a general-purpose processor and an instruction store feeding instructions into it – that such a solution, although a 100% FPGA-based solution, operates identically to traditional firmware?
    2. What is the specific principle of mathematics or the specific section of 35 USC 101 that differentiates firmware from an FPGA? Do you have anything more than the single word “abstract,” and your subjective view of what that means?
  175. 1. It stops being math when the hardware takes over.

    Yes, they have NEARLY the equivalent operation.

    A big difference is that when hardware is operated out of its range it has a strong tendency to melt.

    Another big difference is that software is nothing but a collection of symbols being processed just like you read a recipe. Until you actively interact with external elements (such as knives, forks, bowels) all you are doing is scanning symbols.

    When you add the physical interfaces, (hands, knives, forks, bowels..) you are still doing nothing with the recipe but scanning it… and then interpreting what it specifies.

    2. It is ineligible when the “invention” is composed of nothing but symbols. And that is all a program is. Abstract symbols that are read from a storage device.

  176. That’s why we say “computer executable instructions” instead of “computer readable instructions”.

    LOL.

  177. Would I be redundant in asking that same question? Or should I note that Mr. Morgan has engaged in such drive-by “an expert somewhere believes” attempted substantiations?

    What are the odds that a person will be identified so that the source can be vetted?

    What are the odds that even if a person is identified, the vetting will reveal a person exhibiting the same level of “scholarship” as the recent guest professor?

  178. If we were to require that the actual software “implementation” be disclosed in the patent, and then limited the claim just to that one “implementation” instead of granting all “implementations” as is accomplished through the issuing of functionally recited claims then people would probably have no problem with software being patented.

    I wouldn’t. Much shorter term than copyright. The only “deleterious effect” would be on the skimmers who profit off patent gambling.

  179. “a drop down menu on a display”

    Because nobody ever imagined that it would be useful to keep information hidden until a user of the information desired to access it. At least nobody ever imagined that until computers were invented. When was that? 1993 according to the Patentblogtroll Alternate Reality Calendar.

  180. DStein A line of code is a portion of a process.

    Exactly like a line in a robot-readable cookbook!!! Those lines should be patentable.

    Right, David?

    Oh, wait. There’s an important difference between an instruction for cooking read by a machine and an instruction for determining the value of a “real-time reflationary hedge fund sub-index.” Maybe David can tell us what important difference is.

    [grabs popcorn]

  181. Perhaps the bullet and gun example should be discussed again? (that seemed to shoot dead the components cannot be patent eligible discussion)

  182. What “structure” does Lemley want practitioners to disclose for software inventions?

    On occasion, I’ve filed cases claiming a specific software architecture – e.g., a first component configured to perform task A, a second component configured to perform task B, a third component configured to perform some type of management of the first two components…

    In some cases, the architecture matters; it can enable some advantages that other architectures can’t – e.g., scalability, efficiency, granularity, or a particular security policy.

    Consider the model of the web. You typically have a webserver answering requests by providing resources, and a device running a web browser and acting as a client to issue requests. That’s a specific, complex, and established architecture, with lots of conventions established around it: the general roles of server and client; server-side vs. client-side processing and APIs; server-side vs. client-side caching; routing; processing distribution; security considerations, like cross-domain security policy…

    Sometimes, the software architecture within a server or a client exhibits a disadvantage. It’s not just important to recognize and address the disadvantage, but where in the architecture you do it. For example:

    • Does a software component run inside the virtual machine of the web browser, or outside of it?
    • Does it communicate directly with hardware, or the operating system, with the virtual machine provided by the web browser, or within a further emulation layer (e.g., a Java VM running in the browser?)
    • On which layer of the OSI network model does it communicate?
    • Does it live within a domain isolation construct, or not? Can it talk directly to other processes within the browser, or does it send such requests through the browser?
    • Is it stored in the browser cache, or in the native file system, or does it only live in volatile memory?

    …etc. These are all questions of architecture, and often, they matter. And in rare cases, the architectural variation IS the invention – it provides a specific and important functional advantage.

    I don’t expect many people to understand much of this. I discovered an appreciation for software architecture – of the fragility and limitations that a software architecture may exhibit, and the types of solutions that cleverly that alleviate them – after studying and designing many APIs, and getting a feel for the craftsmanship involved in good software architectural design. But the subtlety of this scenario does not diminish its significance or importance.

  183. ” and cover systems and computers that were not in the possession of the inventor at the time”

    As if the “inventor” “possessed” anything at the time of “invention”.

  184. “While important to discuss in the disclosure, they are not “the invention.””

    Sure they are, all embodiments encompassed within “the invention” are “the invention” just as much as any other embodiment or description thereof is. This is why prior art getting only one small species of a huge generic claim gets the whole thing on anticipation.

    You attorneytards routinely confuse “the invention” with “how we lawlta rds worded what the invention is” aka the “claimed invention”.

    “because of how they might be embodied is illogical and futile.”

    If that be his argument, which I can find no indication of in his post, then upon what does he base this absurd allegation upon?

  185. Why make it so complicated there stein? But here:

    “A general description of the data processing algorithm
    A configuration of an artificial neural network that performs the algorithm
    Pseudocode instructions suggesting a specific process
    Source code in any given language
    A ready-to-run script
    An executable binary encoded as computer-readable machine instructions
    The script or binary transmitted in a “nontangible medium,” i.e., a signal
    The script or binary stored in volatile memory (e.g., RAM)
    The script or binary stored in general-purpose nonvolatile memory (i.e., the classic computer-readable medium)
    The script or binary stored in nonvolatile firmware”

    ^Claims to that will be abstract and/or preempting that which is abstract. There may be a way of drafting such so that it would not be abstract, but the patent would be worthless.

    “An FPGA encoding the algorithm
    A circuit diagram of a hardware circuit implementing the algorithm
    A photolithography mask usable to create a hardware circuit implementing the algorithm
    An actual hardware circuit implementing the algorithm”

    All good to go, depending on how claimed, but usually would be good to go. It is possible for you to overdraft on any of these and also preempt the “math”, you would probably accomplish this through overuse of functional language.

    “then where along this spectrum does it stop being “just math?”

    The question is not where it stops being “just math”, although the answer to that is probably just after the first listed species. The question is where you stopped preempting the math. And it is precisely where I just showed you, so long as you follow ordinary drafting practices. Because you will necessarily try to get the whole of your “math” or the whole of the “algorithm” limited only to whichever of the 2nd through 9th fields of use. This is through no fault of anything other than standard drafting practices so that you will end up with a claim worth something.

    “If all of these forms of the algorithm express the same functional logic, then why should it matter how that logic is carried out?”

    Because of the law. Although the law is the way it is to prevent you from broadly preempting on the math.

    “Where along that spectrum would you draw a dividing line between eligible and ineligible subject matter?”

    Already told you. And I presume standard drafting through the whole thing. If you deviate from standard drafting on any of them, then any of them could possibly become patent eligible or ineligible.

    “And what is the logical basis for drawing the line there – what section of 35 USC or 37 CFR, or what scientific or logical principle of physics or computing, supports drawing the line there?”

    35 USC 101. Preemption.

    “I usually don’t get an answer to either question.”

    Of course not, because you have to study the subject as if it is your life’s work to really understand it and be able to discuss it conversationally. Probably 1% of patent professionals have done this while 90% of them subjectively think they have when they in fact have not.

    Now that you have your answer, do the world a favor and stop asking that question of people who have no chance to understand w t f you’re talking about.

  186. The fascinating–but likely fallacious–aspect of Goetz’ post is the notion that *the patent itself* can be analogized to software, therefore software *is* invention.

    To which parts of Goetz’ post are you referring? The parts that I read (i.e., the entirety) argued that software, like hardware, was an element of the disclosure – specifically, the “best mode” of the disclosure. Software is one embodiment of the invention; hardware is another; and a hardware/software hybrid is a third. While important to discuss in the disclosure, they are not “the invention.”

    You also mentioned “a hammer.” “A hammer” may embody an invention, but is not an invention itself. Here’s an invention: “A specific structural concept for a claw having a certain structure that is advantageous for pulling nails.” That may be embodied in a hammer – or as a separate manufacturable part that’s attachable to a hammer – or as a design schematic for a manufacturable part… etc. The “invention” is the structural concept that, when embodied in some form, conveys a certain functionality.

    Goetz’s argument is that software is simply one type of embodiment of an invention; that other types are available and fungible; and that attempts to exclude certain inventions because of how they might be embodied is illogical and futile.

  187. A line of code is not a hammer.

    A hammer is an article of manufacture. A line of code is a portion of a process. Of course they are different, but both are specified as statutory subject matter under 35 U.S.C. 101.

  188. People with vested interests do not want to understand that hardware is equivalent to firmware (which is just software in a specified location) and is equivalent to software.

    That’s always the argument that I present: for most computer-related techniques, software and hardware are fungible. That principle goes back all the way to the concept of a Turing machine – the very foundation of computing. Yet, the same people who are up in arms about the patentability of software as “just math” have no problem with the patentability of hardware doing the exact same thing.

    To drive home this point, I raise the following spectrum. Take any algorithm of choice – compression, encryption, image processing, whatever – and then consider all of these embodiments of the same logic:

    • A general description of the data processing algorithm

    • A configuration of an artificial neural network that performs the algorithm
    • Pseudocode instructions suggesting a specific process
    • Source code in any given language
    • A ready-to-run script
    • An executable binary encoded as computer-readable machine instructions
    • The script or binary transmitted in a “nontangible medium,” i.e., a signal
    • The script or binary stored in volatile memory (e.g., RAM)
    • The script or binary stored in general-purpose nonvolatile memory (i.e., the classic computer-readable medium)
    • The script or binary stored in nonvolatile firmware
    • An FPGA encoding the algorithm
    • A circuit diagram of a hardware circuit implementing the algorithm
    • A photolithography mask usable to create a hardware circuit implementing the algorithm
    • An actual hardware circuit implementing the algorithm

    (and for fun, we can even extend this to more exotic types of computers, such as…)

    • A quantum computer configured to perform the algorithm

    • A DNA sequence as part of a DNA-based computer configured to perform the algorithm in vitro
    • A biological composition of matter (e.g., a slime mold computer) configured to perform the algorithm

    Given this spectrum, I ask two questions:

    1. If you posit that the stuff at the top is “abstract” or “just math,” then where along this spectrum does it stop being “just math?” If all of these forms of the algorithm express the same functional logic, then why should it matter how that logic is carried out?

    2. Where along that spectrum would you draw a dividing line between eligible and ineligible subject matter? And what is the logical basis for drawing the line there – what section of 35 USC or 37 CFR, or what scientific or logical principle of physics or computing, supports drawing the line there? Is there any logical basis beyond, “the stuff in this range is my industry and I don’t want patents there?”

    I usually don’t get an answer to either question.

  189. Also, has the Patent Office set forth a definition of “abstract idea” which examiners can use to reject claims?

  190. But now prosecution is not compact, because examiners too frequently just reject under 101, not wanting to also go to the time-consuming task of searching and rejecting under 102/103.

  191. Mr. BJ, I know what FPGAs and ASICs are.  They are quite patentable.  They can be programmed to do useful things.  So what?

    Regarding BMs, they generally are abstract.  If you disagree, provide one exemplary BM that is not.

  192. Night, all we are showing you is that your statements include subject matter clearly ineligible.  Simply calculating numbers without using them for anything is not useful.  It fails the fundamental of all utility tests: substantial utility.

  193. Fish, no.

    Take any application that does anything eligible.  Substitute a programmed computer for circuits, no problemo.  The other way works just as well.

    Take any application that is doing something ineligible, i.e., changing the bid price based upon a formula.  Automating that process with a computer does not transform the process into something eligible.  See, he condemnation of State Street Bank by both the Federal Circuit and the Supreme Court.

  194. Fish, start?  

    The problem is that we have compact prosecution.

    What I think will happen, though, is that the 101 problems will disappear as the applicant amends to overcome 102/103/112.

  195. “At least one IP Professor thinks a Beauregard claim violates long established case law against “written matter” claims.”

    And who is that, Paul?

  196. It’s just a ridiculous twist of form over substance.

    Yes, that’s why it didn’t work for Benson. Or Prometheus.

  197. Show me a hammer that can pound a nail in your wall without some machine (like a person) to operate the hammer. A hammer is just as useless as software without a machine to operate it.

  198. I just say the instructions are encoded on an ASIC in one embodiment. Yes, such an ASIC would require multiple chips as big as your desk, but that doesn’t mean that it can’t easily be done. There’s your structure.

    It’s just a ridiculous twist of form over substance.

    All “software inventions” are abstract ideas.
    All chem/bio “inventions” are natural phenomena.
    All “mechanical inventions” are laws of nature (and obvious to try).

    Did I miss any?

  199. “Taking a complicated known thing and painting it blue doesn’t get you past 103, nor should it.”

    Confusion functional and non-functional again?

  200. “Night, so long as you focus on irrelevancies you are never going to get [inducted into the Ned Flanders, Mad Max, 6, and babo-on club].”

    There … fixed it for you.

  201. “Lemley says that the specficiation of software conveys no structure.”

    Lemley got his degree in economics and political science. What do you expect? Granted, a claim involving software (e.g., the method steps performed by a software) can cover a wide variety of different structures. However, there is nothing wrong with a broad claim so long as it doesn’t impinge upon the prior art.

  202. “There is a difference between substituting a programmed computer for circuits in an application and patenting [a Ned concocted strawman]”.

    There, I fixed it for you.

  203. “when did business methods become unpatentable subject matter?”

    It happened a long time ago in the reality that exists between Ned’s ears. There are, however, many times when Ned confuses that reality with the reality that he shares with everybody else. It’s all about the context.

  204. And, dope, the problem is that the PTO has never learned to examine software patents properly. And, the fault is Benson. And, R. Stern. Dope extrondinaire. The dope of dopes that thought he could exclude software patents by legal fictions and instead gave the PTO nightmares by creating all this nonsense.

    Dopes, get it, the reason the PTO has so much problem is that they are trying to examine the applications using the legal fictions rather than what the software patent really are.

    Dopes. If the courts treated software as its true character, then the PTO could examine it and we wouldn’t have all this nonsense.

  205. “[e]quivalent ‘in’ an application.”

    What Ned is saying is that it isn’t equivalent in Mordor or the Hoth system.

  206. That’s why we say “computer executable instructions” instead of “computer readable instructions”.

  207. And that’s why you’ll never progress from a public employee into meaningful work in the private sector.

    It’s really sad that our patent office has people working there with such a poor grasp of the patent rules. It’d be nice if we were getting what we’re paying for.

  208. I think that you should join miles in looking up the definitions of FPGA and ASIC.

    when did business methods become unpatentable subject matter?

  209. I’ll probably get edited by Dennis, but I have to say it again. Ned you are a dirty monkey. And so are you MM and IAENEENAO#AW you don’t even rate as s dirty monkey. You are a dirty amoeba.

  210. An apparatus, comprising:

    two twigs tied together at approximately a middle point of each twig, wherein the twigs are tied together with a string.

    How outrageoius that this is eligible under 101!!!!!!!!!!!!!!!!!!!!!!!!!!!!!!! Dopes. That is the kind of nonsense you dopes post everyday about software. Ok. so, people submit applications for software like the one above with twigs.

    So what. What’s the point? So, now should I say that every invention that claims some form of wood should not be eligible under 101? Or that for all wood inventions we should first look at what is actually claimed and then determine whether or not it is eligible under 101?

    Face it, you are intellectually dishonest and want to remove information processing from patentability. The irony is, of course, you dirty monkeys have messed this up so much that the PTO has not gotten the examination right. If you dirty monkeys had not had Benson then by now the PTO would have figured out how to examine these application properly.

  211. It seems to me that a Beauregard claim comes closer than any to claiming software directly, albiet normally expressed in functional language, not in code.
    Strangely, after all the years since the PTO agreed to such claims and withdrew their pending challenge at the Fed. Cir. prior to any decision, no patent litigation challenge to the widespread use of Beauregard claims has ever make it to the Fed. Cir. to be actually approved or rejected by the Fed. Cir., as far as I am aware?
    At least one IP Professor thinks a Beauregard claim violates long established case law against “written matter” claims. Especially as arguably its normal format of computer-eadable instructions written or stored on tangible storage medium could include printing on paper and not exclude also being human readable?

  212. And as long as you continue to post general dismissals of others arguments you are never going to get it right.

    Right is information processing. Right is information transformations are transformations of a property of matter that is as real as any other property of matter.

    End of story. When the court gets this, then we no longer will be in this endless psychotic characterization loopy nonsense.

    And the paid posters will need to look for another job.

  213. Ned, are you saying that you are substituting circuits for a computer program and the purpose/result of the invention is still the same but the invention now is no longer is patentable?

  214. start with claim construction, 112, 102 and 103

    and all of sudden the claim is either rejected/invalidated or narrowed and 101 is not an issue

    no need to decide whether an “abstract idea” is claimed and BTW what is an “abstract idea?”

  215. In this post Mr. Goetz shows his self interested “logic” that makes no sense at all off once again.

    He goes on and on about how we’re all focusing on “the wrong question”.

    He believes that there is some magical “invention” that is at issue in software patents, at least some of the time, which is somehow divorced from the underlying software. But he does not explain how this happens in the real world. Obviously, because there is no “invention” being claimed in a claim that covers a software “implementation” other than the software.

    He goes further to posit that if the debate was on the question “Is an invention that is patentable in hardware, equally patentable if implemented in software?” then there would be much less controversy. But he does not explain why. Even the stupi dest patent professional can see that there is a glaring difference in breadth between a claim that is limited to some specific piece of hardware and in a claim that is limited only by what is accomplished by the hardware. The former is amenable to people “designing around” and “inventing around” so as to be able to accomplish the task as the patented hardware without infringing. The later is not amenable to people designing around and inventing around, because the task itself, performed by any hardware, or software is covered.

    That is to say, Mr. Goetz misses the fundamental problem with software being patented, a glaring hugeness of breadth due to the fashion which it is usually claimed. If we were to require that the actual software “implementation” be disclosed in the patent, and then limited the claim just to that one “implementation” instead of granting all “implementations” as is accomplished through the issuing of functionally recited claims then people would probably have no problem with software being patented. But, obviously, no software patent would be worth paying to have, because everyone else would just design around you immediately and are very unlikely to ever infringe, even unintentionally.

    Not to mention the fact that, obviously, granting authors rights to functions has been explicitly rejected in copyright law, and it was done so for a reason. There is no reason to allow authors a backdoor into getting rights to functions by way of patent lawl.

  216. Software implement grace machine:

    1. A programmed computer, comprising;
    means responsive to data imput indicative of a the dollar amount of a contribution, wherein the amount is represented by Z;
    means for calculating the time one’s stay in purgatory is reduced according to the formula X = Y * Z, where X is the time reduced and Y is a Bible-defined constant; and
    means for displaying the reduced time to a contributor.

    Entirely patentable right? — because, as we all “know,” programmed computers are eligigle. Move on to 102/103.

  217. “BK, I have never heard any one seriously debate the eligibility software that originally creates a novel drop-down menu on a display.”

    Then you’ve never met anyone that properly applies the judicial exceptions.

  218. Mr. software, the linked wiki article does not include a claim from the patently reference. However it the dust describe the claim as a method of dividing longer messages in the smaller messages in a communication network. Why do you think this is a software patent?

  219. It might I add, perhaps we could have converted the Prometheus “information” into a patent eligible invention by displaying that information on a computer screen in a drop-down menu.

    Sounds like a plan…

    What a joke.

  220. BK, I have never heard any one seriously debate the eligibility software that originally creates a novel drop-down menu on a display.

    But it becomes a serious question of eligibility when the software creates a drop-down display that is generic and old and which varies from the prior art only in its information content.

  221. Night, after all our discussions it seems you still do not get it. There is a difference between substituting a programmed computer for circuits in an application and patenting an abstract algorithm by reciting the use of a programmed computer to conduct its math.

  222. Bad joke, I think you missed the point. Advocates of software patents are not trying to substitute programmed computers for circuits in a particular application. They are trying to patent abstract ideas and business methods simply by reciting a computer or programming these abstract concept into a computer.

  223. patent on a 1986 application — doubt if it would survive today’s examination, and it will go away soon and be totally irrelevant

  224. Patentability under 112, 102, 103 and yes 101 should be decided on the invention as claimed, not on some so-called underlying inventive concept in the spec.

  225. Here’s my analysis of the reason why “software patents” give people so much heart burn as compared to hardware/hammer patents.

    It’s probably helpful to consider an example. My favorite is the 4,974,952 patent from the Fujitsu v. Netgear case from a few years back. (link to en.wikipedia.org). That patent was written at in 1986 many, many years before 802.11 standard was around in years pre-dating the relevant wireless hardware and technology. Nowhere in the specification of that patent do they even have the basic hardware features to enable its use in modern wifi systems, and yet, there it is being enforced against EVERY Netgear wifi product.

    Because software patent claims aren’t tied to a particular implementation they have an uncanny ability to morph and cover systems and computers that were not in the possession of the inventor at the time.

    This is so unlike reducing the software down to its hardware implementation. At the very least, the hardware implementation would be tangible, fixed (to use copyright terms). The bits and pieces would be knowable, comparable. You could stack your implementation up against the implementation and compare.

  226. I think he’s pointing to the issue with the “problematic” software/business method patents being that they are merely automating a known, manual process, not that they’re merely software.

    The ones that don’t merely automate a known manual process shouldn’t be a problem.

  227. I’m not suggesting the hammer was the pinnacle of innovation.

    But calling thinking antiquated doesn’t advance the discussion. Your cavemen had painting, linguistic abstraction and music 40,000 years ago. It’s not like it has remained incomprehensible or has not been assigned any social or economic value. The issue is whether like abstractions should receive the *same* protection. There is a linguistic, metaphysical and ontological difference between denotation and the denoted.

  228. “If the Patent Office’s examiners focused on the invention, and not on how the invention was disclosed, it would reject many, if not most Software and Business Method Patents.”

    Okay, let me see if I get your point. You are saying most of these processes for improving the efficiency and quality of doing business pass 112, which covers disclosure. And assuming they are not anticipated at 102 or obvious at 103 they can get a patent. But, if the invention is determined by the examiner to be software, or a business method the examiner can and should reject it right away. Is that right? Well, what you have not done is provide a cogent argument as to why the patent system should discriminate Inventors of against software and business methods? I

    n fact I have not heard anyone make that case yet. And until that argument is actually made and won, the Constitution, Congressional Statute, and Courts case law that make software and business method patents legal, should remain the law.

  229. “means to an end” is a new patentability test???

    you have to be kidding — don’t see that in the statute

    and that would effect many non-software inventions

    are medicines a means to an end

  230. “A line of code is not a hammer.”

    And why is a hammer presumably more deserving of being called an invention than a line of code?

    Because a cave man can understand how to use, and possible create a hammer, but would have no idea how to design a functioning line of code.

    And that is the “line of thinking” that the anti software and business method people have.

    It’s not even “Iron Age” thinking.

    It’s “Cave Man” thinking.

    Yet these same people would profess to be in favor of “Promoting” the “Progress” of the Useful Arts.

  231. Completely agree with the point that the patent office should focus on the Invention, not on whether the best mode is software or firmware or hardward….

  232. And completely ignore his argument. What an intellectually dishonest worthless excuse for a humnan you are.

  233. It seems to attract a great deal of imperious and socially inept people, who believe an engineering degree has bestowed them with great philosophical acumen. They don’t attempt persuasion but just assert the ignorance of their (unknown) audience.

    Nicely done, Miles.

    …my point was pretty simple. A line of code is not a hammer.

    I think your point is well taken. But in fairness to Mr. Goetz, I don’t think he disagrees with you. Perhaps I’m reading too much between his lines, but my take on his comment is that it’s silly to debate the patentability of software because it is already established that software, by itself, is not patentable. I think Mr. Goetz is saying that examiners shouldn’t obsess about whether a particular invention may be implemented using software, but on whether the application actually discloses an invention at all. As Mr. Goetz says, many “business method” and so-called “software patent” appliations can and should be rejected because they fail to define an invention, without regard to whether the primary implementation involves the use of software.

    Certainly the PTO should continue to reject claims that are directed to software per se. But it has never been the case that a claim fails Section 101 merely because the invention it defines uses software. I think Mr. Goetz is on the right track.

  234. (including the hardware underneath it). Incredibly complicated and clearly something that should be patentable.

    And indeed it is patentable. If you’re the one who invented the “hardware underneath it”.

    Taking a complicated known thing and painting it blue doesn’t get you past 103, nor should it.

  235. Indeed, I’m not sure why I post on this blog. It seems to attract a great deal of imperious and socially inept people, who believe an engineering degree has bestowed them with great philosophical acumen. They don’t attempt persuasion but just assert the ignorance of their (unknown) audience. Unsurprisingly, it seems to be the same people who are terribly dissatisfied that they failed to persuade the public of their program for legal change.

    Without getting into philosophical debates about wave-particle duality, my point was pretty simple. A line of code is not a hammer. Show me a software program that can put a nail in my wall without any “hardware” and I will grant your point.

  236. The problem is that people don’t understand the difference between a 101 and 103 argument.

    Take a patent that covers software that creates a drop down menu. now go build that from scratch (including the hardware underneath it). Incredibly complicated and clearly something that should be patentable.

    People then say, but wait, computer hardware is well known as are most programming languages, etc; all you are doing is writing a few lines of code. That is fine, but then you are making a 103 argument, not a 101 argument.

  237. One other thing:

    Lemley says that the specficiation of software conveys no structure. That is how intellectually dishonest some of the academics and judges. However, I think in today’s world there is no such thing as an academic law professor. We should call them practicing attorneys that teach on the side. They have their client base and anything they publish is for their client base. We should also not put any weight into any publication. No legal publication deserves an pepper corn of respect.

    What is interesting is that this software business is playing out in our entire society. Everyone knows that medicene is completely broken and that it is fiction to image that a doctor has your interest in mind or that a hospital or doctor’s office is not a store where someone else fills your cart and charges your credit card. And we get the same types of people that defend the medical system and the same intellectual dishonesty.

  238. And, I hope that my post isn’t deleted for my comment about J. Moore. Why not let her try to defend herself. What a nice position she is in to perform her duties and not have to answer for herself.

    Let her try to explain these matters. J. Moore cannot. Because she is wrong. She won’t because she is intellectually dishonest.

  239. Well, you have it partially right. For one thing, software is hardware. Software is nothing but a way to implement hardware in a convenient way. That is a fact that cannot be gotten around other than by the intellectually dishonest.

    Second, you need to think a bit about why we are having this problem. People J. Stevens and J. Douglas and R. Stern caused most of these problems. And, a lot of their misconceptions can be understood by where science/philosphy was in 1920. None of them understand the brain as an information processor. They seem to believe that thinking is separate from the body–magically.

    Third, you are dead right about the invention being the focus. A lot of business method problem is that the judges seem incapable of casting the problems in terms of information processing. if they did, then they would see all the problems disappear. Conceptually, their problem is that they don’t see information as something that is real–but it is real property.

    To imagine that transforming information is not a transformation is a misunderstanding of the laws of physics. So, what do you have? Information processing algorithms and machines. Now what are they processing?

    A couple of more tidbit. 1) Why this is happening is that they are mischaracterizing realty. That is why this is never ending. Until they accept that this is information processing and informatoin is a real property of the universe then we will keep going round and round. 2) When mechanical inventions started to challenge man’s dominance, there was a back lash. I think that is what we are seeing with informatoin processing. Some of the jokes during oral arguments make that pretty clear. At the Fed. Cir. one judge said, yeah, next they will patent writing decisions for court cases. Ahh…yes. Likely, within 100 years computers will be able to make better decisions than human judges.

    What we don’t want is EPO standard that somehow the software has to do with the efficency of hardware. What a nutty standard. Why? Because hardware for what? Hardware for what they consider a hardware task. How does that make any sense? If I have a computer to diagnose an illness I need hardware. The software is a specification for hardware. It is a convenience for hardware. But, the EPO says that hardware to access a disk is hardware that counts but hardware that is needed to diganose a cancer doesn’t count. OK. That reduces the problem to we will count what hardware for communciation between computers that are completely general purpose that could be used for any purpose. OK. I build computers that aren’t general purpose but only for diagnnosing cancer. Then shoudl softare that makes it more efficent for tumor infomratoin to be analyzed be eligible?

    I nkow I don’t have time to go into this, but I think anyone with a brain that cares to understand can seee the problmem is that either intellectual dishonest poeple (J. Moore is one), or magical thinkers (J. Stevens is one), cause these problems by ignoring the realty of what software is.

  240. Yes, the debate can. Every EE knows this. It’s the non-EE’s who seem to have trouble grasping the concept that we can program the SAME software onto a hard drive of a general purpose computer, into an FPGA, or hardwire it into an ASIC.

    The problem is that many people commenting on this topic, like yourself, have no idea what the FPGA and ASIC are. Because you guys don’t understand the technology, you don’t understand the issues, yet you feel qualified to comment for some reason.

  241. I’m afraid the debate can’t be simply reduced to this skewed question: “Is an invention that is patentable in hardware, equally patentable if implemented in software?”

    One problem is that it uses an undefined (and likely bizarre or shifting) notion of “implementation”. Software *cannot* produce physical effects like hardware or in the absence of hardware. Likewise, it requires bending our notions of the physical activities of “make, use and sell” over which exclusive rights are provided. Even accepting the formulation of the question, it fails to resolve the issue of competing regimes for software (which Goetz has attempted to address elsewhere, but this framing does not respond to).

    The fascinating–but likely fallacious–aspect of Goetz’ post is the notion that *the patent itself* can be analogized to software, therefore software *is* invention. I think the premise to that argument is probably correct/fair. But the conclusion doesn’t follow. I think it is probably not simply the activity of abstracting from some (physical/empirical) discovery alone, or *articulating it* that constitutes the “invention”. If that were the case, the inventors for every patent would be the patent agents. While that may be a very appealing proposition for readers of this blog, it doesn’t seem tenable.

  242. People with vested interests do not want to understand that hardware is equivalent to firmware (which is just software in a specified location) and is equivalent to software.

    There is no logical reason to not understand the simple truth.

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