Software Patenting: Are you Smarter than a Fourth Grader

by Dennis Crouch

This morning I mentioned one bit of the ongoing software-patent debate to my 9-year-old daughter.  I told her that some people argue that the computer is a different machine when it is running Microsoft Word than when it is running her WarriorCat game.  As an old Newtonian mechanical engineer, that argument never sits well with me. (I think software is patent-eligible on other grounds).  I was surprised that she bought-in to the different-machine argument.

Robin explains:

Sure, the box is the same in both situations. But, Microsoft Word obeys me and the the game thwarts my moves. I see them as very different.  Its brain changes.

Robin did something here that comes naturally for children — to think about the issue from her perspective as a participant in the activity.  The two programs offer very different experiences – and that is what matters to her.  It will be interesting to see whether the court’s approach is the same.

In any event, Happy Halloween from my Woodland Elf & Forest Gnome!


231 thoughts on “Software Patenting: Are you Smarter than a Fourth Grader

  1. 23

    The “computers running a new app are like totally new machines” “argument” is, in most cases, little more than an irrelevant sideshow favored by the pro-software patent folks who are incapable of addressing the issues head on.

    Nobody disputes that a programmable computer can be changed or improved by the addition of software. Likewise, nobody except a few fourth graders and the pro-software patent folks believes that such a computer becomes a “new” computer in any ordinary sense of the word, just as nobody really believes that an old car becomes a “new” car when you install a new radio in the dashboard.

    The point that the pro-software folks never want to address is that, in every other instance, if you want to own intellectual property rights in your “new” machine you need to describe the machine in objective structural terms that distinguish your new machine from the prior art. Software patent proponents refuse to do that and they insist that they deserve to be granted a judge-crafted exception to the rules because, at least in their own minds, they are Teh Most Important People Evah. Meanwhile, every time a judge strikes down one of their beloved patents, they moan and complain that it’s a Constitutional crisis because “separation of powers” and “nobody could have predicted any of this.”

    They’re really very serious and sooper dooper principled people, though. Just ask them.

    1. 23.1

      Just because you want to declare something an issue and all else an “irrelevant sideshow” just does not make it so.

      And yes you need to use the legal requirement of ordinary person skilled in the art rather than your emotion laden “fourth graders and pro-software patent folks” to understand that indeed a new machine is in factcreated.

      You also need to come to grips with the legal point that the OPTION of writing claims totally “objective structural terms that distinguish” is only an option and that the law FULLY allows a mix of structure and functional language in a vast middle ground.

      I get that you don’t like the law as it is.

      May I suggest that instead of repeating (ad nuaseum) something that is NOT the law, that you instead contact your congressmen?

      (And you are off as to a judge made exception – as I explained previously in that it was a first judge made exception that removed Set B printed matter. Instead of being grateful for that, you want more but you do not deserve more.

      1. 23.1.1

        “to understand that indeed a new machine is in factcreated.”

        Just like the “new car” with a new radio.


            Neither – as both of those analogies have been debunked previously.

            6, you do understand the art of antennae for moving objects was involved for “radio for the car” right?

            jesse, you do understand that “different gears” is a bit like “different toaster settings” which I debunked a long time ago, right?

            Guys, if you want to have an intellectually honest dialogue, you are going to have to pay attention and not try to sidetrack the discussion with old canards.



              “6, you do understand the art of antennae for moving objects was involved for “radio for the car” right?”

              What of this “involvement”?

              “jesse, you do understand that “different gears” is a bit like “different toaster settings” which I debunked a long time ago, right?”

              Tooooootally “debunked”.


                You do understand that “different toaster settings” are like “different programs” don’t you?

                As I said, if the gears of a clock can be considered an information processing system, then so can the gears of a car.


            If a “clock” is an information processor, then so are gears of a car.

            If a “computer” becomes a new machine just because it is programmed differently, then so is a car when a different gear is chosen.

    2. 23.2

      ” just as nobody really believes that an old car becomes a “new” car when you install a new radio in the dashboard.”

      That would make for an interesting, if a bit misleading, used car advertisement scheme!

    1. 21.1


      Fewer monopolies, more competition, and less cost.

      Not what you meant though. Fewer monopolies implies fewer patents to prevent competition…

      1. 21.1.1

        Not really nipping dog. Because patents provide a way for the small to protect themselves from the big and to get capital to compete.

        That is the way it works.


          No – that is the way it is SUPPOSED to work.

          Not how it actually works.

          Too many startups have been shutdown, even with patents due to just the threat of a lawsuit.


            Nice imaginary world you have. In my world where I really work with silicon valley start-ups that isn’t the way it works. I guess your world is like Justice Ginsburg’s imaginary computer world that exists in the spirit world.


          “Because patents provide a way for the small to protect themselves from the big and to get capital to compete.”


          And yet all the patent cases turn out to be trolls suing operating companies with garbage patents. Occasionally there’s an operating company suing with a garbage patent, but it’s far from common; small and medium operating companies have better things to do.

          Meanwhile the majority of victims of the abusive lawsuits are smaller companies under $10MM. After all, suing a company that can afford to pay a patent litigator is risky.

          The only thing small companies would legally be able to do in the world NWPA imagines where every software idea, no matter how inane, were patentable is to file patents themselves and then try to attack the few foolish operating companies left before all creativity is snuffed out.

          Startups and nine out of ten programmers aware of patents would rather work on building things and want software to be absolutely free from patenting.


            And yet all the patent cases turn out to be trolls suing operating companies with garbage patents.

            This has been shown to be empirically and utterly false.

            Owen – please stop the nonsense koolaid rhetoric.


          yeah idk nwpa google was just up ins of your pto giving a presentation on new work they were doing in the actual useful arts that they definitely do want to be able to patent upon.


            Sure. Protection for them and not for anyone else. We have Google capture. Google director. Google patent judges. Google federal circuit judges. All those Google bucks buy a lot.


              So do the MS bucks.

              Your result is that you are acting paranoid with respect to Google.

              And so far, Microsoft is still bigger than Google. So the “purchases” made by Microsoft should bother you even more.

      1. 21.2.1

        I don’t know George. Maybe because it illustrates how the big corps strive for market power and control over their employees. Maybe because that no patents is in the interest of Google to achieve those goals.


          ” Maybe because it illustrates how the big corps strive for market power and control over their employees. ”

          That isn’t just “big corps” bro. It is just that you notice it more with big corps because they achieve those aims better than the small corps trying to do the same.

          “Maybe because that no patents is in the interest of Google to achieve those goals.”

          I thought you just got through conceding that google wants to patent its own stuff just above? Which is it? “No patents” or “patents just for themselves”? Because let’s be honest, all big (and small) corps would prefer patents just for themselves.


            But if you pay attention 6, you could grasp the very easy-to-understand concept that it is the Big Corps that are better off with the death of patents because it is the Big Corps that have the Market Power that patents serve to level. Remove that ‘equalizer’ and it is painfully obvious who benefits more (hint: it is NOT the small corps).


              Actually, not.

              Because the “Big Corps” have the money to run over any small company with legal expenses.

              As happened with various companies.

  2. 20

    What about the obvious follow-up question: “Does that mean you are a different child depending on whether you play Warrior Cat or use MS Word?”

    Better not ask though. It could prompt novel ways to escape consequences, as in “That was a different girl who was naughty yesterday, go punish her, not me!”

      1. 20.1.1

        Of course, the usual result is an explanation that she changed her mind, not her brain. After all, she chose to misbehave…


          I don’t think you have the ability to talk about the usual result.


            Actually, I do.

            That was when the first explanation of the difference between a mind and a brain was given to me.

            Evidently, you never learned it.

  3. 19

    People, please.

    We have dozens, literally dozens, of recent posts that address 101. In those threads, in the context of real cases and data points and trends, we’ve expressed and compared our opinions repeatedly, in exquisite and occasionally excruciating detail.

    This is a lighthearted post. Can’t we please take it as such, and enjoy the anecdote and the post? You know, like this:

    I thought about dressing up as Randall Rader for Halloween, but I couldn’t possibly do justice to his fabulous hairstyle.

  4. 18

    Again, a long list of posts about how people feel about things. How would you like to be accused of a crime and have a judge decide whether you guilty based on how they feel about you? No facts needed. Just the indictment and a look at you.

  5. 16

    “I think software is patent-eligible on other grounds” like what? Do share with us your theory on this. People have offered examples of software patents they thought would pass Alice. What happened to those? There may be no per se rule against software, but in practical effect there is. Let’s say your client comes in with a new method (yeah!), but it runs on a server (ohhh). It allows the same hardware to send 5x more data per second over the same lines. In the end, the claimed method is going to be about data processing, how to parse, store, manage, and compress information. It will be shot down amongst much chortling. Someone will insist that you could do the same thing with a pencil and some scratch paper; others will be aghast that you could store a program that embodies the method on carrier waves. I’m sure we’ve all been guilty of storing things on carrier waves when we didn’t have the time to store to something more non-transitory. Talk about an abstraction. Others will wring their hands that you’re going to go around suing mentalists for thinking about sending data 5x faster. There will be calls that the claim is trying to patent the information itself. There is no practical way to justify the patent eligibility of a claim to the software that would program the server, the server with that programming, or the steps that the server would take if running such a program. I had a client for a time that had improved methods for integrating video that was transmitted over both the home’s phone lines and wifi in an ad hoc manner. Better performance came from how the information was handled. Their applications explained how it was accomplished, but the claims all look like receive this, receive that, determine this, determine that, send this, receive something else, etc. In the EPO they’d say it is a technical solution to a technical problem (which is why they got patents in Europe) but here presently that’s just abstract. You can put paisley print on a coffee maker and get a design patent, you can cultivate a new plant and get a plant patent, but improve data throughput using existing hardware, not a chance. That’s abstract.

    1. 16.2

      znutar, there are distinctions to be made. If one simply uses a computer to do its thing where the real object of the invention is not statutory, as in a business method, then the claim is nonstatutory despite the presence of the computer in the claim.

      1. 16.2.1


        Your shorthand view simply is not in accord with the law. See Bilski, see Alice.

        In both cases, a (shrinking) minority would have held as you post. That does mean that a majority of the Supreme Court does not agree with you.

        (I would also ask you to explain why Congress has not expressly taken the easy path to be straightforward about such a “no business methods” rule of law and instead cemented IN business methods by providing a limited defense against a certain SUB-set of business methods, but I have previously placed that item on the table and have as of yet not recieved an ON POINT answer)

      2. 16.2.2

        So it sounds like you agree. In my hypothetical, the real object is improving data throughput, and you can’t patent that if it is achieved through the programming of existing hardware. I’m making a further value judgment that the level of innovation is easily on par with cultivating a new plant and equally deserving of protection – but I recognize that as the law is presently interpreted that is just not the case and I’m having to tell clients as much. I’m really curious to see whether Dennis can back up his theory that software is patentable on other grounds other than that there is no per se rule against software. I claim a method of improving throughput ought not to be eligible; a claim that provides method steps and sufficiently explains how to perform them I believe should capture patentable innovation, so long as it is limited to computer implementation so that mentalists shouldn’t be alarmed, and so that the claim doesn’t preempt the field because mentalists are free to perform these methods in the heads, or even with pencil and paper if they’re not quite so mental. Knock yourself out with your abacus practicing the method, you will not be sued.


          I agree with your sentiment. As long as a machine (a computer) is claimed that performs this process, the claim should be patentable. Assuming of course, the process is new and useful.

      3. 16.2.3

        Ned: “simply uses a computer”

        Ahh, yes the J. Stevens cognitive model of computers. You write down what you want on a piece of a paper then tell a boy to program it for you.

        Or Gingsburg view of computers where there is a computer world and then a “real world.” I guess that computer world operates in the spirit world as she appears to believe that the computer world has nothing to do with machines.

    2. 16.3

      Well said. Wait for Federal Circuit to hear some of the more extreme 101 holdings from the District Courts.

  6. 15

    I like the creative thinking, but I don’t believe that that gets us any closer to the solution to what aspects of software make it patentable subject matter.

    You could substitute bound paper books and get a similar result: the difference between the utility of a reference book, graphic novel, biography, and cookbook. Books aren’t made newly patent eligible merely by changing what’s in the book or how you use the material in the book.

    Note, in that case: the book itself may be patent eligible. The “invention” of a new content of the book is not — simply tacking on a book for its conventional purpose does not change the nature of that invention. And therein lies the SAME patent eligibility problem with your daughter’s perspective.

    1. 15.1

      That’s another Judicial exception. 101 doesn’t itself prevent the patenting of such articles of manufacture.

      However, there is the matter that a patent claim must be a single sentence. It would be difficult to claim War and Peace, for example, as a single sentence. Even if that matter were resolved, there is that matter that patents only last 20 years or so, and copyrights are much longer.

      Furthermore, anyone could avoid buying your book by getting a copy of the patent.

      Now, if your position is that a b0ok could be claimed by describing the contents, but not actually presenting the contents….. that might be a useful patent to have…. and the public would benefit because copycat ripoffs could be prevented. For example, such a patent on The DaVinci Code might have spared us from National Treasure…..

    2. 15.2

      How about claiming the steps of a method that are executed when the software is executed? Why can’t the software be claimed in terms of what it does/causes rather than what it is? Why are we so hung up on the ontological question?

      Leave the entire hardware/system elements alone and look at the method steps in isolation.

  7. 14

    “Sure, the box is the same in both situations. But, Microsoft Word obeys me and the the game thwarts my moves. I see them as very different. Its brain changes.”

    And that is precisely where the mental steps doctrine would take over. Except, oh wait, the federal circuit says it doesn’t.

    1. 14.1


      May I kindly ask you to understand what the mental steps doctrine is?

      Note the “all” and “purely” requirements, and then note that one of my favorite words applies (anthropomorphication).

      Machines do not think.

      See link to for a succinct statement.


          I am more than pretty sure that Professor Crouch’s daughter knows that there is a very real difference between a person that thinks and a machine that merely ‘simulates’ thinking.

          Thinking is a purely human endeavor, though not all humans engage that activity to the same level. 😉


            …machine that merely ‘simulates’ thinking.

            Like a machine that “simulates” math, and logic?

            Thinking is a purely human endeavor,

            Tell that to the animals that dream, and even have nightmares.

            Machines already can pass the Turing test.
            Or those that create novel solutions to getting food, such as squirrels, raccoons, wolves, dolphins, porpoises, chimpanzees, gorillas…

            As to whether a machine will never think… not yet, and if it does it won’t be the same way as we think.

            Machines already can pass the Turing test.


              ah for an edit. I could have sworn I removed that sentence that is in the wrong place..

              What I wanted to say was:

              Tell that to the animals that dream, and even have nightmares.

              Or those that create novel solutions to getting food, such as squirrels, raccoons, wolves, dolphins, porpoises, chimpanzees, gorillas…

              As to whether a machine will never think… not yet, and if it does it won’t be the same way as we think.

              Machines already can pass the Turing test.

              Sorry about that.


                Do you get that “thinking” is a word that properly applied in the context of law only to humans?

                Do you get that? And as such the legal opinions that refer to mental steps are referring to human brains?

                1. Thinking isn’t restricted to human brains.

                  That is reality.

                  There is even a case trying to get chimpanzees declared a “person”…

                2. jesse,

                  The emphasis in your post related to animals is on “trying.”

                  When they succeed, do let us know. Until then, animals are mere chattel under the law. Exactly like inanimate objects like machines.

                  And even then, keep in mind that this is patent law that is discussed here. May I suggest that you refresh yourself on the Chakrabarty case, wherein even living items (non-human) fall with the scope of being patent eligible.

                  Please abide by the context within which you are located. Your opinion suffers greatly when you make statements that are ridiculous on their face.

                3. If you remember some history….

                  It wasn’t that long ago that people were chattel too.

                  And I believe children still are…

                4. And just because a law (or ruling) states something, doesn’t mean that it is a fact.

                  That is why reality will always trump law.

                5. jesse,

                  Let me know when your program le toaster has ‘human rights’ and is set free from the oppressive rule of man.

                  We will celebrate the Independence Day in grand style – we will even invite Elon Musk.

                6. 🙂

                  People already swear at toasters when they don’t do what the people think they should.

                  And that is treating the toaster as a sentient object.

                7. Oh, and corporations are already considered to have some human rights.

                  Let me know when you can send a corporation to jail for killing people…

                8. jesse,

                  You do know that neither of your comments are on point, right?

                  Do you want to try to reply with something on point now?

                9. jesse,

                  Please try to use just a little critical thinking and follow the logic of your own offerings.

                  The programmed toaster and “Independence Day” follow from your posts.

                  I merely present them to show how silly the ‘logic’ of your views leads to.


            “a machine that merely ‘simulates’ thinking.”

            You might have heard this before, but there is an apt saying that may apply here: “you are what you pretend to be”.


              I do hope that such is not a saying that you are resting on, 6.

              Leastwise not if you wish to be taken seriously.


                Idk if I’d “rest” upon it, but I do think that it has a kernel of truth. Just like a lot of old sayings. If it walks like a duck… etc. etc.

                1. It is said that the best 1ies have a kernel of truth.

                  You need more than just that kernel 6 – especially in a dialogue inwhich your example has been called out as deficient.

                  Your ‘logic’ would mean that first grade girls really do become unicorns when they pretend to be.

                  Adults recognize the difference between pretend and real.

                  Won’t you join us?

      1. 14.1.2

        I liked this part of your link:

        “This doctrine was applied to software applications throughout most of the 1960s, making software inventions virtually unpatentable.”

        “The law was applied throughout most of the 1960’s thus software was virtually unpatentable”

        Then of course we stopped applying the law and software became virtually patentable.

        I also liked the part of your link that cites to Abrams which I don’t recall ever having read all the way through in detail before. Good case it looks like to me.

        It looks to me like the case states quite clearly that there are three proposed situations by the applicant in that case:

        “1. If all the steps of a method claim are purely mental in character, the subject matter thereof is not patentable within the meaning of the patent statutes.

        “2. If a method claim embodies both positive and physical steps as well as so-called mental steps, yet the alleged novelty or advance over the art resides in one or more of the so-called mental steps, then the claim is considered unpatentable for the same reason that it would be if all the steps were purely mental in character.

        “3. If a method claim embodies both positive and physical steps as well as so-called mental steps, yet the novelty or advance over the art resides in one or more of the positive and physical steps and the so-called mental step or steps are incidental parts of the process which are essential to define, qualify or limit its scope, then the claim is patentable and not subject to the objection contained in 1 and 2 above.”

        And it looks like the courts held that case to fall within 2 and thus upheld the rejection. Then rehearing was denied.

        I must say that the “doctrine” appears from that case to be slightly larger than your link states anon.

        link to


          Like other canards that were obliterated by Congress in the Act of 1952, the mental steps judicial doctrine has no place in today’s law.

          While I do not agree with all of Greg Aharonian’s views, his email today wrecks the doctrine most completely.

          If you don’t get his email yet, you should. You can contact him at


            In other words you’re not a fan of the law so “it has no place”. Send me a copy of the email if you like at . Thanks in advance. It seems like I might have been signed up or something awhile back.



              You are fallin into your old habit of attempting to mischaracterize my view if the law as a determining factor as opposed to my objective view of the law as it is.

              Further, I provide the link to Greg’s email above – I will send nothing to your private email account concerning what you simply need to take care of yourself.

  8. 13

    One of the critical aspects that keeps on being “forgotten” in these discussions is that a machine must be changed first with the addition of the machine component – the manufacture – of software BEFORE the machine/software can be used.

    I think a step through with your young one with the Grand Hall experiment would lead to (another) “well no Duh” new machine answer.

    1. 13.1

      Except that (1) I don’t think calling software a “manufacture” is necessary to your argument and (2) I don’t know how the “Grand Hall experiment” picked up its capital letters, I think I agree with you, anon. Dennis asked the wrong question. He says:

      I told her that some people argue that the computer is a different machine when it is running Microsoft Word than when it is running her WarriorCat game.

      That’s never been my argument, at least, and I don’t think it’s yours. My argument is that a computer loaded with (i.e., configured to run) Microsoft Word (but not WarriorCat) is a different machine than one that it is loaded with WarriorCat (but not Microsoft Word). Ms. Crouch’s intuition is perfectly in line with that argument.

      A modified version of your Grand Hall experiment would demonstrate this. Put two computers in a room with 10 children, and load WarriorCat on one but not the other. Load Microsoft Word on the other one. Now tell the children they can play with either one, and see what happens. My guess is that you’ll get 9 children clamoring to play on one machine, and 1 playing on the other. That suggests to me that those are different machines.

      1. 12.1.1

        I do think that a new, useful, and properly limited software invention should be patent eligible and the patentee should be able to claim it as “A computer program comprising …” However, my stance falls short of “per se eligibility.”


              Software is a method? How many times have you argued that software has a physical structure? Someone’s trying to eat their cake and have it too.


          Dennis, assuming claim to a computer program was allowed, would a computer listing of the instructions infringe? Would an un-compiled version of the program infringe? Would the transmission of pictures of the computer listing from one location to another location infringe? Would the transmission of pictures of the listing from outside the United States to inside United States violate the importation rights? If the computer program was recorded on a CD, how close to the computer must it be before the CD infringes? If one has a claim to a computer program, and the computer program is located outside United States, but people may access it in the United States through the Internet, does that computer program infringe?

          All this begs the question of what you mean by computer program. It is the same question many people at have been asking here for a long time as to what people mean by software.

          In contrast, a programmed computer is a slightly bit different animal. It implies that the computer exists in a state where the program is executable by the computer’s CPU.

          However that by itself is not sufficient if what the program does is simply calculate numbers and the numbers are not used for anything.


            Dennis, in all seriousness, would publication the program listing on the Internet infringe? The publication of the program in a book infringe? I think you have to think this through because without some definition of what a program is you are treading very close the patenting information and make infringers of people who only communicate.


              Ned, I guess the question would need to be whether that publication counts as “making, using, or selling” the invention. I don’t think that mere publication qualifies within that realm. But, what would qualify is selling the software.

              As an aside, I will note that over the past dozen years there have been more than 15,000 patents issued with claims expressly directed toward “A computer program product comprising …”


                Dennis, selling a book that includes the software listing? Making a book. Downloading a book. All of these would be making, using or selling the patented invention: software.

                But such is pure information. In my “book,” such information cannot be patented under any theory, not even if Congress were to attempt to authorize such by statute. Patenting information may even be facially unconstitutional under the 1st Amendment.

                Regardless that the PTO issues such claims, there is no way the US government would support the patentability of information to the Supreme Court.

                1. Ned,

                  You go too far in your assumption of “pure” information, as you implicitly (again) ignore the fact that there is more than one type of printed matter.

                  You really must accept this fact I order to have a meaningful conversation – it is a fact that any person having ordinary skill in this art easily recognizes.

                2. Ned,

                  I have given you a perfectly good definition of software.

                  There is a difference between you not liking a definition because it does not fit your agenda and a lack of a good definition.

                  Once you recognize and accept (as you need to) my explanation of Set C printed matter and Set B printed matter, we can advance the dialogue.

                  Until you do so, all that you are attempting to do is to advance your monologue.


                Variously anon, your definitions are

                1. A machine component;
                2. A manufacture;
                3. Copyrightable.

                But, for the life of me, I do not recall you ever defining software.

                And, you have not dealt with the problem that software copyright registration is of what? Tell us anon. You should know the rules.

                1. Variously…?

                  Utter rubbish from you Ned.

                  Again, you seek confusion and obfuscation. My definition of software stands. Software has different aspects that are protected differently by different IP legal regimes aimed at protecting different things.

                  This really is not as complicated as you wish to make it.

                2. Anon, if you have a definition of software, not a single person here knows what it is.

                  Either link to your definition or repeat it here, now.

                3. Ned,

                  Asked – and answered – many many times now.

                  Software is defined as a machine component, a man-made manufacture.

                  What part of this confuses you?

                4. Anon, what confuses is your insistence that software is copyrightable. What is registered is source code that, like a recipe in a book, is a description of a process, but not a process itself, or anything that can be executed as is.

                  When we banter that software is this or is that, you confuse source code with machine code in a programmed computer, because the only thing that executes or that is executable is machine code in program memory. Clearly, source code is not a machine component. Nor can source code ineluctably lead to one and only one machine code in a computer. That depends on which compiler one uses, which link editor, which OS and other software environment variables, and which computer.

                  So, what are you talking about when you speak of software? If one has a claim to software, does the sale of a book disclosing source code infringe, all other things being equal?

                  It is the lack of clear definitions of what we are talking about that is one of the problems with discussions in this arena.

                5. There is NO lack of clarity.

                  Software has different aspects that are covered for different protections under different IP laws.

                  This is not that difficult.

                6. Further, I have se out do you in very easy to understand Set Theory terms the differences in written matter that answers your “sale of a book” style questions.

                  Instead of having a discussion on the merits, you continue to simply ignore what I have put on the table for discussion and play games. I have provided the link directly to you several times now, and you never engage.

                  The deficiencies here are all on you.


              What are the claims directed to, Ned? Assuming they are method steps, the printing of code on a webpage is not an infringing act.

              An infringing act is performing the steps of the claimed method. You would have to execute the code on a computer, causing the method steps to occur.


                Bluto, regarding printing the software instructions on a webpage, is that not a sale to everyone who clicks through the webpage regardless of whether you charge or not?

                1. Ned,

                  Why are you trying so desperately to obfuscate the difference between Set B and Set C printed matter?

    1. 11.1

      It is only an excellent post if Dennis lets us know on what other grounds he believes software is patent-eligible.

  9. 10

    Is the question of whether or not a computer becomes a new machine every time new software is loaded really a 101 boogyman? I don’t think so, unless the apparatus claim is to naked software with no machine reference at all.
    But even if it is a philisopical or semantic issue, was the Jacquard punch card controlled loom invented in 1801 [one of the grandfathers of computers] a new machine every time a new set of weaving control cards was loaded into it?

    1. 10.1

      Paul – I agree with you that the question of “whether it is a new machine” does not give us that much information with regard to the 101 analysis. That’s why I’ve never worried much about the question.

      1. 10.1.1

        Dennis and Paul,

        Completely agree. This “new machine” nonsense (introduced by unfortunate and notorious Gottschalk v. Benson case) is a complete canard in evaluating patent-eligibility under 35 USC 101. The Royal Nine needs to understand the reality of computer/software technology and leave their dystopian “Alice in Patentland” world.


          The Supreme Court does not question the patentability of computer/software technology. Gottschalk v. Benson, 409 US 63, 71 (1972) (“It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a “different state or thing.” We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents. It is said that the decision precludes a patent for any program servicing a computer. We do not so hold”).

          Rather, the Supreme Court questioned the attempts to treat ideas like dressing kids on Halloween by disguising them as software claims reprogramming a computer.


            Personally, I think (looking back 50 years) that Benson was one of the worst opinions ever written. I’ve read this case at least 15 times and am no closer now to understanding what it says (in light of today’s technology) than when I first read it.

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

            Then they state:

            “It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting binary code to pure binary were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.”

            What? Aren’t these two statements incompatible? Does the latter statement mean that anything that has no practical application except in connection with a digital computer is not patentable? Think encryption, for instance, which really only has practical application on a computer. Does this mean that because the sole practical application of encryption is in connection with a digital computer, encryption is not patentable? If not, what does the latter statement mean? There are many ideas which are solely useful only on a “computer”, such as encryption, modulation, filtering. Can they therefore not be patented?

            What program does not have a sole practical application on a computer?

            The opinion in Benson makes no sense.


          EG, with all due respect, the nonsense about a programmed computer being something new began in this case: Application of Bernhart, 417 F.2d 1395, 163 U.S.P.Q. 611 (C.C.P.A. 1969). link to

          The so-called Royal Nine have been consistent, and the CCPA/CAFC and Judge Rich have been consistently wrong.


            Ned – with all due respect, the Supreme Court have been anything but consistent.

            To think as you would, would be to ignore the rich [sic] history of the 101 decisions post 1952, and not pay attention to just who moves from majority to minority and to ignore the implications of what a minority would hold.

            You ask too much.


              “the Supreme Court have been anything but consistent.”

              I might also add, anon, utterly disingenuous (Alice cannot be logically squared with Diehr, no matter how much footnote 3 of Alice says it is), and completely unwilling to interpret the patent statutes AS WRITTEN (contrary to Chakrabarty) and without resort to their “Alice in Patentland” rhetorical nonsense that brazenly overreaches its constitutional authority to INTERPRET not MAKE law.

    2. 10.2


      If instead of a punch card, what carried the information was a different set of gears and cogs, would it have been a different machine then?

      What if the first set of gears and cogs made the machine weave rugs and the second set made it weave bed sheets.

      What if you couldn’t buy the gears and cogs as a swappable component? What if you could only buy rug machines and sheet machines? Would they be different machines then?

      1. 10.2.1

        (as a former hobby hand weaver…)

        Nope. The machine doesn’t change just because you change the fibers, or the punch card. It is still a “loom”.

        If the manufacturers sold a single machine that could be turned into thousands they would charge thousands more for each one. They only sold one machine.

        A tapestry loom is designed differently than a box loom…
        But you can still weave a sheet on a tapestry loom if you want to, it will just take you longer. You can even weave a blanket… Which you can also do with a floor loom.

        And there are companies that will sell you a jacquard loom attachment for some floor looms… But there become questions as to whether this removes the product from the “hand woven” category.

    3. 10.3

      Conversely to your illustration of a Jacquard loom, doesn’t a power drill become a new machine depending on what I put in the drill chuck?

      For evaluating:

      If I put a drill bit in the drill chuck, the power drill is a drill.

      If I put a screw head in the drill chuck, the power drill is now a power screw driver.

      If I put an egg beater in the drill chuck, the power drill is now a power egg beater.

      I merely change the shape of the hunk of metal being spun around by the power drill’s engine, and everyone would recognize that you have a different machine.

      But, if I do something potentially much more complicated, i.e., changing the control system of a device, such as the punch cards of a Jacquard loom or the software running on a computer, why does this not make the device a different machine?

      This just seems to be a bias, for no good reason, of favoring visible changes to a machine over changes that are not visible until the machine is in operation, and should have no role in determining patent eligibility under 35 USC 101.

      1. 10.3.1

        Suppose that drill has a lever on it that sets the drill in either a high-speed low-torque mode, or a low-speed high-torque mode. By flipping that lever, are you creating a new machine?


          I think you are probably creating a different machine. Your theoretical drill is a combination of two different machines: a high-speed low-torque drill and a low-speed high-torque drill. The lever switches the drill between the two different machines.

          And pertinent to the 35 USC 101 issue, I think most people would think that drill itself and the mechanism that provides the drill with the ability to switch configurations with a switch would be patent eligible subject matter.


            Certainly the drill and the torque configuring mechanism themselves would be patent eligible under 101 but that’s only analogous to a “general purpose computer”, not a “special purpose computer”. A general purpose computer is patentable based upon its unprogrammed structure, although most of the basic parts of a general purpose computer have long been in the public domain.

            To extend the analogy of this configurable drill to cover a “special purpose computer” would require the separate patent eligibility of a claim to a configuration of this drill in a particular one of those two modes – in other words, you are “programming” it by flipping that lever. The conceptual differences between this drill and a general purpose computer are (1) the kinds of output that can be produced and (2) the number of configurable levers.

            (I acknowledge that this isn’t the best possible analogy, because the drill only has two configuration states, and both were preconceived by the inventor, but hey, that’s analogies for you.)


              you also forget the use of a drill as a mixer, lathe, post hole digger (well, small posts for holding up flowers)… Even as a fan (yes, as a kid I put a fan blade on one).

              It is still sold as a single machine – a generic variable speed machine with a chuck that can hold things.

  10. 9


    Building off your example, consider the following examples and sub-examples:

    1. You have a videogame player running the WarriorCat game and a personal computer running Microsoft Word. The videogame player has a separate power cord and the personal computer has a separate power cord that plug into a single extension cord that plugs into a wall outlet

    2. A single box has the videogame player and personal computer inside it and includes electrical circuitry that connects the videogame player and the personal computer to the single plug of the box that plugs into a wall outlet.

    3. Same as #2 above, but all of the chips of the videogame player and the personal computer are on a single printed circuit board.

    4. Same as #3 above, but the microprocessor is shared by both the videogame player and the personal computer.

    5. Same as #4 above, but the hard drive is shared by both the videogame player and the personal computer.

    6. Same as #5 above, but all of the input and output devices, except the display/monitor are shared by the videogame player and the personal computer

    7. Same as #1, #2, #3, #4, #5 or #6 above, but the videogame player and the personal computer share the same display/monitor.

    8. Same as #1, #2, #3, #4, #5, #6 or #7 above, but the videogame player and the personal computer share the same video card.

    9. The functions of the videogame player necessary to allow your daughter to play WarriorCat are carried out by software run within the operating system of the personal computer but stored on the hard drive of #5.

    In your opinion, in which of examples #1, #2, #3, #4, #5, #6, #7 and #9 and the sub-examples of #7 and #8 are two machines not described? Why?

  11. 8

    A thought on software patents:

    A lot of the recent cases we’ve been seeing fail to see the forest for the trees. Software engineering is a useful art. It should be protected, just like all of the other useful arts. We need to work backwards from the result that software engineering inventions are patent-eligible, and change the law as necessary to accommodate that result. (E.g., functional claiming should be okay.) The law needs to evolve to protect software engineering, just as it has evolved in the past to protect other useful arts.

    (If you don’t think that software engineering is a useful art, all I can say is . . . how did it come to pass that you’re reading this comment on this web site? Whether you’re on a tablet / laptop / smartphone / whatever, it takes serious amounts of electrical engineering, computer engineering, and – yes! – software engineering to make something like reading a web site (which feels so commonplace but is in fact quite miraculous) happen. )

    A note on the “different machine” topic:

    The transistors in a processor are physical things, and they will be set to different states differently per each program that’s running. So if you look at things at the transistor state level, each program creates a new configuration of the processor. (Everybody knows, however, that a program does not add or remove transistors from a processor.) Analogous comments apply to the storage of program data in cells in RAM when an app is running.

    That being said, it seems wrong to me that a new configuration is seen as a new machine (new configuration != new machine) — but (like Prof. Crouch) software engineering inventions should be patent-eligible on other grounds.

    1. 8.1

      . . . how did it come to pass that you’re reading this comment on this web site?

      Thanks to the efforts of Sir Tim Berners-Lee, the inventor of the World Wide Web. Good thing he locked down his ideas with patents, or we’d not have the wealth of information that we currently enjoy at our fingertips.

      Oh, wait . . . he didn’t. Imagine that. Food for thought.

      1. 8.1.1

        One of the current Ebola vaccines was developed without being patented.

        Does that mean that vaccines shouldn’t be parent-eligible? That’s ridiculous.

        – – – – –

        Intel pays some of its developers to work on the Linux kernel; those contributions (I assume) would not be patent-protected. But Intel does protect others of its software engineering inventions. As it should be able to.

    2. 8.2

      “The transistors in a processor are physical things, and they will be set to different states differently per each program that’s running. So if you look at things at the transistor state level, each program creates a new configuration of the processor. (Everybody knows, however, that a program does not add or remove transistors from a processor.) Analogous comments apply to the storage of program data in cells in RAM when an app is running.

      That being said, it seems wrong to me that a new configuration is seen as a new machine (new configuration != new machine) — but (like Prof. Crouch) software engineering inventions should be patent-eligible on other grounds.”

      But couldn’t I as a chemist say something analogous about tools made out of the same material? For example, aren’t a steel knife, a steel fork and a steel spoon just a piece of steel in a different configuration? (Everyone knows that merely melting and casting steel into a new shape does not add or remove steel).

      Why does it matter if a new configuration of a computer is hard-wired, controlled by switches or controlled by software?

      1. 8.2.1

        Hmm. You make a good point.

        Start with a lump of metal. If you melt it & arrange it as a fork, you have a patent-eligible fork; if you melt it & arrange it as a spoon, you have a patent-eligible spoon. Spoons & knives perform different functions and are useful for different reasons. And even a young child appreciates the differences between a fork and a spoon.

        So is a “general-purpose computer” equivalent to the lump of steel? Would a software program then be equivalent to a spoon? On the one hand, the processor would look (to the naked eye) the same; on the other hand, the processor would be useful in a new way.

        Interesting thought experiment.


          One thing I think this discussion is missing is the difference between software and the WAY software is claimed.

          I don’t think very many people object to claiming software based on what it is. Instead, many people here want to claim software based on what it does. Personally, I think that creates a lot of problems.

          So, a more appropriate example (instead of a spoon) would be a claim to something like “A utensil configured to interact with food.”

          Your utensil now covers knives, forks, spoons and the like without stating any structure or how it interacts with the food. Of course, one skilled in the art of eating would be able to create structure knowing the function, however.

          I think with a claim like that, you might have 101 concerns similar to the concerns raised by software claims.


            go arthur,

            What you say about the problems of claiming “what software does,” could also be said about many electronic devices, such as control systems where the invention is not apparent until the device is in operation.

            To me, the logical way to improve the quality patents including claims to software is make sure the requirements of 35 USC 112 are met. Attacking software under 35 USC 101 just seems completely illogical to me and shows a bias of favoring inventions you can see on the outside of a device over inventions that occur within a device

            I think on of the big problems of software claims is that applicants have not been required to do more to show that they have met the requirements of 35 USC 112 with respect to written description and enablement.

            For chemical and biological inventions, because of conventions with respect to nomenclature, structural formulas, etc. and the ability to describe reactions in terms of known chemical and biological principles and reaction types, it can often be pretty clear whether the requirements of 35 USC 112 are met.

            For mechanical inventions, there are drawings that show that the invention is to meet the requirements of 35 USC 112.

            With electrical inventions, there are schematics that show that the requirements of 35 USC 112.

            But in the case of software-based inventions, based on the meager disclosure of many software patents, there often seems to have been no requirement for the inventor to show the inventor has written a program or that a person of ordinary skill in the art could readily write such a program based on the disclosure in the patent.


              I agree with you in part that a more rigorous focus on 112 would help.

              But I don’t think that’s entirely a solution. For example, consider a claim we recently discussed:

              2. A system of computerized meal planning, comprising:
              a User Interface;
              a Database of food objects; and
              a Meal Builder, which displays on the User Interface meals from the Database, and wherein a user can change content of said meals and view the resulting meals’ impact on customized eating goals.

              Likely the only difference between this and the prior art is that the database includes “meal objects” and the display of “user interface meals.”

              I don’t think 102, 103 or 112 can kill this claim as effectively as 101. Where, as here, the only difference between the claim and the prior art is the “type of data,” it seems to me that you’re trying to protect the idea represented by the idea.

              Here, that would be planning a meal. I don’t think that should be allowed. It honestly surprises me that people defend a claim like that.


                “I don’t think 102, 103 or 112 can kill this claim as effectively as 101. Where, as here, the only difference between the claim and the prior art is the “type of data,” it seems to me that you’re trying to protect the idea represented by the idea.”

                Just because it’s “easier” to kill under 101 does not make it right to do so. Misusing a statute for “expediency” is still misusing a statute and should not be done by any court.

                Also, you’ve made an argument that, assuming it is true, should have been used as part of the Examiner’s grounds for rejecting the claim, i.e., the only difference between the claim and the prior art is the type of data and it was obvious to add this type of data to the claim.

                “Here, that would be planning a meal. I don’t think that should be allowed. It honestly surprises me that people defend a claim like that.”

                What I think needs to be made clear is that for many of us, we are not saying that a claim like this should be patentable. What many of us are saying is that such a claim should be patent eligible under 35 USC 101.

                The Examiner could have made a mistake in not rejecting this claim under 35 USC 103 as being obvious, but that does not change the result under 35 USC 101.

                1. I wouldn’t mind if there was a rule that using a computer to perform old activities is per se obvious. Somehow, I doubt people would be any happier with that than they would be with the current state of affairs.

                2. “What I think needs to be made clear is that for many of us, we are not saying that a claim like this should be patentable. What many of us are saying is that such a claim should be patent eligible under 35 USC 101.”

                  This deserves to be said again so I’m quoting you.

                  I think the intent of Congress is that a new, non-obvious, and useful process carried out by a machine should be patentable. A computer is a machine, and the way you instruct a computer to carry out processes is (today) by using software. That necessarily means that a process carried out by a computer running software is patent-eligible before you check for novelty, non-obviousness, or utility. It may not be patentable for one of those reasons, but it must be patent-eligible.

                  If that is truly the intent of Congress, then it seems the right approach to getting through this mess is to have Congress clarify and confirm its intent. Otherwise we’re just stuck with the fractured and inconsistent rulings of an atechnical (or anti-technical) judiciary that uses phrases like “new machine” or “pre-empt” or “abstract idea.” That leads to an attempt to distill a cogent, consistent meaning from an inconsistent, untenable foundation, and such will necessarily fail. Look no further than the discussions about “different electrical states of memory” or “transitory vs. non-transitory signals.” It couldn’t have been the intent of Congress to split hairs along those lines.

                  Part of the problem is the phrase “software patents.” Nobody wants to patent software, disembodied instructions divorced from any processor. What we should be discussing are “computer-implemented process patents.” The only question Congress needs to address is “Are computer-implemented processes patent-eligible?”

                3. “Just because it’s “easier” to kill under 101 does not make it right to do so. Misusing a statute for “expediency” is still misusing a statute and should not be done by any court.” I agree

                4. Maybe I’m just being cynical here, but I don’t think you all are being completely straightforward. That is, I don’t think you object to using 101 because of some long held belief about how statutes should be applied.

                  A patent can be ineligible under multiple statutes. 103, 112 AND 101. A law can be unconstitutional for many reasons.

                  I suspect you all object to the use of 101 because you believe it will be easier to traverse 103 rejections. For example, using the “food” example you write:

                  “Also, you’ve made an argument that, assuming it is true, should have been used as part of the Examiner’s grounds for rejecting the claim, i.e., the only difference between the claim and the prior art is the type of data and it was obvious to add this type of data to the claim.”

                  I can already see you writing the office action response. No motivation to combine, the references would be inoperable if modified, etc.

                  In my opinion, we shouldn’t have to have that argument. The claim is trying to protect making a food menu. That’s an abstract idea and ineligible.

                  I don’t understand why that is a problem.

                5. go,

                  You are not being cynical – you are being shallow and you are being pre-disposed to arriving at an end without taking the proper means to get there.

                  The ends NEVER justify the means.

                  And some of us really do care about how the statutes are applied. In patent law which is explicitly statutory law per our constitution, this is especially important.


          That’s Right,

          Building on your example of a “general purpose computer” and a “processor” looking the same as their functions change, I would also point out that similar things could be said about smartphones.

          Think about all of the devices that are included in a typical smartphone as built-in apps or as added apps that used to be separate devices: a music player, a calculator, a level, a compass, a phone, a videophone, a picture editor, a movie editor, a bar code reader, a date book, an appointment book, a typewriter, a dictation machine, a recording device, etc.

          The shape of the smartphone gives you only a few clues such as headphone jacks and camera lens as to what devices/functionality a smartphone may include.

      2. 8.2.2

        From a chemist’s perspective, you can make more significant structural changes than mere macroscopic shape and still fail to produce an eligible invention. In Myriad, one of the issues was whether separating out sequences of nucleotides amounted to making a new chemical compound. Doing this separation inevitably leads to breaking chemical bonds in the previous nucleotide sequence and creating new ones at the end points of the new nucleotide sequences, and thus it creates a new chemical compound. Despite this, the SC seems to be of the opinion that this structural difference is merely incidental and is not enough to make the compound truly new or different from what occurs in nature.

        One of the analogies I like is picking an apple from a tree. By picking the apple, you break chemical bonds and create something that didn’t previously exist in nature – but is the picked apple truly something that didn’t exist before?

        It seems likely to me that the SC would apply this same type of reasoning to transistors or to magnetic particles in a storage device. Sure, you can make incidental changes to them in the course of implementing software/firmware, just as you can ostensibly create a new chemical compound by breaking an apple’s bond to its tree. I don’t think the SC would find that these really create a “new” computer or a “new” apple.



          Your example and logic works against you, as the software-induced changes do create new functionality that easily passes the Myriad ‘test.’

          No one can seriously say that ALL future inventions by way of software improvements to a machine are “already in there.”

          A simpler analogy for you to grasp: three resistors in series versus three resistors in parallel.


            A simpler analogy for you to grasp: three resistors in series versus three resistors in parallel.

            One is a composition of matter, one is not.

            The math system embodied in a computer already contains all possible solutions that can be expressed, and that is a finite number.

            That is why new computer architectures are created – to get a larger solution set.


            “A simpler analogy for you to grasp”

            Please, anon, be respectful. Let’s make this site one for polite and productive conversations.

            Anyway, I don’t know much about electronics – can you explain to me why the configuration of resistors is analogous to segments of genetic info?


              I did not take the phrase as indicating any disrespect.

              If you can grasp the very real physical difference with a mere three items, even though you have exactly the same components, then you can then vastly multiply the very real differences that a computer chip presents.

              (even an outdated link should impress you: link to )

    3. 8.3

      Most people commenting on here cannot accept that transistors are physical objects, and data processing changes the state of millions of those transistors millions of times to cause a state of a memory to be changed, cause pixels of a display to change, etc. Instead, they look at the code and say “that’s just an idea”, much like blueprints for a machine are just an idea. The main problem facing software and data processing patents in general is that law is being made based on terrible examples of software patents. Very well written patents directed to software rarely get litigated.

      We also have all these people crying murder because of patent trolls that are using intentionally vague and poorly written patents for what could be argued to be a “software patent”. Now, everyone thinks all software patents are bad, vague, and abstract. Just my $.02. I agree with you generally correctly written software patents correspond to the physical change of the machine and the result of the physical change. To me, these types of software patents cannot be differentiated from Diehr. However, moving forward, many of them will be held to be directed to patent-ineligible subject matter through hand waving and “it just looks abstract to me” reasoning.

      1. 8.3.1

        I don’t think anyone commenting on this forum would disagree with the notion that software codes are expression of an idea, not “that’s just an idea”. After all, software codes are subject to copyright, which requires an expression of an idea rather than the idea itself.

        However, software claims are not directed to software codes, but the idea behind the software codes. Thats where the Supreme Court, and some people commenting on this board (including me), are concerned that attorneys are drafting software claims to patent an idea, rather than an application of the idea.

        Indeed, a lot of times Attorneys do draft claims to include a processor and a memory to reprogram a computer to perform certain ideas is really about patenting the idea. Even if no patentee would try to enforce their patent against average Joe for thinking about the idea in their mind, the thought that Government could regulate what goes on in people’s mind through a patent or some other form of legal instrument is certainly a valid concern; at least to the extent of whether such legal instrument would limit the scope to what an inventor actually discovered in order to promote the progress of science and useful art.


          The exact code is subject to copyright. You know how many alternative ways there are to write code to accomplish the same task?


          Richard, without some definition of what software is, a computer listing published on the network could infringe a software claim – even if the location of the server might be outside United States.

          Just as well, the publication of a book containing a computer listing would infringe.

          People have to define what it is they are talking about in detail and everyone has to accept it before we can even begin to talk about patenting software.

          Imagine, just for example, that we could patent cooking recipes. Books including recipes would infringe. People reading the book would have to pay royalties. Should we ask Dennis’s daughter whether she should pay royalties to a patent holder if she reads her book and it contains a patented computer program?

      2. 8.3.2

        Jordan, your ideas were expressed in Application of Bernhart, 417 F.2d 1395, 163 U.S.P.Q. 611 (C.C.P.A. 1969), formed the basis of In re Benson, and were soundly rejected by Supreme Court in Gottschalk v. Benson.

    4. 8.4

      “Software engineering is a useful art. It should be protected, just like all of the other useful arts.”

      In particular, software engineering should be protected from the patent bar that seeks to impose a system of monopolies that is incompatible with progress and innovation in software but ery lucrative to grifters and their lawyers. Copyright is the right system to reward software writers and those creators of software overwhelmingly don’t want any kind of patent monopoly applied to their field. The patent bar is not welcome and is insinuating harm where it is not wanted.

      “We need to work backwards from the result that software engineering inventions are patent-eligible”

      I admire your positive approach to the law and dispensation with angels-on-a-pin argument. Your conclusion is the opposite of true, of course. As the law is changed, whether through common law or statute, the patent system will be neutered where it is harmful and unwanted. Withdrawal now will prevent more widespread harm. Alice is not the worst thing that can happen to unrelated fields as software protects itself from monopolization.

      1. 8.4.1

        Your mantra only reflects the koolaid that you have drunk deeply of, and shows a lack of reason and of understanding of the law and of innovation.

        You fight a crusade with such zealotry, misunderstanding all along the way.

        Truly sad. Truly misguided.

    1. 7.1

      No matter what costume Miss Crouch changes into, she will always be Professor Crouch’s daughter.

    2. 7.2

      Wear that Les, and she’ll come home with an empty bag, or worse a bag of rocks.

      Nothing abstract about that!

      Cute kids and outfits Dennis.

      Maybe the PTO, Courts, and Congress will be back on the right track of properly (and Constitutionally) supporting patented innovation by time they grow up.

      That or the rest of the world will be cleaning our collective innovation clocks …

      1. 7.2.1

        I’m not concerned with her candy take. I’m only hoping to plant a seed. We need right thinkers like her on the court pronto.

  12. 6

    I am continually amazed that someone like Dennis does not get it.

    Ask the wrong questions, get the wrong answers.

      1. 6.1.1

        Richard, but the question is not the right question.

        Think Benson.

        Now ask the girl this:

        “You have two computers before you. Both are turned on. Which is new?”

        She will say, “What kind of question is that daddy?”

        But, you respond, “Can’t you tell, one is calculating BCD according to a first formula and the other according to a second formula?”

        She responds, “Don’t be silly.”

        Benson was concerned with a computer that simply stopped at the number and did nothing with it. Now, make that computer respond to the user in a new way, and we begin to talk.

  13. 5

    I will admit that your daughter is probably smarter than me…I cannot argue with genetics and upbringing. Though i have to ask, today she is 9, but would she be the same person when she turns 18, with 9 additional years of experience and knowledge? Or a completely different person?

    1. 5.1

      Four years ago, I had a conversation with a friend of mine, whose daughter just turned 14. As with any father with a daughter of that age, he was dealing with a 15 year old kid who was trying to earn his daughter’s patronage. So my friend started to post Facebook pictures of him wearing the DADD (Dad against Daugther Dating) t-shirt with a shot gun in his hands along with the message “you shoot the first one and the message spreads”.

      Obviously, shooting a 15 year old trying to earn his daughter’s patrongage is not exactly allowed under the law. So i jokingly suggested that perhaps he should have patent his daughter when she was born and file a continuation in part application on her birthday until she turns 20. In that manner, he could go to the closest federal court and file for an injunction against all who tries to earn his daughter’s patronage up until she’s 20.

      It was a joke because one’s daughter does not fall under any of the statutory category set forth in 101, though it would be tempting for a mother to argue that her daughter was an article of manufacture since she did most of the manufacturing. Nevertheless, if there is no 101 and patent law is dependent only on 102/103/112, then it is entirely possible for a knowledgeable father to adequately describe her daughter at ages 1, 2, 3…. and up to 20 to fulfill the written description requirement, along with the presumption that she is enabled (if she is living and breathing, she is presumably enabled). Further, a father’s daughter is obviously novel and unobvious to daughters of other fathers so 102/103 should not be too much of a problem.

      Applying this train of thought, there is no question that a father’s daughter at age 18 will have different knowledge and experience than she had at age 9. In other words, one’s daugher at age 9 would be different from the person that she will be at age 18. Nevertheless, one thing will never change and that is her nature as her father’s daughter.

      Similarly, yes, a computer programmed to perform abstract idea #1 would be patentably different under 102/103 from the same computer programmed to perform abstract idea #2 since its CPU / “brain” has been reprogrammed with additional functions. But the fundamental nature of the computer as a machine adaptable to perform different functions does not change under 101 as it is still just a machine. For that matter, the fundamental nature of abstract ideas #1 and #2 do not change as they are still abstract ideas and thus they still must be treated as though they were familiar parts of the prior art. Hence, there is nothing “new and useful” here.

      Only applications of abstract ideas #1 and #2 to solve particular problem with particular steps would fundamentally alter the equation such that a computer programmed to apply the ideas in those particular steps would become something “new and useful”.

    2. 5.2

      No Richard, surely she will be a different person, with different points of view and different concerns.

      Just as a computer becomes a different machine with each upgrade and with each software installation and un-installation.

      1. 5.2.1

        Hmm we could reply, but surely your not the same Les as you were when you wrote your comment this morning so why bother?

        Well lets try anyways. Since this morning your body has undergone billions of chemical changes at the cellular level, you have new proteins which have been manufactured, new nerve connections, and as a result you have new ideas stored in your brain, new memories and experiences. Oddly almost everyone still thinks of you as you, just as they think of a computer with millions of changes at the transistor level as.. well, still a computer capable of millions of changes at the transistor level.

        Now if you have acquired a new skill since this morning, and could do a new function wouldn’t that be great? A new and improved Les.

        Should we able to patent the new and improved Les? He’s the same person, capable of learning and implementing as before,but then he’s not really, we’ve added new information which has caused a physical change, and allowed for new capabilities. Should such a patent cover the idea of an improved Les generally? The idea of any person capable of a similar improvement? or the actual new process or method you are now capable of…


          Well….I have been publicly available all day… so there might be a bar date issue…and I’m not sure I qualify as a machine, manufacture or composition of matter….and my usefulness have been questioned…. I think 103, and inventor ship issues might trips us up….

          Anyway, I’m not too worried about infringers… so, prolly not worth the effort.

    3. 5.3

      “Sure, the box is the same in both situations. But, Microsoft Word obeys me and the the game thwarts my moves. I see them as very different. Its brain changes.”

      Miss Crouch distinctly pointed out that “the box is the same in both situations”. That is, the nature of the box remained the same even though the brain changed. In other words, Miss Crouch just pointed the difference between 101 “new and useful” and 102/103 “novelty” / “obviousness”.

      101 simply asks what is the nature of the subject matter? Is it an abstract idea or an application of such abstract idea? If it is just an abstract idea, then no matter how one changes a computer to perform the abstract idea, such a computer is still not “new and useful”. After all, “the box is the same in both situations”.

      102/103 ask whether there is a difference between the computer re-programmed to perform the abstract idea from the computer before its re-programming? If so, whether that difference would have been unobvious to one ordinarily skilled in the art? No doubt, the “brain” of the computer changed and hence it may be novel and unobvious.

      1. 5.3.1

        Richard –

        101 merely asks is it a process, machine, manufacture or composition of matter.

        It is the courts that have twisted it into other questions. Whether or not it is an abstract idea is only one of the many questions not in 101 that the courts see there.


          101 also asks whether such process, machine, manufacture, or composition of matter is “new and useful”. Under the doctrine that discovery of a principle in natural philosophy or physical science is not patentable because they must be regarded as well known, O’Reilly v. Morse, 56 ow 62, 115-116 (1853), “new and useful” asks whether a statutory category must be regarded as well known or treated as though it was a familiar part of the prior art.


            Your quoting courts again. Not the statute.

            Which is not to argue with your comments about new and useful. I have no argument with that except to point out that new is judged under 102/103.


              My argument is that something can be “novel” and “unobvious” under 102/103 but still not “new and useful” under 101.

              Some lawyers on this forum always point to statutes; except that under our Constitution, the Supreme Court gets the final say on whether statutes comply with the Constitution. That is why Affordable Care Act does not require every state to expand Medicaid and that is why Voting Rights Act no longer has a Section 4(b).

              A statute or Act of Congress matters only to the extent that the Supreme Court said it is ok. This is a tradition that dates back to the early 19th century and i don’t see how this will change for the centuries to come.


                The Supreme Court, as far as I know, has not declared 101 unconstitutional.

                I agree that useful is not judged under 102 or 103. But new is.

                1. Yet, when the Supreme Court interpreted 101, the Supreme Court insisted that “new and useful” is a question under 101, and it is not about “novelty” or “obviousness” under 102 or 103. Without the Supreme Court’s current interpretation of judicial exceptions are not “new and useful”, 101 may very well be unconstitutional as authorizing anything under the sun that is made by man, including every shadow of a shade of an idea to obstruct the progress of science and useful art. Atlantic Works v. Brady, 107 U.S. 192, 200 (1883).

                2. If the preambles are controlling then the right to bear arms is only a right for those in a well organized militia.

                3. Les, I agree that useful is not judged under 102 or 103. But new is.

                  I assume your authority is Judge Rich, correct?

                  May I remind you of the statutory history of this term “new.” It was added in 1793 to modify the several categories, but in the same sentence the claim was still not patentable if known or in use. Thus, the crafters of the 1793 amendments must of thought that new was not the same thing as the prior art “known or used.”

                  Moreover, the Supreme Court has interpreted requirement for newness to be independent for the requirement of being known or in use.

                  So I don’t understand, with all due respect Les, how you can make the statement you did. Please explain.

                4. Ned –

                  The point of the discussion here is the difference between what the statute says and the crap the courts have made up? Why are you challenging me based on more crap the courts have made up?

                  Has your court defined new to mean something other thank previously known? Have they bothered to reconcile that with the fact that both the Constitution and the Statute indicate that Discoveries are patentable and that there is nothing to “discover” other than laws and products of nature?

                5. Les, the description of what happened in 1793 says it all in my view. New is different from prior art. I think the added new be clear that it made no difference whether a composition, just added to the statute, was known or in use, it was not patentable subject matter if it was not new in the absolute sense.

                  Regarding the courts, Flook and footnote, I believe 14, stated that laws of nature and natural phenomena were not patentable even though newly discovered because they were not new in an absolute sense.

                  Myriad held that DNA was not a new composition, but a product nature.

                  The only authority that seemed to suggest what you argue is a case written by Judge Rich where he was this missing a product of nature rejection by saying that there was no independent “newness” test under 101 – that being a matter of section 102. I can’t remember the case, but hopefully others here can remember that case’s name.

                6. Your view on “absolute sense” cannot be correct.

                  I suggest that you refresh yourself on the America Invents Act and the change there to allow patenting of trade secrets as long as those secrets are relatively new – new to all but the inventor.

  14. 3

    A closely related question, how many computing machines have you got right now?

    I’ve only got physical computer, but it is currently running several dozen programmes. Does that mean I’ve got actually several dozen machines in front of me, contrary to all appearances?

    Some people do argue that it doesn’t make sense for one physical device to simultaneously be two different machines, that common sense dictates a one-to-match match between physical devices and machines. I don’t agree, but I can see where they’re coming from.

    1. 3.1

      No, now that your general-purpose computer has been programmed, it is no longer a general-purpose computer, but is, instead, a special-purpose computer (per Alappat).

      I can only presume that the “special purpose” of your “new” computer is the functionality delivered by the combination of dozens of programs that the computer has been “configured to” execute.

      As for the availability of resources in your special-purpose computer to add yet more software with its associated functionality, and that capability not qualifying your machine for consideration as still being a general-purpose computer, well, I’m not sure how to address that.

      Except, of course, by mentioning the regrettable ignorance that drove the Federal Circuit’s Alappat decision.

  15. 2

    This is exactly correct. The machine performs a different method depending on its programming. This is why a computer and a book are different. Not on the basis of physical or structural differences, but because the computer can perform a method that is new and useful.

    1. 2.1

      I agree too. I have a program that records my heart rate when I exercise. Without that program, my smartphone cannot record my heart rate. With the program, the smartphone can. Therefore, there are two different machines with and without the program.

      If recording heart rate is new and useful, one should be able to receive a patent on claims directed to a machine programmed to record heart rate — even if “math” or “algorithms” are involved.

      This argument that nothing can be patented that’s performed on a computer because “computers” have been around for a long time is senseless to me.

      1. 2.1.1

        PatentBob, not a single person is arguing this issue. Any machine that behaves differently in a physical sense is a new or improved machine.

        Why in the world do people constantly raise red herrings and strawmen arguments?

        The whole issue all along is about patenting information processing per se, or about business methods.


          ” not a single person is arguing this issue.”

          Ned, you argue that issue every day. And if you don’t MM and 6 do.


            Les, if you think that I do, then you too do not get it.

            I constantly say that if there is improvement in the computer or the computer arts, then the claim is patentable. If a program causes the computer to behave differently in a physical sense, enhances its utility as a machine, then the claim as a whole recites an improved machine.

            The problem occurs when the claimed subject matter is not directed to an improved computer but to information processing or to business methods or to something else that is not statutory.


              “I constantly say that if there is improvement in the computer or the computer arts, then the claim is patentable. If a program causes the computer to behave differently in a physical sense.”

              Ned – you argue that Installing Word in a computer that previously did not include a word processor does not create a new machine.

              What ever tiny niche your “physical sense” phrase refers to and which you concede is patentable is beside the point.


                Les, may I point out that I have repeatedly argued that Diehr is good law, that Alappat is good law, that a programmed disc drive is patentable, and that programming in general purpose digital computer that modifies the operation of the computer to the user or to a larger system is patentable subject matter. This is also the government position and I agree with it.

                At the same time, I argue that the presence of a computer where the operation of the machine or larger apparatus or process is unchanged as with most printed matter cases that are not functional to the underlying subject matter is irrelevant.

                There are distinctions here.

                1. Les, I am not surprised you that don’t understand what I mean.

                  If the program is nonfunctional with respect to a computer, a computer system, or a conventional process, then the computer simply being used rather than it or a larger process being modified. This is like the printed matter doctrine where printed matter is patentable if it is functional with respect to the underlying subject matter so as to modify it in some functional way.

                  I frankly don’t think you’ve ever understood the distinctions being made by the Supreme Court in Benson another cases. There is a difference between a new computer and using a computer. But you don’t seem to understand this basic principle.

                2. Les asks, Who is trying to claim a nonfunctional program?

                  Les, are you trying to be cute? I repeatedly defined the functionality to be with respect to the computer, the larger computer system or an otherwise patentable process so as to modify them to produce an improved computer, computer system or otherwise patentable process. These are specific kinds of functionality, while your question is not so limited.

                3. Blaming others for their not understanding what you mean is a rather poor form of argument.

                  As has been pointed out to you many times, you need to first change a machine by configuring that machine with software before you can merely “use” the software.

                  You also do not address the fact that machine components inoperable on their own are fully patent eligible as manufactures.

                  Your meaning might be more understandable if you took these items into consideration before you expressed yourself.


              Claim directed to information processing to information processing issued in 1889 (U.S. Patent No. 395,783):

              4. The combination, to form a system for automatically compiling and recording statistics, of a strip of non-conducting material perforated at intervals to designate separate items, grades, &c., pertaining to a single individual or object, a; series of electric circuits, contact-fingers, or terminals in each of said circuit to vary the current in said circuits as each perforation registers with the corresponding contact-finger, and a recording mechanism for each item, grade, &c., operated by an electro-magnet included in a circuit whose current is thus varied by the contact finger or fingers entering the perforation or perforations in the strip representing the item to be recorded, substantially as described.

              So information processing was recognized as patent eligible subject matter at least 125 years ago.

                1. Les,

                  Thanks for the catch. Here are claims from another Hollerith patent issued 1889 that claim methods of information processing:

                  1. The improvement in the art compiling statistics, which consists in first preparing a series of separate record-cards, each card representing an individual or subject; second, applying to each card at predetermined intervals circuit-controlling index-points arranged, according to a fixed plan of distribution, to represent each item or characteristic of the individual or subject, and, third applying said separate record-cards successively to circuit-controlling devices acted upon by the index-points to designated each statistical item represented by one or more of said index-points, substantially as described.

                  6. As an improvement in the art of compiling statistics, the hereinbefore-described method for facilitating the classification of individual records and simplifying the process of computation, which consists in first assigning to each item entering into the proposed series of computations one or more designated points or spaces; secondly, forming a complete record of each individual or subject upon a single card by applying a circuit-controlling index point or points to each space appropriated to or indicative of each separate item in the given series which pertains to the individual or subject, and, finally, feeding said cards successively to an apparatus operate by the index-points on each card designate the particular division to which it belongs, and depositing each card in a place or receptacle corresponding to the division thus indicated, substantially as described.

                2. Better – But it passes the machine branch of MOT. You got one that is pure process? In any event, I sure would like the patent number for that one.

                3. Les,

                  Sorry. No reply button below, so I will reply here to your request. The patent number that I took the claims from:

                  US 395781

                  Hollerith also has US 395782.


          “Any machine that behaves differently in a physical sense is a new or improved machine.”

          So why aren’t computers programmed to “behave differently in a physical sense” eligible?

          And I too would like to know what you mean by “in a physical sense” and what that has to do with eligibility.



            AAA JJ, think Alappat that modified the way data was displayed on a display. Think Diehr that modified a molding process to improve that process. Think a programmed disc drive that compresses data so that it takes up less space.

            All of these things do something physical to improve the machine or process. In contrast simply using a machine to calculate the improved BCD binary algorithm is not making the machine better, but simply using the machine.



              Think Arrhythmia.

              I will also remind you (yet again) that you must first change the machine by configuring with the software BEFORE you can use the software.

              If you can use the software on a machine without this first critical step, then – and only then – does your argument gain weight. This too has been capture by the points that I have placed upon the table for discussion in the concept of inherency.

      2. 2.1.2

        “Without that program, my smartphone cannot record my heart rate. ”

        Sure it “can”, you just have to tell it to.

        Saying your smartphone “cannot” record your heart rate without “the program” is like saying your oven “cannot” bake a cake without your turning it on, setting it to 400 degrees and shutting the door. You have to actually use the device for what it is made to do for it to actually do that thing, by whatever mechanism, be it telling it to do it with some software and then pressing a button, or turning a knob and shutting a door.

    2. 2.2

      >Not on the basis of physical or structural differences, but because the >computer can perform a method that is new and useful.

      Really. So, a machine can just magically perform new methods and perform new tasks without different structure. No.

    3. 2.3

      Bluto, I see that you cannot make distinctions as well.

      When a machine behaves differently to the world in a physical sense, of course it is a new or improved machine.

      1. 2.3.1

        Remember Ned, when you point a finger, several remain pointing back at you. You and MM are wandering in the desert of physicality and structure. Methods may or may not involve the physical objects.

        A generic computer, programmed with a first set of instructions for word processing will necessarily perform a different method than the same generic computer with a second set of instructions that provide a gaming experience.

        The commercial value (and claimed subject matter) should reside in the methods, not the generic computer. The fact that we have to claim processors and memory are simply artifacts of poor judicial and USPTO policies.



          Further to your point about physicality and structure, as I’ve pointed out in reply to someone else’s post, a smartphone may be a more graphical example than a general purpose computer of how the structure of a device does not change as the functions it performs do change.

          Without any change in structure, a typical smartphone can function as many other types of devices including: a phone, a videophone, a calculator, a television, a radio, a music player, a compass, a level, a barometer, an electronic book, an electronic calendar, a recording device, a dictation machine, a typewriter, a bar code reader, a scanner, a GPS, etc.



            This is why analogies between a computing device and a book are completely off point. Those advocating this position may as well argue that nothing is eligible anymore because all matter is composed of similar types of atoms. It’s an absurd reductionist position that is inescapable if their logic is followed.


              It is exactly the same logic as my big box of electrons, protons and neutrons.

              Three simple physical particles – nearly countless (and patent eligible, more or less) ways of configuring those three types of particles.


          Richard, operate differently in a physical sense is not the same thing has being physically different in terms of structure. Let us not confuse.


          Bluto, may I remind you in turn that the Supreme Court has never approved of any process that did not result in some physical phenomena.


          You can jump up and down all you want and tell me that I am wrong, but you have no case authority to support your view, and I have a wealth the case authority to support mine.

          The only two cases that have gone as far as you want are In re Benson and State Street Bank. Benson of course was overturned. State Street Bank was cited with opprobrium by the Supreme Court in Bilski. Thus your position not only is without case authority, it is flagrantly against Supreme Court authority.



            Your comment cannot stand next to what the Supreme Court HAS stated: MoT not necessary.

            You need no other affirmative example than that.

            This comes down to a discussion point many times put on the table: a clue simply is not the same thing as a requirement.

            (I think the one “jumping up and down” is not Bluto – rather, it is you, trying to play semantics with the words of the Court, without actually giving credit to the words that the Court have actually used)

      2. 2.3.2

        Ned: “When a machine behaves differently to the world in a physical sense, of course it is a new or improved machine.”

        Photons are physical – they have energy that can be measured. The output of any video display is photons. Therefore a computer with video display that displays different visual output = different physicality.

        Sound waves are physical – they cause measurable distortion in air. The output of computer speakers is sound waves. Therefore a computer with speakers that plays different audio output = different physicality.

        Is this what you mean?


          SlotGuy, in a sense, yes. But MS word changes the way the computer operates to the user.

          In contrast, using a computer to calculate BCD without more does not.


            I agree that a computer process that behaves differently (to the user) from prior processes should be patent-eligible, and patentable if it meets the other requirements, but that doesn’t appear to be the standard used by the courts right now. The Planet Blue technology discussed here a few weeks ago made things a lot easier for computer animators (the users) but that patent was held invalid. Do you agree with that decision?


              Slotguy, I’m not quite so certain that changing the way a computer operates is the same thing as a “computer process that behaves differently (to the user).”

              With respect to the rest of your question about planet blue technology and making it easier for computer animators, your sentence left off without telling us what was made easier for computer animators. Without that, I cannot answer your question.

  16. 1

    Wow, great looking kids Dennis. Glad to see you spend some of your time nourishing them.

    1. 1.1

      And, if it doesn’t sit well with you, then I think you need to resolve the issue of the equivalence of software/hardware/firmware.

      1. 1.1.1


        I think you likely intended to post your reply to a different comment, and I am responding under that assumption.

        I believe you habitually conflate Mano’s logical software/hardware equivalence with equivalence under the Doctrine of Equivalence.

        In your assertion, how do you address the second prong of the triple-identity test, which examines whether the function under examination is being performed “in substantially the same way” by the accused device?


          >I believe you habitually conflate Mano’s logical software/hardware >equivalence with equivalence under the Doctrine of Equivalence.

          I do not conflate the two at all. There at least two different things going on here: the science and the law.

          The science is that they are equivalent functionally. I am not sure what the case law is regarding DOE in this particular matter. It is an interesting point. Certainly, the right law would be that the DOE does apply. I can certainly get around almost all patents to hardware by putting some part of it in software. So, the DOE should extend to the equivalence.

          It is actually an interesting point you raise. The way it should play out if the judges weren’t activist and were educated is the way in which the information is being processed should control. So, it shouldn’t matter if the processing is in a circuit or software but rather how it is being processed (but again under the umbrella of all the solutions that were enabled to a PHOSITA).

          Hmmm….well, your accusation was wrong, but interesting.


          For example, Dobu, I have written patent application to consumer electronics. It would be trivial to get around them if all you had to do was put an a/d on a circuit and do some processing and then generate signal.

          You see the science cuts through.


            “It would be trivial to get around them if all you had to do was put an a/d on a circuit and do some processing and then generate signal.”

            Exactly, everyone that cares to file gets their own specific little implementation(s) instead of one entity controlling the abstraction. While others are free to make their own implementations. The same as in many other areas outside EE.


              I see that you still struggle with understanding the ladders of abstraction (a concept used in ALL art fields btw – yes, even “in many other areas outside EE.”

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