Non-Transitory Patent Claims

Patent

by Dennis Crouch

I was surprised when I ran these numbers and found that 4% of recently issued patents include a non-transitory claim limitation. (95% of these are in what I term computer-related arts).  For the most part, these are software patent claims.  However, because “software” per se is usually not considered patent eligible, patent attorneys moved toward claiming a computer-readable-medium having the software instructions stored therein.  More recently, the PTO concluded that those claims – when broadly interpreted – would encompass transitory signals which are not patent eligible under Section 101.  The PTO suggested that applicants amend their claims “by adding the limitation ‘non-transitory’ to the claims.”

TransitoryClaims

Open question – how many of these cases have written description support for the new non-transitory limitation?

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183 thoughts on “Non-Transitory Patent Claims”

  1. 22

    Why 112: The protection of “information” was not at issue in Nuijten. The broadest claim of Nuijten is as follows: A signal with embedded supplemental data, t

    LOL. You’re joking, right? Please tell me you’re joking.

  3. 20

    He’s going to need it – as it fully appears that the nine years and running blight will not alleviate any into the foreseeable future.

    Have a nice day!

      1. 19.1.1

        One VERY big difference between “process” and either of “transitory” or “abstract”….

        Can you guess what that difference is?

        It is a critical difference if you want to make an appearance and do battle in this legal domain.

        1. 19.1.1.1

          I assume you mean that “process” is written into the statue and the other are judicial refinements?

          Is there a real-world meaning to that distinction?

          1. 19.1.1.1.1

            Absolutely.

            It has to do with our Constitution.

            As I said – this very real difference has a most definite legal meaning.

            If you want to fight (and win) in this terrain, you will want to understand this terrain. See Sun Tzu.

          2. 19.1.1.1.2

            Is there a real-world meaning to that distinction?

            Who cares about the real world when we’ve got “anon’s” eternally decimating fantasy world to deal with?

            When Congress gets the Supreme Court out of patent law then everything will become crystal clear. Just you wait and see, Martin! It’ll be like a paradise of innovation. You’ll be able to litigate your patents remotely over your ComChip (TM), the robot jury will return the verdict in an hour or two, and your money will be transferred directly from the copyist’s bank account into yours.

            1. 19.1.1.1.2.1

              Being an untrained noob and all, maybe I see things in a light that others may not…

              Just as getting cancer tends to make one an expert in their kind of cancer, getting drilled in a nasty troll-like campaign has turned patent law into my second favorite indoor hobby.

              I’ve spent a lot of hours contemplating a legal test that could reliably define both “process” and “abstract” in §101 and
              §100(b), at least in relation to methods that involve information as a result.

              Such a test would have to accord with the body of existing patent law, be easy to apply at the district level, and of course, align with the currently prevailing doctrines of statutory construction and stare decisis on §101 jurisprudence (Mayo, Bilski, Alice, etc.).

              I think I may have something, but I don’t think the comment sections here would be a fruitful place to develop it. Maybe an amici filing in Ariosa Diagnostics, Inc. v. Sequenom, Inc if and when it goes up….

              Nonetheless, as it stands now, “process” is a nonce word…even if a statutory one…

              1. 19.1.1.1.2.1.1

                Your “hobby” leaves you ill-prepared for a discussion on the merits. Quite clearly, what you have been doing is reinforcing your already held biases.

                A decidedly poor way of preparing to enter the battle in the domain of law.

                1. …

                  awww even after I answered your little riddle Rumpelstiltskin?

                  Don’t worry, the guild is safe for the moment, but keep messing up like you have for the last 25 years…and well one never does know…

              2. 19.1.1.1.2.1.2

                Martin, “Art” was well understood in 1790. What I find highly objectionable that Kennedy pretended that any series of steps was a statutory process, subject to judicial exceptions.

                Clearly, Kennedy and his merry crew simply abandoned the law in favor of policy.

                1. …

                  Clearly Ned is yet again ig noring what happened in 1952 and 35 USC 100.

                  Psst, MoT remains JUST a clue.

                2. …

                  Anon, quoting back to me the holding of Bilski in order to support the notion that Kennedy’s opinion that any series of steps is a patentable process subject to exceptions is typical of you.

                3. …

                  I doubt that more than a very few judicial actors have abandoned law for policy in the matter of interpreting “Process”.

                  The term is a mirror of what one wants to see- in a well functioning political system, Congress would fix it, or the courts would find a reliable, repeatable test for it.

                  As MM points out, something about the ‘information age’ causes a reaction of mysticism and fear an policy makers at all levels- a special problem in a system where patenting information can be so destructive of value.

                4. …

                  Your “well functioning”: and Malcolm’s “pointing out” are two canard-peas in a pod.

                  The desire to act like things are a “mystery” is nothing more than the strawman and goal post moving exercises that my counter points show as false and dissembling antics.

        2. 19.1.1.2

          One VERY big difference between “process” and either of “transitory” or “abstract”….

          Can you guess what that difference is?

          “Process” is a noun, while “abstract” and “transitory” are adjectives.

  5. 18

    Wait a Minute.

    1. If the result of an invention is to put something onto a monitor or out through a speaker, isn’t that transitory?

    2. If a program is stored in a computer’s main memory, and that memory is DRAM, it needs to be refreshed periodically (about every 4 ms) or it goes away. Does that mean that a program stored in DRAM is transitory?

    3. If a program is stored in a computer’s main memory, and that memory is magnetic core memory (you can find it in the history books) there is a problem.

    In a core memory, reads are destructive. Reading a memory location destroys the contents. Then you write it back.

    The data is there permanently until you read it but in order to read it, it must be destroyed.

    Is that transitory or non-transitory?

    It is like if a tree falls in a forest and no one is there to hear it. Does it make a sound?

    If data is in core memory and no one reads it, is the data there?

    Or is it like Schrodinger’s Cat?

    4. Data in a Flash Memory is stored as charges in an oxide layer. Eventually the charges will leak away. (It’s called “bit rot”.)

    The time it take for Bit Rot to set in depends on several factors including the temperature history of the device.

    Figure 10 – 20 years.

    This assumes you don’t wear it out by exceeding the number of write cycles, which is most likely to happen first. (Don’t use Flash Memory to archive data.)

    5. Is Schrodinger’s Cat transitory or non-transitory?

      1. 18.1.1

        JM: Is it possible that the phrase “non-transitory computer readable medium” is simply supposed to exclude a computer readable medium that consists of one or more carrier waves?

        Oh my.

        It can’t be. That would make too much sense.

        1. 18.1.1.1

          So, you don’t mind a term like “non-transitory”, even though this term has never been defined and has no clear meaning (as evidenced, e.g., by the many posts here on the subject), but you cannot stand a term like “laminated”, which has a clear meaning to everyone but you?

          2. 18.1.1.1.2

            “non-transitory”, even though this term has never been defined and has no clear meaning (as evidenced, e.g., by the many posts here on the subject),

            Nobody knows what “transitory” means! You heard it here first, folks. “Transitory”, “borgoflarb”, “vorvolitudinous”, just completely made up stuff without any meaning.

            you cannot stand a term like “laminated”

            Yes, let’s just make up pure baloney because it pleases ourselves. Keep up the great work, PB.

            1. 18.1.1.1.2.1

              There is no “pure baloney” here Malcolm.

              Your indication as to such is simply dishonest.

      2. 18.1.2

        That’s why some people add limitations such as “a computer readable medium that does not encompass carrier waves”. However, the PTO may or may not like that.

        1. 18.1.2.1

          One would think “a computer readable medium that does not encompass carrier waves” would be the default if the written description contains no explicit reference to carrier waves.

          Of course, the one time I tried to write a Beauregard claim, I just used “non-volatile computer memory” because that was the phrase contained in the written description.

          1. 18.1.2.1.1

            Yikes. You’ve only used one Beauregard claim? In what field do you write patents? (I can’t remember the last case I wrote that did NOT have a Beauregard claim.)

            1. 18.1.2.1.1.1

              PB: I can’t remember the last case I wrote that did NOT have a Beauregard claim.

              Now it all starts to make sense.

            2. 18.1.2.1.1.2

              In theory, I don’t write patent claims. I am supposed to be an engineering scientist. I assist patent prosecutors and litigators as they do the legal stuff.

    2. 18.2

      Can I play the “I was born yesterday” game, too? You guys seem to be having soooooo much fun.

      1. If the result of an invention is to put something onto a monitor or out through a speaker, isn’t that transitory?

      Nobody is suggesting that the transitory nature of the “result” of the invention is relevant here. The issue is the eligibility of a signal (e.g., an electromagnetic wave traveling through space).

      2. If a program is stored in a computer’s main memory, and that memory is DRAM, it needs to be refreshed periodically (about every 4 ms) or it goes away. Does that mean that a program stored in DRAM is transitory?

      Programs don’t belong in the patent system so who cares?

      If a program is stored in a computer’s main memory, and that memory is magnetic core memory (you can find it in the history books) there is a problem.

      There are all kinds of problems associated with patenting programs. You’ve identified another one? Congrats.

    3. 18.3

      No One in Particular,

      By George, I think you’ve got it! Since patents expire 20 years after filing (give or take, but lets not quibble), any information (data) storable for more than 20 years is non-transitory for all useful purposes.

      1. 18.3.1

        Let me know where this sui generis patent requirement comes from that the shelf life of the item must endure for the entire term.

        (you do know that not a single pharmaceutical compound has a shelf life that long, right?)

        Big Pharma won’t be happy with you.

        1. 18.3.1.1

          Anon,

          Big pharma won’t care. They do not use “non-transitory” claim limitations as far as I know.

          1. 18.3.1.1.1

            Everything is transitory (and that is the point, eh?)

            But here to your post, there is NO pharmaceutical product that retains its utility for a twenty year term – so, yes, Big Pharma is going to be a bit ticked at where you are going.

  6. 17

    “Non-transitory” has “government agency” written all over it. Is matter transitory? Is a signal bouncing back and forth between to opposing reflectors transitory? Arguably, everything is transitory … life, the Universe, Pauly Shore’s career; it’s all relative. Even the most allowance-minded attorney should think twice about whether the PTO’s fondness for “non-transitory” makes the term definite.

    Here’s a conundrum. Laser light (a signal) is passing through a special solid state material that can be controlled to be opaque or transparent. As the light is passing through the material in a transparent state, the material is turned opaque, and the light is locked into the material (it lasts about a minute). Is the light locked in the material transitory?

    google “Viewpoint: A Long-Term Memory for Light”

    1. 17.1

      Nice add, HOPoB,

      oh, I wish upon a star, whose transitory existence I long to have my own non-transitory existence match in duration…

    3. 17.3

      Arguably, everything is transitory

      How strange, then, that someone ever tried to make a distinction between transitory and instransitory things.

      I’ve heard it said here as well that “everything is abstract.”

      Patent attorneys truly seem like they are from another planet, sometimes.

    1. 16.1

      Most…?

      ALL patents are transitory.

      Which ones, my friend, make up the ones outside of the “most” that you have in mind?

      Perhaps unwittingly, you make the point that “transitory” is but an artiface, a sham, a device best retired.

  8. 15

    The cover article of the September 2011 issue of Intellectual Property Today had an article discussing the mess that is “non-transitory.” Too bad no one at the Patent Office seems to have read it.

  9. 14

    What software or service are you using to run these numbers? Just curious what is best way to broadly analyze PTO happenings.

      1. 14.1.1

        Dennis,

        All, as in all about two million since 2000? From the PTO? Using their Search Patents? What search terms does one use?

        1. 14.1.1.1

          The USPTO has ReedTech hosting all the data for bulk download and macro-level analysis. Head to link to patents.reedtech.com

          More realistically, one could do the queries on any of the commercial search engines such as Innovation, Orbit, PatBase, TotalPatent, STN, or even many of the lesser known commercial engines.

          1. 14.1.1.1.1

            PS DIP,

            Thanks. I see that one can download a variety of bulk data from Reed Tech. Since 1976, issued patents are organized as one ZIP file (without much compression) of about 100 MB per week.

  10. 13

    I suggest anybody looking for a good read on the history of “signal claims” read the following article from 2005:

    link to integrityip.com

    In vol. 61, No. 40, pages 74-78 of the Federal Register dated February 28, 1996, the USPTO published a set of guidelines that included examples of statutory subject matter. Example 13 reads as follows:

    A computer data signal embodied in a carrier wave comprising:
    a. a compression source code segment comprising [the code]; and
    b. an encryption source code segment comprising [the code].

    This claim was described by the USPTO as being statutory subject matter. The following is from the August 2001 version of the MPEP:
    However, a signal claim directed to a practical application of electromagnetic
    energy is statutory regardless of its transitory nature. See O’Reilly, 56 U.S. at 114-19; In re Breslow, 616 F.2d 516, 519-21, 205 USPQ 221, 225-26 (CCPA 1980).

    1. 13.1

      And then came the 2006 Fed. Cir. panel decision noted below, In re Nuitjen, and that old PTO position on claiming signals themselves, rather than an apparatus for generating them, suddenly became obsolete.

      1. 13.1.1

        Yes Paul, Nuitjen is controlling law.

        That’s not the point.

        The point is how factually bad that decision is – factually as to anyone who understands physics and the law.

        Anyone else who merely wants a pre-determined philosophically driven ends, just bumble along with your eyes closed.

        1. 13.1.1.1

          Nuitjen is controlling law.

          That’s not the point.

          The point is how factually bad that decision is

          Regardless of how “factually bad” you beleive it is, the decision will never, ever be reversed — even if it were “factually better” — so maybe quit your crying about it.

          Nine years have gone by. Anyone notice a massive decline in the number of “new signals” being “innovated”?

          Me neither.

          1. 13.1.1.1.1

            Your own words bring more condemnation than I could pen when you (gleefully) embrace an ends reached not only through suspect means, but admittedly bad means.

            That “nine years” also marks something else as rank….

    2. 13.2

      Anon, methods of producing signals were held patentable in the American Bell Telephone cases.

      Morse? System of signs, etc. Is that a claim to a signal or a process? I think the latter.

      2. 13.2.2

        I don’t read Morse as explicitly rejecting the patent-eligibility of a signal.

        I read Morse as the categorical rejection of any claim that recites a (the transmission of alphanumeric signals) without (1) any particular implementation (“by any means whatsoever”), and (2) any particular purpose or problem to be addressed.

        Morse is about both the “abstract ideas” exception, and preemption. It is not about the patent-eligibility of particular statutory classes. As I recall, none of the (non-apparatus) claims in Morse centrally recited a “signal” as the statutory class – they read like: “the use of electromagnetism to transmit messages.”

        1. 13.2.2.1

          Actually, Morse based its holding in the then analog of 112. It was NOT and exception.

          1. 13.2.2.1.1

            …and yet, when there was a 101, the Court did not use 112, but instead attempted to use 101.(with Morse.

            Why is that, Ned?

            Yes – I do have my “theory,” and it very much has to do with a facial feature and a substance made by bees.

            1. 13.2.2.1.1.1

              Morse was not a 101 case. However, Rubber-Tip Pencil was. That is it case upon which the Benson rested.

  11. 12

    Dennis, the only support for Beauregard claims the I see in most patents is no more than a recitation of a general purpose digital computer.

    1. 12.1

      Wouldn’t it be hilarious if the PTO and the courts were to hold that the term CRM was governed by 112(f), and were to look to the specification for corresponding structure?

    2. 12.2

      Below is a Beauregard claim that I proposed for a 1990s patent application. Because the attorneys were uncomfortable with my use of relative clauses, which differed from usual patentese, it was entered in a somewhat different form. I believe it contains a good deal more than a recitation of a general purpose computer.

      [The claim will be clearer if the HTML pre tag works. I have never tried this particular tag in this forum.]

      For use with a network switching device having a plurality of
      input/output devices, a non-volatile computer memory that stores
      software instructions

      that direct a processing unit to configure the network switching
      device and to operate the network switching device once
      configured,

      that include:

      at least one configuration routine that:

      defines one or more logical bridges, wherein each of the
      one or more logical bridges includes one or more ports
      that provide one or more connections to a logical bridge,

      selectively associates each of said input/output devices
      with a selected one or more of said logical bridges, and

      creates one or more data structures that represent which
      input/output devices have been associated with each
      logical bridge; and

      at least one bridging routine that responds to said one or
      more data structures by creating said one or more logical
      bridges with which one or more input/output devices have been
      associated to operate as one or more separate media access
      control level bridges including, and having an attached a port
      for, each of the input/output devices represented as being
      associated with such logical bridge by said one or more data
      structures,

      whose said configuration routine upon execution creates the
      one or more data structures, and

      whose said bridging routine upon execution operates the one or
      more separate media access control level bridges.

  12. 11

    Also of interest (and amusement) are the 40+ patents with claims that explicitly state they are “non-statutory” as in a “non-statutory computer readable storage medium.” Care should have been taken so that a spell checker did not translate “non-transitory” into something requiring a Certificate of Correction.

  13. 10

    Precedential opinion in In Re Steed (CAFC 2015) published today. Try to believe this claim (tanked as obvious by the Board, affirmed as such on appeal):

    37. A fully automated and web-integrated … system including

    a user interface, comprising different screen layouts for:

    a first web page; and a second web page; and a cross-bar switch, where the cross-bar switch can turn on/off a connection between any pair of databases; and

    wherein: the system is configured to aid a first user in a first plurality of roles;

    the system is configured to aid a second user in a second plurality of roles different from said first plurality of roles;

    the first web page has first interface elements specific to the first plurality of roles;

    and the second web page has second interface elements specific to the second plurality of roles, wherein

    certain data is assigned to only the first plurality of roles, the second plurality of roles and/or an intersection of the first plurality of roles and second plurality of roles.

    Why on earth would any sane patent system want its appellate court to waste more than two seconds of its time on incredible junk like this?

    1. 10.1

      This sounds like a program/web page that has one interface for doctors or the like and second for patients. Systems like this were available were available some time ago, probably well before the filing dates of either the application at issue here, or the reference that is being used against it.

      I really do not know what the novelty could be.

      However, I do not dismiss it patent eligibility out of hand.

      1. 10.1.1

        This garbled nonsense got patented. I shouldn’t be surprised I guess.

        But let’s keep arguing dicta from 1800s cases that emphasize how your poor little corporate clients are having their constitutional rights unfairly violated.

        Amazing how easily the big picture gets obscured over here.

        1. 10.1.1.1

          McCormick Harvesting directly held that PTO could not revoke a patent claim.

          T, regarding “old” cases, where do you get the idea that patent law began in ’52?

          1. 10.1.1.1.1

            I don’t think “T” is arguing that patent law began in 1952 – although if he were to point out that you apparently (still) don’t grasp what happened that year, he would have it right.

        2. 10.1.1.2

          This garbled nonsense got patented. I shouldn’t be surprised I guess.
          It was a “In re” case — that means it came from the USPTO — not patented unless from a reexam (which it wasn’t).

          The decision only had one paragraph on the obviousness issue. The rest was on other issues.

      2. 10.1.2

        Systems like this were available were available some time ago

        No doubt.

        So how in the world can labeling the “first user” and “second user” more specifically possible turn old database/communication technology into an “invention”? Doctor/patient? Lawyer/client? Real estate agent/home buyer? Grandma/grandson? Judge/clerk? X Johnson/Y Smith? All these relationships and their “pluralities of roles” “automatically” “configured”. So awesome.

      3. 10.1.3

        It’s a loan recovery system.

        Here is the full claim.

        37. A fully automated and web-integrated debt recovery system including a
        user interface, comprising different screen layouts for:

        an administrator web page; and

        a collector web page; and

        a cross-bar switch, where the cross-bar switch can turn on/off a
        connection between any pair of databases; and

        wherein:

        the system is configured to aid an administrator in a first plurality
        of roles;

        the system is configured to aid a collector in a second plurality of
        roles different from said first plurality of roles;

        the administrator web page has first interface elements specific to
        the first plurality of roles;

        and the collector web page has second interface elements specific to
        the second plurality of roles,

        wherein certain data is assigned to only the first plurality of roles,
        the second plurality of roles and/or an intersection of the first
        plurality of roles and second plurality of roles.

        Here is how I would have written the claim in patentese that could be parsed by standard prescriptive English grammar rules.

        37. A fully automated and web-integrated debt recovery system

        that includes a user interface that comprises different screen layouts
        for:

        an administrator web page; and

        a collector web page; and

        a cross-bar switch, that can turn on/off a connection between
        any pair of databases,

        that:

        is configured to aid an administrator in a first plurality of
        roles; and

        is configured to aid a collector in a second plurality of
        roles different from said first plurality of roles,

        in which:

        the administrator web page has first interface elements
        specific to the first plurality of roles; and

        the collector web page has second interface elements specific to
        the second plurality of roles, and

        in which certain data is assigned to only the first plurality of roles,
        the second plurality of roles and/or an intersection of the first
        plurality of roles and second plurality of roles.

        ———————–

        There are two means + functions limitations (configured to), whose indefiniteness cannot be judged without reading the written description which is not available in public PAIR.

        The claim seems to describe a short node.js program that runs in the vast metacomputer/execution environment that is the WWW, that uses web browsers as input/output terminals, and that modifies certain data structures (including databases), which exist in the execution environment. The program in no way improves the WWW qua metacomputer execution environment. The program would be equivalent to a (probably multiple tape) Turing machine and is thus a computerization of pencil-and-paper calculations. The claim should almost certainly be 101-ineligible under Bilski v. Kappos, 561 U.S. 593 (2010) and under Gottschalk v. Benson, 409 U.S. 63 (1972).

  15. 8

    What should patent practitioners include in applications to ensure that there is written description support for the new non-transitory limitation?

    1. 8.1

      They should say embodiment include instructions carried on or in one or more non-transitory computer readable medium, which when executed by a computational element carry out the method of Fig. 3. Subsequent sentences should list every imaginable kind of computer readable medium and every imaginable computational element, leaving room for new developments in both fields.

      1. 8.1.1

        “Medium” is probably why we are in this mess. Just say “device” or “machine” and be done with it.

          1. 8.1.1.1.1

            Machine is in there too.

            Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

            1. 8.1.1.1.1.1

              I don’t see “Gist” in there though….

              Maybe I need to clench my eyes shut more tightly…

              1. 8.1.1.1.1.1.1

                My personal opinion is that CRM/manufacture claims that attempt to claim software (even if residing on a CRM) or a medium containing software are too far afield of patents and into copyrights for my tastes.

                I’d like to see a well developed series of cases discussing this issue. As far as I’ve been able to tell, there is no court that has squarely addressed this issue.

                1. …

                  PatentBob,

                  Don’t go into the weeds. CLEARLY, even if you don’t practice in copyright, you must surely know that copyright expressly does not cover protection for functionality.

                  The plain fact of the matter is that copyright and patent protection cover different aspects. Items CAN – and do – garner protection from each set of laws for their respective aspects.

                  You do not need any court squarely addressing an issue that would not rise to a contested item in the first place to be in court.

  16. 7

    Very few of these cases explicitly define the term “non-transitory.” The USPTO has taken the position that “non-transitory” has a specific meaning in the field of art, even if it’s defined in the specification. Applicants wildly disagree: some are perfectly fine with it, others explicitly refuse, and still others handle it on a case-by-case basis.

    For computer-readable medium (CRM) claims, the breakdown kind of goes like this:

    (1) If the claim recites “non-transitory”:

    (1.1) If the claim uses an adjective for “memory” that the specification does not define as including signals: Allowed.

    (1.2) If the claim uses an adjective for “memory” that the specification does define as including signals: Rejected.

    (2) If the claim does not recite “non-transitory”:

    (2.1) If the claim uses an adjective for “memory” that the specification defines as explicitly and unequivocally excluding signals: Allowed.

    (2.2) If the claim uses an adjective for “memory” that the specification does not define as explicitly and unequivocally excluding signals: Rejected.

    That’s how probably 90% of examiners have been handling 101/Nuijten issues for a couple of years now.

  17. 6

    Would a disclaimer of any/all “transitory” scope be sufficient to both avoid written description support issues and to overcome the rejection? Just curious what others think.

    1. 6.1

      Would a disclaimer of any/all “transitory” scope be sufficient to both avoid written description support issues and to overcome the rejection?

      “Disclaimers” are just like any other claim limitation. They also require written description support.

      1. 6.1.1

        I disagree. I can disclaim aspects of a patent without WDS. Prosecution History Estoppel and Terminal Disclaimers.

        1. 6.1.1.1

          I can disclaim aspects of a patent without WDS.

          That depends very much on what you are trying to claim and what you are trying to disclaim. Again, what you can get away with at the USPTO is very different from what you can get away with when you are trying to extract money from another person with wise, competent counsel.

          Learn how to write a decent patent application, folks. Yes, it involves understanding the prior art rather than pretending that you were born yesterday. Not too difficult, really.

          1. 6.1.1.1.1

            Still against software per se, Malcolm?

            You do know that your “advice” here is a fail as to the rest of your d0gma…

        2. 6.1.1.2

          I disagree too. For instance, you can disclaim any previous arguments you made (in fact, if you file a continuation with a broadened claim, it behooves you to disclaim the previous arguments you made).

          Since “non-transitory” is completely made up and has no clear meaning, why can’t you disclaim it?

          1. 6.1.1.2.1

            There is in truth NO such thing as non-transitory.

            Everything is transitory.

            Show me something that you seem non-transitory and I will show you something that you haven’t looked at in a great enough time scale.

            Gee, my “not enough” makes me sound soooo Judicial.

            /off sardonic bemusement

        3. 6.1.1.3

          I disagree. I can disclaim aspects of a patent without WDS. Prosecution History Estoppel and Terminal Disclaimers.

          Of course you can’t, what a silly statement. When you have a genus you need specific description support for a species. What do you even do? Take a broad statement and then start disclaiming the prior art cited against you? That’d be an easy way to get an allowance I guess, but it wouldn’t stand up in court if it happened.

          1. 6.1.1.3.1

            Seems like your twisting the issue by talking about prior art. The issue at hand is judicial exceptions. Terminal disclaimers are used in context of the judicial doctrine of double patenting. No WDS is needed for that. It seems to me it could be possible to argue against the PTO’s broadest unreasonable interpretation of a storage device being a pure signal by saying this patent does not cover a pure signal and I dedicate that to the public.

            1. 6.1.1.3.1.1

              Terminal disclaimers are used in context of the judicial doctrine of double patenting. No WDS is needed for that.

              Of course not because you are only disclaiming patent term. You’re not carving specific subject matter out of your claim.

            2. 6.1.1.3.1.2

              I invented that, double patenting is now based on 101 and is not an exception. At common law, it was one of the recognized grounds to invalidate as second patent on the same invention.

    2. 6.2

      Reminds me of the disclaimer: “I only claim what is patent eligible”

      Even given the fact that the Court has refused to even bother defining “abstract,” ( and won’t give such a bright line direction for fear of being “out-scrivened,” the attempt to say “bah, let me know when you make up your mind” most likely won’t fly – no reverse “I know it when I see it” is allowed.

    3. 6.3

      I am also reminded (a point I made at the Professor’s Fifty Year Battle thread iirc) of the disclaimer that would blunt the inappropriate use of the Mental Steps doctrine.

      I say “inappropriate” because a careful recollection of that doctrine easily points out that that doctrine was created to protect something other than the anthropomorphication of machines that emulate human behavior.

      If we were to <i.ever venture into the zone of inte11ectual honesty concerning what a computer really is and what the vast and seemingly unending component of a computer called software really is, then we would ALL plainly see that the fuss being kicked up simply has no place in the statutory law that Congress duly authorized has penned.

  18. 5

    Refer to the memo by Kappos dated January 25, 2010. The a copy of the memo can be found: link to patentlyo.com

    As stated therein:

    A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. §101 by adding the limitation “non-transitory” to the claim. Cf: Animals -Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (suggesting that applicants add the limitation “non-human” to a claim covering a multi-cellular organism to avoid a rejection under 35 U.S.C. 5 101). Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se.

    The Memo further goes on to state the following regarding when support is not found:
    The limited situations in which such an amendment could raise issues of new matter occur, for example, when the specification does not support a non-transitory embodiment because a signal per se is the only viable embodiment such that the amended claim is impermissibly broadened beyond the supporting disclosure. See, e.g., Gentry Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998).

    1. 5.1

      Kappos: Such an amendment would typically not raise the issue of new matter, even when the specification is silent because the broadest reasonable interpretation relies on the ordinary and customary meaning that includes signals per se.

      I would have argued something different, i.e., “…because the BRI relies on the ordinary and customary meaning [of computer-storage medium] that includes a non-transitory medium.”

      It’s still not “written description support” in the strict sense. And there’s no reason that drafters shouldn’t have been including better written description support (but the drafters of software applications have been several steps behind the patent laws since pretty much forever — I don’t see that changing anytime soon).

      1. 5.1.1

        The argument is that the boilerplate language of: “CD-ROMs, DVDs, memory, etc.” provides support for non-transitory computer readable medium just like the boilerplate language of “screws, nails, rivets, pins, etc.” provides support for rigid connectors

        It’s still not “written description support” in the strict sense.
        There is no requirement for absolute written descriptive support. Words in the claims do not also have to be found within the specification.

        1. 5.1.1.1

          Why 112: There is no requirement for absolute written descriptive support.

          Right — except where it makes a difference to somebody you are trying to sue and they have an excellent legal team. Depending on the subject matter, you’ll be wishing you had that “absolute” written description support. The thing is: it’s not terribly difficult to provide that support in the first place at little cost and it comes in handy for other purposes than overcoming 101.

          Those who regularly prosecute applications for worldwide protection quickly learn how to satisfy written description requirements that are stricter than the requirements imposed by the USPTO or US courts.

          1. 5.1.1.1.1

            Depending on the subject matter, you’ll be wishing you had that “absolute” written description support.
            Its always nice to have absolute written descriptive support, but it isn’t necessary. Plenty of case law supports that position. MPEP 2173.05(e) also talks about lack of antecedent basis for claim language. 37 CFR 1.75(d)(1) states “the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.” Clear support (not just antecedent basis) is sufficient.

            The thing is: it’s not terribly difficult to provide that support in the first place at little cost and it comes in handy for other purposes than overcoming 101.
            It isn’t. However, the language in a specification is based upon how the USPTO was treating certain claim language at that time. The USPTO didn’t get into to their “non-transitory” kick until very recently.

            1. 5.1.1.1.1.1

              A clear example of Judge-Made patent profanity.

              What is less amazing is the clarity of those that think that such profanity is not only acceptable, but a “good thing.”

              There is a very good reason why the constitution did not allocate authority to the judicial branch to write patent law.

              But no one** wants to have that conversation.

              **no one pushing for legislation from the bench that is.

            2. 5.1.1.1.1.2

              The USPTO didn’t get into to their “non-transitory” kick until very recently

              Right. And that was totally unexpected and shocking because everyone just assumed that you could patent a “new” signal based on the information it carried. That’s why we saw such a massive increase in signal patents when radio, TV and phones became commonplace.

              Oh wait …

              1. 5.1.1.1.1.2.1

                And yet again Malcolm, you dissemble as you very well know (making the admission against interests on the record here) that the functionally related aspect is quite different than the C R P you are trying to implicate as demonstrative.

                Maybe instead you can try a little inte11ectual honesty…

              2. 5.1.1.1.1.2.2

                Right. And that was totally unexpected and shocking because everyone just assumed that you could patent a “new” signal based on the information it carried.
                First, as I mentioned earlier (and ignored by you), the popularization of signal claims was based upon an example provided by the USPTO.
                Second, after Nuijten, nobody claiming a computer readable medium intended their language to cover a signal.

                Nuijten issued in 09/2007. It wasn’t until 2010 that Kappos issued his technically-incorrect memo (that began the “non-transitory” kick) that computer readable mediums encompass signals per se. It wasn’t until 2014 that the PTAB, in Mewherter, also issued the technically-incorrect decision that storage mediums cover signals per se.

                Nobody argues that their claims encompass signals per se since Nuijten came out (8 years ago).

                Moreover, if never read or seen anyone argue “that you could patent a ‘new’ signal based on the information it carried.”

                That’s why we saw such a massive increase in signal patents when radio, TV and phones became commonplace.
                Wrong — for reasons discussed above.

                1. …

                  the popularization of signal claims was based upon an example provided by the USPTO.

                  So? The USPTO regularly presents all kinds of examples that are ridiculous and wrong. People who blindly follow those examples without questioning the PTO’s competence are …. incompetent.

                2. …

                  if never read or seen anyone argue “that you could patent a ‘new’ signal based on the information it carried.”

                  LOL. You really need to step out of your cave sometime. What the heck do you think Nuijten was trying to patent?

                3. …

                  LOL – the man who wants to deny patent protection to the form of innovation most indicative of modern society wants someone else to step out of the cave….

                  WAY too funny.

            3. 5.1.1.1.1.3

              Why 112: Its always nice to have absolute written descriptive support but it isn’t necessary

              You keep repeating “it isn’t necessary” as if I’m arguing with you about that. I already agreed with you that “it isn’t necessary.”

              Lots of things in life “aren’t necessary”. But intelligent, competent people understand that making progress and achieving goals with those things is way, way, way easier than without them.

              The fact that absolute written description support “isn’t necessary” is something that ends up being emphasized pretty much only when you’ve failed to provide it or when you’re looking for a shortcut.

              1. 5.1.1.1.1.3.1

                You (again) seem to have a real problem with optional aspects.

                Clearly, when you take the stand that “ understand optional but only MY way survives the law” you just do NOT understand what the word “optional” means.

        2. 5.1.1.2

          I’ve always believed CDs and DVDs were/are transitory. I have many CDs I can no longer play due to scratches. Further, some CDs and DVDs have been known to fail even without scratches.

      2. 5.1.2

        In the strict sense, it absolutely is.

        But that strict sense means the strict legal sense, and not the pedantic version you were hoping for.

  19. 4

    With current OCR technology and a scanner, my PC could read a program listing, compile the scanned program, and execute it.

    Nowadays, a non-transitory computer-readable medium includes paper on which optically recognizable characters have been printed.

    1. 4.1

      (s i g h)

      The exceptions to the judicial doctrine of printed matter already cover this.

      And you don’t even have to just address software to have your answer – think lines on a cup or numbers on a magic hat band.

      It is rather difficult to move the conversation forward when the same point has to be gone over again and again and again….

      1. 4.1.1

        I thought I was describing exactly a case wherein the printed matter doctrine specifically allowed a patent.

        Printed-Matter Doctrine Law & Legal Definition

        Printed matter doctrine is a principle of patent law that says printed matter may not be patented unless it is a physical part of a patentable invention.

        The following are examples of case law discussing the doctrine:

        The test for application of the printed matter doctrine is that where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.[Bloomstein v. Paramount Pictures Corp., 1999 U.S. App. LEXIS 21391 (Fed. Cir. Sept. 3, 1999)]

        Printed matter alone and by itself does not constitute a ‘manufacture’ and is not within the statutory classes of patentable subject matter. However, as an exception to this rule, printed matter may constitute an element of a patentable claim if the claim involves a new and useful feature of physical structure or a new and useful relation between the printed matter and the physical structure.[Bloomstein v. Paramount Pictures Corp., 1998 U.S. Dist. LEXIS 20839 (N.D. Cal. Mar. 10, 1998)

        1. 4.1.1.1

          JM: Printed matter doctrine is a principle of patent law that says printed matter may not be patented unless it is a physical part of a patentable invention

          The “doctrine” says a bit more than that (and simultaneously says pretty much nothing at all).

          Most importantly, the “doctrine” isn’t limited to information that is “printed”. Also, the “doctrine” is really little more than the Prometheus v. Mayo subject matter eligibility test rephrased and including a Supremely untested, judge-manufactured loophole that you could drive a truck through.

          When’s the last time the PTO sent a memo out reminding Examiners that the “printed matter doctrine” isn’t limited to “printed matter”? i.e., that the “doctrine” (and the eligibility issues underlying the doctrine) is equally relevant to claims reciting displayed information?

          1. 4.1.1.1.1

            Also, the “doctrine” is really little more than the Prometheus v. Mayo subject matter eligibility test rephrased.
            A very astute comment. Compare how the Courts characterized the respective inventions in Mayo (101) and King Pharmaceuticals (pseudo-printed matter).

            Given the Mayo, is there really a need for the printed matter doctrine anymore? Cannot any claim whose limitations were ignored based upon the printed matter doctrine also be rejected under 35 USC 101 based upon Mayo?

            1. 4.1.1.1.1.1

              Just to follow up, the printed matter doctrine originally started out as an exception to patentable subject matter (see, e.g., In re Russell, a CCPA case from 1931). Over time, however, the doctrine changed from impacting patentable subject matter to impacting whether certain claim language was to receive patentable (probably in view of the 1952 patent act). For example, a book (one of the first, if not the first, targets of a printed matter rejection) is nominally a manufacture which would be patent eligible under 35 USC 101.

              This changes with Mayo and Alice, in which the presence of statutory subject matter in claim language did not establish that the claim is directed to statutory subject matter. Whereas the printed matter doctrine was once necessary to knock out a book (with new verbiage in it), this isn’t necessary based upon how 35 USC 101 is being interpreted today.

              1. 4.1.1.1.1.1.1

                the printed matter doctrine originally started out as an exception to patentable subject matter

                Information was never eligible for patenting. That’s not an “exception”. It’s the rule.

                This changes with Mayo and Alice

                Nothing changed. You can’t make old subject matter patentable by reciting additional ineligible junk. That was the law before Mayo. It’s the law after Mayo. And it’s always going to be the law. Get used to it.

              2. 4.1.1.1.1.1.2

                Not and exception, Non Statutory. From Russell:
                The mere arrangement of printed matter on a sheet or sheets of paper, in book form or otherwise, does not constitute “any new and useful art, machine, manufacture, or composition of matter,” or “any new and useful improvements thereof,” as provided in section 4886 of the Revised Statutes, 35 USCA § 31. Guthrie v. Curlett et al. (C. C. A.) 10 F.(2d) 725; Flint et al. v. Leonard & Co. (C. C. A.) 27 F.(2d) 215; In re Dixon, 44 F.(2d) 881, 18 C. C. P. A. ___, and cases therein cited.”

                From Guthrie:

                “The nonpatentability of a system — i. e., a connected view of the principles of some department of knowledge or action — has been sufficiently shown in Hotel Security Checking Co. v. Lorraine, 160 F. 467, 87 C. C. A. 451, 24 L. R. A. (N. S.) 665; Berardini v. Tocci (D. C.) 190 F. 329, affirmed 200 F. 1021, 118 C. C. A. 659, and the earlier cases there fully cited.”

                …

                The patentee may and does call what he produces a manufacture, to wit, a book of so many leaves and a given amount of print thereon; but the question is not what an interested party calls it, but what is it, and we consider the only possibly novel part of it, what might be called the plot of the work — 727*727 i. e., the story revealed, and that can be copyrighted, but not patented.’

                1. …

                  Most definitely NOT the whole story there Ned – a truth made into a L I E by omission of a critical component is nothing more than a L I E.

                2. …

                  anon, another post to which neither I nor anyone else might respond because we don’t know what you are talking about.

                3. …

                  Ned,

                  You act as if there are no exceptions to the judicial doctrine of printed matter – a material omission that you are very much aware of, that contradicts your asserted position, and that you have been made aware of many times.

                  There is but one conclusion that can be obtained by such an omission: you are not being honest in your advocating here.

                4. …

                  Whether there is an exception to the printed matter doctrine or not does not make the printed matter doctrine itself an exception.

                5. …

                  No one is claiming that the judicial doctrine of printed matter is one of the three Big Exceptions to 101 (which is the apparent thrust of your reply).

                  Printed Matter Doctrine remains a judicial creation though.

                  Your omission of the exceptions to that judicial doctrine remains a deliberate falsification of current law, though.

                  ABA Model Rules, Rule 8.1(b) and 8.4(c) ring a bell? Does California not have a mirror section? Or do you think your advocacy here on the internet is exempt?

        2. 4.1.1.2

          Joachim – you need to broaden and realize the exceptions to the judicial doctrine of printed matter.

          Malcolm, as I explained to you in easy set theory, the exceptions simply return closer to the law as written by Congress. It is simply legal error for you to portray this as some type of widening “gift” to those seeking patent protection.

          1. 4.1.1.2.1

            anon: It is simply legal error for you to portray this as some type of widening “gift” to those seeking patent protection.

            The “widening gift” is impossible to dispute:

            link to patentlyo.com

            Note that the actual “printed matter” in nearly all of the contemporary claims which rely on such matter is not even recited in the claims. Instead (and bizarrely) only the alleged functionality of that “printed matter” (typically created and “printed” by a third party without knowledge of the patent) is recited.

            That practice of satifsying the “printed matter doctrine” isn’t really disitnguishable from an applicant satisfying 101 and 103 by including a “limitation” expressly indicating that the claimed invention is “non-obvious” and “eligible.”

            1. 4.1.1.2.1.1

              You quite obfuscated the point there Malcolm.

              Reigning in a first judge made doctrine is just not the same as judges expanding the statutory law.

              I explained this all to you using short declarative sentences and easy to grasp set theory, and invited (even begged) you and Ned to join in on a dialogue on my explanation.

              We both know that you really did not want any part of that.

              Go figure, “folks.”

              1. 4.1.1.2.1.1.1

                I explained this all to you using short declarative sentences and easy to grasp set theory

                If it was so easy, then explain it again, Billy. Go ahead and “decimate” us.

                LOL

                1. …

                  I could – and would receive the exact same result: you running away.

                  After all, I DID repeat the simple Set Theory explanation several times on the main thread, and each and every time, you ran away.

                  For you, decimation comes in several varieties. Your unwillingness to actually engage in dialogue is but one of them.

      2. 4.1.2

        Anyway, today Beauregard claims should be more important than ever because nowadays thanks to applets and other transitory downloads of programs, patent-holders might have to resort to arguing a case of induced infringement of a patented invention if his claims include no claim in Beauregard form.

        If the patent holder’s claims include at least some in Beauregard form, he can directly sue for infringement that entity on whose server the download is maintained in non-volatile or in non-transitory form.

        1. 4.1.2.1

          Beauregard claims are pretty useful for claims directed to consumer grade apps. Outside of this, I haven’t written a Beauregard since the en banc Alice decision.

      3. 4.1.3

        Hotel Security IS the original of the printed matter doctrine. It found printed matter/business methods to be non statutory.

        NOT a Judicial Exception.

        1. 4.1.3.1

          Except not Ned – for reasons already put on the table for discussion (and for which in addition even Prof. Crouch chided you for your misuse of Hotel Security and David Stein decimated your take on case law.

          And yet, you refuse to learn and merely engage in your Merry Go ROund repetitions of mindless one-way drive by monologues.

          1. 4.1.3.1.1

            Anon, I cite you chapter and verse, quoting the cases, and yet you deny what they say they say.

            Russell relied on Guthrie that relied in Hotel Security. Does it make any difference whatsoever whether the point at issue in Hotel security was the holding or an alternative holding or dicta? Guthrie was a holding and Russell relied upon it. The source of Guthrie’s holding was in fact Hotel Security.

            1. 4.1.3.1.1.1

              You cited your versions – and David Stein ripped apart those chapters and verses.

              You need something else – your position is not sustainable.

              (you also once upon a time provided a citation to the danger of mixing up dicta and holding, and making law through dicta – which appears to be your fallback position here that a court wrote new law by imposing a holding based on dicta – can you follow your own logic to its (rightfully) bitter end?)

    2. 4.2

      Nowadays, a non-transitory computer-readable medium includes paper on which optically recognizable characters have been printed.

      That’s been the case for many years.

  20. 3

    …and Plankton’s Chum Bucket is open for business….

    Would not a better focus be on how – in view of modern physics – simply factually errant the In re Nuitjen case is?

      1. 3.1.1

        Hey Ordinary Squirrel et al.

        And renders the photoelectric effect which Einstein got the Nobel Prize for merely a “figment of his imagination.”

        1. 3.1.1.1

          Einstein’s explanation of the photoelectric effect (discovered by Hertz) was cited when Einstein was awarded the Nobel Prize.

  21. 2

    how many of these cases have written description support for the new non-transitory limitation?

    I don’t get it. If the application refers to a memory device, memory circuit, etc., then it’s got support for a “non-transitory computer-readable medium.” Even before Nuijten you had to have support for “computer-readable medium,” so applications should have included this kind of discussion all along. Why is there a doubt that these cases lack 112(a) support?

    1. 2.1

      What does “non-transitory” mean anyway? The only real non-transitory computer readable medium I can think of is a non-rewriteable disc (e.g., a DVD) or a classic ROM.

      1. 2.1.1

        “Non-transitory” refers to the medium, not to its contents. I don’t see why a RAM IC is any more transitory than a “classic ROM.”

        1. 2.1.1.1

          How “long” is “long enough” for “transitory” versus “non-transitory?”

          Any number of examples can be provided (such as chemical compounds, standing waves such as lasers, even advanced work on paired photons) that show that this distinction, even IF one can arrive at a commonly held meaning (and that’s no small IF), is quite in fact meaningless.

          But acknowledging this seems to be rather incapable for those pursuing a selfsame, philosophically motivated agenda to deny patent protection to not just a particular class of innovation, but the class of innovation most accessible by non-onepercenters and those that need not rely on only a “but-for” rationale for the patent system.

          In other words, the same Merry Go Round is guaranteed.

          1. 2.1.1.1.1

            This seems like the type of question that courts are well equipped to address, given that the seemingly analogous question of “fixation” has been long addressed in the realm of copyright.

            1. 2.1.1.1.1.1

              Actually, I would think that these are claim construction question – and my written-description comment is based upon the notion that the original patent specification says nothing about how to draw the transitory/non-transitory line.

              1. 2.1.1.1.1.1.1

                Claims and specification are to be interpreted as one of ordinary skill in the art would have interpreted them.

                Under what circumstances do you think one of ordinary skill in the art would not understand that an originally claimed computer readable medium did not mean to encompass CDs, DVDs, hard drives and flash drives?

                It is only after judicial nonsense is applied that “computer readable medium” was interpreted to included a wire with apparently naturally occurring signals on them that are not manufactured or articles of manufacture.

                1. …

                  “computer readable medium” was interpreted to included a wire
                  Actually, a wire is a manufacture. The claim construction error is to equate a computer readable medium with a “signal with embedded supplemental data” which was the issue in Nuijten.

                2. …

                  Even such signals – with those supplemental by the hand man constructions – are factually manufactures.

                  Only one aspect that decision went off the rails.

              2. 2.1.1.1.1.1.2

                I would posit that NO application in pretty much any field selves on the “how long is long enough” question – which just goes more to that question being a bogus, ends-desired question.

                I can show you light (the night stars) that have more duration than anything ever built by the hands of man.

                Exercises in such types of line drawing highlight the underlying problem that certain philosophies are being pursued.

                1. …

                  And the instant that you witness any infinitesimal slice of that star’s existence, that portion of the “signal” is lost to you and all of mankind, forever.

                  Sounds pretty transitory to me.

                2. …

                  Alas, the Count does not recognize the meaning of the term….

                  Yes, Count, and if you clench tight your eyes and miss the item completely, then it is as if it never existed – such is the “logic” that you embrace, and the everlasting reason for your coming up short in our exchanges.

          2. 2.1.1.1.2

            philosophically motivated agenda to deny patent protection to not just a particular class of innovation

            Denying patent protection for signals is an extremely reasonable policy. I’m happy to discuss the reasons if you can’t remember them all.

            1. 2.1.1.1.2.1

              Denying patent protection for signals is an extremely reasonable policy.
              I would submit that denying patent protection for signals is probably good policy (in the absence of another way to protect unknowing infringers). However, the Federal Circuit’s decision within Nuijten was not based upon good science.

              This should have been an issue addressed by Congress — not the Courts.

              1. 2.1.1.1.2.1.1

                I would submit that denying patent protection for signals is probably good policy (in the absence of another way to protect unknowing infringers).

                “Unknowing infringers” isn’t the problem. The problem is using the patent system to protect information, which isn’t permitted.

                the Federal Circuit’s decision within Nuijten was not based upon good science.

                Just as in Prometheus v. Mayo, resolving the patent law issue didn’t require “good science.” It required common sense and an understanding of what the proponents of signal patenting were hoping to achieve with their signal patents.

              2. 2.1.1.1.2.1.2

                [reposted with correct formatting]

                Why 112: I would submit that denying patent protection for signals is probably good policy (in the absence of another way to protect unknowing infringers).

                “Unknowing infringers” isn’t the problem. The problem is using the patent system to protect information, which isn’t permitted.

                the Federal Circuit’s decision within Nuijten was not based upon good science.

                Just as in Prometheus v. Mayo, resolving the patent law issue didn’t require “good science.” It required common sense and an understanding of what the proponents of signal patenting were hoping to achieve with their signal patents.

                1. …

                  The problem is using the patent system to protect information, which isn’t permitted.
                  The protection of “information” was not at issue in Nuijten. The broadest claim of Nuijten is as follows:
                  A signal with embedded supplemental data, the signal being encoded in accordance with a given encoding process and selected samples of the signal representing the supplemental data, and at least one of the samples preceding the selected samples is different from the sample corresponding to the given encoding process.

                  There is no “information” being protected within that claim.

                  It required common sense and an understanding of what the proponents of signal patenting were hoping to achieve with their signal patents.
                  The proponent of signal patents weren’t attempting to protect “information.” BTW — the reason why signal patents became popular was based upon an example claim published in the MPEP (i.e., the USPTO created the mess in the first place).

                  The problem with signal patents is that the signal is “manufactured” at every node in a network. Therefore, every router, switch, etc., that existed between the sender and receiver would be manufacturing the signal and the owner(s) of this networking equipment could be considered an infringer (hence, my “innocent infringer” comment).

                  Again, I’m not against the policy position that signals should not be patentable. However, I am against the Courts acting on that policy position.

                2. …

                  The means of bad science does not justify the desired ends, no matter how noble in your mind those ends may be.

                  This fundamental aspect of law seems to be beyond your reach. As such, you really should not be in any way associated with law.

                  Some of the most heinous acts of human history are commited by those who self-justify their ends.

            2. 2.1.1.1.2.2

              Please do. Is it possible you’ve overlooked a single instance where your logic does not hold true?

          3. 2.1.1.1.3

            Any number of examples can be provided (such as chemical compounds, standing waves such as lasers, even advanced work on paired photons) that show that this distinction, even IF one can arrive at a commonly held meaning (and that’s no small IF), is quite in fact meaningless.

            Awesome. Once you put enough of those chemical compounds or paired photons together to store a computer program, along with enough supporting structure to make your collection of paired photons or chemical compounds computer-readable, then I have no problem putting your creation under the umbrella of “non-transitory computer-readable medium.” Nuijten certainly doesn’t preclude the possibility of new types of computer-readable storage.

            To your point, sure, the boundary between “transitory” and “non-transitory” isn’t precise, given the very limited case law on the point. But, lots of terms in the law have fuzzy boundaries, e.g., “the reasonable person” and”would have been obvious.” That doesn’t make those terms “meaningless.”

            1. 2.1.1.1.3.1

              You had to try really really really hard to miss the point so badly.

              Congrats, I think, for something.

        2. 2.1.1.2

          Didn’t the case involve signals?

          “A signal with embedded supplemental data, the signal being encoded in accordance with a given encoding process and selected samples of the signal representing the supplemental data, and at least one of the samples preceding the selected samples is different from the sample corresponding to the given encoding process.”

          “A transitory, propagating signal like Nuijten’s is not a ‘process, machine, manufacture, or composition of matter.’ Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject matter.”

          IN RE PETRUS A.C.M. NUIJTEN, 2006-1371.

          How did we get from the signal being “transitory” to the “medium” being “non-transitory”?

          And does anyone really believe these types of claims could survive a 101 analysis by the Supreme Court? I predict a 9-0 beat down if they ever get that far.

          1. 2.1.1.2.1

            If the subject signals are not manufactured or articles of manufacture, where to the come from? Are they naturally occurring? Was Windows 10 found in the Amazon Rain Forest? Was it pulled in by the dish at Arecibo or Jodrell Bank from the cosmic background radiation (now there’s a transitory signal for ya huh — 15 billion years and still transiting)?

          2. 2.1.1.2.2

            How did we get from the signal being “transitory” to the “medium” being “non-transitory”?
            Answer: Kappos Memo and Mewherter — both of which got the science wrong. As I noted in Post 2.1.2, signals propagate through (or are stored within) a medium (depending upon the type) — signals are not the same as the medium.

      2. 2.1.2

        What does “non-transitory” mean anyway?
        Good question. Excellent question. As far as I can tell, it has no art recognized meaning. 112, 2nd paragraph issue perhaps?

        Moreover, propagating signals are not necessarily “non-transitory.” Also propagating, signals per se (i.e., the issue in Nuijten) are not encompassed by a computer readable medium (despite the Kappos Memo) — signals propagate through a medium, they are not one and the same.

        1. 2.1.2.1

          I have always preferred to use non-volatile computer memory (or storage) in writing a Beauregard claim.

          1. 2.1.2.1.1

            I have always preferred to use non-volatile computer memory (or storage) in writing a Beauregard claim.
            Your claim language excludes DRAM, which is ubiquitous. Also, you may get an argument that DVDs, BluRay, etc., are not “memory.” The argument may not stick, but I dislike using claim language for which any argument (that I don’t like) can be made.

            1. 2.1.2.1.1.1

              I did add “(or storage)”. I may be dating myself, but back in the late 60s and 70s under Multics and similar systems, paper and magnetic tapes were addressable secondary memory. When a Multics program tried to address a tape location and the tape was not loaded, Multics wrote a message on the console and on the program terminal that the tape should be loaded into the tape drive.

              From Technopedia.

              Non-Volatile Memory (NVM)

              Definition – What does Non-Volatile Memory (NVM) mean?

              Non-volatile memory (NVM) is a type of computer memory that has the capability to hold saved data even if the power is turned off. Unlike volatile memory, NVM does not require its memory data to be periodically refreshed. It is commonly used for secondary storage or long-term consistent storage.

              Non-volatile memory is highly popular among digital media; it is widely used in memory chips for USB memory sticks and digital cameras. Non-volatile memory eradicates the need for relatively slow types of secondary storage systems, including hard disks.

              Non-volatile memory is also known as non-volatile storage.

            2. 2.1.2.1.1.2

              BTW, I had the impression from USPTO documents that DRAM, SRAM, SDRAM, and other memories that don’t retain data if the power is removed, was somewhat dangerous territory for a patent claim and might be considered transitory computer-readable media in the USA. Of course, I would have no such worry in Europe.

              1. 2.1.2.1.1.2.1

                might be considered transitory computer-readable media in the USA
                This is why it is important to know both the law and how it was derived. A transitory, propagating signal per se was deemed to be non-statutory subject matter since the Federal Circuit found that it was neither a machine, process, manufacture, or composition of matter. The same argument CANNOT be made with DRAM (or other type of volatile memory). DRAM is clearly a machine/manufacture. Thus, Nuijten does NOT apply.

                1. …

                  I have to admit that I misread Ex parte Mewherter
                  (Appeal 2012-007692), which was designated Precedential.

                  In any case, the written description, with which I was dealing and for which I was proposing a Beauregard claim, explicitly used the term “non-volatile computer memory” but never used the term “non-transitory”. If an examiner complains about support for a term in a claim, I like to be able to point out its presence in the written description.

                2. …

                  I have to admit that I misread Ex parte Mewherter
                  (Appeal 2012-007692), which was designated Precedential.
                  Don’t worry. It is easy to misread something that was miswrote.

        2. 2.1.2.2

          Be prepared to 112 2nd every single claim then, Mr. Duell.

          As mentioned above, there is no such thing as non-transitory.

          This is just judicial muckery of the lowest order (lol, a “lowest order comment, my I am being soo polite today).

  22. 1

    Most software apps you read will have a boilerplate computing device illustration with corresponding WD support. “Non-transitory” probably wasn’t put into the boiler plate until these Bilski related rejections began, but any mention of a non-transitory medium such as a hard drive, flash drive, CD, DVD, and the like would suffice.

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