Gentlemen. It has been a privilege playing with you tonight.

by Dennis Crouch

Ubisoft v. Yousician (Fed. Cir. 2020) (nonprecedential)

Ubisoft (Rocksmith) and Yousician are competitors in the music-lesson software market.  Truthfully, I really enjoy using these tools — their main problem is the added screen time.

In 2018, Ubisoft sued Yousician for infringing its U.S. Patent 9,839,852 covering an “Interactive Guitar Game.”  Before the opening act even started, the district court dismissed the case on failure-to-state-a-claim. Fed. R. Civ. Pro. 12(b)(6).  In particular, the court found the claimed invention to be improperly directed to an abstract idea. On appeal, the Federal Circuit has now affirmed.

The claims at issue are directed to functional software stored on a computer drive — “a non-transitory computer readable storage medium with a computer program stored thereon.”  The claimed software is designed “present an interactive game for playing a song on a guitar” by causing the computer processor to take the following steps:

show finger notations on a display device (corresponding to the song to be played by a user);

receive audio input from the guitar that corresponds to the song played by the user;

assess the performance and determining a portion of the performance that should be improved;

change the difficulty level of the fingering notations (based upon the assessment); and

generate a “mini-game” targeted to improving the user’s skills associated with problematic portion.

Human tutors have worked in the music lesson world for a long time. Some folks are self-taught, but it is a pretty big deal to have responsive computer software that actually works for helping learn guitar.  Within the claim, you can see hints of major developments of (1) accurately assessing performance and then (2) motivating learning through gamification.  The problem with the claims is that they are written in broad functional form without actually claiming how the results are accomplished.  In particular, the claims could be transformed by expressing the algorithms for assessing performance; changing difficulty level; or generating the mini game.  Taking all this a step further, the court looked to the specification and found only a description of “these steps in functional terms and not by what process or machinery is required to achieve those functions.”

Without those specifics, the court held that this is just taking a human tutor’s method and saying “do it on a computer.”

[The steps here are] thus no different from the ordinary mental processes of a guitar instructor teaching a student how to play the guitar.

Slip Op.

[Post title comes from Titanic (1997)]

62 thoughts on “Gentlemen. It has been a privilege playing with you tonight.

  1. 5

    I can build circuits with simulators now that is very similar to building software. I can then decide whether to actually build the circuit or not. Pretty much that is true now of physical objects as well.

    And yet, we continue to get this “mere” software or information processing from the little wan kies at the CAFC. I don’t think I could ever express my contempt for the judges on the CAFC. I do not know a single person that has any respect for the Obama appointments.

    1. 5.1

      I had a conversation with the top IP attorney at one of the biggest software companies in the USA. His comment was that our software is about 10 million lines of code and probably one of the most complicated things created by humans and can do some things better than humans and yet the courts are saying “mere”.

      1. 5.1.1

        His comment was that our software is about 10 million lines of code and probably one of the most complicated things created by humans and can do some things better than humans and yet the courts are saying “mere”.

        Is the claim asking for protection on 10 million lines of code or on “merely” anything that achieves a result?

        I love how you manage to consistently be the opposite of a good patent attorney. Everyone knows that a single identifiable point within the scope that is invalid renders the claim invalid, but you take the opposite approach – if a single point might be valid then the whole claim is valid.

        Could a claim to 10 million lines of code be eligible and non-obvious? Possibly yes. Does the fact that you have one eligible and non-obvious thing mean you are entitled to any set that includes that thing within it? No.

        Would you sell me your house for 100 million dollars? Yes? Well then surely I’ll take it for 1 dollar. They’re both subsets of the genus of money, so legally they’re exactly the same thing, right?

        1. 5.1.1.1

          … and Random absolutely misses the point because (once again) he only understands ladders that have two (or fewer) rungs.

        2. 5.1.1.2

          Random, just strange comments that don’t appear to have been made by a person that understands patent law.

          1. 5.1.1.2.1

            Random, just strange comments that don’t appear to have been made by a person that understands patent law.

            If the software is “10 million lines of code” and “probably one of the most complicated things created by humans” and “can do some things better than humans” and he can’t generate a valid claim he should quit now before his malpractice catches up to him.

            If you’re upset that the law won’t let you distill the invention down to the most basic level and get a patent on that, you should move to China where capitalistic competition won’t be such a concern for you.

            … and Random absolutely misses the point because (once again) he only understands ladders that have two (or fewer) rungs.

            Maybe if Ubisoft didn’t sue Yousician for entirely different software that used none of Ubisoft’s code nor require any teaching from Ubisoft’s specification, and then argued that their claim covered Yousician’s work, they wouldn’t have made it so transparently clear that their claim was an overbroad abstraction. As usual, you keep mentioning that there’s more than two levels of abstraction in the comments section of cases where it’s clear that the patentee picked the most abstract rung possible and then the court called them out on it. I bet you’re one of the guys that saw George Floyd’s death as a timely opportunity to say “but really, consider officer safety though.”

          2. 5.1.1.2.2

            Random does not care that he does not know patent law, as he thinks that his feelings are better (after all, HE is an examiner).

          3. 5.1.1.2.3

            Random, just strange comments that don’t appear to have been made by a person that understands patent law.

            If you have an inventor who has “10 millions lines of code” and the code is “one of the most complicated things created by humans” and “can do some things better than humans” and you can’t get a valid claim, I assure you the person who doesn’t understand patent law is you.

            If you can’t understand the legal difference between claiming that invention and claiming a super-abstraction of what the invention is such that the claim is to “mere” information processing, then the problem is you.

            If they have a good invention and you can’t get them a valid claim scope, their problem is their attorney, not the law. It may not be the scope you’d like it to be, but it’s the scope you’re entitled to. What you’re entitled to is what you invented, not some comically broad scope that you generate by taking thousands of lines of code and condensing to a single abstract function that you describe in half of a sentence on a single spec page and place into your claim because you’re overtly trying to hold legal dominion over different ways that you never thought up of achieving some broad function that you invented one manner of.

            The patentee in this case had a claim that would cover virtually every kind of musical test administered by a computer just so long as it generated some kind of reward state so that it could be called a “game” rather than a “test.” That’s obviously not remotely accurately descriptive of any program he actually created (assuming they had actually created a program at the time of filing), and as an idea amounts to very little more than “use a computer to give feedback of musical aptitude.” Does the specification have any enabling disclosure on how to actually make such a program? No.

            It doesn’t matter if Ubisoft had 100million lines of code that it spent ten thousand man-hours over multiple years at the cost of tens of millions of dollars to generate – you could get a six year old to disclose “I’d like my computer to teach me guitar the way Mavis Beacon teaches typing” and you’d get the same level of contribution to the art. If your 10million code lines are so grand, feel free to compete on the open market – neither I nor this court ever tell people that their invention is unmarketable, only unpatentable. But if you won’t disclose what you invented and won’t claim reasonably appropriate to your invention, it should be unsurprising your claim is tossed as “mere” information processing when a child with no technical skill whatsoever can come up with an idea and say “I bet that the hardware and skill to implement this idea already exists.”

      2. 5.1.2

        “We found a specific 150,000 dalton protein that cures currently incurable XYZ lung cancer if you apply it in a particular way, but the courts say our invention is merely directed to curing cancer!”

        “Those Luddite judges are willfully refusing to acknowledge the complexity of the hundreds of amino acids that make up your invention! By the way, how did you claim your invention?”

        “‘A protein that cures XYZ lung cancer’.”

        1. 5.1.2.1

          Ben, except not. Your comment is ridiculous and as always is a deflection from the point.

          1. 5.1.2.1.1

            It’s heartening that you can recognize how ridiculous the argument is when applied to a subject area that doesn’t fund your bank account.

            1. 5.1.2.1.1.1

              It’s even more heartening that the best arguments you have are so lame. Pretty much justifies “the little wan kies at the CAFC” and tr olls on patentlyo.

            2. 5.1.2.1.1.2

              It’s even more heartening that the best arguments you have are so lame. Pretty much justifies “the little wan kies at the CAFC” and tr olls on patentlyo.

            3. 5.1.2.1.1.3

              Ironic too that you in trying to refute my arguments are taking the very position that I am exposing as being ridiculous in that you are dismissing inventions as “mere” based on nothing more than your opinion.

              1. 5.1.2.1.1.3.1

                I honestly can’t parse your comment. Slow down and review next time.

            4. 5.1.2.1.1.4

              Actually, Ben, I do biomed patent work too.

          2. 5.1.2.1.2

            Looking at any of the recent information processing claims invalidated under 101 illustrates that Ben’s comment is nonsense.

            1. 5.1.2.1.2.1

              Ben, like Random, does not care – as he too is an examiner.

              (are you seeing a pattern?)

              1. 5.1.2.1.2.1.1

                It is interesting too anon that Ben points to one of the l ie s of the anti-patent judicial activists movement where they say the claims of information processing are different than claims in other fields. This is simply not true when examined in any depth.

                Ben really smells to me like a paid blogger. He hits all the talking points. He has the amnesia from post to post. He spends inordinate amounts of time commenting. Pretty sure he is a paid tro ll.

                1. Night Writer,

                  I get what you are saying but personally am not a big fan of characterizing such behavior as indicative of paid blogging.

                  There are lots of people only too happy to pontificate on a subject (regardless of counterpoints raised in any attempted dialogue) without being paid.

                  That such people also often reflect a lack of critical thinking and mouthing of a same short list of speaking points is hardly indicative of anything but the laziness already evident in their posts.

                  Just look at my own personal Tr011 – he employs a very short list of rhetorical games with an over 95% of his posts dedicated solely to me.

                  Do I think that someone is paying him to attempt to muddle every thread? No. And if someone was, then they don’t care that they are throwing their money away, seeing the propensity and proclivity that my pal with the shifting historical pseudonyms has for collecting anvil hits to his noggin.

              2. 5.1.2.1.2.1.2

                You anon people like Ben don’t do any work in thinking through these issues. They have extensive policy positions set up for them and model responses.

                We en boy Ben just looked up in sheets how to respond and then added his typical snar ky smirk y wee nie shxt attitude. Just paid f i l t h.

                1. >>Ben points to one of the l ie s of the anti-patent judicial activists movement where they say the claims of information processing are different than claims in other fields

                  I didn’t say this. Your post pretty clearly exposes you as either disconnected from reality or a teller of false statements.

            2. 5.1.2.1.2.2

              Could you articulate that further?

    2. 5.2

      I do not know a single person that has any respect for the Obama appointments.

      Now wait just a minute. I know of several regulars on these boards that have their own levels of respect for the Obama appointments.

      Perhaps you mean to qualify “respect” to be a certain amount of earned respect based on some lofty (or not) objective standard, as opposed to some relative (and thus unknown) personal standard…

      After all, there are plenty here that “Respect” Lemley.

    3. 5.3

      Plenty of practitioners have respect for the Obama-appointed judges, and indeed I am one of them. The position in this case is a good one – patentability cannot arise from the type of information processed or the type of information output from the processing, and instead the processing must be claimed with some specificity. What processing occurs in the step to “assess” the performance, and what processing occurs in the step to “generate” the mini-game? Maybe if the patentee would have recited processing that distinguishes these steps from those that could be taken purely mentally by a person, the claim would be eligible, or at least a closer call.

      1. 5.3.1

        Are “assess” and “generate” described further in dependent claims? Described further in the specification? Most likely yes.

        “type of information processed” <– this is nonsense talk. There is a vague way of hand waving away elements of a claim.

        "respect for Obama" <— those that want to burn down the patent system and build up trade secrets.

      2. 5.3.2

        Basically too WindyCity you are making things up.

        If “assess” and “generate” are meaningless as you indicate, then the claim is not enabled. If the claim is enabled, then the verbs will be at the top of the ladder of abstraction and will have a number of specific solutions.

        You are either an ignorant person or you are intentionally mischaracterizing the claims. In either case you are just like the CAFC judges as they fit into one of those two categories.

  2. 3

    Gentlemen. It has been a privilege playing with you tonight.

    Careful there — retconning movies in regards to privilege is a current rage.

  3. 2

    Taking all this a step further, the court looked to the specification and found only a description of “these steps in functional terms and not by what process or machinery is required to achieve those functions.”

    So equally tankable under 112(a) or 112(b), before anyone goes off in a huff.

    In particular, the claims could be transformed by expressing the algorithms for assessing performance; changing difficulty level; or generating the mini game.

    I’m not so sure on this. On the surface, and as a general proposition, I agree with the logic that code that takes otherwise emotional or gut feelings is eligible (i.e. Does this person play well?) because it requires the transformative act of generating logic to simulate emotion (per McRO’s reasoning), but I don’t think that necessarily applies to music which may be logically or mathematically describable. This isn’t like drawing the shape of a mouth to achieve the analog feeling of “looking right” – there likely was already a mathematical standard for determining “good” music, right? If you’re not playing in one-fourth time or are fingering a string too low, there’s known mathematical equations to calculate how bad your tempo and pitch are.

    i.e. If e=mc^2 is not patentable, then clearly the relationship between string length and vibration is not patentable, and it doesn’t become patentable because you perform it dozens of times in a row or ask if it is within a threshold delta of some other mathematically calculated value. So a [particular] algorithm for assessing performance is likely not eligible *for this subject matter*. Similarly, varying the threshold (i.e. changing the difficulty) isn’t inventive. I suppose the mini-game may be eligible (if only because “game” is no nebulous it can mean anything) but it would have to be significantly more than just “presenting a test” and “presenting some conventional reward for passing the test.” I don’t think Mavis Beacon Teaches Typing becomes eligible because it pops up a Congratulations banner when you increase your words per minute even though that would technically be a gamification of dexterity.

    1. 2.1

      The notion of “equally tankable” is a completely errant view of the law — and a “the Ends justify the Means” equivalent.

      “before anyone goes off in a huff” is a meaningless dismissal of the elephant in the room and the BIGGER problem that the score board is broken.

  4. 1

    Dennis, by “It is a bit deal,” did you mean to say “big deal”? Or, was that a clever pun re an invention proposing to do something with digital bits but having no such bit sources in the spec?
    [Another patent lawsuit ended before it even started at low cost with an FRCP 12(b)(6) motion* for a 101 rejection for claims apparently found to have no requisite 112 enablement support whatsoever? Why doesn’t the Fed. Cir. support 112 summary judgments for cases like this?]
    *except for the waste of time and money on the Fed. Cir. appeal

    1. 1.1

      >>for claims apparently found to have no requisite 112 enablement support whatsoever

      How do you figure? The priority only goes to 2008. One of ordinarily skill in the art could have easily made a crude and rudimentary system that falls within the scope of the claim. The CAFC doesn’t require more than that.

      1. 1.1.1

        Ben, I agree with you. I still think, however, that the court imported what should have been a 112 analysis into their 101 analysis.

        1. 1.1.1.1

          >> I still think, however, that the court imported what should have been a 112 analysis into their 101 analysis.

          As long as we’re talking about what should have happened, I think the CCPA/CAFC should not have gutted 112 in the first place. With rigorous application of written description and enablement, we never would’ve gotten Alice.

          1. 1.1.1.1.1

            Well, Ben let’s talk about that (supposed) gutting of 112 in the first place.

            I genuinely would like to hear your position and the support for that position.

          2. 1.1.1.1.2

            Ben,

            You call on Night Writer to slow down and think before posting – yet apparently that admonition only applies to others, eh?

        2. 1.1.1.2

          I still think, however, that the court imported what should have been a 112 analysis into their 101 analysis.

          How did it import? It’s true that using functional language has the dual effect of 1) being abstract when the functional language describes a novelty and 2) often being overbroad, but I don’t see how a 112 was imported into the 101.

          You’re not suggesting that determining whether playing music is being played well did not long predate computers, right? Are you suggesting that failing to disclose algorithms for making the computer perform the act isn’t relevant to whether it solved a problem unique to computers/improved computers?

          1. 1.1.1.2.1

            Random showing off his lack of actual understanding of several legal doctrines…

            Tell me Random, what is your definition of “Abstract” that supports your assertion that “functional language describing novelty” is made to move a 102 issue to be a 101 issue?

            1. 1.1.1.2.1.1

              what is your definition of “Abstract” that supports your assertion that “functional language describing novelty” is made to move a 102 issue to be a 101 issue?

              My definition of abstract is commanding a desired function, end, or utility, without limiting the claim to the posited mechanism for achieving the function, end or utility. It occurs the moment you disclose a manner (or perhaps no manner at all) and self-servingly state that because of what you disclosed, you are now the last word in achieving that end. It’s Morse disclosing the telegraph and claiming that because he has the telegraph, he invented all machines that can print at a distance – an attempt to use inductive reasoning to make oneself grander than they are (and make no mistake, Morse was grander than any applicant I’ve read). Morse may have invented the telegraph, but he didn’t invent all machines that print at a distance, so it’s silly to suggest he was the inventor of such.

              And yet every day we have people who disclose one embodiment but claim to be the inventors of abstract results – a scope immeasurably broader than what their documents show they posit. As if anyone could ever say they invented a result. You may invent a machine that has utility, but you do not invent the result. All you invent is the structure of a machine that may cause a the naturally existing result to come into expression. You may invent a machine that applies heat to bread, but the heating of bread to generate toast is a consequence of natural law that long predated you. You can’t invent toasting, you can only invent a structural machine and, at best, market it for consumption as having utility as a toaster.

              That’s why you’re so constantly fooled by 101. You think that one can invent a function, while I know that one can only invent a machine which (due to poor drafting) may include as a claim limitation the functional result of its use. Despite Morse’s claim, he grew old and passed on before we’ve discovered all the ways to print at a distance, so it’s unsurprising his claim that was limited only by the function of printing at a distance was taken from him. All Morse invented was the telegraph. Section 101 requires you to be the inventor of your claim, but you can’t invent a functional result.

      2. 1.1.2

        Here, you could have invoked 112(f) (functional claiming) to then get to 112(b) rejection for lack of sufficient structure. In that case, it doesnt matter that one of skill “could have made a system” within the scope of the claim, even under the CAFC’s horrid 112 analysis. (See Williamson v. Citrix: “But the fact that one of skill in the art could program a computer to perform the recited functions cannot create structure where none otherwise is disclosed.” )

        The problem I see is that 112(f) is almost never invoked for process claims, so you could (in theory) claim the same exact thing as a process and somehow get through. Also, some wonky courts have found that “program” is sufficient structure, which makes it all just LOL worthy.

        1. 1.1.2.1

          Your feelings (as divorced as they as are from what a Person Having Ordinary Skill In The Art would understand) are noted.

          1. 1.1.2.1.1

            Nah ksksksks is right. 112(b) in view of (f) only considers the skill of the art when there’s an algorithm disclosure made – then the question becomes whether one of skill would recognize the algorithm to be referring to a particular structure. When there’s no algorithm disclosed – such as here where the spec simply restates the functionality – you don’t even need a POSITA analysis. At that point the claim has failed to nominate “corresponding structure described in the specification” and becomes indefinite as a matter of law rather than a fact question as to whether the nomination is sufficiently definite. See MPEP 2181(II).

            The most common example is (as in Citrix) when the specification only states “[Function] can be performed by known techniques in the art.” When that function is claimed in means-plus it’s an automatic 112(b) rather than an inquiry into whether that statement is true because the failure is legal rather than a fact question.

            I do disagree that one is free to just invoke 112(f) when construing the claims though. Treating a claim under 112(f) is a scope change, and you can’t just apply that scope whenever you feel like it.

            1. 1.1.2.1.1.1

              ksksksks is NOT right.

              You don’t “get” to jump to 112(f) just because you want to.

              Remember that coined term of “Vast Middle Ground?”

              1. 1.1.2.1.1.1.1

                You don’t “get” to jump to 112(f) just because you want to.

                As I agreed, you do not, and on that he is wrong. But you said his feelings were divorced from a POSITA, and on that you are wrong because whether you “jump” to 112(f) is not dependent upon the skill in the art, it’s dependent upon whether the claim language shows an intent to invoke 112(f). That’s neither an assertion by either side in this case nor a plausible fact question. POSITA simply has nothing to do with anything here.

                1. 112(f) applies when a claim recites function without reciting a sufficient algorithm to support the function.

                  Dennis said: “The problem with the claims is that they are written in broad functional form without actually claiming how the results are accomplished. ”

                  If you accept what Dennis said as true, then 112(f) applies here.

                  BTW, It’s not the challenger invoking 112(f). Its the patentee that chose to invoke it by drafting claims that recited function without structure.

                2. If you accept what Dennis said as true, then 112(f) applies here.

                  Wrong.

                  Try again.

                  The Vast Middle Ground does NOT match up with this notion of “without actually claiming how the results are accomplished.

                3. reply caught in Count Filter (and ‘report’ mechanism appears jammed)…

                  Let’s see if it is released.

                4. 112(f) applies when a claim recites function without reciting a sufficient algorithm to support the function.

                  Dennis said: “The problem with the claims is that they are written in broad functional form without actually claiming how the results are accomplished. ”

                  If you accept what Dennis said as true, then 112(f) applies here.

                  A claim is generally not construed in 112(f) unless they intend to invoke it by using a nonce word. e.g. For a specification that discloses a widget for causing a car to fly – “I claim a device comprising: a car, wherein the car comprises a module for flight” invokes 112(f). “I claim a device comprising: a flying car” does not, and is just an overbroad unenabled standard claim. The fact that “car” is insufficient structure to perform the function “fly” doesn’t mean you save the claim by construing the claim in means-plus, it just means that you ask if the specification discloses the full breadth of embodiments that make up “all ways to cause a car to fly” and when you conclude that it does not you find it unenabled and undescribed. Function at the point of novelty is likely just bad draftsmanship, not unintended means-plus.

                  BTW, It’s not the challenger invoking 112(f). Its the patentee that chose to invoke it by drafting claims that recited function without structure.

                  112(f) is not mandatory but is permissive. Neither side argued that the claim element should be construed in 112(f). 112f doesn’t apply automatically to save a poorly drafted claim, it applies when the applicant writes language that invokes it and argues that invocation is the correct scope. Patentee claims a non-transitory computer readable medium with software, where the software performs certain functions. That’s not a 112(f) claim. It would (in a better-CAFC world) be a claim that would easily trigger a 112(a) invalidation regardless of what the functions say (and it certainly appears like 112(a) would have carried the day here) but it’s not a 112(f) claim.

                5. Function at the point of novelty

                  And there it is: the canard.

                  1952 happened a long time ago, Random.

                6. RandomGuy: 112(f) is invoked when: “the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.'” It is invoked when the applicant drafts a claim that fails to recite sufficient structure for performing a claimed function.

                  CAFC has already said that “software” and “instructions” and “processor” are not “sufficient structure” for specialized functions. “Processor” has been recognized as invoking 112(f) at least at PTAB, not sure if CAFC has faced it.

                  There is a good chance that “software” and “hardware” and “instructions” and “processor” all are recognized as nonce words the next time the CAFC faces it. I dont think they have answered this question since Williamson, and the caselaw that “circuit for” is not a nonce word relies heavily on the “strong presumption” against 112(f) that was abrogated with Williamson.

                  A “car equipped with means for flying” or a “car equipped with a module for flying” or a “car equipped with software and hardware for flying” or “a car equipped with a processor configured to make it fly” or “a car equipped with instructions that when executed by a processor make hte car fly,” all arguably invoke 112(f).

                7. CAFC has already said that “software” and “instructions” and “processor” are not “sufficient structure” for specialized functions. “Processor” has been recognized as invoking 112(f) at least at PTAB, not sure if CAFC has faced it.

                  CAFC has said that when considering a term that invokes means-plus, that a processor with software and instructions is not sufficient to describe. The CAFC has not said that a processor with code is sufficient to construe the claim element as invoking means plus. They are not the same thing.

                  There is a good chance that “software” and “hardware” and “instructions” and “processor” all are recognized as nonce words the next time the CAFC faces it. I dont think they have answered this question since Williamson, and the caselaw that “circuit for” is not a nonce word relies heavily on the “strong presumption” against 112(f) that was abrogated with Williamson.

                  Williamson is an aberration, not the rule. Processor is clearly not a nonce term (in fact, processor is part of the necessary structure when you claim in means-plus).

                  A “car equipped with means for flying” or a “car equipped with a module for flying” or a “car equipped with software and hardware for flying” or “a car equipped with a processor configured to make it fly” or “a car equipped with instructions that when executed by a processor make hte car fly,” all arguably invoke 112(f).

                  No, they do not. Means and module have different legal standing than a processor configured to or instructions when executed. According to you, no applicant could ever be sure that they were claiming outside means-plus until after the claim issued and the courts construed it. That is @ss backward. The applicant is the scrivener of their claims and they get to choose whether they invoke means-plus or not.

      3. 1.1.3

        Ben I think that in this patent, for the specific functions being required by the claims to be performed [by undefined means], that “One of ordinarily skill in the art could have easily made a crude and rudimentary system that falls within the scope of the claim” is either untrue or at least a very disputable fact question. That could prevent summary judgement on 112. But where does such an “obvious to make all the electronics” admission leave the claims under 103 where the holding is that all the claimed functions and their combinations were known to be performed manually?

          1. 1.1.3.1.1

            Thanks Anon, that link to xkcd.com is a great cartoon about allegedly “easily made” recognitional software.
            As RG notes at 2, especially if the claimed function’s enablement requires software making subjective decisions.

            1. 1.1.3.1.1.1

              Enablement is separate from eligibility.

              (there is a larger picture here)

            2. 1.1.3.1.1.2

              Subjective is not the correct term, computers are easily capable of doing subjective things. The question is whether it is amenable to computer logic. If the feature calls for programming a computer in a way that anyone of skill could have done if they were given the order to do it, that is a legally different situation than if the specification discloses a teaching that allows a programmer to do what they could not have done before. The former is properly described as an unprotectable command to “do it on a computer,” the latter is properly described as a protectable improvement to computers.

        1. 1.1.3.2

          Paul – The fact that all of the functions previously existed and one was enabled to combine them doesn’t inherently generate a 103. The fact that the 103 would be easier to make given those holdings is irrelevant. The question is whether the law rewards applicants with a higher-than-preponderance protection for intentionally skirting the underlying quid pro quo.

          This shows the superiority of the Supreme Court’s manner of doing things rather than the CAFC’s. Under SC jurisprudence the scope issue is a legal question because it is controlled by 112(a) and (b) together, whereas the CAFC has to resort to 103. If the answer to the 112(a) question is that based on the specification one of skill could have made a crude implementation, the court would toss the claims on 112(b) for failing to particularly claim the invention. And if the response to the 112(b) question was that the specification enables all manner of doing it, that is still tossed at summary judgement because summary judgement only considers genuine issues not hypothetical ones.

          The question isn’t whether 103 can eventually come to the rescue – the question is whether an applicant can be rewarded with the higher clear and convincing standard when the four corners of the patent document evidence that no contribution was made.

        2. 1.1.3.3

          >>in this patent, for the specific functions being required by the claims to be performed [by undefined means], that “One of ordinarily skill in the art could have easily made a crude and rudimentary system that falls within the scope of the claim” is either untrue or at least a very disputable fact question.

          What specifically do you think couldn’t have been rudimentarily implemented?

          “assessing the performance of the songs played by the user, based on the assessed performance, determine a portion of the performance that should be improved”

          Record a count of notes not correctly delivered for various fractions of the song. Identify the fraction with the highest count.

          “Selectively changing a difficulty level of at least a portion of the presented fingerings notations corresponding to the song”

          Space out the notations (i.e., slow down the song) for the worst fraction.

          “Generating a mini-game different from the game for the song being played targeted to improving the user’s skills associated with the determined portion”

          Reskin the game for replaying the slowed down portion of the song.

          Seems all easily within the abilities of a game developer circa 2008.

        3. 1.1.3.4

          “But where does such an “obvious to make all the electronics” admission leave the claims under 103 where the holding is that all the claimed functions and their combinations were known to be performed manually?”

          “Obvious to make” is very different from “could have been made.” The CAFC has a much higher bar for the former than the latter.

          1. 1.1.3.4.1

            The CAFC has an undeservedly much higher bar for the former than the latter.

            Fixed it for you.

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