USPTO Releases New Business Method Guidelines: Requires “physical transformation” or “concrete and tangible result”

Patent, Patent Prosecution, , ,

In the wake of the Lundgren case, the USPTO has released a set of interim examination guidelines for determining subject matter eligibility of patent applications. (Link).  The guidelines will be used by examiners “in determining, on a case-by-case basis, whether a claimed invention falls within a judicial exception to statutory subject matter (i.e., is nothing more than an abstract idea, law of nature, or natural phenomenon), or whether it is a practical application of a judicial exception to statutory subject matter.”

The crux of the new guidelines is that an invention falls within the scope of 35 U.S.C. 101 “if the claimed invention physically transforms an article or physical object to a different state or thing, or if the claimed invention otherwise produces a useful, concrete, and tangible result.”  The application itself should enable one of ordinary skill in the art to understand the utility of the invention.

To continue reading, become a Patently-O member. Already a member? Simply log in to access the full post.

Claim Term of “Conventional Computer” Limited to Computers Available as of Patent’s Effective Filing Date

Patent, Patent Cases 2005, Patent Prosecution

Patentlyoimage034 PC Connector Solutions v. SmartDisk (Fed. Cir. 2005).

PC Connector sued SmartDisk for infringement of its patent directed to the connection of peripherals to a computer via a coupler inserted into the disk drive.  The claims include limitations such as “an input/output port normally connectable to a conventional computer input/output port.”

SmartDisk argued that its flash memory cards could not infringe the patent because, like other terms in the claims, the terms “normally” and “conventional” must be interpreted as referring to technology that existed at the time of the invention.  The district court agreed, finding that there could be no literal infringement because flash memories were not in normally connectable at the time the patent was filed in 1988.

On appeal, the Court of Appeals for the Federal Circuit affirmed, finding that a claim’s “meaning must be interpreted as of its effective filing date.”  As such, the appellate panel held that SmartDisk did not infringe because “even a casual observer, [the flash memories] cannot be connected to a vintage 1988 computer I/O port that uses a multi-pin connector, there can be no literal infringement.”

Prosecution Tip: Do not use the modifiers such as “normally,” “traditional,” or “conventional” in your claims. Such limitations do not allow you to overcome any prior art but do severely limit the scope of the claims.

Patently-O Patent Prosecution TipCast No. 1

Patent, Patent Prosecution

PatentlyOImage010The first Patently-O Patent Prosecution TipCast has just been released.  The TipCast series is an audio lecture series that is intended to provide helpful hints and information to patent attorneys and agents.  TipCast No. 1 provides a tip relating to revival of abandoned applications.

Click to Download and Listen to TipCast No. 1. (2.9 MB, mp3 format, 3 minutes audio).

Show-notes:

Thanks goes to Evan Brown and the rethink(ip) group for their inspiration and encouragement.  For those interested in the creation of the TipCast — I used my laptop computer hooked to a Logitech USB microphone ($14) and a software package titled Media Wizard (CDH Productions, $50) to record my voice.  I also used Media Wizard to mix-in the music.  Although I have some radio experience from my days as an announcer at WPRB Princeton, this was my first digital recording.

A client who is also a Patently-O reader sent me a note this morning that the recording was very nicely done, but that it seems like a lot of work on my part — She asks, “why the audio form rather than visual?”

My Response: There is new technology coming along that is going to make the audio format very easy to use — although right now only the real techno-geeks and audiophiles are involved. I have to admit that I still know very little about this, but there is technology available to allow your hand-held device, such as your iPod or even your cell phone, to subscribe to an audio feed. Each time the feed is updated, the device would download the mp3 file and allow you to listen to the newest update. With a touch of a button, you could listen while on your morning commute or while working out at the gym.

 Thank you for all the comments and complements on the TipCast.  Even my wife was very nice this morning to mention that I certainly have the face for Podcasts. . .