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August 29, 2008

101 Love

USPTO Deputy Commissioner for Patent Examination Policy John J. Love took it upon himself to interpret 35 U.S.C. §101 for software method claims. Months ago in an internal memo to examiners, Love encouraged 101 rejections for method claims that merely recite computer usage in the preamble. Love wants software process claim steps tied to a system or apparatus, and transformation of the underlying subject matter. Now he has backing from the PTO appeals board. Herein, a BPAI ruling bombastic in its vacuity, disingenuous dissembling of case law to drive process patentability into the ditch.

Ex parte Lars Langemyr (BPAI 2008-1495) May 29, 2008

The BPAI affirmed a §101 rejection for computerized math. Simply, the claims were arguably not patentable for trying to patent an algorithm.

The swath of issues the board took upon itself to address.

This issue turns, in part, on whether ineligible mathematical manipulations of data become eligible subject matter when the manipulations are performed on a computer, where the data represents physical systems, and where the method includes a step of outputting a model. This issue further requires us to decide whether ineligible mathematical manipulations of data become eligible subject matter when the mathematical manipulations are stored on a computer readable medium. This issue still further requires us to determine whether ineligible mathematical manipulations of data become eligible subject matter when the input data is obtained via a graphical user interface and/or stored in an unspecified data structure or when the output is displayed on a graphical user interface.

The BPAI's hash of §101, warming up with the obvious -

The "useful arts" in the Constitution are implemented by Congress in the statutory categories of eligible subject matter in 35 U.S.C. 5 101. Section 101 states, "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 therefore, subject to the conditions and requirements of this title." 35 U.S.C. § 101 (2002). " [N]o patent is available for a discovery, however useful, novel, and nonobvious, unless it falls within one of the express categories of patentable subject matter of 35 U.S.C. 5 101." Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 483 (1974). The Supreme Court cases prove that §101 is as much a statutory requirement of patentability as §§ 102, 103, and 112.

Any revocation of patentability for invention must curtsey to the elephant in the room by repudiating Congressional intent as expressed in Diamond v. Chakrabarty: "Congress intended statutory subject matter to include anything under the sun that is made by man." The BPAI did this disingenuously by dissembling a seemingly ambiguous Supreme Court statement taken out of context to intend what was not intended. The statement referred to novelty, not patentability. The BPAI repeatedly used Parker v. Flook for traction. Parker was a ruling that a mathematical algorithm isn't patentable if its application itself isn't novel.

Although it has been said that through the 1952 Patent Act "Congress intended statutory subject matter to include anything under the sun that is made by man," Diamond v. Chakrabarty, 447 U.S. 303, 309 (1980) (quoting S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H.R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952) (internal quotation marks omitted)), the Supreme Court has said that this statement does "not . . . suggest that § 101 has no limits or that it embraces every discovery." Id. "The obligation to determine what type of discovery is sought to be patented [so as to determine whether it is "the kind of 'discoveries' that the statute was enacted to protect"] must precede the determination of whether that discovery is, in fact, new or obvious." Parker v. Flook, 437 U.S. 584, 593 (1978) (emphases added).

Gottschalk v. Benson disallowed a patent on an algorithm. Here again, the BPAI distorted the ruling by selective off-point quotation, where the Supreme Court took care to clarify: "it is said that the decision precludes a patent for any program servicing a computer. We do not so hold." Again reading into what the Supreme Court did not explicitly say, the BPAI pushed transformation as necessary to process patentability: a claimed process must be more than just a series of steps if not involving mechanization: it must transform the article subject to the process. In Cochrane v. Deener, which the BPAI cites, the Supreme Court ruled that "[a] process may be patentable irrespective of the particular form of the instrumentalities used." Not at all what the BPAI would make of that ruling.

Section 101 does not provide that a process can simply be a plurality of steps or any method; the courts have rejected such an interpretation. In fact, the Supreme Court has pointed out that its decisions have foreclosed an ordinary, dictionary reading of "process." See Flook, 437 U.S. at 589 ("The holding that the discovery of [Benson's] method could not be patented as a 'process' forecloses a purely literal reading of § 101.").

In Diamond v. Diehr, the Supreme Court performed a lengthy statutory construction treatment of the term "process" in section 101. 450 U.S. at 181-84. The Supreme Court noted that the term "process" was not formally a category of statutory subject matter until 1952 when Congress inserted that term in section 101 in exchange for the word "art." Id. at 182. Nevertheless, a number of Supreme Court cases, dating back to the 19th century, recognized that processes were patent-eligible because they were considered a form of "art" as that term was used in the 1793 Patent Act. See id. at 182. After quoting passages from those earlier cases1 expounding on the long-standing meaning of "process," the Diehr Court concluded that the 1952 Patent Act essentially codified the Court's pre-existing definition of that term: "Analysis of the eligibility of a claim of patent protection for a 'process' did not change with the addition of that term to § 101." Id. at 184. And the Court repeated the definition of "process" it had recently given in Gottschalk v. Benson, 409 U.S. 63 (1972): "Transformation and reduction of an article 'to a different state or thing' is the clue to the patentability of a process claim that does not include particular machines." Diehr, 450 U.S. at 184 (quoting Benson, 409 U.S. at 70).2

1 Corning v. Burden, 56 U.S. 252 (1853), and Cochrane v. Deener, 94 U.S. 780,788 (1877).

2 See also Flook, 437 U.S. at 588 n.9 ("this Court has only recognized a process as within the statutory definition when it either was tied to a particular apparatus or operated to change materials to a 'different state or thing."') (citing Cochrane, 94 U.S. at 787-88).

Here the rather astonishing assertion that Congress cannot change the law: "well-established common law principles are left unchanged by statutory enactment."

The Federal Circuit recently quoted with approval this test from Diehr as the standard for a statutory process. See In re Comiskey, 499 F.3d 1365, 1377 (Fed. Cir. 2007) (request for rehearing en bane pending) (quoting same test from Diehr). In addition, in In re Schrader, 22 F.3d 290 (Fed. Cir. 1994), the Federal Circuit had previously embraced the Diehr Court's interpretation of "process," coming to the independent conclusion that Congress incorporated the Supreme Court's already established meaning of "process" into the 1952 Patent Act. Id. at 295-96 (citing Astoria Federal Sav. and Loan Ass 'n v. Solirnino, 501 U.S. 104, 106-08 (1991) as standing for the "presumption that well-established common law principles are left unchanged by statutory enactment."); see also id. at 295 n. 11.

Like a record album that has filler cuts, the BPAI makes the Animal House argument: "our standard for 101 has a long tradition of existence to the community." The simpler conclusion would be unremarkable: that the claims were trying to patent the output of a mathematical model, in essence, an algorithm. In other words, the BPAI built a mountain out of a molehill. The mountain, with twin peaks of "transformation" and "apparatus dependence",  is right in front of the landing strip for process claims flying in.

The Supreme Court has also indicated, however, that its current test for a section 101 process is not necessarily forever fixed or permanent:

It is argued that a process patent must either be tied to a particular machine or apparatus or must operate to change articles or materials to a 'different state or thing.' We do not hold that no process patent could ever qualify if it did not meet the requirements of our prior precedents.

Benson, 409 U.S. at 71. Rather, the Court made clear that it could be open to revisiting the standard if a new, unforeseen technology warranted an exception to its test. Id. (explaining that it did not wish to "freeze process patents to old technologies, leaving no room for the revelations of new, onrushing technology."). The long-standing Diehr test for processes, however, has provided a reliable, workable set of legal principles, and nothing in Appellants' claimed method suggests that this case is sufficiently different from the claims to mathematical algorithms of Benson and Flook that would require us to depart from the Diehr test.

Comiskey reinterpreted. KSR, on novelty, remolded to address patentability. The obscured point the BPAI wants to make here is that a process must be tied to a machine (manufacturing), in direct contradiction of repeated precedent.

Moreover, the Supreme Court's construction of "process" appropriately keeps the scope of that statutory category in pari rnateria with the other three categories of inventions - manufacture, machine, and composition of matter. Indeed, Comiskey expressly recognized a direct relationship between "process" and the other categories, observing that a method claim recites statutory subject matter only if "it is embodied in, operates on, transforms, or otherwise involves another class of statutory subject matter, i.e., a machine, manufacture, or composition of matter." Comiskey, 499 F.3d at 1376 (restating the Supreme Court's transformation or tied to a particular apparatus test for "process").

As the Comiskey court observed, such an interpretation advances the Congressional and Constitutional intention that the patent system be directed to protecting technological innovations. See id. at 1375, 1378-79. Although the Federal Circuit's predecessor held that the question whether an invention is in the "technological arts" does not by itself constitute the test for patent-eligibility under section 101 (see In re Toma, 575 F.2d 872 (CCPA 1978)), the technological focus of the Patent Act and the Patent Clause informs the outer limits of subject matter eligibility under section 101. See In re Bergy, 596 F.2d 952, 959 (CCPA 1979) ("the present day equivalent of the term 'useful arts' employed by the Founding Fathers is 'technological arts' "), citing In re Musgrave, 431 F.2d 882 (CCPA 1970)), vacated, 444 U.S. 1028, aff'd sub nom., Diamond v. Chakrabarty, 447 U.S. 303 (1980). The Supreme Court recently reaffirmed that patents may issue only for those innovations that promote "the progress of useful arts." KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1746 (2007). In this regard, usages of the term "useful arts" contemporaneous with the framing of the Constitution uniformly tie "useful arts" to manufactures and manufacturing processes, thereby providing strong support for the notion that "process" must be interpreted in parity with the other statutory categories.3

3 See generally Daniel Defoe, A General History of Discoveries and Improvements in Useful Arts (1727) (providing a history of technological developments from biblical times); W. Kenrick, An Address to the Artists and Manufacturers of Great Britain (1774) (contrasting the "useful arts" with the "polite arts"); Tench Coxe, An Address to an Assembly of the Friends of American Manufactures, in Calling for More Domestic Manufacturing (1787), at 17 (tying "useful arts" to manufactures); id. at 18 (describing progress in the useful arts as having produced improvements in numerous kinds of manufactures, from ships to whips to watches); George Logan, M.D., A Letter to the Citizens of Pennsylvania, on the Necessity of Promoting Agriculture, Manufactures, and the Useful Arts (1 800) 12- 13 (tying "useful arts" to manufacturing processes, and observing the connection between a country's prosperity and the progress in the useful arts); Karl B. Lutz, Patents and Science, 18 Geo. Wash. L. Rev. 50, 54 (1949) ("The term 'useful arts,' as used in the Constitution ... is best represented in modem language by the word 'technology.' ").

From the noise above, the BPAI declares that Congress did not intend that a process merely be useful to be patentable.

Against this background, it is unlikely that Congress intended the boundaries of "process" to be so expansive as to accommodate all methods that have a use. Rather, we adhere to the rule that, at least absent the development of some hitherto unknown type of technology, "[t]ransformation and reduction of an article 'to a different state or thing' is the clue to the patentability of a process claim that does not include particular machines." Diehr, 450 U.S. at 184 (quoting Benson, 409 U.S. at 70).

Whether a method appropriately includes particular machines to qualify as a section 101 process may not always be a straightforward inquiry. As Comiskey recognized, "the mere use of the machine to collect data necessary for application of the mental process may not make the claim patentable subject matter." Comiskey, 499 F.3d at 1380 (citing In re Grams, 888 F.2d 835, 839-40 (Fed. Cir. 1989)). In other words, nominal or token recitations of structure in a method claim should not convert an otherwise ineligible claim into an eligible one. For the same reason, claims reciting incidental physical transformations also may not pass muster under section 101. To permit such a practice would exalt form over substance and permit claim drafters to file the sort of process claims not contemplated by the case law.

Below, repetition in the spirit of Goebbels. Concocted pseudo-quotations, and summary conclusions not supported in proper context of precedent. Processes must transform and be tied to an apparatus to be patentable are the nails the BPAI pounds on. The BPAI treats history like a bull in the china shop of time.

In Benson, the Court reviewed the facts of several of its precedents dealing with process patents before drawing the conclusion that "transformation" is the clue to patent-eligibility "of a process claim that does not include particular machines." Benson, 409 U.S. at 68-71 (emphasis added). Of the cases discussed, Corning (tanning and dyeing), Cochrane (manufacturing flour), Tilghman v. Proctor, 102 U.S. 707 (1880) (manufacturing fat acids), and Expanded Metal Co. v. Bradford, 214 U.S. 366 (1909) (expanding metal), can all fairly be read to involve transformation of some article or material to a different state or thing. Id. at 69-70. Benson also compared O'Reilly v. Morse, 56 U.S. (15 How.) 62 (1854), to The Telephone Cases, 126 U.S. 1 (1888), reasoning that Morse's eighth claim was disallowed because it failed to recite any machinery for carrying out the printing of characters at a distance, instead simply claiming the use of "electromagnetism, however developed" for that purpose. Id. at 68. In contrast, Bell's claim in The Telephone Cases recited certain specified conditions for using a particular circuit for the transmission of sounds. Benson, 409 U.S. at 68-69.

These cases illustrate process claims where the recited machines played a central role in generating a useful result. In direct contrast, human-driven methods that merely recite a device that is insignificant to accomplishing the method (like the claim in Grams) and do not transform any article should not be recognized as a "process" claim similar to the above-cited cases. See Diehr, 450 U.S. at 191-92 ("insignificant post-solution activity will not transform an unpatentable principle into a patentable process. To hold otherwise would allow a competent draftsman to evade the recognized limitations on the type of subject matter eligible for patent protection.")

With a straw man setup of "tied to a particular apparatus" versus data structures, the BPAI redraws the lines of patentability.

We acknowledge that it will not always be simple to draw the line between a statutory process appropriately "tied to a particular apparatus" and a nonstatutory method with nominal recitations of structure, but such a standard is necessary to prevent clever claim drafting from circumventing the principles underlying the Supreme Court's interpretation for "process."

Case law, and even the statements cited, do not support the conclusions that BPAI drew. A lot of heat and very little light here.

In Benson, the patent claims were directed to a method for converting binary-coded-decimal (BCD) numerals into pure binary numerals for use with a general-purpose digital computer of any type. 409 U.S. at 64. The question before the Court was "whether the method described and claimed is a 'process' within the meaning of the Patent Act." Id. The Court characterized the claimed invention as "a generalized formulation for programs to solve mathematical problems of converting one form of numerical representation to another." Id. at 65. The Court found that the "process" claim was "so abstract and sweeping as to cover both known and unknown uses of the BCD to pure binary conversion." Id. at 68. The Court found that "[tlhe end use may (1) vary from the operation of a train to verification of drivers' licenses to researching the law books for precedents and (2) be performed through any existing machinery or future-devised machinery or without any apparatus." Id. The Court thus held that the claimed method was directed to non-statutory subject matter, because "[tlhe mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself." Id. at 71-72.

In Flook, the patent claims were directed to a method of updating alarm limits. 437 U.S. at 585. The Court found that "[tlhe only difference between the conventional methods of changing alarm limits and that described in respondent's application rests in the second step - the mathematical algorithm or formula." Id. at 585-86. The Court noted that the claims did not "cover every conceivable application of the formula." Id. at 587. As such, the Court agreed that the claims did not seek to wholly preempt the mathematical formula. Id. at 589-90. Nonetheless, the Court held that the claimed method was directed to non-statutory subject matter, because "a claim for an improved method of calculation, even when tied to a specific end use, is unpatentable subject matter under 5 101 ." Id. at 595 n.18. In doing so, the Court rejected the respondent's assumption that "if a process application implements a principle in some specific fashion, it automatically falls within the patentable subject matter of 5 101 ." Id. at 593. The Court stated that this assumption "would make the determination of patentable subject matter depend simply on the draftsman's art and would ill serve the principles underlying the prohibition against patents for 'ideas' or phenomena of nature." Id. The Court summarized the basis for its holding as follows:

Even though a phenomenon of nature or mathematical formula may be well known, an inventive application of the principle may be patented. Conversely, the discovery of such a phenomenon cannot support a patent unless there is some other inventive concept in its application.

Id. at 594.

In Diehr, the claimed invention was directed to a process for curing synthetic rubber. The question before the Court was "whether a process for curing synthetic rubber which includes in several of its steps the use of a mathematical formula and a programmed digital computer is patentable subject matter under 35 U.S.C. 5 101." Id. at 177. In the claimed process, the actual temperature in the mold is constantly measured, and these measurements are fed back to the computer to use to repeatedly recalculate the cure time using the Arrhenius equation, so that when the recalculated time equals the actual time that has elapsed since the press was closed, the computer signals a device to open the press. Id. at 178-79. The continuous measuring of the temperature inside the mold cavity, the feeding of this information to a digital computer which constantly recalculates the cure time, and the signaling by the computer to open the press, were all new in the art. Id. at 179. The patent examiner rejected the claims, finding that the steps carried out by the computer were non-statutory subject matter under Benson and the remaining steps of installing the rubber in the press and closing the press were merely conventional. Id. at 180-8 1. The Patent and Trademark Office Board of Appeals agreed with the examiner, but the Court of Customs and Patent Appeals reversed. Id. at 18 1. On review, the Supreme Court held that a physical and chemical process for molding precision synthetic rubber products falls within the § 101 categories of possibly patentable subject matter, because the claims involve a transformation of an article into a different state or thing and "[i]ndustrial processes such as this are the types which have historically been eligible to receive the protection of our patent laws." Id. at 184. The Court cited with approval its previous statement in Benson that "[t]ransformation and reduction of an article to a different state or thing is the clue to the patentability of a process claim that does not include particular machines." Id. (quoting Benson, 409 U.S. at 70 (internal quotation marks omitted)). In contrast to the facts in Flook, the Court noted:

[Tlhe respondents here do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of curing synthetic rubber. Their process admittedly employs a well-known mathematical equation, but they do not seek to preempt the use of that equation. Rather, they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process.

Id. at 187. The Court concluded that "a claim drawn to subject matter otherwise statutory, does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer." Id. The Court also stated the corollary, as follows:

A mathematical formula does not suddenly become patentable subject matter simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use. A mathematical formula in the abstract is nonstatutory subject matter regardless of whether the patent is intended to cover all uses of the formula or only limited uses. Similarly, a mathematical formula does not become patentable subject matter merely by including in the claim for the formula token postsolution activity such as the type claimed in Flook.

Id. at 192 n.14. For a process to be deemed patent-eligible under section 101, Diamond v. Diehr, 450 U.S. 175 (1981) requires that two separate inquiries must take place. First, the claim must qualify as a "process," as that term has been interpreted by the courts. Id. at 181-84. Second, even if the claim satisfies the Supreme Court's definition for "process," the claim must then be evaluated for whether it is for an abstract idea, natural phenomenon, or law of nature. Id. at 185-93. When conducting the section 101 analysis, the claims must be examined "as a whole." Id. at 188.

In Comiskey, the Federal Circuit stated that "Supreme Court decisions after the 1952 Patent Act have rejected a 'purely literal reading' of the process provision and emphasized that not every 'process' is patentable." Id. at 1375 (quoting Flook, 427 U.S. at 589). Rather "[tlhe question is whether the method described and claimed is a 'process' within the meaning of the Patent Act." Id. (quoting Gottschalk v. Benson, 409 U.S. 63, 64 (1972)). The court held that claims directed to a method for mandatory arbitration resolution were unpatentable under § 101 because "the patent statute does not allow patents on particular systems that depend for their operation on human intelligence alone, a field of endeavor that both the framers and Congress intended to be beyond the reach of patentable subject matter." Id. at 1378-79. The court stated:

The prohibition against the patenting of abstract ideas has two distinct (though related) aspects. First, when an abstract concept has no claimed practical application, it is not patentable.

...

Second, the abstract concept may have a practical application. The Supreme Court has reviewed process patents reciting algorithms or abstract concepts in claims directed to industrial processes. In that context, the Supreme Court has held that a claim reciting an algorithm or abstract idea can state statutory subject matter only if, as employed in the process, it is embodied in, operates on, transforms, or otherwise involves another class of statutory subject matter, i.e., a machine, manufacture, or composition of matter. 35 U.S.C. § 101.

Id. at 1376.

Necessitating transformation, nor being tied to a machine, is not what Comiskey required. Yet here are the reasons for rejection.

Appellants' method claim is not a section 101 "process," because it does not include a particular machine, nor does it transform subject matter to a different state or thing. A statutory "process" must meet one of those two requirements.

Further, tying a process to a computer in the preamble is insufficient.

The Appellants' claim 1 preamble includes only a nominal recitation of a "computer apparatus." Nominal recitations of structure in an otherwise ineligible method fail to make the method a statutory process. See Benson, 409 U.S. at 71-72. As Comiskey recognized, "the mere use of the machine to collect data necessary for application of the mental process may not make the claim patentable subject matter." Comiskey , 499 F.3d at 1380 (citing In re Grams, 888 F.2d 835, 839-40 (Fed. Cir. 1989)). Incidental physical limitations, such as data gathering, field of use limitations, and post-solution activity are not enough to convert an abstract idea into a statutory process. In other words, nominal or token recitations of structure in a method claim do not convert an otherwise ineligible claim into an eligible one. To permit such a practice would exalt form over substance and permit claim drafters to file the sort of process claims not contemplated by the case law. Cf., Flook, 437 U.S. at 593 (rejecting the respondent's assumption that "if a process application implements a principle in some specific fashion, it automatically falls within the patentable subject matter of 5 101," because allowing such a result "would make the determination of patentable subject matter depend simply on the draftsman's art and would ill serve the principles underlying the prohibition against patents for 'ideas' or phenomena of nature."). In this case, we decline to allow clever claim drafting to circumvent the principles underlying the Supreme Court's interpretation for "process." The only recitation of structure is in the nominal recitation in the preamble citing a "method executed in a computer apparatus." This recitation is so generic as to encompass any computing system, such that anyone who performed this method in practice would fall within the scope of these claims. Thus, the recitation of a computer apparatus in the preamble is not, in fact, a limitation at all to the scope of the claim, and the claim is directed, in essence, to the method performed by any means. As such, we fail to find that this recitation alone requires the claimed method to include a particular machine such that the method qualifies as a "process" under § 101. We will not allow such a nominal recitation in the preamble to convert an otherwise ineligible claim into an eligible one.

The definition in 35 U.S.C. 5 100(b) that a "process" includes "a new use of a known . . . machine," requires that new uses of a known machine be claimed as a method. We do not think the statute states that any inclusion of a machine makes a method a statutory "process."... As explained supra, the limitation that the method is "executed in a computer apparatus" does not tie the method to a "particular machine." Any and all computing systems will suffice, indicating that the claim is not directed to the function of any particular machine.

Trying to tie to a "particular machine" by storing data falls flat.

The phrase "data structure" is defined as "[a] physical or logical relationship among data elements, designed to support specific data manipulation functions." IEEE Standard Computer Dictionary (1991). We see no way of storing data in a computer memory without storing it in some sort of data structure. The data structure of claim 26 is nothing more than another way of describing the manipulation of abstract ideas contained in claim 1, and thus it suffers from the same fatal defect as claim 1. See Warmerdam, 33 F.3d at 1362.

Posted by Patent Hawk at August 29, 2008 10:15 PM | § 101

Comments

I hate love.

Posted by: anon at August 30, 2008 8:33 AM

Europeans think that a patentable invention is the solution (new and not obvious) to an objective technical problem, and that a data structure can be a new and unobvious patentable solution to an objective technical problem. Tying patentability to a "transformation" or a "machine" looks to a European like a triumph of form over substance, and a failure to protect the legitimate protection requirements of those who have made patentable contributions to the state of the art, thereby promoting the progress of the useful arts. Financial engineering is commercial but not "technical" and so ought not to be patentable. But what do other readers think?

Posted by: MaxDrei at August 30, 2008 2:09 PM

Talk about gobbledygook !!!
So what is it - I understand that this may be overturned (or not - the political climate being what it is).
BUt PRACTICALLY - is the BPAI saying that one cannot get ANYpatent protection on manipulating PDEs (which represent something 'physical') and displaying the results on a computer screeen???
Or only that the "magic words" of a microcomputer must be recited in the body of the claim, and not the preamble?
Or is it not determinable from this messy opinion?
PLEASE ENLIGHTEN US

Posted by: anonymousAgent at August 31, 2008 5:47 AM

What this ruling means is that the USPTO, rather than properly applying statutory and case law, concocts & advances its own vision of what should be. The seemingly deliberate misinterpretation of case law smacks of unbounded corruption. The motive may be political/religious, against software patents to the degree possible.

What this ruling portends is uncertain. In this case, it was applied to claims that were unpatentable as trying to claim an algorithmic process. That it occurred in a computer didn’t make it patentable.

If more broadly applied, this line of reasoning will end up at the CAFC, when an applicant with enough brass to pursue smacking the PTO arrives.

Maybe there will be a new administration (Obama, rather than McW), and a clean sweep. But that would be heartily optimistic.

For a practitioner, business as usual. I’m not planning on altering my software claims. As Van Morrison sang, “take it where you find it, can’t leave it alone.” (from the Wavelength album) From that perspective, anonymousAgent hit the nail on the head: gobbledygook. What do you about it but hope it goes away, or somehow doesn’t splatter on you?!

MaxDrei raises interesting points. To call financial engineering “commercial but not technical” is, pardon my abrupt candor, a statement of ignorance. Financial engineering is as intense an engineering discipline as others (e.g. electrical), it’s just shoving coins around rather than electrons. One may argue the worth of financial engineering, particularly with what its fruits are now (credit crunch), but it is a technical discipline. Alas, like every other industry of endeavor, the bus is loaded with bozos.

Posted by: Patent Hawk at August 31, 2008 11:11 AM

Hawkie,
Is this turd precedential?

Posted by: anonymousAgent at August 31, 2008 1:29 PM

anonymousAgent: "Is this turd precedential?"

It's "informative." The safe bet would be yes.

Posted by: Patent Hawk at August 31, 2008 2:00 PM

Ah Hawk, financial engineering is "technical" you write. Coins, words, these are all symbols, under the sun, and made by man. So, what if I'm a Hollywood scriptwriter and I shove words around all day (instead of electrons or coins) and thereby devise a clever new arrangement of words. Is that "technical" too? So, can I patent my new trademark? Come on. Instead of canvassing those who earn their crust by writing, prosecuting and searching claims, let's ask the intelligent, educated, thoughtful non-patent voter. I think she would see a decisive difference between words/coins and electrons, and I'm surprised that you don't. BTW help me, please. What is a "bozo"?

Posted by: MaxDrei at August 31, 2008 10:01 PM

Hawk, do me another favour, will you? Tell me about this "bus" you mention, in which you are a passenger. It's full of folks from a particular "industry of endeavor" right? That would be the industry of writing, prosecuting and searching patent claims, right? And would I be right in thinking that you've been partying so long and loud, and congratulating each other for so long, that all the bus windows are steamed up, so that you lost sight of ther real world some considerable time ago.

Posted by: MaxDrei at August 31, 2008 10:24 PM

Patent Hawk -- what happened to those "story line" patent applications?

they might make a good article for your website

Posted by: patent prosecutor at September 1, 2008 10:40 AM

patent prosecutor,

Thanks for the question about: "story line" patent applications.

My unvarnished opinion is that such subject matter is non-statutory, and hence unpatentable.

So, to me, "story line" patent applications don't make for much of a story.

Posted by: Patent Hawk at September 1, 2008 1:28 PM

"The fate of all mankind I see is in the hands of fools"

Sad, very sad..

PTO officials not having a clue about very basic facts of reality..
What can you expect from Congress critters then ?

Posted by: angry dude at September 2, 2008 5:53 AM

Unfortunately to me, the BPAI panel does not expressly interpret the claim limitations in light of the disclosure to teach what the disclosure or claim limitations lack. The rejected application is itself not published, but its disclosure appears in related applications 2003/0105614 and 2004/0034514 containing other claim sets that will likely meet the same fate. 49 sheets of drawings of flowcharts, charts, equations and GUI displays presented with explanation. Can any of the experts here provide insight as to what could or should have been done to recite and support claim limitations that would have been found statutory?

Posted by: jfbpatent at September 2, 2008 6:28 AM

"Can any of the experts here provide insight as to what could or should have been done to recite and support claim limitations that would have been found statutory?"

I'm no expert but I can venture a guess:

"Love wants software process claim steps tied to a system or apparatus, and transformation of the underlying subject matter."

That might do it.

Posted by: e6k at September 3, 2008 11:01 AM

Max, I don't think your "Europeans think..." lead in is getting you any credibility. If Europeans think a certain way, you can bet I'm going to be doing things a little differently. As for bozo, you may want to consider standing in front of a mirror.

Posted by: AllSeeingEye at September 22, 2008 5:33 PM

That aside Max, you do raise some good points. I agree that preoccupation with a machine amounts to form over substance.

Posted by: AllSeeingEye at September 22, 2008 6:38 PM