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November 9, 2008

Getting Physical

Non-final office action, received post-Bilski, directed to claims with the preamble: "A computer-implemented method comprising:", followed by steps of computer file selection, storage, and network transfer/copy. Examiner rejection as follows:

The claims lack the necessary physical articles or objects to constitute a machine or a manufacture within the meaning of 35 USC 101.They are clearly not a series of steps or acts to be a process nor are they a combination of chemical compounds to be a composition of matter. As such, they fail to fall within a statutory category. They are, at best, functional descriptive material per se.

Possible reply:

Each rejected claim comprises a traditional series of process steps. Rejection that said claims "are clearly not a series of steps or acts to be a process" is hence respectfully traversed.

The "physical article or object" to which each claim is directed comprises a set of files stored on electromagnetic or optical medium. Each file itself constitutes a physical article. Electromagnetic and optical storage is well known to those of ordinary skill in the art of computerized digital storage. Such storage is inherent within any claim of a "file" as an article.

Claimed files may comprise, for example, music or video files. Each commercial music CD or movie DVD sold in the United States carries a warning from the FBI, promising "severe civil and criminal penalties for the unauthorized reproduction, distribution and digital transmission of copyrighted recordings." Even the FBI, not known to be skilled in any art, recognize electromagnetic and optical file storage as comprising a crime-worthy article. As abstract thought is not yet a crime in the United States, the FBI warning must be referring to statutory articles stored on computer media.

Each possible claimed file corresponds to a representation of a physical article, an object which may at the least be visually depicted, either on-screen or in printed form. The Court of Appeals, Federal Circuit, recently affirmed the patentability of such claimed subject matter.

We further note for clarity that the electronic transformation of the data itself into a visual depiction in Abele was sufficient; the claim was not required to involve any transformation of the underlying physical object that the data represented. We believe this is faithful to the concern the Supreme Court articulated as the basis for the machine-or-transformation test, namely the prevention of pre-emption of fundamental principles. So long as the claimed process is limited to a practical application of a fundamental principle to transform specific data, and the claim is limited to a visual depiction that represents specific physical objects or substances, there is no danger that the scope of the claim would wholly pre-empt all uses of the principle. See In re Bilski __F.3d__ (CAFC 2008-1130) (en banc) at 26, referring to Abele, 684 F.2d at 908-09.

As the claims are directed to a practical application, comprising electronic transformation of data renderable as a visual depiction, they are statutory under 35 USC §101. Rejection respectfully traversed.

Comment solicited.

Posted by Patent Hawk at November 9, 2008 4:29 PM | Prosecution

Comments

First of all hawk, it seems the rejection has presented you first with the fact that the claim does not include product/apparatus limitations and therefor does not fall into the catagory "product". With that I don't think you disagree so I don't think you need to drone on and on at length about how you have product/apparatus limitations inherent to the claim because you don't. End of story.

Then the rejection says you don't have process steps. This is the only thing you need to reply to right now. "Each rejected claim comprises a traditional series of process steps. Rejection that said claims "are clearly not a series of steps or acts to be a process" is hence respectfully traversed." will be fine.

That said, when the examiner recieves your reply, if he or she was me, then they might cite Bilski and reject you with that "reasoning". I would start off by quoting a choice section from Diehr. Can you guess which one?

Even with that said however, what the examiner eventually boils down to saying is that you apparently claimed only functional descriptive limitations. And without seeing the claim, nobody here will be able to tell you if you in fact did only include functional descriptive limitations as opposed to method steps.

If however the examiner meant that all computer implemented method claims are merely functional descriptive language then I like his style. That's a good argument because they are. But, that's a seperate issue that hasn't been ruled on yet, however, I do feel that the CAFC would not take that rational. If that is the case however, the quoted sentence above should suffice for a reply. If he doesn't go for it then appeal.

Posted by: 6000 at November 10, 2008 2:52 AM

I agree with 6000 that you should ignore 1st sentence in OA if none of your claims are to machine or manufacture.

I would then change preamble to recite A method carried out by a digital computer and comprising: selecting ..., storing, transmitting ...

I would then point out that Benson recognized a "digital" computer as being a particular machine distinct from an analog computer and that this claim does not preempt the public from wholly practicing a fundamental principle with machines other than digital or from practicing manually. I would ask the examiner to particularly point out that which he regards as the fundamental principle and explain why this is so.

Was the rejection signed by the examiner before or after Bilski came down? Curious.

Posted by: step back at November 10, 2008 6:09 AM

See Ex parte Li (November 6, 2008), the first BPAI opinion addressing Bilski. The Li panel reversed an examiner's 101 rejection that was worded in a similar manner to your rejection Hawk. I think 6000 and other examiners are going to be disappointed when they realize that Bilski isn't going to be an easy count-generation machine.

Posted by: anon at November 10, 2008 7:34 AM

anon,

Ex Parte Li looks to me to just say that Beauregard is still good law (claim 42 was a computer program product claim), and a 'oh by the way, the UCT test is dead.'

Am I missing something?

Posted by: Anon E. Mouse at November 10, 2008 8:09 AM


In my art unit we would probably have given it a 101 rejection. Although, this is based upon the limited claim recitation at the top of the post.

A couple points...

We have been told that merely the recitation in the preamble is insufficient. This is a managerial decree not caselaw. They want structure or system elements in the body of the claims...such to tie the performance of the method to a machine or system.

I am unsure why the Examiner states "They are clearly not a series of steps or acts to be a process" because they are obviously method steps. The big thing that has been told to us is that the claimed method has to be tied to (1)another statutory class or (2)to a particular machine or system for performance of the claimed method. Maybe the Examiner mangled the new official interpretation of 101.

Furthermore, while the preamble cites that the method is computer-implemented there is nothing evident that the method steps are being performed by the computer or by the user. For example, is the computer selecting a computer file or is the user (a human) selecting a computer file, albeit via a computer...Since we are supposed to take the broadest view, this is how my art unit would interpret it. With such an interpretation all the decisions are made by the human and merely implemented by the computer. Which then reduces the computer to a general purpose computer, as the human user is what is really the brains of the operation.

Without seeing the rest of the claim, I am unsure whether nonfunctional descriptive language rejection is warranted. Although, I am unsure why it appears blended with a 101 rejection.

I think going down the path that electronic files are physical objects is going down the wrong path. I just have seen that management and primaries oppose such an interpretation. That would probably be the tough road to work down.

Posted by: Examiner B at November 10, 2008 8:50 AM

One other point, the Examiner's official stance would probably be that since the method merely transfers and copies data there is no transformation data. The data is being replicated not changed. The data is being moved not changed. While you might consider the new location or new copy new data, the Examiner will probably consider it the old data just relocated or copied.

Posted by: Examiner B at November 10, 2008 8:56 AM

Aha...

The idiocy has started already

Wait for things to follow...

general purpose computer, special purpose computer...tied to a machine, not tied to machine... blah blah blah
What a bunch of bull ....
I pity US patent system and patent examiners in partucylar
Instead of focusing on examination on merits they are now focused on complying with moroninc court decisions to satify their managers
Whats a sorry state of affairs !

Posted by: angry dude at November 10, 2008 9:02 AM

Is this a hypothetical situation or did this actually happen? If it were my case, I'd be on the phone to the supervisor.

Posted by: lenehey at November 10, 2008 9:42 AM

"the Examiner's official stance would probably be that since the method merely transfers and copies data there is no transformation data. "

This is CRAZY - everyone knows that file systems include METADATA about where data objects are stored - of COURSE this METADATA (which IS data) changes when data is transfered and/or copied (this is ONLY for 101 and NOT for 102/103).
There IS transformation of this metadata.

Posted by: anonymousAgent at November 10, 2008 10:06 AM

Is an Examiner setting a trap for a hawk? If Hawk argues the method claims are directed to "physical articles or objects to constitute a machine or a manufacture within the meaning of 35 USC 101", can't the Examiner then use that as an admission against interest of mixed claim types, and thus reject the claims?

Sneaky, sneaky.

http://www.patenthawk.com/blog/2008/03/mixed_claim_types.html

Posted by: it's a trap? at November 10, 2008 10:20 AM

6000, I'm not following your emphasis on "product." This is a process claim, and I don't see product as part of the analysis or the response.

As far as tying the process to a machine, one of the most outrageous effects of that screw-up now known as Bilski is that Mitchel left 15,000 s/ware patents and untold thousands of s/ware applications hanging by not explaining what that whole tied to a machine test means.

"We leave to future cases the elaboration of the precise contours of machine implementation, as well as the answers to particular questions, such as whether or when recitation of a computer suffices to tie a process claim to a particular machine." Yeah, thanks. About as helpful as piss'n on the picnic and then walking away.

I was certain they would have a Bikski Part II out within a day or two to address this vital point. Apparently not. I don't know why I keep "mis-overestimating" the CAFC, to adapt a phrase coined by a soon to be ex-president.

Posted by: Babel Boy at November 10, 2008 11:06 AM

Warning: I admit I don't know what I'm talking about here! Just thought I would inject this line of reasoning to prompt discussion.

What a mess.

I'm a pure amateur at this, but it seems to me that one solution to Bilski might be a ton of Specification boilerplate. If one defines "computer" in very specific terms in the Specification (say, by giving the full technical specification of a particular model of Sun server and all the system software running on it, e.g. operating system and data base software), then Hawk's use of the term in the claim inherits that specificity and the claim should be allowed.

Downside: If the claim *is* allowed, it would appear that it would be limited to practicing the method using only that one model of computer. But can we invoke the doctrine of equivalents, and wouldn't it be obvious to any knowledgeable practitioner of the art how to implement the same method on a different model of computer?

Posted by: Inventor Carl at November 10, 2008 1:51 PM

The rejection was post-Bilski, though just barely.

I read in another blog that the PTO had various examination/rejection guidelines prepared whichever way Bilski blew.

Examiners, what is the Office take on Bilski? Has management already issued revised guidelines for 101 in light of Bilski?

Posted by: Patent Hawk at November 10, 2008 2:21 PM

"Warning: I admit I don't know what I'm talking about here! Just thought I would inject this line of reasoning to prompt discussion."

Dude, you really don't know what you talking about ... just like those dudes who wrote Bilski decision...

Computer is just a computer - a machine for executing instructions
Can be anything - mechanical, electrical, optical, quantum etc. etc. etc.

Still does the same thing

BTW, each and every MShit patent and patent app has a lengthy description of a commodity PC in the background section
This is just a boilerplate, nothing more
Their patents are still shit, pretty much all of them
Why don't you people (I mean examiners and CAFC judges) do what you are paid to do - examine patents on merits, not on some legal mumbo-jumbo

Posted by: angry dude at November 10, 2008 2:27 PM

A specific description of a computer is one of two things. Either it doesn't limit the claims, and it has no value in overcoming Bilski. Or it limits the claims, in which case I can infringe your patent to my heart's content as long as I don't use Sun servers. Neither is a particularly good option.

Hawk's original response, however, seems to indicate that the data is transformed to a visual display. If that is true, then this is a fine response. If not, I would be concerned about it.

Posted by: Name at November 10, 2008 2:50 PM

With all due respect... I may not know much about patents, but I do know a thing or two about computers. The computer science discipline has in fact been debating for decades whether it is possible to distinguish between human cogitation and machine cogitation. Read a bit about Mr. Turing. There is a famous hypothetical test for "good" machine intelligence, namely whether you could discriminate between the responses of a computer and the responses of a human being if they were both out of view behind a curtain.

This tells me that there are genuine issues raised by Bilski, and that a method practiced by a true "general purpose computer" may not be distinguishable from that same method practiced by a human being.

My thought, therefore (incompletely formed though it may be), is that claims may have to be expressed as methods practiced by a *specific* computer (or at least a specific class of computer) to be validly non-human-mental and therefore concrete. The computer (or class of computer) named in the claims must be known to be distinctly mechanical in its capabilities, and not capable of true "human" intelligence.

To ut it another way, we may be over-reaching when we draft claims that apply to "any general purpose computer". That language might conceivably apply to HAL2000, for example, which had distinctly human behaviors.

OK. I'll shut up now and listen.

Posted by: Inventor Carl at November 10, 2008 5:34 PM

"Examiners, what is the Office take on Bilski? Has management already issued revised guidelines for 101 in light of Bilski?"

Hawk:
Examiners still abide by John Love's May 15th memo "Clarification of 'Processes' Under 101" regarding "guidance" on the tied to/transformation test (PDF @ http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/section_101_05_15_2008.pdf )

Anecdotally, some art units are all but requiring a positive recitation of a machine in every process claim now. My AU seems to take the position that the transformation prong of Bilski applies only to the transformation of physical things (i.e. arguing that a process for transforming data (e.g. a digital image) to a different state or thing (e.g. an enhanced digital image) would not be sufficient to pass the transformation prong of Bilski because that which is being transformed is not "real"). Btw, that's from a SPE who kicked back an allowance because he interprets the transformation prong as only applicable to the chem/mechanical arts, and that data per se cannot be transformed to a different state or thing ("It's still just data!"). Groan.

I'm curious just how "particular" the Office thinks the "particular machine" needs to be to establish a tie to the machine. Benson would suggest a "digital computer" is particular enough, but then again...

Posted by: fish at November 10, 2008 5:58 PM

You probably have a method that is purely abstract, and does not transform a thing to a different state. So it has no statutory category.

Posted by: Lurker8 at November 11, 2008 2:16 AM

Fish,

I "groan" with you if the PTO takes this ludicrous approach to Bilski. What I see here is the PTO using Bilski as an excuse to not evaluate the claimed invention on the merits. Again, the Federal Circuit made a huge mistake in putting forth this "machine or transformation" test for 35 USC 101. Judge Rader's dissent looks better to me as time goes on.

Posted by: EG at November 11, 2008 6:07 AM

The amateur is back. If this post is stupid, just ignore it.

I'm with Hawk. I agree with his position that the computations of a general purpose computer inherently change the state of elements of that computer and by definition constitute a transformation. Furthermore, this transformation is specific to the method being claimed; although a computer is capable of infinitely many transformations of its elements, only a very few of those transformations lead to useful results. It is up to the method-inventor to find those useful transformations.

How about this example as a subject for discussion:

The abstract mathematical process of multiplication is clearly not patentable. The math concept of logarithms is clearly not patentable. But...

Let's say I invent an apparatus for multiplying two numbers. The apparatus consists of two sliding sticks, each stick cleverly marked off with identical graduations corresponding to the base-10 logarithms of the natural numbers. Call this new invention a "slide rule". (Yeah, I know, there may be prior art. But bear with me.)

Having invented my slide rule, I also seek a patent covering the method of using it to multiply two numbers. (This usage may not be 'obvious to those skilled in the art.) My claim reads:

"A slide-rule-implemented method comprising the steps of (1) finding a first location on a first stick corresponding to a first number; (2) sliding a second stick so that its end is aligned with said first location; (3) finding a second location on said second stick corresponding to a second number; (4) finding a third location on said first stick opposite said second location on said second stick; and (5) determining a third number (the answer) corresponding to said third location."

Isn't the slide rule transformed in the process of making this computation? Isn't this transformation substantial and significant, and essential to the result sought? Are there not an infinite number of non-useful methods of using (aka transformations of) my slide rule, and was I not very clever in finding this useful method?

Would my slide rule multiplication method meet the Bilski test for a transformation? How is my slide rule method qualitatively different from Hawk's method claim?

Posted by: Inventor Carl at November 11, 2008 8:36 AM

Inventor Carl:

What is the difference between your invention and the following claim--other than that the following claim is not patentable according to the Supreme Court:

A data processing method for converting binary coded decimal number representations into binary number representations comprising the steps of

(1) testing each binary digit position `1,' beginning with the least significant binary digit position, of the most significant decimal digit representation for a binary `0' or a binary `1';

(2) if a binary `0' is detected, repeating step (1) for the next least significant binary digit position of said most significant decimal digit representation;

(3) if a binary `1' is detected, adding a binary `1' at the (i+1)th and (i+3)th least significant binary digit positions of the next lesser significant decimal digit representation, and repeating step (1) for the next least significant binary digit position of said most significant decimal digit representation;

(4) upon exhausting the binary digit positions of said most significant decimal digit representation, repeating steps (1) through (3) for the next lesser significant decimal digit representation as modified by the previous execution of steps (1) through (3); and

(5) repeating steps (1) through (4) until the second least significant decimal digit representation has been so processed."

Under Benson, I don't see how SCOTUS or any lower court could come to any conclusion other than your invention is not 101 patent-eligible subject matter.

Posted by: Anon E. Mouse at November 11, 2008 9:27 AM

pardon the confusing double or triple negative:

IC, your invention is NOT patentable under 101 as interpreted by SCOTUS in Benson.

Posted by: Anon E. Mouse at November 11, 2008 9:28 AM

I should've posted claim 8, it uses a particular shift register (but still not 101 subject matter):

The method of converting signals from binary coded decimal form into binary which comprises the steps of

(1) storing the binary coded decimal signals in a reentrant shift register,

(2) shifting the signals to the right by at least three places, until there is a binary `1' in the second position of said register,

(3) masking out said binary `1' in said second position of said register,

(4) adding a binary `1' to the first position of said register,

(5) shifting the signals to the left by two positions, [409 U.S. 63, 74]

(6) adding a `1' to said first position, and

(7) shifting the signals to the right by at least three positions in preparation for a succeeding binary `1' in the second position of said register.

Posted by: Anon E. Mouse at November 11, 2008 9:31 AM

Hello Anon,

Thanks - I was going to object that the first claim you posted was not tied to a device, but Claim 8 *is* tied to a device (the shift register). Not only that, but the method clearly transforms the data in the shift register (the masking-out and adding-a-1 steps) so that the resulting data is different from the initial data.

I don't think Hawk intends this blog to be a tutorial for amateurs, so I'll bow out again.

Posted by: Inventor Carl at November 11, 2008 10:04 AM

Inventor Carl,

I think that you, as a non-legal type with technical background, are struggling mightily to understand the Bilski and Benson decisions. Perhaps it may help you if you understand that not every judge is a legal scholar of deep intellect. Some of them simply generate random noises. Don't be fooled by the randomness.

Yes claim 8 of Benson is "tied of a machine" (a reentrant shift register) and it does "transform" an article (the register) from one state to another through a specific series of steps (a.k.a. an "algorithm"). However, at the time Benson was decided it is likely that the judges (Supreme Court) who rendered that decision had no understanding of the new fangled things called computers. Some lawyers probably convinced them that Benson's method was "the" only way to convert BCD into binary and that by allowing Benson to have this claim (number 8, as well as 13) it would empower Benson to wholly preeempt everybody from doing any and all forms of BCD to binary conversion. (Lions and tigers and bears, oh my!) Of course, in hindsight we know that from a computer science perspective that is shear nonsense. But judges don't study computer science in school. They study language and buzz words. They learn to pronounce noises like, "technology" and "fundamental principles" and "sufficiently physical tangible articles" and to believe that they have said something that makes sense to the scientific community. However, when scientifically trained people try to read through all the buzz saw noises made by the judges it all comes across as random noises. Guess what? It is. The judges nonetheless believe it is "sound" logic. If you search through Bilski, you will find they say so. Our decision is "sound".

___________________
NINO is a close cousin of GIGO. Noise in, noise out. This the law of nature you are dealing with here.

Posted by: step back at November 11, 2008 3:05 PM

Inventor Carl,

I think that you, as a non-legal type with technical background, are struggling mightily to understand the Bilski and Benson decisions. Perhaps it may help you if you understand that not every judge is a legal scholar of deep intellect. Some of them simply generate random noises. Don't be fooled by the randomness.

Yes claim 8 of Benson is "tied of a machine" (a reentrant shift register) and it does "transform" an article (the register) from one state to another through a specific series of steps (a.k.a. an "algorithm"). However, at the time Benson was decided it is likely that the judges (Supreme Court) who rendered that decision had no understanding of the new fangled things called computers. Some lawyers probably convinced them that Benson's method was "the" only way to convert BCD into binary and that by allowing Benson to have this claim (number 8, as well as 13) it would empower Benson to wholly preeempt everybody from doing any and all forms of BCD to binary conversion. (Lions and tigers and bears, oh my!) Of course, in hindsight we know that from a computer science perspective that is shear nonsense. But judges don't study computer science in school. They study language and buzz words. They learn to pronounce noises like, "technology" and "fundamental principles" and "sufficiently physical tangible articles" and to believe that they have said something that makes sense to the scientific community. However, when scientifically trained people try to read through all the buzz saw noises made by the judges it all comes across as random noises. Guess what? It is. The judges nonetheless believe it is "sound" logic. If you search through Bilski, you will find they say so. Our decision is "sound".

___________________
NINO is a close cousin of GIGO. Noise in, noise out. This the law of nature you are dealing with here.

Posted by: step back at November 11, 2008 3:06 PM

Hello Step Back,

Well, that makes me feel a little better... yes, it's challenging to make sense of random statements. I naively expect the rules to make sense and be consistent. No wonder I'm confused.

Wouldn't it be nice if counsel did a better job of explaining the technology to judges, so we could have clearer decisions? But I suppose obfuscation is sometimes (even often?) in their clients' interest.

Posted by: Inventor Carl at November 11, 2008 5:16 PM

To Inventor Carl:

"I naively expect the rules to make sense and be consistent."

The world of the engineer is drastically different from the world of the lawyer/judge. An engineer must consistently play by Mother Nature's rules. Mother Nature accepts no BS. You either comply 100% with her fixed rules or she smacks you down big time. Period.

On the other hand, law is about "persuading" irrational human beings. With proper framing of words and spinning of concepts, a good lawyer can convince a bad judge (or a bad judge can convince him/herself) that black is white.

For example, Benson explicitly says that the tied-to-machine and transforms-article test is NOT the exclusive test for eligibility under 35 USC 101. This is written in black on white. However, the Bilski majority has somehow turned it into white on white so it becomes invisible.

This is but one inconsistency of logic in an ocean full of inconsistencies, irrationalities and hippocracies that the Bilski majority foists on the public. There are so many that it becomes a tsunami. Opponents are simply overwhelmed by the sheer number of inconsistent and illogical statements that the Bilski majority makes to reach their conclusion. Resistance is futile. It becomes a Herculean feat to stand up against the sheer mass of it. Kudos should be given to Judge Newman for trying. However, she is the last standing scientist/judge on a bench overwhelmed by sound buzzing non-scientists. You will probably get more rational discussion about "science and technology" at a convention of witch doctors than at a CAFC meeting.

Posted by: step back at November 11, 2008 6:22 PM

"For example, Benson explicitly says that the tied-to-machine and transforms-article test is NOT the exclusive test for eligibility under 35 USC 101"

Nobody said it wasn't the exclusive test in Bilski. It is however, the "final" test. The last hurdle you must pass.

Also, everything they say in Bilski is consistent. Some things might be argued to be illogical, but hey, not much about patent law is logical.

Posted by: 6000 at November 12, 2008 12:00 AM

Hawk, and StepBack, I read that I'm to give respect to Pauline Newman for her opinion but doesn't it duck out of setting any line other than the words of the Statute, taken out of context? It seems to me a lot harder to say where the line should run, than to duck out of defining a line. Every issued patent covers some human act that can be enjoined. So every time a patent issues, freedom is reduced. The benefit to society of issuing a patent has to outweigh that cost. A patent on a new process should be the exception, not the rule. At least Rader offers a solution of his own, in contemplating making much heavier use of "abstract" or "obvious" to invalidate claims, but where does he give his readers a litmus test that will reveal when there is enough abstractness in a claim to result in its being found invalid. As to his obviousness, if subject matter that is prima facie obvious can be saved by "secondary considerations", when will freedom ever come? What does Rader think about commercial success as proof of non-obviousness?

6000: you say that not much in patent law is logical. That may or may not be the case, in the patent law of the USA but, readers, I can assure you that European patent law, written on a plain white sheet of paper in 1973, after studying the defects of antecedent patent laws, is free from illogical content. I still don't understand why, if the USA can contemplate switching from first to invent to first to file, it can't at the same time benchmark and re-write 101, 102, 103 and 112.

Posted by: MaxDrei at November 12, 2008 5:16 AM

Hi Max:

"every time a patent issues, freedom is reduced" - I’ve written enough on the economics of patents, and long ago tired of the justification of patents as a socio-religious issue, so pardon my not taking that bait.

I’m glad you are so cock-a-hoop about the purity of European patent law.

In the US, the problem is not so much the statute, as the courts rewriting the law, Bilski being a horrendous example. §101 requires simply “any new and useful process.” All the subterfuge artifice of the CAFC was its own brew of socio-religious illegality, illicitly perverting the law. Not that there is much of an effective check on the courts at this point in the area of patent law, as the toads in Congress are in pocket and in thrall of corporate interests, thus possibly sharing the same points of view as the courts.

If so, US democracy continues with undemocratic opaqueness. But there I go with my own socio-religious baggage, thinking an outside observer should be able to make sense of what are essentially political events.

Posted by: Patent Hawk at November 12, 2008 12:01 PM

Well thanks for that explanation, Hawk, but as an outsider I still can't help thinking that your problems start with a crazy Statute. It's sort of like Gulliver's Travels. G asks "Why is it so?" and receives the answer "Because it is so". In your 101, it's "any process" but everybody in the real world (including those people on the CAFC, it seems)knows full well that not every process performed by humans (swinging a golf club or swinging on a swing, perhaps) is fit for patenting. The Statute is defective because it fails to address a point that is screamingly obvious to everybody (including the politicians) outside the little inward-looking world of patents.

Posted by: MaxDrei at November 13, 2008 12:46 AM

Max,

There was a time, long ago, when Europeans would pause and think things out deeply: John Locke, Isaac Newton, etc.

There was also a time when American judges (Giles Rich, etc.) would hesitate before jumping to rash decisions and think out major policy decisions deeply and then explain themselves to the public in a clear coherent way.

Alas, our modern times are those of snappy sound bites and short fused decisions.

Maybe it's the 30 second TV commercials that train our brains into accepting the idea that major life decisions can and should be made on the basis of gut instinct and in 10 seconds or less? I don't know. Even here on the internet, we want to see ideas pounded out in 10 short words or less.

Yes, you are an outsider. And as such, you may forget that we have a U.S. Constitution on this side of the pond. That foundational document (including its Preamble) guides our Congress towards making two separate laws: one for the entertainment arts (copyrights) and the other for the "useful arts" (patents), both for the purpose of promoting the general welfare and promoting progress in science and the useful arts.

Congress did not make up the term "useful art" --as it appeared in the earlier version of 35 USC 101-- out of thin air. Instead, they were referring to the Constitutional mandate. Congress wrote down "any" useful art. Moreover, the invention must also be "new" (to the public) as well as being useful to the public. 101 starts out with the word, "Whoever". So it is telling you, who is entitled to apply for a patent, namely the inventor of the new and useful process.

As the In re Bilski decision explains, over the years, the original "useful art" terminology was changed to useful process. At the same time, "process" was defined as including "art" --see 100(b).

So if you, as an outsider, were to usefully use some simple algebra substitution and plug into 101, the 100b definition for "process" you will see that the statute continues to say "any new and useful art" ... as well as any method. Also 273 of the US code indicates that "business method" is included under the definition of patentable method. So our scholarly Judge Newman was not blowing random smoke when she dissented. She was talking about getting back to basics, like actually reading all the words of our US statutes.

However, the fast talking other members of the bench apparently prefer to conjure up new spin words and self-levitating frames, like "fundamental principles" and "eligible subject matter". These kinds of actions naturally give some of us in the trenches a bit of concern.

Maybe now, you as an outsider (with your "technical effects" and "software as such" and "inventive step" solutions) can understand why.

Posted by: step back at November 13, 2008 3:36 AM

OK StepBack (and thanks) but one dissenter on the Bilski banc construed "useful arts" to confine it to "technical" (which is of course what I think too). Presumably that Bilski dissenter regards USC 273 as ultra vires. Presumably he should concede that, if Congress with the benefit of hindsight now thinks that, in passing 273, it screwed up, then Congress can now reverse itself but, until then, the CAFC must take account of USC 273, when construing 35USC101. Was 273 one of your "gut instinct and 10 seconds" modern phenomena, I wonder?

Posted by: MaxDrei at November 13, 2008 4:11 AM

Max,
With due respect, the "technological arts" solution is merely a diversionary dance around the bush rather than getting to the heart of the matter. I have no idea what "tech-no-logical" means when you approach the outer borders of that concept. In other words, it offers no bright line demarcation as between what is just inside the boundary and what is just outside of it.

Agreed that "useful arts" does not do much better. But "useful arts" [where latter is part of definition of "process"] is what the statute says and replacing that label with a new one that has been conjured up out of thin air and has no clear meaning is absolutely no-logical just as tech-no-logical is no logical. At this point we are just making random noises.

There was a broad public policy behind the statute that the US Congress passed. That broad policy is expressed in the word "any", as in "any new and useful process, ..." etc. etc. To find the boundary line, we must determine what is NOT a "useful" art and not useful to whom. Here is one example: the art of BS, not useful to promoting the progress of science and not useful to promoting the general welfare for ourselves and our progeny.

Posted by: step back at November 13, 2008 12:47 PM