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January 17, 2009

Compact Prosecution

On the seventh office action of a competitive pricing patent application, yet another non-final, a new  rejection appears, besides the continual findings of prior art pieces that never survive reply, owing to their inadequacy in rendering the claims anticipated or obvious. A "computer-implemented method" of changing price is not patentable in light of §101.

The examiner's boilerplate:

35 U.S.C. 101 reads as follows:

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

An invention, which is eligible or patenting under 35 U.S.C. 101, is in the "useful arts" when it is a machine, manufacture, process or composition of matter, which produces a concrete, tangible, and useful result.

In order for a series of steps to be considered a proper process under § 101, a claimed process must either: (1) be tied to another statutory class (such as a particular apparatus) or (2) transform underlying subject matter (such as an article or materials). Diamond v. Diehr, 450 U.S. 175, 184 (1981); Parker v. Flook, 437 U.S. 584, 588 n.9 (1978); Gottschalk v. Benson, 409 U.S. 63, 70 (1972). Thus, to qualify as patent eligible, these processes must positively recite the other statutory class to which it is tied (e.g., by identifying the apparatus that accomplishes the method steps), or positively recite the subject matter that is being transformed (e.g., by identifying the product or material that is changed to a different state). [The claims] identify neither the apparatus performing the recited steps nor any transformation of underlying materials, and accordingly are directed to non-statutory subject matter.

Note no mention of Bilski in the case law citation.

Is changing the price of a good a patentable transformation?

Posted by Patent Hawk at January 17, 2009 1:30 PM | § 101


I'd say, nope. Pricing is just an abstraction regarding the worth of an item. Change the value of something is basically changing an abstraction. It would also seem to be something I can perform entirely in my head: patenthawk.com site was worth a million dollars, but i'm changing it to 12 cents.

My first thoughts: where is the pricing information stored; from what tangible/meatspace source is the pricing derived; what tangible thing does the change in pricing actually change (a price tag?); and so on and so forth.

Posted by: mmm at January 17, 2009 2:12 PM


Posted by: That's a technical term - don't try this at home kiddies at January 17, 2009 2:21 PM

Patent Hawk,

What is the application number of this compacted application?

Posted by: breadcrumbs at January 17, 2009 6:10 PM


The application is unpublished, hence not available on public PAIR. Sorry.

Posted by: Patent Hawk at January 17, 2009 7:07 PM

A seventh non-final office action? Compact indeed!

Posted by: anonymous at January 20, 2009 4:41 PM