Business System Patents

Ex Parte Simpson, Appeal 2008-0569 (BPAI 2008)

HP's patent application focused on software used to discover networked devices. Claim 32 was rejected for lack of statutory subject matter.

32. A device discovery service stored on a computer-readable medium, the service comprising:

logic configured to discover devices directly connected to a network that are not directly connected to a computer; and

logic configured to provide a user home service accessible with a network browser with a list of at least one discovered device that is available for use on the network.

This claim is interesting because like Wasynczuk, it involves a system claim that is not patentable subject matter.

'These claims are directed to a "service" stored on a computer-readable medium, the service comprising logic "configured" to perform functions. Logic, read with reasonable breadth, includes descriptive material indicating the algorithm or reasoning behind an operational computer program, not the program itself. As such the claims are addressed to nonfunctional descriptive material, which is non-statutory. "When nonfunctional descriptive material is recorded on some computer-readable medium, in a computer or on an electromagnetic carrier signal, it is not statutory since no requisite functionality is present to satisfy the practical application requirement." MPEP § 2106.01.'

Similarly in Ex parte Godwin (BPAI 2008), the Board found that IBM's "server system" claims non-statutory subject matter. In that case, the server was recited in the claim preamble and thus non-limiting.

Comments

[left coast]

"Ho, Ho, Ho Chi Minh, Dependent Claims [in their current form] Are Going to Win!"

[pds]

6K … again … learn a little something about statutory construction before you starting rambling again. Then again, you may have started your drinking for the evening.

" Saying that is one and the same in this context. Just like in our constitution. And a whole HOST of other laws."
Show me the case law. It is really simple, just show me a Federal Circuit case that supports your position. Take as much time as you want. Take all night or all weekend for all I care. In the end, you'll be back to throwing out your legally unsupported arguments because you won't find anything.

"We determine the broadest reasonable interpretation and construction. Not you."
BS … you may be the first to provide the construction, but you don't have the last word. Claim construction is a matter of law. Sorry Charlie, you, in your quasi-judicial capacity, may take a stab at it, but don't think that once its goes to the BPAI or Fed. Cir. that anything you say will be given much weight. Your findings of fact (if based upon substantial evidence) will be given weight, but not your claim interpretation.

"There is no device in this claim. If they want one there, then they can plonk it down in the body."
Not too good at giving a claim term its broadest reasonable construction, are you? Also, you seem to forget that claims are NOT required to enable the invention (i.e., recite all the necessary components).

Claim 1. A bicycle comprising a banana-shaped seat.

The claim doesn't explicitly recite two wheels. However, given a BROADEST reasonable claim construction, the claim includes two wheels. See how "broadest" claim construction works. It works by including all possible subject matter reasonably encompassed by the claims. Your claim construction, like most claim constructions I see out of examiners are the sorriest forms of claim construction possible. You construe a couple of terms (while ignoring claim constructions for the rest), and when you construe the terms you construe any meaning out of them. For example, you construe "devices directly connected to a network" as "first things that are connected to something." Based upon your claim construction, a butterfly's wings attached to its body would identically disclose the limitation of "devices directly connected to a network." Hmmmm … that doesn't sound too reasonable or consistent with applicants' specification. Then again, I never expected that out of you.

Thanks, yet again, for showing the rest of us just how incompetent an examiner you are.

BTW: The type of subject matter is a machine … pretty simple. If you asked one having ordinary skill in the art, they would say the same thing.

"You haven't been able to handle the caselaw in either of the previous threads we've been discussing, so I won't bother with it here."
You mean that I and everybody else has ignored your twisted interpretation of case law? If that is what you mean, then yes, I haven't handled it. As for you bothering with case law, don't bother. When you start rambling about case law, I just skip those parts. You are clueless about case law, and your fiction stories make for poor reading.

[Leopold Bloom]

"there are certain things that are understood even by the legislative document's silence"

You sure just shined light upon that, e6k. You know, I'm still waiting for you to elaborate on how a general purpose computer is software per se.

[pds]

From the McGraw-Hill Dictionary of Scientific and Technical Terms, Sixth Edition, McGraw-Hill, 2003, pg. 1230.

Logic: 2. General term for the various types of gates, flip-flops, and other on/off circuits used to perform problem-solving functions in a digital computer.

From http://lasp.colorado.edu/cassini/inst_desc/glossary.htm#L
Logic - Computer circuitry

http://www.synopsys.com/news/pr_kit/eda_glossary.html
Hardware logic is made up of circuits that perform an operation.

Under a BROADEST reasonable claim construction consistent with applicant's specification, the term "logic" encompasses hardware.

[Anon In-House]

pds - 117
e6k - 0

[Malcolm Mooney]

"you seem to forget that claims are NOT required to enable the invention (i.e., recite all the necessary components)."

I just realized what you remind me of, pds. You remind me of a patent prosecutor that has no hope of succeeding with his/her case but who has to say **something** to make the partner and/or client momentarily happy.

But ultimately it's just sad and pathetic.

[Yet Another Anon]

PDS wrote: "Under a BROADEST reasonable claim construction consistent with applicant's specification, the term "logic" encompasses hardware."

Some examiners take the position that if the claims could be construed to not encompass hardware (i.e. the claims could be interpreted as pure software, a mix, or pure hardware), then the claims fail 101.

Is there a precedent that you would cite to overcome the examiner's position?

[Malcolm Mooney]

Anon-in-house: "printed matter appears to be statutory subject matter"

We're not talking about compositions falling within the statutory class of "printed matter". We're talking about compositions that are old in every respect except for the information they convey.

I am tempted to say "nice try" but frankly I'm disgusted by your dust-kicking. Why not try an actual argument, reciting real facts, wherein you credibly distinguish a typical software claim from an unpatentable robot-readable recipe? Go for it.

[Anon In-House]

"Go for it"

Dust kicking? Did you read the case I cited, and your own quote? You said printed matter is non-statutory subject matter, I PROVED you wrong, and I am dust kicking? Now you change your argument?

Why is the robot-readable recipe now not patentable? You have been clamoring about it being unpatentable under 101. THAT IS WRONG! Is it unpatentable under 103? It very well could be, but it will not be per se unpatentable, will it? I guess we would need to do the 103 analysis, which we cannot without more specifics, can we?

[Anon In-House]

"We're talking about compositions that are old in every respect except for the information they convey."

Again, wasn't the holding in the case I cited pretty much on point here? The only novelty WAS the information conveyed in a written manner on the well-known substrate.

[e6k]

"Take all night or all weekend for all I care. In the end, you'll be back to throwing out your legally unsupported arguments because you won't find anything."

Won't matter, because my arguement would sail right through and the judiciary would back it any day. Why? Because it's a completely reasonable argument, whereas yours is not. And that's assuming there isn't mountains of caselaw supporting it, which there is.

"Also, you seem to forget that claims are NOT required to enable the invention (i.e., recite all the necessary components)."

WTF are you talking about? Who said they had to? Not me. This claim's subject matter is enabled in the spec I have no doubt. Red herring perhaps? You just throw them out as a matter of habit now don't you?

"However, given a BROADEST reasonable claim construction, the claim includes two wheels. "

So, which part of this claim includes a computer? The service? The logic?

Maybe something that would help to open your eyes is that the claim DOES NOT require that there actually be any devices detected. It only requires that there be logic present that is configured to present a list of any devices that might, at some point, be detected.

This is not a literal interpretation, but is again to be used as an example of what is going on.

"and logic configured to provide a user home service accessible with a network browser with a list of at least one discovered device that is available for use on the network. "

Becomes:

"and logic configured to provide a program with a list of at least one discovered device that is available for use on the network."

That is, the claim requires there to be logic configured to do this. There is no requirement that the logic actually perform this "task" or "algorithm" of providing a list of devices available. It is only required to be configured to do the task should such a situation arise where a list would be generated.

If you really want to break it down you get this from the claim:

"A service comprising:
logic configured to do something if that something should be required to be done; and logic configured to do something else if that something else is required to be done, but this claim specifically means to omit requiring that either something is ever done, kk thanks bye bye pds."

Oh, and fyi, while the claims are not yet issued, even up into the SC, there are many rulings that support the examiner's interpretation amongst other perhaps reasonable interpretations because the claim can be adjusted during examination to tighten it up. If you would bother to read some caselaw (esp. bpai) every now and again you might find this out.

"example, you construe "devices directly connected to a network" as "first things that are connected to something."

That's the english translation for you to try to show you wtf is transpiring, not an actual interpretation. But you're too stupd to see that. As always. No worries, draft up some claims like this and watch them get swatted like flies, no skin off my back. While you're at it, admit on the record that the subject matter claimed in your deps isn't what the client regards as his invention and/or wasn't conceived of by him. I'll be here rofling my ao.

Bloom out of left field with something I have yet to say ... apparently he's hopped on the stupd train with pds tonight?

Come on guys, I see your types be stupd in my day to day, but don't just throw it around in your spare time.

[e6k]

"Take all night or all weekend for all I care. In the end, you'll be back to throwing out your legally unsupported arguments because you won't find anything."

Won't matter, because my arguement would sail right through and the judiciary would back it any day. Why? Because it's a completely reasonable argument, whereas yours is not. And that's assuming there isn't mountains of caselaw supporting it, which there is.

"Also, you seem to forget that claims are NOT required to enable the invention (i.e., recite all the necessary components)."

WTF are you talking about? Who said they had to? Not me. This claim's subject matter is enabled in the spec I have no doubt. Red herring perhaps? You just throw them out as a matter of habit now don't you?

"However, given a BROADEST reasonable claim construction, the claim includes two wheels. "

So, which part of this claim includes a computer? The service? The logic?

Maybe something that would help to open your eyes is that the claim DOES NOT require that there actually be any devices detected. It only requires that there be logic present that is configured to present a list of any devices that might, at some point, be detected.

This is not a literal interpretation, but is again to be used as an example of what is going on.

"and logic configured to provide a user home service accessible with a network browser with a list of at least one discovered device that is available for use on the network. "

Becomes:

"and logic configured to provide a program with a list of at least one discovered device that is available for use on the network."

That is, the claim requires there to be logic configured to do this. There is no requirement that the logic actually perform this "task" or "algorithm" of providing a list of devices available. It is only required to be configured to do the task should such a situation arise where a list would be generated.

If you really want to break it down you get this from the claim:

"A service comprising:
logic configured to do something if that something should be required to be done; and logic configured to do something else if that something else is required to be done, but this claim specifically means to omit requiring that either something is ever done, kk thanks bye bye pds."

Oh, and fyi, while the claims are not yet issued, even up into the SC, there are many rulings that support the examiner's interpretation amongst other perhaps reasonable interpretations because the claim can be adjusted during examination to tighten it up. If you would bother to read some caselaw (esp. bpai) every now and again you might find this out.

"example, you construe "devices directly connected to a network" as "first things that are connected to something."

That's the english translation for you to try to show you wtf is transpiring, not an actual interpretation. But you're too stupd to see that. As always. No worries, draft up some claims like this and watch them get swatted like flies, no skin off my back. While you're at it, admit on the record that the subject matter claimed in your deps isn't what the client regards as his invention and/or wasn't conceived of by him. I'll be here rofling my ao.

Bloom out of left field with something I have yet to say ... apparently he's hopped on the stupd train with pds tonight?

Come on guys, I see your types be stupd in my day to day, but don't just throw it around in your spare time.

[e6k]

"Some examiners take the position that if the claims could be construed to not encompass hardware (i.e. the claims could be interpreted as pure software, a mix, or pure hardware), then the claims fail 101."

And of mo fin course this is true also, but is hardly needed. And of course he has no caselaw like that because it would be folly for any to be created.

"logic" being the flip flops etc is fine, IF the specification shows them as being such. Otherwise the broadest reasonable interpretation means they are not required and that the logic can be:

the system of operations performed by a computer that underlies the machine's representation of logical operations.

Understand that using this definition in the claim that we are talking about THE SYSTEM OF OPERATIONS and not the actual performance of them on a computer.

pds having more points that me? Lol, he's yet to make one except that there is an interpretation that could possibly make an argument for him, but not that it is the broadest reasonable one. Did the lawyers even make those arguments? Probably not, because they're bs to begin with.

I'm out for tonight.

[Leopold Bloom]

Malcolm, if you would just be quiet for a few minutes, then perhaps e6k would come back and elaborate on his general-purpose-computers-are-indistinguishable-from-software-per-se theory. Why? "Because the software wouldn't be performing the claim without the generic computer."

6 beers later and I still don't get it.

[Leopold]

Wow, he showed up with 4 pages while I was typing my note. This ought to be good...

[e6k]

Oh, wait, taking two seconds of my time we arrive at page 9 of the decision dashing pds's arguments to bits.

"Logic, read with reasonable breadth, includes descriptive material indicating the algorithm or reasoning behind an operations computer program, not the program itself".

Applicant's didn't even try to defind "logic" as gates etc. They are referring to a computer application, remember?

In other words, the boards decision on page 9 just owned all of you right square in the face. If you want a more detailed explanation, send them a case.

Now I'm out.

[e6k]

Oh, and pds, sure, a "service" can comprise gates and flip flops and circuitry. Right. Dummb arse. Good lord, who would hire you? It's like you just fell off the turnip wagon.

[Leopold Bloom]

"Bloom out of left field with something I have yet to say ..."

Out of left field? Earlier I was halfway between 1st and 2nd base.

Since you seem to have forgotten, let's review some of your gems from this thread:

"When you say 'software per se' in that context you are necessarily referring to software running on a generic computer."

"In other words, it seems you can't make software statutory by just running it on a generic computer."

"And I'm well aware that I just said that in the context of this particular patent, and specifically these claims, any discussion involving 'the software per se' is being associated necessarily with a generic computer. I am in other words saying that you cannot distinguish the software from the generic computer in this claim. Why? Because the software wouldn't be performing the claim without the generic computer."

Care to clarify? Or does this say it all?

[Malcolm Mooney]

"You said printed matter is non-statutory subject matter"

Funny thing, AnonInHouse, I searched this thread for the term "printed matter" and you were the first one to use the term. So now you're putting words in my mouth. Please don't do that. You'll only make a fool out of yourself by doing so. I stopped reading your comment after I realized you were engaging in that behavior. It's obnoxious and rude. Feel free to try again, though.

[Anon In-House]

"My argument is that a program written on a "computer readable medium" is non-statutory subject matter, by definition. It's information in the form of instructions and is functionally **identical** to a new recipe written on old paper and should be an unpatentable composition for the same reasons that a new recipe written on old paper is an unpatentable composition."

What? In this quote of your argument, you state that a program on a computer readable medium = non-statutory subject matter = new recipe written on old paper. Am I missing something? All I did was take that garbage and put it into the legal parlance you were trying to say, which is "printed matter" = non-statutory subject matter. If I missed the boat, I apologize, but would respectfully request that you point out how I completely misunderstood you and what you really meant to say.

[Malcolm Mooney]

I said what I meant to say. But I'll do so again.

Have you ever tried to claim a recipe in the following form: "A recipe for making X, wherein said recipe begins with Step 1 and ends with Step 2?" I assume you haven't. That's because "recipes" are unpatentable. Processes are patentable. Compositions are patentable. But "recipes" are not patentable.

Likewise, you can't claim "A set of instructions for making a burzoidion, wherein said instructions begin with a recitation of a first step, etc.". Again, "instructions" are not patentable. Processes are patentable. Composistions are patentable. But "recipes" are not patentable.

And you can't make recipes or instructions into a patentable composition merely by putting the letters on an old medium.

But you **are** allowed to do that with software at the present time. And the reason you are allowed to do so has nothing to do with any legal "reasoning" (at least not any reasoning that is consistently applied). The reason is political and because it's political you can expect it to change.

Look at claims to isolated DNA and amino acid that recite sequences. You used to be allowed to claim a healthy chunk of sequence space around your isolated sequence. Now you can't. It's not the law or technology advancements that caused the change. Rather, it's a political decision made by the PTO that takes into account the fact that granting broader sequence claims is no longer necessary or sufficient to fuel the growth of the industry. But they were certainly helpful a couple decades ago.

Was it ever the case with software?

[pds]

MM writes on 7/11 10:41PM: "Funny thing, AnonInHouse, I searched this thread for the term "printed matter" and you were the first one to use the term. So now you're putting words in my mouth. Please don't do that."

MM wrote on 7/10 8:07PM: "Like a recipe book. Hence the Julia Childs claim format." A recipe book is printed matter. MM caught sucking his thumb again.

MM writes "I stopped reading your comment after I realized you were engaging in that behavior. It's obnoxious and rude." On please, that is one of your favorite tactics. What you are accusing him of doing (taking your words and changing them into something else and responding to those words) is what you do ALL THE TIME. Not only are you an ass, you are a hypocritical ass.

[pds]

"But 'recipes' are not patentable."

A process IS a recipe. Why don't you try to use the legal terms of art in your discussion ... e.g., functional descriptive material, non-fucntional descriptive material, software per se, etc.

"And you can't make recipes or instructions into a patentable composition merely by putting the letters on an old medium."

You can when the instructions are embodied in a product and the use of the product causes a machine/computer to perform the process. The product is more than just an abstract idea or algorithm.

[Anon In-House]

Thank you pds - I am getting more and more confused by MM's changing stances. Every recipe I know of has instructions on how to make something, and is therefore a process. Perhaps MM, you mean a listing of ingredients in not patentable (I want to be careful not to put words in your mouth), is that it?

[pds]

"Because it's a completely reasonable argument, whereas yours is not. And that's assuming there isn't mountains of caselaw supporting it, which there is."

You really don't understand the law. Nobody cares about how "reasonable" the argument appears to you. Does your argument comport with the language of 35 USC 101? No. Does your argument comport with In re Comiskey? No. You lose … sorry.

"So, which part of this claim includes a computer? The service? The logic?" Are you that computer illiterate? The logic is part of the computer.

"Maybe something that would help to open your eyes is that the claim DOES NOT require that there actually be any devices detected."
So … I've got a mousetrap configured to catch a mouse. The claim doesn't have to require that the mouse is caught.

From In re Comiskey: "These claims, under the broadest reasonable interpretation, could require the use of a computer as part of Comiskey’s arbitration system." Note the use of the word "could," and not "require." However, as we have already established, your capability of understanding case law is woefully inadequate.

"If you would bother to read some caselaw (esp. bpai) every now and again you might find this out."
You seem to forget that the overwhelming majority of BPAI decisions are non-precedential. Try citing a BPAI decision to the Federal Circuit and see how far that gets you.

"Otherwise the broadest reasonable interpretation means they are not required and that the logic can be"
Not too familiar with the English language I see. Do you even know the meaning of "broad" and "broadest"? Based upon your arguments, you do not.

"Oh, wait, taking two seconds of my time we arrive at page 9 of the decision dashing pds's arguments to bits.
"Logic, read with reasonable breadth, includes descriptive material indicating the algorithm or reasoning behind an operations computer program, not the program itself"."
Hmmmm … page 9 … what do they cite? Let's see …. oh, it’s the MPEP!!!! What a f'ing joke. They cannot do better than a cite to the MPEP? Let's see … what else do they state on page 9 …. oh here is a doozy … "[a]s such the claims are addressed to nonfunctional descriptive material, which is non-statutory." Another f'ing joke. Like MM, they don't know the difference between functional descriptive material and non-functional descriptive material. As stated in MPEP 2106.01, "'Nonfunctional descriptive material' includes but is not limited to music, literary works, and a compilation or mere arrangement of data." They aren't even close. If you think this is high-quality legal analysis, then you are woefully uninformed.

[pds]

in-house anon

You don't seem to be from around these parts. Let me give you a couple of suggestions. Don't bother asking MM questions. If he isn't snarky and irrelevant, he is asking other people to prove their points without ever attempting to prove his own.

My favorite phrase regarding MM is that debating MM is like wrestling with a pig ... in the end, the pig enjoyed a good romp in the mud, but you are left dirty, tired, and asking yourself, "why did I do such a thing?" MM is a troll ... plain and simple. If you have some biotech question to ask, you might get a decent response out of him. However, like many biotech attorneys, his knowledge of the law outside his tiny little realm is woefully inadequate, but that doesn't prevent him from butting into conversations that he cannot keep. If you ever want his advice, my suggestion to you is to write it down his advice and then post it your office as an example of what never to do it. Anybody following his advice is certain to get better acquainted with their malpractice carrier.

As for 6K ... he is a bull in a china shop pretending to be a gymnist. He puts most equity partners in 1000 attorney law firms to shame when it comes to arrogance ... and that is saying a lot, as he embodies the expression "legend in his own mind." Of course, they make 10-100x more than he does, but 6k does not lack for hubris.

You probably haven't met MaxDrei (aka Mad Max or MM2) yet ... if you ever want to know how great the European patent system is or how terrible the US way of doing things is, just ask, he'll be glad to tell you all about it.

[Anon In-House]

Thanks pds,

I have changed my handle (just felt like something different today), but I have been around. I have sparred with both MM and MaxDrei before, even getting MM to concede that I was the first one to adequately address his argument (of course, then he didn't refute my position and just moved on), and having personally argued in front of the EPO, I enjoyed sparring with MaxDrei.

As for e6k, I rarely read his stuff because it just has never made sense and typifies what is wrong with the pto these days (and in fact, his entire generation).

[SF]

BigGuy wrote, "The installation method is novel and non-obvious because the content of the software is new? That doesn't sound right..."

If that doesn't sound right to you, it probably also doesn't sound right that a computer-readable medium is novel and non-obvious just because the software put on it is new.

[BigGuy]

"it probably also doesn't sound right that a computer-readable medium is novel and non-obvious just because the software put on it is new"

The computer-readable medium with the novel software is at least arguably a device with an entirely new function. An installing step is just an installing step, isn't it? The content of the software has no functional relationship to the installation method.

Have you actually seen a granted claim of the type you propose?

[need software education]

"So, I guess what I am saying is that instead of telling us they the claims are junk, just let us know how you would counsel, and that might turn the light on for folks."

Posted by: Anon In-House | Jul 11, 2008 at 01:19 PM

Anon In-House, is there a reason trade secret protection doesn't work for software? I'm aware that DMCA might allow reverse-engineering, but my understanding is that this type of reverse-engineering is only allowed for research, not for commercial rewriting. And being allowed to reverse engineer under the DMCA does not appear to excuse misappropriation of a trade secret under most state laws. By way of (possibly poor) analogy, a minor being allowed to buy a cigarette does not excuse the vendor who sells the cigarette to the minor from violating the law. Could you enlighten me on these aspects?

My personal feeling is that computer software can be protected by method claims, but not by product claims. As people have noted here, the significance of software is what it does, not what it is. I don't understand how a computer running a particular program is structurally different from a computer running a different program. Saying the arrangement of electrons somewhere in the computer is different does not strike me as a very convincing argument. Thankfully, I don't work at all on software.

[Anon In-House]

"Anon In-House, is there a reason trade secret protection doesn't work for software? "

NSE, the short answer on this is that the useful benefit of a lot of software is what it causes the computer to do, and that software can be written in many different ways to cause the computer to do the useful benefit, so protecting one's actual way of doing it (copyright, trade secret, etc.) often times will not adequately protect the improvement.

As to your second point, you are basically stating that the computer that autonomously controlled a car driving across the desert is the same thing as the computer you are writing on which is the same as the calculator you used to get through engineering classes, because the only differences are in the software installed on them - they each have a display, input, processor, and memory storing instructions. As the Fed Circ has in a round-about-way recognized, the mechanical components of inventions from the last century are being replaced by the programming of computers, as that is providing the most efficient tool and component for creating new and useful products.

[MaxDrei]

Is the subject matter of a claim to a computer-implemented invention sometimes a recipe, never such, or always such? I think it's useful to try to answer. Who thinks (like at least one contributer above) that "process" and "recipe" are synonymous, and who instead thinks that a recipe and a process are mutually exclusive things? Isn't a recipe an instruction to perform an act, and a process the act itself? How then can they be the same thing?

[Malcolm Mooney]

"Isn't a recipe an instruction to perform an act, and a process the act itself? How then can they be the same thing?"

Wow, a living, breathing human being who can read and think. Is it contagious? If so, then pds and AnonInHouse may have a chance after all.

[Malcolm Mooney]

AnonInHouse "Every recipe I know of has instructions on how to make something, and is therefore a process."

My, but you are incredibly dense. See MaxDrei's comment for yet another attempt to educate you.

[pds]

"The content of the software has no functional relationship to the installation method."

Not even close. How software is installed is highly dependent upon what is in the software (i.e., its content). Getting software to load properly is a much different process today than it was 25 years ago when most software were standalone applications. On the contrary, most applications are highly dependent upon other applications, and as such, the installation of the software can be very complex.

[Anon In-House]

"My, but you are incredibly dense. See MaxDrei's comment for yet another attempt to educate you."

Thanks MM for the professional courtesy you are displaying. MaxDrei asks a good question that nobody could take from your previous positions, and you are declaring victory? Again, I must ask you to clarify your position so that I can properly rebut.

If I now understand your position, you can claim a process (which is the act of doing something), and the actual claim in written form is the recipe to do that process (the set of instructions for doing the process). Is this where you stand? I want to make sure before I rebut (if it is even possible to rebut). Also, it is your position that the written form of that recipe is non-statutory subject matter (as you alluded to last night) or is it your position that it is simply unpatentable under another legal theory?

I ask these questions in earnest and would hope that you can respectfully respond.

[SF]

BigGuy wrote, "The computer-readable medium with the novel software is at least arguably a device with an entirely new function. An installing step is just an installing step, isn't it? The content of the software has no functional relationship to the installation method. Have you actually seen a granted claim of the type you propose?"

The installing method would create (to use your terms) a device with an entirely new function. Sounds useful to me: configuring a device to have a new function.

I haven't seen precisely a claim like mine. But I have seen method claims that didn't recite anything new but the novel structure of a device used in the method, and those passed with flying colors.

[BigGuy]

"... as such, the installation of the software can be very complex."

Fine, pds - I don't doubt that this is true. And I'm not trying to pick a fight. But I don't think this is what SF and I are talking about. I believe SF was suggesting a method claim analogue to the Beauregard claim - where an otherwise routine installation method is rendered novel and non-obvious by the content of the software itself, not by the any unique installation process. Something like:

A method, comprising installing Executable Module A on a general purpose computing device, wherein Executable Module A comprises computer program instructions that, when executed by said general purpose computing device:
perform novel function X; and
perform novel function Y.

Note that the method actually only includes the installing step. Let's assume that the installing step is a simple procedure that is well known. Is this method novel and non-obvious just because Executable Module A is new?

Referring to SF's latest post, perhaps the question is whether a known method, using new materials to produce a novel and non-obvious device, is novel?

[e6k]

"They aren't even close. If you think this is high-quality legal analysis, then you are woefully uninformed."

The problem is, that was all the legal analysis required, and also that you're a tard. You don't understand that the claim does not require any of the functions that could be performed to be performed. Just like in your mousetrap example, EXCEPT, that the mousetrap is purely software. That's what landed them the nonfunctional desc material 101 rejection. There is no actual function being required by the claim.

And again, the applicant is not referring to logic as the innards of a computer PDS, read the decision and then take a glance at the arguments made to the board, and finally, take a look at the spec. You apparently don't understand what they're talking about by "service". You know the "service's" that are running on your computer in the background to make your internet work right now? Those kind of services is what they're talking about. Pure software, that has "logic" which is configured to do something. Not logic that is implemented by flip flops or latches etc. "logic" as the board described it is precisely what they are referring to. Watch, this case will not go to the CAFC even though that claim would be VERY valuable if allowed. Almost every new computer that has wireless that is made has one of those services running it seems to me.

Read the case before opening your mouth next time and you might not fail so horribly. At least we see why you dislike MM's shoot first and pick up the pieces later approach to claim analysis. Because you're horrible at it.

[Malcolm Mooney]

"Is this where you stand?"

Anon-In-House, where I stand is that you've got some troll tendencies and one of them is playing silly games (i.e., "I'm really trying to understand but I just can't can you please explain again?"). By the way, when you change your username again out of embarassment, try to choose something a tad more creative. Oh, and good luck patenting those pieces of paper with new non-obvious recipes written on them.

[pds]

"You know the "service's" that are running on your computer in the background to make your internet work right now? Those kind of services is what they're talking about. Pure software"

It is your imprecision with the language that always gets you in trouble and causes you not to understand the arguments. If by "pure software," you mean software, per se, then you are ABSOLUTELY WRONG. I keep telling you to look up the term "per se," yet apparently that is beyond you. Software per se is unconnected from anything. Software unconnected from hardware DOESN'T DO ANYTHING. Pure software doesn't make my internet work. Instead, software CONNECTED TO hardware makes my browser work. Such a simple concept that flies over the top of you head like you were 2 inches tall.

NOBODY and I mean NOBODY with any expereince claims "pure software" or "software, per se." The claims are directed to processes (which include the steps performed by the software running on hardware), devices (which allow the software, when running on the device, to actually do something), or a computer program product, which when coupled to a computer system, causes the computer system to perform the steps embodied in the computer program product.

None of these three types of claims are directed to software, per se. Instead, all of them directly involve the use of hardware. This is the reason why there are tens of thousands of issued patents that include all of these types of claims. The only reason why the BPAI is getting upity is that the Patent Office is just one one of their new kicks to reject more patents under 101.

However, the BPAI isn't consistent in their analysis. Just look at the following decisions:
http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd20080343-06-18-2008-1
http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd20073752-04-22-2008-1
http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd20072761-11-20-2007-1

These applications all appear to be ripe for 101 rejections (remember, in Simpson, the BPAI issued the 101 rejection) based upon the analysis in Simpson. However, they didn't. Really, whether a rejection under 101 gets affirmed/reversed by the BPAI depends upon the panel you get.

There are some that are toeing the PTO's party line regarding 101, but there are others (thankfully) that actually understand the Federal Circuit case law.

[left coast]

good analysis, pds

[Anon In-House]

Mooney,

I am not a troll. I would think a troll is one who just lashes out with personal attacks on others without providing any relevant input into the discussion at hand...sort of like your last post. At the end of the day, I am still trying to understand your reasoning for the following quote - "My argument is that a program written on a "computer readable medium" is non-statutory subject matter, by definition. It's information in the form of instructions and is functionally **identical** to a new recipe written on old paper and should be an unpatentable composition for the same reasons that a new recipe written on old paper is an unpatentable composition." - since you are apparently unable to provide such reasoning, I guess I have to assume that you can't (even though I have asked several times in a polite manner).

WHAT IN YOUR MIND CONSTITUTES A RECIPE, AND WHY IS IT NON-STATUTORY SUBJECT MATTER? Is that clear enough?

Note: have you noticed that I have yet to personally attack you?

[Anon In-House]

"By the way, when you change your username again out of embarassment"

Fyi - below is your only previous response to any of my postings under my former (and only other one) handle. Oddly enough, it was on this very same subject matter (your assertion that written instruction are non-patentable subject matter and therefore software should also be unpatentable subject matter).

"You'll excuse me for an hour or two while I fan myself. I nearly fainted after discovering that "Also Anon" wrote a substantive response to my argument.

Back in a bit.

[stumbles down the hall to get a cup of coffee]"

[Mary Prosecutor]

A process for making a food product is statutory subject matter.

[Malcolm Mooney]

AnonInHouse "Note: have you noticed that I have yet to personally attack you?"

No, I hadn't noticed because I was to busy being annoyed by your obxnious, endless requests to "restate" and "clarify" my comments. Have you noticed that I stopped doing so? Evidently not. Maybe it'll sink in for you this time, unlike everything else.

[Malcolm Mooney]

pds: "a computer program product, which when coupled to a computer system, causes the computer system to perform the steps embodied in the computer program product"

Claim 1. A recipe, which when coupled to a recipe-reading robot, causes the robot to perform the steps recited in the recipe, where in the recipe comprises the steps A, B, and C.

Assuming the steps in the recipe are new and non-obvious, is claim 1 patentable?

I don't think so. Does anyone think so? If so, why? I assume someone must think so because there is no difference between "a computer program product" as defined by pds and the recipe as claimed.

[Malcolm Mooney]

"[stumbles down the hall to get a cup of coffee]"

LOL. Must have been a bottomless cup.

[question]

MM -- instead of calling it a "recipe" refer to is as a "control mechanism". Do you still think that it is non-statutory?

[MaxDrei]

Picking up on the recipe claim a few comments above, how about (instead of a process, an apparatus or a product):

1. A new, useful and non-obvious thought which, when reduced to material form, manifests itself as a recipe which, when coupled to a recipe-reading robot, causes the robot....(continue as above).

I've heard of reach-through claims, but this is getting ridiculous.

[MaxDrei]

....or, one stage further:

1. New, useful and non-obvious recipe(proposal) for a research program, which program when executed will deliver a thought, that when implemented as instructions to a robot, will cause that robot to write a protocol for the performance of a process to create a (computer-implemented invention).

After all, the research proposal is an innovatory "thing" of commercial value, that needs protection, isn't it?

[e6k]

"per se"

Already looked it up and I know why you hold your fallacious view that the software in this claim cannot be acting on it's own. Doesn't matter. They went out of their way to assure that it is. You notice the lack of functional language, which means the service, and the logic it is made of aren't actually doing anything, they are merely configured to do something in the event that they should be used. That is all the claim requires. It does not require that the per se software recited actually be used OR DO ANYTHING.

That's kind of like here:

"Software unconnected from hardware DOESN'T DO ANYTHING."

That is exactly what is going on in the claim, the software is just sitting there, unused. No function is performed anywhere in the claim.

"Instead, software CONNECTED TO hardware makes my browser work."

I agree, when the claim requires the software to be put on a machine and do something then it will be related to a machine.

"NOBODY and I mean NOBODY with any expereince claims "pure software" or "software, per se.""

Maybe the guy that wrote it was the intern? I don't know. And I don't care for anecdotal evidence.

"The claims are directed to processes (which include the steps performed by the software running on hardware)"

You really don't get it, the software in the claim isn't running on any hardware.

"computer program product, which when coupled to a computer system, causes the computer system to perform the steps embodied in the computer program product."

This is the only one you'll come close to sliding through, but, alas, even the preamble shoots that theory down.

"The only reason why the BPAI is getting upity is that the Patent Office is just one one of their new kicks to reject more patents under 101."

You are correct, we are enforcing it now since the developments in Bilski.

"http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd20080343-06-18-2008-1"

"Claim 8: 8. An apparatus for computerized trading comprising: software encoded on a computer-readable medium and capable of execution by a computer, said software including: - a first algorithm plug-in for implementing a trading strategy, - a second market plug-in for implementing a trading strategy, - an engine for providing services to said first and second plug-ins, whereby said first and second plug-ins are implemented in said engine in order to execute a trade, - a third algorithm plug-in, - a fourth market plug-in, whereby either of said third or fourth plug-ins may be substituted for either of said first plug-in or second plug-in respectively, in said engine, in order to execute a trade; wherein said second market plug-in implements a first limit on trading volume applicable in a first market and said fourth market plug-in implements a second limit on trading volume applicable in a second market, the second limit on trading volume being different from the first limit on trading volume."

An apparatus. Well, you're right, obviously this case couldn't be something that is a physical apparatus. Neglecting your HUGE oversight with respect to the call out to the statutory class in the preamble that may have been given weight just for giggles, let's look to the body.

"software encoded on a computer-readable medium and capable of execution by a computer, said software including:"

Oh wait, what's that? Software that is specifically tied to a computer readable medium, AND here's the kicker:

"wherein said second market plug-in implements a first limit on trading volume applicable in a first market and said fourth market plug-in implements a second limit on trading volume applicable in a second market, the second limit on trading volume being different from the first limit on trading volume."

FUNCTIONAL LANGUAGE. O M G. What do you know? That claim meets all the requirements that the case under discussion fails.

Bottom line, you are incapable of understanding two things. The body of the instant application is non-functional, there is nothing actually performed being recited. And it has no direct recitation of a device etc. It is nonstatutory.

"I would think a troll is one who just lashes out with personal attacks on others without providing any relevant input into the discussion at hand"

You'd be wrong. Kind of like you're wrong about pretty much everything else you've talked about in this thread.

"Really, whether a rejection under 101 gets affirmed/reversed by the BPAI depends upon the panel you get.

There are some that are toeing the PTO's party line regarding 101, but there are others (thankfully) that actually understand the Federal Circuit case law."

You're right it depends on who you get. But in the event you get "unlucky" I hope for your sake that you're ready to go to the Fed Circ. then since I presume that is where most of the people that understand it are.

We are cracking down it seems since the developments in Bilski, the word even "came down from on high" in a memo.

[Yet Another Anon]

Has anyone had a 101 rejection that could not be overcome by a minor amendment?

I understand that sometimes as a matter of principle you may wish to take the 101 rejection up on appeal (Bilski, Bureaugard, the appeals board cases discussed above), but often times it is easier to overcome the 101 rejection by making a minor amendment. By minor amendment, I mean explicitly incorporating hardware into the claim, clarifying that the computer readable medium is a computer readable storage medium, adding the word 'computer' into the claim, converting the signal claim into another type of claim, etc.

Are there any 35 U.S.C. 101 situations where a minor amendment won't work?

[e6k]

"Are there any 35 U.S.C. 101 situations where a minor amendment won't work?"

When you fail to disclose anything except things which you may not obtain a patent for under 101. Then it is kind of hard to make such a small amendment because of a little thing called 112 1st.

[e6k]

Which I would like to add, contrary to pds's statutory construction 101 is what gives us the authority to even give you a patent, if your disclosure and/or claims fail to fall within that authority we cannot issue you a patent because we lack the authority.

[SF]

BigGuy:

That's a great sample claim, which is what I had in mind. The gist of the argument is that, if software is novel and nonobvious, installing the novel and nonobvious software must also be novel and nonobvious. Likewise, if a device is novel and nonobvious, using it in an old method would still be novel and nonobvious so long as the claim recites the novel and nonobvious device.

[Mary Prosecutor]

Mr. e6k

in addition to 101, don't you also lack the authority to issue a patent if the application does not comply with 102, 103, 112,?

[pds]

"No function is performed anywhere in the claim." "The body of the instant application is non-functional, there is nothing actually performed being recited."

Claims do not have to recite the actual acts (at least if they are not method claims). A door stop doesn't have to recite that it prevents a door from opening/closing. An engine doesn't have to recite that it is running.

What I find funny is that arguments used against computer-implemented invention could never be used with other types of inventions.

Hypothetical claim:

A system for mandatory dispute resolution regarding one or more unilateral documents comprising:
a registration module for enrolling the person in a mandatory resolution system;
a resolution database for storing resolution language for insertion in the unilateral document wherein the resolution language provides that any challenge to the unilateral document must be presented to the mandatory resolution system for binding dispute resolution and for providing this resolution language to the enrolling person;
a dispute resolution module for enabling a complainant to submit a request for dispute resolution; and
a means for selecting a mediator from a mediator database to conduct a mediator resolution, for providing support to the mediator, and where the mediator determines an award or a decision that is final and binding.

Should it be rejected under 101 or not? If so, why?

"When you fail to disclose anything except things which you may not obtain a patent for under 101. Then it is kind of hard to make such a small amendment because of a little thing called 112 1st."
You need to look at the spec in Simpson … heck, just look at the drawings, Figs. 1-3 all show the "services" being run on computers. Just so we are clear, are you going to argue that a computer is an abstract idea, algorithm, or some other form of non-statutory subject matter?

"Which I would like to add, contrary to pds's statutory construction 101 is what gives us the authority to even give you a patent, if your disclosure and/or claims fail to fall within that authority we cannot issue you a patent because we lack the authority."
My statutory construction is that if the claim, under the broadest reasonable construction, includes subject matter that falls within 101, then the claim is OK under 101. What is wrong with that?

[AllSeeingEye]

It is pretty clear that Mooney doesn't know computers or software. Why does he keep trying to comment. And he keeps giving us that glib, hackneyed piece of paper analogy. It is really tiresome. Like a fat green maggot fly at a picnic - you just don't want it around.

[Left coast]

I wonder if Mooney got burnt earlier in his career on a software patent issue?

[AllSeeingEye]

Personally, I don't like "computer program product" for US prosecution. I still use straight up Beauregard, since the "computer readable medium" can be expansive and include recording AND communication/data transfer media.

Some folks kind of latched on to the "computer program product" because IBM was filing cases using this claim type. Actually, computer program product is the preferred claim type in the EPO as I understand it.

Herr Max, can you help us on this one?

[AllSeeingEye]

I think Mooney got burnt by more than a software issue...early in life.

[Malcolm Mooney]

"A system"

It's vague so you could tank it under 112 or 101 (it's not a composition, an article of manufacture, or a process). Who cares? Such claims aren't worth the paper they are written on. Their only value lies in their potential (occasional realized) assertability against others, much like a baseball bat with nails pounded through it.

[MaxDrei]

Is "computer program product" the preferred claim type in the EPO, asks the All Seeing Eye. Can't answer that because I'm not clear on who is to express the preference. EPO Examiners are required to scrutinise apps, and to reject them until they meet all requirements of the Convention. You won't get to issue until the Exrs are satisfied that every single claim is confined to subject matter having technical character (101) and is directed to the solution of a new, useful and non-obvious solution to a technical problem. The active filter here, which you don't have, is "technical". Lots of computer program products are patentable at the EPO, despite the EPC barring from patentability in Europe "computer programs, as such". But not the ones that don't solve a technical problem.

[Malcolm Mooney]

"My statutory construction is that if the claim, under the broadest reasonable construction, includes subject matter that falls within 101, then the claim is OK under 101. What is wrong with that?"

Other than it flying directly in the face of case law, nothing.

Maybe you should revisit Metabolite Labs again, pds.

[Anon In-House]

"Claim 1. A recipe, which when coupled to a recipe-reading robot, causes the robot to perform the steps recited in the recipe, where in the recipe comprises the steps A, B, and C.

Assuming the steps in the recipe are new and non-obvious, is claim 1 patentable?"

Mooney, I will take the bait on this, and try to walk through a reasonable analysis. Please let me know where you think I may have it wrong.

Traditionally, recipes have not been patentable. However, they were not non-statutory subject matter, because in written form, a recipe is an article of manufacture. They were more likely unpatentable under the printed matter doctrine, which basically requires that if there is no functional relationship between the printed matter and the substrate, then the printed matter will not be given any patentable weight in determining novelty. Please note this is very similar to how the EPO treats their software/computer patent determinations, which I am sure MaxDrei can elaborate on.

So, Mooney, looking at your claim, I would expect a 102/103 rejection of the claim, with the Examiner giving no weight to the actual recipe (under the printed matter doctrine) and alternatively under a simple design choice distinction style rejection.

It would then be up to the prosecuting attorney to show a functional relationship between the recipe and the paper which would then allow the recipe to be given patentable weight, and therefore require the examiner to find prior art teaching the recipe. Additionally, the prosecuting attorney may have to argue that the coupling of the recipe to the robot changes the robot, thereby creating a new specific robot, the change being made at the memory level, to avoid the "manner of/intended use" rejections (sorry, it is late, and I cannot recall the proper term for this rejection, but basically it prevents you from claiming a known article to be used in a different way).

This, I believe, is where software "medium" claims can find support for patentability, because the functional relationship is one of a traditionally limited universe of mediums that can store machine-readable code that allows a computer to automatically read the instructions, act on the instructions, and then produce a useful result. However, this is also where Mooney finds problems, because with a paper-reading robot, we are now somewhere between traditional "medium" claims which actually involve a mechanical implementation of a writing, and traditional "printed matter" claims, so where is the line drawn? Additionally, I believe his example is trying to highlight that the universe of machine-readable mediums is growing and therefor encompasses more than the law anticipates. Does this basically sum up your position?

So, how would Mooney's claim do today? I would think that today, if the specification did a good job of enabling the paper-reading robot and the type of paper and text of the recipe, (and assuming the end product is new and non-obvious and therefore the design choice rejection could be overcome) that this claim could be patentable. I take this position because we know that a process for making a food product is patentable, and that machine-readable medium claims are patentable, and in this hypothetical, the claims meets both of those criteria. I would also add that to avoid a possible 101 useful rejection, the addition of providing a final product might be an added benefit to the claim.

I suspect that the bigger question is SHOULD this be patentable. THAT will always be a matter of (usually differing) opinions.

Now Mooney, I have tried to answer your question. I respectfully invite you to show me the errors in my analysis, and/or walk through your analysis as to why this claim is not patentable. Your claim does pose an interesting issue, but I think that you believe the claim is non-statutory (based off this thread and other threads where you call for a change to 101 to specifically exclude software), and I would like to know the reasoning behind that.

[pds]

"Maybe you should revisit Metabolite Labs again, pds."

Maybe you should stop pinning your hopes on what three members of the Supreme Court (who are frequently on the short end) referred to in dissent of a dismissal of a writ of certiorari.

I cannot think of a better example of the expression "grasping at straws."

Next time you've got to invalidate a patent under 101, trying citing Lab Corp. v. Metabolite. ROFLMAO.

"Now Mooney, I have tried to answer your question. I respectfully invite you to show me the errors in my analysis, and/or walk through your analysis as to why this claim is not patentable. Your claim does pose an interesting issue, but I think that you believe the claim is non-statutory (based off this thread and other threads where you call for a change to 101 to specifically exclude software), and I would like to know the reasoning behind that."

Good luck with that ... MM doesn't like to share his reasoning.

Awhile I go I figured out (based upon MM's comments) that some partner dinged him awhile back and this partner was doing a lot of software. MM, being a biotech person, is jealous that his PHD (he is the stereotypical "thinks he knows it all" with the attitude to boot) means little and that his standing in the firm is marginalized. My guess is that MM was asked to write a software patent application one time (since MM doesn't get much work ... the clients cannot stand him) and absolutely botched it. Since, then he's been secreting bitching about software patents when he's not doing document review.

[millard duckworth iii]

so then i see the consensus is that software is patentable, per se

[millard duckworth iii]

oops..."is" should be "is not"

[e6k]

"in addition to 101, don't you also lack the authority to issue a patent if the application does not comply with 102, 103, 112,?"

You might could say it like that. But in the case of at least 102 we see specifically that you are ineligable for obtaining a patent if you fail 102. And we see in 103 that a patent may not be obtained if you fail it. 112, much like 101 seems to say what the patent/application must contain. But it seems that 101 alone amongst those are what grants the authority to grant a patent.

"so then i see the consensus is that software is patentable, per se"

Lol, strange things happen on this board.

"Claims do not have to recite the actual acts (at least if they are not method claims)."

They do in this type of claim, that is what the office policy is, and whether you like it or not, it'll take the BPAI or Fed. Circ. to overrule that policy. This policy is, btw, founded on our best interpretations of the controlling law. If it is wrong, then the Fed. Circ. will happily set it straight. We have a new MPEP coming out soon, there's time for us to change things if they say so. And I'm not sure how a product (door step) claim makes your point.

"What I find funny is that arguments used against computer-implemented invention could never be used with other types of inventions."

I agree, but the problem is that with software you're patenting nothing more than what amounts to written language.

"My statutory construction is that if the claim, under the broadest reasonable construction, includes subject matter that falls within 101, then the claim is OK under 101."

Sounds ok, in this specific case though I take issue with your broadest reasable construction based on the spec, and perhaps more importantly, the applicant's arguments in this case.

"You need to look at the spec in Simpson … heck, just look at the drawings, Figs. 1-3 all show the "services" being run on computers. "

So then we're talking about generic computers? Rather than the "logic", that you're broadly interpreting as flip flops, latches etc? Or now does "logic" include a generic computer? Remember the word they chose to use pds. The BPAI's interpretation of "logic" is correct, and if you want to get a bit more technical I fear the best you'll do is get the definition I provided above. You have no support for your interpretation of "logic" in this application.

Here, a quote from the spec to end the issue.

"This can be accomplished by moving the logic normally present in the web content 114 running within the browser 112 into the web server 150. Rather than the web content 114 accessing the services specific to the user, the web server accesses the services specific to the user. In other words, the identity technology is server side instead of client side. "

You're telling me that there are flip flops, or even a generic computer that is running within a browser? I didn't realize that computers ran inside of browsers. I kind of thought that "logic" that can be run inside of browsers is limited strictly to the definitions provided by BPAI, myself, or a close approximation thereof.

Getting even further in we see the distinction they chose to make between "logic" and logic circuits/gates:

"combination of the following technologies, which are each well known in the art: a discrete logic circuit(s) having logic gates for implementing logic functions upon data signals, an application specific integrated circuit (ASIC) having appropriate combinational logic gates, a programmable gate array(s) (PGA), a field programmable gate array (FPGA), etc. "

Sorry, this time you lose.

As an aside, here's a real gem. Remember some of us fighting the other day about whether paper is a computer readable medium?

"Note that the computer-readable medium could even be paper or another suitable medium upon which the program is printed, as the program can be electronically captured, via for instance optical scanning of the paper or other medium, then compiled, interpreted or otherwise processed in a suitable manner if necessary, and then stored in a computer memory. "

LOL, doesn't matter what we think, paper is recognized within the art as a computer readable medium. Obviously. Morns.

[pds]

"I kind of thought that "logic" that can be run inside of browsers is limited strictly to the definitions provided by BPAI, myself, or a close approximation thereof."

You all computer engineers? I didn't think so. Another problem with the BPAI's analysis, their "one of ordinary skill in the art" would ALWAYS look at this logic being computer implemented and would NEVER look at this logic being implemented any other way. It is only in the imaginations of the USPTO and the BPAI that the logic described in the claims is implemented in anything other than a computer. Yet again ... the desire of the PTO to reject more applications trumps reality.

"They do in this type of claim, that is what the office policy is, and whether you like it or not, it'll take the BPAI or Fed. Circ. to overrule that policy. This policy is, btw, founded on our best interpretations of the controlling law."
Really .... what is the controlling law and how does it apply? Haven't found any cases to support your opinions?

What do you think of this argument?
When a computer program is recited as part of a claim, a determination should be made as to whether the computer program is being claimed as part of an otherwise statutory manufacture or machine. In such a case, the claim remains statutory irrespective of the fact that a computer program is included in the claim. The same result occurs when a computer program is used in a computerized process where the computer executes the instructions set forth in the computer program. Only when the claimed invention taken as a whole is directed to a mere program listing, i.e., to only its description or expression, is it descriptive material per se and hence nonstatutory.

You also didn't give me an opinion on my example claim. Rejectable under 101 or not? What happened to your eagerness with regard to pronouncing certain claims as directed to non-statutory subject matter?

"LOL, doesn't matter what we think, paper is recognized within the art as a computer readable medium. Obviously."
Then are all computer readable medium claims rejectable under 101? A simple yes or no answer will suffice.

[Malcolm Mooney]

"Then are all computer readable medium claims rejectable under 101? A simple yes or no answer will suffice."

Yes.

[Anon In-House]

Care to expand Mooney, such as why it is rejectable under 101? Why is it not an article of manufacture?

[Leopold Bloom]

Anon In-House, while I'm sympathetic to your cause, is convincing Mooney, or not, going to make computer-readable medium claims more or less patentable?

[somebody]

"Why is it not an article of manufacture?"

Why is a piece of paper with a recipe written on it not an article of manufacture?

[e6k]

"You all computer engineers? I didn't think so. Another problem with the BPAI's analysis, their "one of ordinary skill in the art" would ALWAYS look at this logic being computer implemented and would NEVER look at this logic being implemented any other way."

pds, the claim is not talking about the method of implementing the logic pds, it is referring to the logic itself. Obviously one must run logic on a computer for it to function, but this claim goes out of it's way to make sure that there is no requirement that the logic is functioning and it also goes out of it's way to require ONLY the logic. Both of these reasons together, make for a lethal combination. I won't speak to the situation where only one or the other is present just yet because it would require further analysis (please insert one RCE to continue). If, IF, they were to claim this service actually being implemented by including some functional language then you would have half a leg to stand on and it might get through.

"Really .... what is the controlling law and how does it apply? Haven't found any cases to support your opinions?"

Haven't bothered to look just yet, have been a tad busy.

"Only when the claimed invention taken as a whole is directed to a mere program listing, i.e., to only its description or expression, is it descriptive material per se and hence nonstatutory."

I rather like that argument, and it's funny, because that's the only thing that is in this claim. Something that is only the description of what the "logic" or "program" is.

About your hypothetical, it slipped my mind whilst replying, but I cannot say without a specification, but it seems that it might make it. What are the modules etc?

"A simple yes or no answer will suffice."

I'm not quite as cavalier as MM on this one, but all indications point to yes, they should be, but they currently aren't. That is, if we're talking only about claims to the per se computer readable medium itself. The amalgamation of the computer readable medium and functional language describing the operation of a machine controlled by the instructions on the medium is another story, but even so it would be my opinion that any limitations having to do with what is on the computer readable medium are analagous to particular written phrases being claimed.

I.e.

A method of telling story comprising:

Opening a book with a machine
Reading "Mary had a little lamb, little ..." from the book
Causing a recording machine to record "Mary ..."
Closing a book with a machine.

The recitation of "Mary ..." affords no patentable weight (or shouldn't), even though it is the instruction for the recording machine to record a certain bit of information. Just as the recitation of reading 10100010 from a disk and making a computer store 10100010 in memory somewhere to display a blue dot shouldn't either.

""Why is it not an article of manufacture"

Simple answer is because you wouldn't ordinarily refer to one as such. You would refer to it as a written work.

[MaxDrei]

More, more. Keep 'em coming folks. Up to now I was never much of a fan of the EPO's "technical" test. Till I followed this thread and found out how much more satisfying and useful it is than the competition.

[Yet Another Anon]

I believe the claim below would be rejected under 103. See In re Cominsky

PDS wrote: Hypothetical claim:

A system for mandatory dispute resolution regarding one or more unilateral documents comprising:
a registration module for enrolling the person in a mandatory resolution system;
a resolution database for storing resolution language for insertion in the unilateral document wherein the resolution language provides that any challenge to the unilateral document must be presented to the mandatory resolution system for binding dispute resolution and for providing this resolution language to the enrolling person;
a dispute resolution module for enabling a complainant to submit a request for dispute resolution; and
a means for selecting a mediator from a mediator database to conduct a mediator resolution, for providing support to the mediator, and where the mediator determines an award or a decision that is final and binding.

Should it be rejected under 101 or not? If so, why?

[EPO fan]

Max, I haven’t been following this post, but what do you mean by “the competition?”

[Malcolm Mooney]

"I believe the claim below would be rejected under 103. See In re Cominsky"

Is a "system" an article of manufacture, a composition, or a method?

If that claim were any more foul we'd need gas masks. Which paragraph of 112 tells us how to interpret the scope of "module plus function" and "database plus function" claim language? A reasonable person would assume that it was a pathetic attempt to invoke 112P6 and look to the spec to see what structure is found there. For example, we'd expect to find at least one complete set of code for the "resolution database" to which the claim should be limited (unless additional examples are also fully explicated).

[Mary Prosecutor]

Mr. Mooney -- are you implying that a system claim, e.g., "A system comprising ...", is per se unpatentable subject matter under 101?

[e6k]

"Is a "system" an article of manufacture, a composition, or a method?"

Ease up malcolm they could have plunked the simpson claim into a statutory class by adding stuff in the body, but they chose not to. PDS's system merely lacks from specificity and is want for a more thorough analysis than I'm prepared to give free time to right now.

[Malcolm Mooney]

"are you implying that a system claim, e.g., "A system comprising ...", is per se unpatentable subject matter under 101?"

I'm implying that it should be unpatentable subject matter under 101, the public will be no worse off for it and the PTO will be better off for it, thereby leading to a net benefit to the public.

There are no inventions presently claimed as "systems" that could not be protected adequately as articles of manufacture or methods. It's laziness on the part of prosecutors and it's encouraging to see system claims being shot down by the PTO and the courts for any reason.

[Malcolm Mooney]

pds "Maybe you should stop pinning your hopes on what three members of the Supreme Court (who are frequently on the short end) referred to in dissent of a dismissal of a writ of certiorari."

Why? All they were doing was telling us how it would have gone down if they had heard the case on the merits that were briefed (albeit poorly).

You speak as if there is a majority on the court that favors expanding patent protection. I don't think that's the case, unless it happens inevitably as a consequence of protecting states' rights. LabCorp is a clear signal to everybody that a claim that reads on a purely mental process (whether due to an admission by the patentee or following a proper claim construction) is invalid. If you disagree with that, pds, then I'm beginning to understand why you are so lonely and angry.

[AllSeeingEye]

Remember, Mooney doesn't like any claims or patents for that matter because all things are obvious to Mooney according to the various file wrapper smells that he is accustomed to.

There is nothing inherently wrong with a "system" claim except that enforceability is often more difficult. It is better to have claims directed to the individual components of the "system"

E.g. A communication system comprising:
a transmitter configured to transmit a signal according to a novel modulation operation that Mooney doesn't have the slightest clue about; and
a receiver configured to receive the modulated signal using a novel demodulation operation that Mooney has even less of a clue about.

Better to claim separately in an independent claim to a receiver and a different independent claim to a transmitter.

[MaxDrei]

HaHa, EPO Fan. Nice one! I think the logic coming from Mr Steinbrener's Board has pretty much seen off by now the "competition" from the English courts.

[Malcolm Mooney]

AllSeeingEye: "There is nothing inherently wrong with a "system" claim except that enforceability is often more difficult."

And possibly in the near future, "more difficult" will become "impossible."

That's how the cookie is crumbling. Have some more milk.

[AllSeeingEye]

Sorry Mooney, but you are a total m0r0n. The idea that a system claim is vague goes beyond stoopid. Please see the example immediately above .

Do you really park cars for a living? Or did you say you served shrimp at IP seminars?

I sometimes get the idea I should give you a little credit, but then something like this. You're like e6K saying that the atoms are falling out of the wires if you tip them sideways...

[AllSeeingEye]

Have some more crack Mooney...

[Malcolm Mooney]

"The idea that a system claim is vague goes beyond stoopid."

Well, pds' hypothetical claim at 6:38 pm is certainly vague. Take it up with him or her.

[AllSeeingEye]

Mooney, you have absolutely no idea what you are talking about.

[MaxDrei]

Eye, I think Mr Mooney is unhappy that the word "system" embraces both a process (a rote learning system) and an apparatus (a telecoms system). Are you in favour of claims that begin: "An act or a thing (process and/or apparatus) comprising...." . If so, can you tell me why.

[AllSeeingEye]

I think Looney is reaching farther than that as you can see by the 1diotic posts a few upthread where he thinks that system claims are not statutory (he must have come to this conclusion while parking a patent attorney's car).

Actually the term regarding the "thing" at the beginning of the claim is not as important as what comes after it. If by system you mean "method," then method is probably a better term to use. However, by itself, the word "system" is not a problem, especially if what comes after it is clearly statutory such as a collection of devices.

[MaxDrei]

Eye, you confirm that the ambiguous claim category "system" is "not a problem" at the USPTO and in the US courts. Only goes to show what a gulf lies between European ideas of what it takes to satisfy the "clarity" requirement on patent applicants, and the American idea of clarity. Vive la difference.

[Wasn't me]

Boy do we degenerate into some BS sometimes, must be a slow week at the office.

You guys do realize this is ALL artificial. You're not going to discover the meaning of signals, systems, or Beauregard claims under a rock, and no one is going to come down from the mountain with stone tablets to tell you the meaning.

"When I use a word, it means just what I choose it to mean - neither more nor less."

[AllSeeingEye]

Max, I just am trying to say that a particular word in a preamble cannot in itself sink a claim. I have written and successfully prosecuted literally thousands of claims before the EPO. While they do have some different clarity requirements, I have never had much trouble with claims that were originally well drafted for U.S. prosecution.

[MaxDrei]

I'm glad to read of your success in the EPO, Eye, and its freedom from frivolous clarity objections. And, now I come to it, neither can I find in the EPO Guidelines anything negative about categorising claimed subject matter as a "System".

Wasn't: Is not your quotation is from The Red Queen, and calculated to attract scorn? If so, I don't yet see your point.

[Eurodisnae]

From personal experience, the EPO will object and seek clarification if it there is any ambiguity about whether a "system" claim is defining an "apparatus" or a "process", but there's nothing inherently wrong with a "system" claim.

[MaxDrei]

Sorry, not the Red Queen but from Humpty Dumpty, that well-known expert on semantics. He's right, of course. If you deprive a word of its context, it's inevitably meaningless. But we all knew that already, didn't we?

[Malcolm Mooney]

"I just am trying to say that a particular word in a preamble cannot in itself sink a claim."

That's false. Need an example to prove it, or can you think of one yourself?