BPAI: PTO Should Apply Broadest Reasonable Claim Interpretation to Section 101 Analysis

Ex parte Koo (BPAI 2008)

Acting sua sponte, a BPAI panel recently entered a new ground for rejection against an IBM patent application: That the claimed process is unpatentable subject matter based on the Federal Circuit's recent en banc decision in Bilski. The claim is directed to a method of optimizing relational database queries and appears to be specifically directed to speeding up queries where a table is joined to itself. Although the preamble does focus on a "relational database management system," the body of the claim does not refer to any specific machinery beyond queries, sub-expressions, rows, and sets.

The legal point to consider from this case is that the PTO will apply its "broadest reasonable" claim interpretation during its §101 analysis. Here, the BPAI panel found that the broadest reasonable interpretation of IBM's claim does not necessarily "require computer or machine implementation" and thus that the claim fails the "tied to a particular machine" prong of Bilski machine-transformation test.

"Claim 1 does not recite any steps that necessarily involve machine implementation. While the preamble of claim 1 recites a "system," the "system" of claim 1 is not recited in terms of hardware or tangible structural elements. Rather, the "system" could be a software system, where the elements of claim 1 are implemented solely in software or algorithms. Thus, the nominal recitation of a "system" in the preamble does not transform claim 1 into patentable subject matter under § 101."

The BPAI also found that the claim "does not call for any transformation of an article to a different state or thing, nor does it require any transformation of data or signals." Based on the claimed step of "reforming the query," I would argue that the claim does require a transformation, but that transformation does not satisfy Bilski because the thing transformed (the query) is not "representative of physical objects or substances."

Notes & Comment

• In the appeal, the BPAI overturned the examiner's obviousness rejection based on the absence of a "self join" in the cited prior art.
• The disputed claim:

1. A method for optimizing a query in a relational database management system, the method comprising: evaluating the query to determine whether a sub-expression of the query is being joined to itself and whether a predicate of the query comprises an equality test between a same column of the sub-expression; determining whether a first row set producible from a first set of references of the query to the sub-expression is subsumed by a second row set producible from a second set of references of the query to the subexpression; and reforming the query to eliminate the joining of the sub-expression to itself based on evaluation of the query and determination of whether the first row set is subsumed by the second row set.

Comments

[Malcolm Mooney]

Good riddance to that crap claim.

The analysis in the box is spot on. As I noted in earlier threads re 101/Bilski/Metabolite, the starting inquiry is not whether the claim *can* read to encompass statutory subject matter but whether its broadest reasonable construction *necessarily* requires more than a mental step or substantial non-tangible structure.

Of course, the recitation of a "system" does not meet that requirement (caveat: a suitably narrow definition of system in the specification would change the result).

[Leopold Bloom]

"I would argue that the claim does require a transformation, but that transformation does not satisfy Bilski because the thing transformed (the query) is not 'representative of physical objects or substances.'"

I haven't read the case yet, but hopefully this is a good vehicle for an appeal (whether or not it's a "crap claim"), so that we can get some of this silliness cleared up. For example, why should the patentability of a communications-related method claim, which "transforms" electronic data, turn on whether or not that data is "representative of physical objects or substances"? And how much "tying to a particular machine" is enough?

[Leopold Bloom]

"Rather, the 'system' could be a software system, where the elements of claim 1 are implemented solely in software or algorithms."

What is a "software system"? If they mean "software per se," then can someone explain how a computer program listing or some other nonfunctional representation of software can perform the active steps of the claim? It's a METHOD claim, which includes active steps. Software doesn't DO anything until it's executed on a computer. Sorry, Malcolm, the analysis in the box is NOT "spot on."

[Malcolm Mooney]

"It's a METHOD claim, which includes active steps."

Actually there is only one "active" step which is a step of "reforming the query". This claim could just as easily have been written

"A method for optimizing a query in a relational database management system, the method comprising:

reforming the query to eliminate the joining of a sub-expression to itself based on evaluation of the query and determination of whether a first row set is subsumed by a second row set."

That's all there is. That's a patentable invention to you software types? You think someone deserves a 20 year monopoly on this? Why is this non-obvious? Where's the unexpected result?

"Software doesn't DO anything until it's executed on a computer."

Trust me: you don't have to tell me that. But I'm not sure that's what the board as getting at. As the claim is written, the "reforming the query" limitation could be reached by simply writing the reformed query into the software.

[curious]

I like Risch's approach.

"Everything is Patentable" by

Michael Risch
"The currently confused and inconsistent jurisprudence of patentable subject matter can be clarified by implementing a single rule - that which is otherwise patentable under the Patent Act is patentable subject matter. In other words, if a discovery otherwise meets the requirements of patentabilty - namely category, utility, novelty, non-obviousness, and specification - then the discovery will be properly patentable without need to consider traditional non-statutory subject matter issues such as mathematical algorithms, products of nature, or natural phenomena."

[bierbelly]

Is this patentable?

1010111000?

[Just Visiting]

Isn't a query just a mathematical expression? Doesn't this claim simply perform algebra to transform the query into a different expression? The claim doesn't even require the query to be executed.

The "broadest reasonable interpretation" stuff is just smoke. If the claim had recited some machine in place of using the word system, the result is exactly the same. We talkin' 'bout preamble man!

[Observer]

Another patentability question. Would an encryption algorithm (however non-stupidly claimed, in software, a computer system, method etc.) be patentable under 101? There is no transformation into a different state or thing and there is no representation of physical objects or substances. Shouldn't a novel, nonobvious encryption algorithm be protectable in some way?

[JCD]

Malcolm Mooney said: "That's all there is. That's a patentable invention to you software types? You think someone deserves a 20 year monopoly on this? Why is this non-obvious? Where's the unexpected result?"

I won't pretend that you don't appreciate the distinction between 101 and 103 analysis, but you have to admit that this comment is silly. As I'm sure you recognize, simply because a claim is obvious does not mean that it is directed to non-statutory subject matter.

This exemplifies my biggest problem with much of the argument on this blog on this subject. Arguing that software patents issue with claims that are in fact obvious in view of the prior art is an argument that, whether I agree with it or not, I can at least understand and appreciate. Stretching this to an assertion that software should be per se unpatentable for policy reasons is, again, an argument that whether I agree with or not I can at least understand and appreciate.

However, recognize that this is a POLICY argument, not a legal argument based on statutory construction.

As an aside, I've always been curious, do you feel that an inventor who truly invents a novel and nonobvious piece of software should be entitled to a patent even if it does not transform data representive of a physical article? If not, why not?

And as a follow up, if such an inventor came to you as a client who knew their software had commercial value but would be easy for a third party to develop once released, what would you counsel them to do?

[pds]

Yet again, MM gets worked up over nothing.

Unless this gets appealed, this application will receive a Notice of Allowance within a couple of months after the amendment that adds the "magic words" to the claim.

In fact, I would wager that if the attorney was nice, the examiner will even offer to supply the "magic words" to the attorney.

Form over substance ....

Either way, me and my compadres will continue to obtain allowances for computer-implemented inventions for our clients for years and years to come.

Sorry MM
:-(

[Mark Nowotarski]

For those keeping score, 4 out of 5 of the BPAI Bilski 101 rejections so far are to IBM applications in Technology Center 2100.

It appears that the war on software patents is progressing nicely.

Should be fun to watch.

[Mark Nowotarski]

For those keeping score, 4 out of 5 of the BPAI Bilski 101 rejections so far are to IBM applications in Technology Center 2100.

It appears that the war on software patents is progressing nicely.

Should be fun to watch.

[pds]

BTW -- I was amused by the use of a "broadest reasonable" claim interpretation by the BPAI to EXCLUDE the statutory subject matter (i.e., the method being performed on a computer, as described in the specification).

Apparently, the BPAI is using the USPTO's special dictionary in which "broadest" doesn't mean "most broad." Instead, it means as broad as it takes to support the USPTO's rejection. I always knew that applcants could be their own lexicographer. However, I didn't know that the USPTO could be their own lexicographer when interpreting decisions from the Federal Circuit.

Makes it easy to reject claim language when you don't have to work with the language of case law you don't like. If you don't like the language, just come up with a new definition -- the USPTO's own "truthiness." Somewhere, Stephen Colbert is smiling.

[re: Observer]

"Would an encryption algorithm (however non-stupidly claimed, in software, a computer system, method etc.) be patentable under 101?"

Under current BPAI decisions, claimed as a method for manipulating data or a 'processor' configured to manipulate data, no. Not tied to a specific machine, doesn't transform something representative of a physical object.

As a Beauregard claim, yes. BPAI can't overturn the Federal Circuit. They might ignore it if it isn't argued, but if they ignore it and it is argued, then they were wrong. (Although on appeal to the Fed. Cir., you might expect B'gard to be overturned).

If you claim a specific instance of the algorithm, say encrypting data that represents x-ray machine readings of a person's insides, then it is patentable.

But if the data represents something intangible, like confidential negotiations between traders, then no.

If it is implemented in a special purpose chip, then it is patentable, even if the chip is installed in a general purpose computer to encrypt generic data.

But if it is implemented in software, then it is most likely not patentable (unless the Fed. Cir. surprises me and announces that a GP computer running specific software is a special purpose machine for doing whatever the software does).

Does this make sense? No. But it't the law.

Anon E. Mouse (not Moose).

[Malcolm Mooney]

"As I'm sure you recognize, simply because a claim is obvious does not mean that it is directed to non-statutory subject matter."

That's correct. But as I'm sure you recognize, it is almost always the case that these bogus software inventions are obvious. Why is that? It's because they are nothing more than trivial problems stated in solution form.

[Malcolm Mooney]

"do you feel that an inventor who truly invents a novel and nonobvious piece of software should be entitled to a patent"

No, just as I don't feel that a chef who invents a novel and non-obvious method of making a cake is entitled to a patent on the piece of paper describing the method.

[Malcolm Mooney]

pds "Unless this gets appealed, this application will receive a Notice of Allowance within a couple of months after the amendment that adds the "magic words" to the claim."

So you think it's a novel and non-obvious method, pds?

[Malcolm Mooney]

"As a Beauregard claim, yes. BPAI can't overturn the Federal Circuit. They might ignore it if it isn't argued, but if they ignore it and it is argued, then they were wrong. (Although on appeal to the Fed. Cir., you might expect B'gard to be overturned)."

There is absolutely nothing holding the Beauregard decision up except for pure, unadulterated stare decisis. Anybody who has the cash and time to take a claim all the way to en banc can overturn Beauregard. An exceedingly clever lawyer will not be necessary, but a dumbaxx lawyer might manage to fxck it up.

[BigGuy]

"But if it is implemented in software, then it is most likely not patentable (unless the Fed. Cir. surprises me and announces that a GP computer running specific software is a special purpose machine for doing whatever the software does)."

They already did that, in Alapat: "We have held that such programming creates a new machine, because a general purpose computer in effect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software."

"But if the data represents something intangible, like confidential negotiations between traders, then no. ... Does this make sense? No. But it't the law."

No, it's not, notwithstanding the BPAI's latest shenanigans and the dicta in Bilski. Read the part about x-ray data carefully - approving of an example is not the same as establishing an exclusive test.

[Malcolm Mooney]

"BTW -- I was amused by the use of a "broadest reasonable" claim interpretation by the BPAI to EXCLUDE the statutory subject matter (i.e., the method being performed on a computer, as described in the specification)."

That's not what happened, pds. See the first comment, upthread. The key issue is whether non-statutory matter is encompassed by the claim, not whether some statutory subject matter is encompassed by the claim.

It's 2008. Even Judge Newman's biggest fans have to understand that construing claims to read only on their valid embodiments is a dead proposition.

[Leopold Bloom]

"Anybody who has the cash and time to take a claim all the way to en banc can overturn Beauregard."

As I recall, the court never ruled in In re Beauregard. because the PTO abandoned its position, the court remanded it. So I don't think you would need an en banc decision to "overturn" it.

[Malcolm Mooney]

Leopold, if that's true, then even better.

I'll ask the software prosecutors again: what is plan B? Thus far all I hear are pathetic defensive efforts to "tweak" these crap claims. Is that all you got? Are these inventions so dubious that there is no other way to claim them that provides "value" to your clients?

You folks better start thinking. I'm guessing you got a year, max, before anything resembling the present paradigm becomes a non-starter.

[Malcolm Mooney]

Maybe two years.

[broje]

To Observer:

That's the same conclusion I've come to after reviewign the case law and the USPTO interim guidelines. At least, I think that is the USPTO's view of things. The Beauregard claim is patentable becasue you have something functional, instructions that perform a method, stored in a computer readable medium. In that case, it does not matter whether the method manipulates data that is functional or data that is just written description (subject of copyright).

But for a method claim, the data being transformed, stored displayed, etc. must be useful, and not mere written matter. So you are limited to a particular use of the algorithm.

This interpretation is the only way I can make sense of Benson, for example.

[SF]

"As a Beauregard claim, yes. BPAI can't overturn the Federal Circuit."

Really? What exactly is the holding of the Federal Circuit's Beauregard case? Please quote it and explain to us all why this holding is so important.

[SF]

... ok, I'll do it for you:

"The Commissioner states that he agrees with Beauregard's position on appeal that the printed matter doctrine is not applicable. Thus, the parties are in agreement that no case or controversy presently exists. Accordingly, IT IS ORDERED THAT: The Board's decision is vacated and the case is remanded for further proceedings in accordance with the Commissioner's concessions." In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995).

Wow, that's some powerful precedent!!!

[Malcolm Mooney]

"instructions that perform a method"

LOL. It's like a William Burroughs cut-up: the truth leaks out.

[duckworth]

"Shouldn't a novel, nonobvious encryption algorithm be protectable in some way?"

I'd like to know the answer to this too. Perhaps meeting the transformation prong is met by simply taking a readable message and transforming it into an unreadable message.

That said, a novel and non-obvious encryption algorithm is the poster boy for trade secrets if there ever was one.

[6]

Yep. Good decisionins

Jebus MM, all this time I've been talking about what happened in Beauregard and you just replying away without even knowing the decision is all of two paragraphs telling about how the PTO dropped the argument? Come on, I've stated it umpteen times.

[Leopold Bloom]

"That said, a novel and non-obvious encryption algorithm is the poster boy for trade secrets if there ever was one."

An encryption algorithm that is held as a trade secret is commercially worthless. No one will take your word for it that your new algorithm is secure. A valuable encryption algorithm is one that works despite the fact that everyone knows how it works. This makes for a pretty poor poster child for trade secrets.

[pds]

"So you think it's a novel and non-obvious method, pds?"

If you want my opinion, it will cost you a few grand. Until you can cut me that check, I'll just refer you to page 13 of the Decision:

"Therefore, for the foregoing reasons, we will not sustain the Examiner’s rejection of claim 1, and dependent claims 2, 5, 8, and 9 for similar reasons. We also will not sustain the Examiner's rejection of (1) independent claim 10 and dependent claims 11, 14, 17, and 18, and (2) independent claim 19 and dependent claims 20, 23, 26, and 27 for similar reasons."

[pds]

"That's not what happened, pds. See the first comment, upthread. The key issue is whether non-statutory matter is encompassed by the claim, not whether some statutory subject matter is encompassed by the claim."

Ooooo ... someone who finally sees the real issue. Congrats MM.

The problem with that interpretation is (i) it is inconsistent with the language of 101 and (ii) if extended to the broadest extreme, it could invalidate almost ALL patents.

I just imagined a novel method of isolating some gene. I also just imagined a novel machine tool. Seems to me that these are "abstract ideas" which could be covered by the BROADEST reasonable claim construction. As such, those claims run afoul of 101 based upon this analysis.

How about this for another take ... those claims would also cover methods and apparatus in a virtual world ... which is nothing but a compilation of data ... sounds pretty etheral to me.

Does your claim cover non-functional embodiments (i.e., lack of utility)? If so, can I knock it out as well? If I can knock out a claim that covers one instance of non-statutory subject matter, then I should be able to knock out a claim that covers one instance of a device/method/product that lacks utility.

[Malcolm Mooney]

"Jebus MM, all this time I've been talking about what happened in Beauregard and you just replying away without even knowing the decision is all of two paragraphs telling about how the PTO dropped the argument? Come on, I've stated it umpteen times. "

[hangs head in shame]

I'm torry.

[6]

"If you want my opinion, it will cost you a few grand. Until you can cut me that check, I'll just refer you to page 13 of the Decision:"

Lawyer to english translation:

Yes it is obvious.

"(ii) if extended to the broadest extreme, it could invalidate almost ALL patents."

I cannot think of a single claim before me that could be 101'd because they encompass non-statutory subject matter. And I have a lot of method claims.

"(i) it is inconsistent with the language of 101 "

Hardly, 101 blatantly creates a requirement that the patent falls into a stat catagory. If the claim may OR MAY NOT fall into a stat catagory then it is reasonable to make the applicant clarify during prosecution while the claims may still be amended.

[Malcolm Mooney]

pds "...if extended to the broadest extreme, it could invalidate almost ALL patents. I just imagined a novel method of isolating some gene. I also just imagined a novel machine tool. Seems to me that these are "abstract ideas" which could be covered by the BROADEST reasonable claim construction. As such, those claims run afoul of 101 based upon this analysis."

Uh, when you say "those claims", what exactly are the claims that you are referring to? It's sort of an important question. I've drafted thousands of claims and none of them read on "abstract ideas."

[pds]

"Hardly, 101 blatantly creates a requirement that the patent falls into a stat catagory."

6K if you showed any cleverness with the English language and/or basic logic, I would bother to explain it to you. However, since you've shown neither, I won't.

[Elfin Magic]

For comparison, check out Ex parte Dutta (12/2/2008), also an IBM app, in which the BPAI did NOT raise a 101 rejection, presumably due to the recitation of a 'Registration Server' in the otherwise Bilski-failing claim. Is that all it takes?

[Alappat dead after Bilski?]

Is Alappat still good law? It was gutted with the loss of the the UCT test. Its specific reasoning (that a generic computer running special software is a special computer) was based on the UCT.

Also its results seem at odds with the Abele results the majority in Bilski cooed over.

[Elfin Magic]

Here's the claim from Dutta, Appeal 2008-4046:

1. A method of rating an online auction user comprising the steps of:

receiving personal information regarding the user;

based on the personal information, obtaining objective information by a Registration Server about the user from a third party; and

formulating an initial value by the Registration Server for a reliability rating based on at least the objective information.

[pds]

"I've drafted thousands of claims and none of them read on 'abstract ideas.'"

Then you aren't using a broadest reasonable claim construction. With the appropriate technical expertise (i.e., by one having ordinary skill in the art), he or she she be able to envision any method/device/product in his or her mind -- ergo, "abstract idea."

Does your device/method claims exclude a *simulated* device/method. What happens if the simulation occurs in one skilled in the art's head or in a virtual environment? Sounds like an abstract idea to me.

Of course, you skipped over the other issue of what happens when your method/device claim covers an embodiment that doesn't have substantial utility. Should it be rejected under 35 USC 101? If not, why not?

Come on ... this has the potential for a real intellectual conversation ... are you up for it MM?

[Alappat dead after Bilski?]

Yes, but just because they didn't raise a new rejection sua sponte doesn't mean much.

[curious]

PTO is just trying to cut down on its backlog with decisions like this.

[pds]

"Yes, but just because they didn't raise a new rejection sua sponte doesn't mean much."

What it does mean is that the BPAI isn't unified in its application of 101 -- something that has been opined before by myself and others on this board.

[Elfin Magic]

"What it does mean is that the BPAI isn't unified in its application of 101 -- something that has been opined before by myself and others on this board."

Well, consider FWIW that one of the panelists for Dutta was also on the Halligan panel.

I'm not so sure the non-sua sponte here is meaningless. The Board clearly is looking at apps closely and raising 101 when it can (four or five times already since Bilski) and, as someone above mentioned, IBM appears to be a favorite target. The Registration Server in Dutta is described in technical detail in the spec, and is central to the reversal of the 103 rejection. This looks pretty instructive to me.

[SF missed the best part of B'gard]

SF, why don't you show all of B'gard:

---------
Briefly, on August 4, 1994, the Board rejected Beauregard's computer program product claims on the basis of the printed matter doctrine. Beauregard appealed. The Commissioner now states "that computer programs embodied in a tangible medium, such as floppy diskettes, are patentable subject matter under 35 U.S.C. § 101 and must be examined under 35 U.S.C. §§ 102 and 103." The Commissioner states that he agrees with Beauregard's position on appeal that the printed matter doctrine is not applicable.

Thus, the parties are in agreement that no case or controversy presently exists.
---------

Now, do you really think any federal court would allow an agency to evade the law's contraints by essentially settling and then once the case is over, going back to their original position?

Right now, only the Fed. Cir. or above can touch B'gard claims under 101 as long as they are properly argued.

The Fed. Cir. might "overturn" B'gard with a 3 person panel by deciding the issue on the merits. Similarly, a panel can gut B'gard by saying any subject matter that isn't 101 statutory doesn't "count" towards 103 (remember the Comiskey dicta?). Lots of things can happen at the Fed. Cir.

But until the Fed. Cir. speaks on the issue, a floppy disk is an apparatus and therefore statutory subject matter, even after you record evil obvious software on it.

[JTS]

Why didn't IBM just claim their invention in terms of what a database engine does? Seems like the only infringement would occur in a DBMS? For example, most database engines have a common set of components and architecture, such as a query parser that builds a query tree, an opimizer that performs operations on the tree to optimize execution of the tree, etc. I don't fault the attorney for what was a reasonable claim at the time. But I don't think it should be hard to claim the invention in a 101-satisfying concrete way that still encompasses the idea of the invention.

Someone above mentioned Policy. Isn't the policty of 101 supposed to be about whether the claimed subject matter is the type of thing or activity in which society wants to encourage investment, advancement, and research. Do we want people to invest in making databases run faster? It's an easy question to dismiss sitting in a judge's/beaureaucrat's windowless world. But if you're waiting in line at an airport ticket desk for a clerk's query to complete - on a holiday travel day as millions hammer away at the same database - it's not such an academic question.

[if stream of consciousness bothers you, read no further]

If a claim reads on some abstract algorithm, then how does one infringe it? I guess what I'm getting at is: doesn't one have to perform an algorithm in the abstract to infringe an abstract algorithm, and isn't that impossible? Maybe these kinds of claims should be deemed indefninite...

To illustrate, try to work the problem in reverse. Imagine someone with a database that uses the algorithm of Koo (hee hee). IBM says: you infringe, you're "evaluating the query to determine whether a sub-expression of the query is being joined to itself". Accused infringer replies: No, evaluating a query is an abstract step (it could mean almost anything, like a person hearing a spoken question and their brain processing the question). We don't perform the claimed abstract steps, we perform concrete teps like building a query tree in memory and determining whether the query tree has a particular property. And what we do is not a species of the claim; it's a whole diffeernt category. A species of the claim would be a more specific abstract algorithm.

And Malcolm, I don't see how you can know jack about software, or anything else for that matter, since posting on Patently-o seems to be a full-time job for you. Seriously, how do you have so much time to spend on an internet blog?

[Alun Palmer]

The Board decision in Ex Parte Bo Li is relevant here. This simply held that Bilski only applies to method claims and that a Beauregard claim is not a method claim, relying upon In Re Lowry, 32 F.3d 1579, CAFC 1994, and also quoting MPEP 2105.01.

[Malcolm Mooney]

pds "With the appropriate technical expertise (i.e., by one having ordinary skill in the art), he or she she be able to envision any method/device/product in his or her mind -- ergo, "abstract idea. Does your device/method claims exclude a *simulated* device/method. What happens if the simulation occurs in one skilled in the art's head or in a virtual environment?"

[slowly ... ever so slowly ... backing away from pds]

[pds]

"slowly ... ever so slowly ... backing away"

I didn't think you really wanted to engage in a serious discussion. Thanks for confirming it.

[Malcolm Mooney]

Fyi

http://www.engadget.com/2008/02/17/robot-chef-whips-up-delicacies-we-wouldnt-dare-touch/

Recipes on paper are instructions written on computer-readable media, just like software.

I wonder if the robot chef filed a patent on its method of making octopus balls?

[AllSeeingEye]

Here we go again with the pieces of paper. Talk about a psychopath...

[posing as Mooney]

(thinking cloud ~ Drat! another crap claim. Worthless garbage. I bet if post a hundred times saying things about pieces of paper and trying to be popular, I can really change the world of patent law. Durn, I have to get back to work, the boss needs me on the french fry line)

I mean c'mon its "pieces of paper" people! What's wrong with you people?

[SF]

"Now, do you really think any federal court would allow an agency to evade the law's contraints by essentially settling and then once the case is over, going back to their original position?"

Don't tell me you're arguing that the Federal Circuit is going to defer to the USTPO's prior interpretation on 101 for any reason, much less some notion that, because the USPTO is performing some sort of bait and switch, 101 caselaw should bend to the USPTO's practice. What about signal claims? Didn't the USPTO allow those for a while?

The Federal Circuit had no choice but to dismiss the Beauregard case because there was no case or controversy. That means there is no Beauregard precedent to overturn. I'm sure you get that, don't you? Or are you a prosecutor?

[FJF]

To Malcom and all the other software-phobes, a simple question:

If a physical calculator (i.e., one implemented using hardware components) is considered patentable subject matter, why isn't a calculator implemented in software running on a general purpose computer?

Most Examiners would tell you, to get a software related method allowed, all you have to do in the preamble is to add:

"A computer implemented method for ...."

[FJF]

To Malcom and all the other software-phobes, a simple question:

If a physical calculator (i.e., one implemented using hardware components) is considered patentable subject matter, why isn't a calculator implemented in software running on a general purpose computer?

Most Examiners would tell you, to get a software related method allowed, all you have to do in the preamble is to add:

"A computer implemented method for ...."

[Malcolm Mooney]

"If a physical calculator (i.e., one implemented using hardware components) is considered patentable subject matter"

The question is: what makes the calculator patentable? Let's say a new calculator = old calculator plus an extra button that causes a new algorithm to convert number X to number Y. That's not patentable. It's obvious per se.

It's obvious per se because the algorithm executed by the button is not patentable.

Go ahead and continue to do what most Examiners tell you to do. Just don't say you weren't warned. You were warned years ago.

[lwmi]

I think this is ridiculuous. Does the PTO require that the elements in claims in other arts be described with qualifications as it wants for software "system"? Has computing not progressed at all in last 50 years so that PHOSITAs don't understand that system in context of a Relational DataBase Management (RDBMs) system means nothing but a computer? In theory you can have a static RDBMs schema on paper, but to run queries, do indexing or any sort of operations it will have to be implemented only on a computer of some kind. Someone please donate RDBMs textbooks to the USPTO library.

In future, one may have to claim "a hardware mouse" or a "software mouse". One might as well clarify "..wherein the mouse comprises a cable and a twin axis location sensing device".

[duckworth]

"An encryption algorithm that is held as a trade secret is commercially worthless. No one will take your word for it that your new algorithm is secure. A valuable encryption algorithm is one that works despite the fact that everyone knows how it works. This makes for a pretty poor poster child for trade secrets."

You have a good point. I was thinking more military than commercial. Encryption immediately made me think of Enigma.

[Hey, Mooney]

Mooney: Is this claim statutory under 101:

An apparatus comprising:
a piece of paper approximately 2.5" by 6"; and
a plurality of machine readable characters printed on said piece of paper in magnetic ink, wherein said characters represent at least a transit routing number and an account number.

Yes, anticipated by check numbers 1300-1450 in my checkbook this very instant.

And maybe the claim isn't drafted very well, but it's early, so be charitable and pretend that I have as much talent as you do in your little finger.

So, was this invention (personal checks with magnetic ink readable by both man and machine which is crucial to automating the clearing of a gazillion checks every day) statutory?

[SF still doesn't get it]

No, SF, I'm not. Go back and re-read my last post. Especially the part about the Fed. Cir. deciding the issue on the merits.

But district courts will treat B'gard as binding -- especially given the public policy argument against viewing it as anything but binding (i.e., encouraging agency 'bait and switch' as you call it).

(end part 1 -- spam filter hates me)

[SF still doesn't get it]

(part 2, filter is dumb)

If you want to argue that the plaintiff's computer program product claim is invalid under 101 because B'gard isn't binding, be my guest. And I hope you take it on appeal to the Fed. Cir. so this can be decided on the merits one way or the other. Oral arguments will be entertaining.

[SF still doesn't get it]

((part 3, wherein I find what the filter doesn't like)

Also, I would not want to be the PTO attorney who argues an appeal from a BPAI decision on a B'gard claim -- stuck with the position that B'gard wasn't decided on the merits and is therefore not binding.

You want to look a judge in the eye and say, "Yes, your honor, we are arguing that because you did not decide the issue on the merits in B'gard, we are free to change our position. Under Chevron....."

For these reasons, the BPAI views B'gard as binding for now. If you don't argue B'gard, though, you waive that argument & your CPP will go down along with your method.

[dumb filter]

the words "y-e-a-h" and "h-a-t-e" trip it.

[6]

"the words "y-e-a-h" and "h-a-t-e" trip it."

Yep, found that out the hard way a long time ago.

[6]

"If you don't argue B'gard, though, you waive that argument & your CPP will go down along with your method."

How are you going to "argue" b'gard?

What are you going to put in your brief?

"Um, the issue hasn't been decided yet, but the printed matter doctrine doesn't apply!"

That about right?

[Phil Marcus]

As a few postings on this thread have recognized, the question is really whether software methods--algorithms and similar recipes -- are going to be patentable, and that is important national policy. If not, and many seem to lean toward scoffing at this sort of invention, then some of the most important American innovations of the 21st century will be donated gratis to the world, screwing this great nation. Why do we put mixing a couple common chemicals on such a high pedestal that such a mixture (changing matter) is deserving?

[furthering the progress?]

If we disallow software patents... aren't we encouraging software developers to hide/abstract/encrypt and treat as tradesecrets? Don't we then prevent the public from learning these advances, doesn't this clog the pipeway of progress?
Do software developers really need 20 years of exclusivity as a carrot? Maybe reduce the exclusivity period? Or carve out a huge fair-use exception for academia?

[SF still doesn't get it]

6, look at any BPAI decision. "Arguments which could have been made but were not made are deemed to have been waived."

So you must put in a section in your brief that says "claim X is computer program product claim and is therefore statutory subject matter. (cite B'gard)."

To hammer the point home, you might want to include the following quote from B'gard:

"The Commissioner now states "that computer programs embodied in a tangible medium, such as floppy diskettes, are patentable subject matter under 35 U.S.C. § 101 and must be examined under 35 U.S.C. §§ 102 and 103."

If you don't, then the BPAI may evaluate the CPP claim as a method under Bilski and completely ignore the 'holding' of B'gard. You waived that argument, after all.

It's worked that way before, I can find an example decision if you ask nicely.

Sad but true.

[smashmouth football]

MM said, quoting FJF:

"If a physical calculator (i.e., one implemented using hardware components) is considered patentable subject matter"

The question is: what makes the calculator patentable? Let's say a new calculator = old calculator plus an extra button that causes a new algorithm to convert number X to number Y. That's not patentable. It's obvious per se.

It's obvious per se because the algorithm executed by the button is not patentable."

I'm sorry, that doesn't answer the question. Arguendo, assume the calculator is novel and non-obvious. (After all, this was supposed to be a 101 question.) Then what is the legal significance of an equivalent software implementation? Is it non-statutory subject matter because of Benson?

[AllSeeingEye]

"It's obvious per se because the algorithm executed by the button is not patentable."

This is a gr0ss misstatement....and, as best I can understand, wrong.

A claim is not "per se" obvious because an algorithm is not patentable. Besides when there is hardware around, the algorithm plus the hardware equals a patentable claim under Aristocrat. What kind of persistent mor0n are you?

"so be charitable and pretend that I have as much talent as you do in your little finger."

Gawd don't encourage him.

[SF]

"If you want to argue that the plaintiff's computer program product claim is invalid under 101 because B'gard isn't binding, be my guest. And I hope you take it on appeal to the Fed. Cir. so this can be decided on the merits one way or the other. Oral arguments will be entertaining."

What I said was that there was no precedent to overturn. My point was that the people saying that you'd have to overturn Federal Circuit precedent with respect to beauregard claims never read the case. The Federal Circuit never addressed the merits, as you note.

I don't believe you can challenge all beauregard claims as being non-statutory. I do believe, however, that the computer readable medium is irrelevant to whether its statutory or not.

The issue is whether the method performed by the instructions on the medium is statutory. If the method fails the machine-transformation test, putting that same method on the medium isn't going to cut it. I'd be happy to take that to oral argument.

[Malcolm Mooney]

"Has computing not progressed at all in last 50 years so that PHOSITAs don't understand that system in context of a Relational DataBase Management (RDBMs) system means nothing but a computer?"

Why don't you ask the twit who drafted the claim and chose to use the broad term "system" instead of the much narrower (and more accurate) term "computer"?

[Malcolm Mooney]

"Then what is the legal significance of an equivalent software implementation?"

There is another distinction. A calculator is a tool for humans. Software is instructions for a computer.

This gets back to the robot chef. Why isn't a novel recipe for a robot patentable when its written on old paper? It's written on a computer readable medium. It provides instructions to the robot. What's the legal distinction?

The answer is that there isn't a legal distinction. The reason why there isn't a legal distinction is because Beauregard claims were made up out of thin air and have no legal basis in patent law. They were a gift to the industry, much like the gifts given to the credit and banking industry during the same period. And both industries proceeded to abuse the gifts to line their own pockets while the vast majority of Americans got nothing while their Patent Office got bogged down in worthless crap.

some eagle upthread: "many seem to lean toward scoffing at this sort of invention, then some of the most important American innovations of the 21st century will be donated gratis to the world, screwing this great nation."

LOL. Look where software patents got us so far.

[M. Slonecker]

Having read the BPAI decision, I am intrigued that the decision overturned the Examiner's rejection of claims by declaring that they described new and non-obvious subject matter.

That having been said, it then proceeded to reject the claims on the ground that they should never have been allowed to enter through the "101" door.

I guess the moral is that what the BPAI "giveth" the BPAI can sua sponte "take away".

My "take away" from Bilski was that "pure" software inventons have been shunned from entry into the patent system. This decision seems to confirm this, though I do not dismiss the possibility that I may be overlooking a key distinction that nonetheless enables their entry. Perhaps the distinction lies between a "specific" machine and a "general purpose" machine, though for the life of me I am currently unable to distinguish between the two.

[Babel Boy]

Moonbeam said:

"I'll ask the software prosecutors again: what is plan B?"

I'm here today, Moonbeam, to tell you what Plan B is. Plan B is when some genius of a lawyer stands up in the CAFC and argues reverse inherency.

Elements, steps and limitations that are inherent in prior art can be used by PTO against an applicant. Reverse inherency will be when an applicant uses inherency against the PTO and argues that every claim to implementing a software instruction inherently meets the "tied to a machine" test. Software steps cannot be implemented in the absence of hardware. Hardware = machine.

Everyone, including the IBM suits who wrote the claim at issue, is gun-shy of using "software" in a claim. But once the reverse inherency argument kicks in, those who have used it will be in good shape.

The argument will be, essentially, a goose and gander argument. If PTO can rely on inherency, so can applicants. After all, if a feature or limitation is inherent -- then that's what it is. It's an unavoidable feature for all purposes. Makes no difference if it's in the PA or the claim. Besides it's impossible to imagine any claim to a software-based method in which the disclosure doesn't mention the hardware.

If you would like to volunteer for this mission, contact IBM. [I tried, but, apparently, my fee is too high.]

[curious]

"reverse inherency" interesting, Babel Boy. What cases/decisions would you cite?

[Malcolm Mooney]

Of course, people who sell software only do not directly infringe these "reverse inherency" claims. Right? Doesn't that make the claims "worthless"?

I apologize for not being able to keep all of the grievances of software patent proponents straight.

[Nope]

"There is another distinction. A calculator is a tool for humans. Software is instructions for a computer."

Software running on a GP computer functions as a calculator and is a tool for humans.

"Beauregard claims were made up out of thin air and have no legal basis in patent law."

35 USC 101. Apparatus. The tangible medium (e.g., floppy disk) is the apparatus. It doesn't stop being an apparatus when you record evil obvious software on it.

MM, you aren't trying too hard today.

What about that personal check claim earlier -- would that be 101 statutory subject matter?

[Lionel Hutz]

Malcolm,

If they ad simply rejected this claim as obvious, I would not have any problem with this decision. However, Bilski is a confusing, untenable basis and results in ridiculous rejections like the one presented here.

[breadcrumbs]

"Perhaps the distinction lies between a "specific" machine and a "general purpose" machine, though for the life of me I am currently unable to distinguish between the two."

M. Slonecker,

Begin your journey with "In re Alappat".

[The Mad Prosecutor]

Broadest reasonable interpretation - too bad it isn't applied to 35 USC 101. After all, broadest reasonable interpretation of "method" is simply an "Orderly arrangement of parts or steps to accomplish an end." Interesting how a "reasonable" interpretation of 101 obviates all the nonsensical questions and games associated with non-statory software.

This leads me to conclude if the above interpretation of 35 USC 101 is reasonable, the current interpretation is, by process of elimination, unreasonable.

[breadcrumbs]

Mad Prosecutor,

You assume that there is only one "reasonable" interpretation. Perhaps there is more than one.

Oh, wait, then we have an indefinite Statute. Oh dear, If the Statute's indefinite, we should let the USPTO decide.

The Office decided long ago:
"Everything that can be invented has been invented."
Charles H. Duell, U.S. Commissioner of Patents, in 1899.

[6]

"The issue is whether the method performed by the instructions on the medium is statutory."

HAHAHAHAHAAHAHAHAHA. I wish. If we go down your road then the whole claim fails for having mixed claim types. Every single time. The only reason b'gards have a prayer is because of the medium and supposedly making the method limitations into function limitations only. If you even consider the method limitations to be method step limitations rather than purely functional ones then the claim goes right down the tubes faster than I can flush them.

That said, I hope you're right SF.

[6]

"What about that personal check claim earlier -- would that be 101 statutory subject matter?"

That one would turn on whether or not the pto wanted to apply the printed matter doctrine it seems to me. It might not bother if it had a solid 103/102 since printed matter doctrine is much harder to rely on I'd imagine.

"Software running on a GP computer functions as a calculator and is a tool for humans. "

No, the gp computer functions as a calculator and is a tool for humans. Software is just instructions on how to use it as one.

"I'm here today, Moonbeam, to tell you what Plan B is. Plan B is when some genius of a lawyer stands up in the CAFC and argues reverse inherency. "

Already shot you down at Phawk. You have no basis for reverse inherency and it does not in fact exist. It would be the definition of reading limitations into the claim from the specification. CAFC will shoot you down faster than god knows what. Funny that you took that ridiculous nonsensem that probably spawned from phawkm into your own RL practice. I'll give you that it is interesting, but it is expressly forbidden. The court will simply tell you that it is reasonable for the PTO to require a recitation of such structure in the claim. If you argue it in an issued case with presumption of validity you might have a prayer. A very small one. You're essentially running an end run around their en banc. They will likely not be pleased with such foolishness.

[6]

"If not, and many seem to lean toward scoffing at this sort of invention, then some of the most important American innovations of the 21st century will be donated gratis to the world, screwing this great nation. Why do we put mixing a couple common chemicals on such a high pedestal that such a mixture (changing matter) is deserving?"

What "most important American innovations" are you talking about that we get gratis? We have copyright for a reason you know.

[6]

The reason for copyright is so I can view this on Utube lolz:

http://www.youtube.com/watch?v=uqBv13PAt3Q&feature=channel

[pds]

"If we go down your road then the whole claim fails for having mixed claim types. Every single time."

.... shaking head ....

After we had this long discussion about "mixed claim types" several months ago, you still don't get it. There is a difference between a claim directed to "a method and device, comprising ...." and a method that refers to a device or a device that refers to a method.

A Beauregard claim is a product claim that refers to a method.

Really, are you stup1d or do you just act stup1d?

[pds]

"CAFC will shoot you down faster than god knows what."

Wrong again ....

We consider independent claims 17 and 46 separately. They recite the use of “modules,” including “a registration module for enrolling” a person, “an arbitration module for incorporating arbitration language,” and “an arbitration resolution module for requiring a complainant [or party] to submit a request for arbitration resolution to the mandatory arbitration system.” Claim 17 also recites “a means for selecting an arbitrator from an arbitrator database.” These claims, under the broadest reasonable interpretation, could require the use of a computer as part of Comiskey’s arbitration system .... independent claims 17 and 46 and dependent claims 15, 30, 44, and 58 claim patentable subject matter under § 101."

If the Federal Circuit followed the "broadest reasonable interpretation standard" to include non-statutory subject matter and exclude statutory subject matter, then claims 17 and 46 would have been rejected under § 101, since the Federal Circuit made a finding that a "module [is] '[a] self-contained hardware or software component that interacts with a larger system.'" Thus, the claim language also encompasses non-statutory subject matter (i.e., the software).

[6]

"There is a difference between a claim directed to "a method and device, comprising ...." "

Sure there is a difference. But let me get this straight, in a claim that states "a product" comprising: "method steps", there is no issue as to which class it is directed? L O L. That's what the above poster was saying the statutoralitylol of the claim would rest upon, the method steps. If a claims statutorality is resting on method steps yet it is clearly a product you're telling me that there is no ambiguity? Please. What is the invention? The method steps, or a disk causing method steps? If the later, then the statutoralitylol of the claim does not rest on the method steps as SF? asserted above.

Merely "refering" to method steps is what all method claims do du mb arse. "referring" to something is the same as "including as a limitation". Either way it doesn't matter, I'll stick by my original assertion that you may not distinguish a structure in terms of method steps even if the method steps are supposedly functional limitations. And I would reject your screwdriver claim directed to a phillips head the same way. I might also reject 99.9% of your computer method claims on a windows xp disk and say that the structure is capable of performing the intended use. I'm not sure about that one.

Also, I've been mulling it over, and I'm yet to see a software on hardware claim that was sufficiently enabled. No Poshita, or examiner knows what a structure of a cd that would perform such a function as claimed would look like unless the app tells us. Would the structure look like:

100101010101010101011010101010111010110110101010110

or would it look like:

010101011001101110110101011101010101010101101010110

?

Hmm?

The claim is impossible to be completely searched since there is no way to know what the structure actually is.

All that said, distinguishing a structure in terms of the functionality of another structure also seems to be disallowed.

"A computer keyboard which, when connected to a computer and operated by 6 causes a computer keyboard under the control of pds to perform *novel method of typing*.

Assuming my keyboard is old, and your keyboard is old, is my claim statutory and nonobvious if this were the first exchange between us?

[Just an ordinary inventor(TM)]

A poster with the pseudonym “Tazistan Jen” posted this comment on Tuesday’s “Means-Plus-Function Fools Gold” thread about the Welker Bearing v. PhD, Inc. (Fed. Cir. 2008).

“Here is when I use a means plus function claim: in mechanical invention patents when I have talked about a lot of variations on mechanisms and I want a claim that will capture all of the variations. I WOULD NEVER HAVE *ONLY* A MEANS PLUS FUNCTION CLAIMS THOUGH.” (emphasis added).

I asked Tazistan Jen this:
My question may be naïve, but why would you never have only a means plus function claim?

So far, no answer, and the question is more than academic to me as it involves one of my favorite inventions now pending and to which I am preparing a response to an OA. However, Mr. Bruce Horwitz, a humble but highly regarded learned layman for sure, posted this on Dec 16, 2008 at 04:16 PM on the same thread.

“Tazistan Jen's post is one of the appropriate uses. Another is when you really have invented an entirely new class of "thing" which can be accomplished in many different ways … .”

While Mr. Horwitz’s statement gives some comfort regarding my pending application, it does not provide any specific guidance that will help me sleep so soundly as I would like.

Please help…is there anything dangerous about securing only a M+F claim on a favorite invention that is also potentially quite valuable.

[SF]

6:

Suppose someone argues that a claimed piece of paper is an article of manufacture. Suppose they then argue that their claimed piece of paper is novel because of the claimed cool pictures printed on the paper.

Suppose someone argues that a claimed computer readable medium is an article of manufacture. Suppose they then argue that their claimed computer readable medium is novel because of the cool image file encoded thereon.

Suppose someone argues that a claimed computer readable medium is an article of manufacture. Suppose they then argue that their claimed computer readable medium is novel because encoded thereof is an abstract process that fails the machine-transformation test.

Even if you find that each of these claims are statutory (because paper and computer readable mediums are articles of manufacture), wouldn't you be able to ignore (for purposes of 102, 103) the claimed printed picture, encoded image file and the encoded abstract process because none them have any effect on practical utility?

[6]

"Suppose they then argue that their claimed computer readable medium is novel because of the cool image file encoded thereon"

Presuming arguendo that we've established them to be valid claims under 101 I'm not sure what would happen under 103. That sounds like grounds for an appeal. The pictures might bite it as being aesthetic differences only, but the others might not.

And btw, the ignoring the limitations for 102/103 is nearly what I'm getting at with my intended use rejection. That is to say that the only functionality of all disk structures is the same, to store data and be read, their function is not to store specific data. The only thing different in different computer product claims is the intended use that the functionality is being used for. Now, IF you made a disk where the functionality was actually to store specific data then you might have a claim, but no such applications that I know of exist, and you would have to actually tell what that data was, not relate it to the functionality of some entirely different object or merely recite what the function of the data is.

[pds]

"Please. What is the invention? The method steps, or a disk causing method steps?"

.... shaking head .....

Du-mbass ... the claimed invention "as a whole" ... which has long been the standard.

35 USC 103 talks about the "subject matter as a whole"

From MPEP 2141.02: In determining the differences between the prior art and the claims, the question under 35 U.S.C. 103 is not whether the differences themselves would have been obvious, but whether the claimed invention as a whole would have been obvious. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. Cir. 1983); Schenck v. Nortron Corp., 713 F.2d 782, 218 USPQ 698 (Fed. Cir. 1983)

From Bilski:
Second, the Court has made clear that it is inappropriate to determine the patent-eligibility of a claim as a whole based on whether selected limitations constitute patent-eligible subject matter. Flook, 437 U.S. at 594 ("Our approach to respondent's application is, however, not at all inconsistent with the view that a patent claim must be considered as a whole."); Diehr, 450 U.S. at 188 ("It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis."). After all, even though a fundamental principle itself is not patent-eligible, processes incorporating a fundamental principle may be patent-eligible. Thus, it is irrelevant that any individual step or limitation of such processes by itself would be unpatentable under § 101. See In re Alappat, 33 F.3d 1526, 1543-44 (Fed. Cir. 1994) (en banc) (citing Diehr, 450 U.S. at 187).

[pds]

6K:

Really, this stuff is so basic once you have even a modicum of an understanding of the law and the basic technology.

Your assertion that "[n]o Poshita, or examiner knows what a structure of a cd that would perform such a function as claimed would look like unless the app tells us" evidences an ignorance of technology that is beyond belief.

Also, a good portion of your arguments are an attempt to parse statutory subject matter from non-statutory subject matter or functional limitaitons from structural limitations, which completely ignores that sections 101, 102, and 103 of 35 USC are ALL based upon the claimed invention as a whole.

Sorry buddy, you lose ... again.

[Nope]

6 blathered: "Also, I've been mulling it over, and I'm yet to see a software on hardware claim that was sufficiently enabled. No Poshita, or examiner knows what a structure of a cd that would perform such a function as claimed."

Ummm, nope.

(a) PHOSITA doesn't need to know what it looks like, PHOSITA just needs to know how to practice the invention after reading the spec. PHOSITA writes the code, compiles it, burns it to the disk.

(b) PHOSITA doesn't know what it looks like, but can find out. See (a) above, then read the disk.

6, I understand your frustration. But you can't get the result you want under current law. Sorry.

And if you do get the result you want from a forthcoming Fed Cir decision (quite possible), it will be an exception to the rule-type decision that doesn't logically fit with the rest of the law (e.g., apparatuses are statutory except when we say they aren't and today red automobiles are not statutory subject matter).

[Nope]

My query "What about that personal check claim earlier -- would that be 101 statutory subject matter?"

6's answer: That one would turn on whether or not the pto wanted to apply the printed matter doctrine it seems to me. It might not bother if it had a solid 103/102 since printed matter doctrine is much harder to rely on I'd imagine.

Do you not see how bizarre this proposed result is? If the paper check was made of plastic, and the magnetic ink was instead impressed into the plastic (like a credit card), it would suddenly be 101 statutory?

Here's an invention (that revolutionized check processing, btw) that happens to be printed [gasp] on paper [oh noes!] and it is suddenly not a useful apparatus under 101?

"Printed matter doctrine" is nothing but an excuse to avoid coherent reasoning, as are the other incantations regularly spewed forth ("software per se," etc.)

[Lowly]

Why is it that "broadest reasonable" to the PTO always mans "broadest."

The broadest REASONABLE interpretation of that claim is that its performed by a computer.

[Noise above Law]

Lowly,

You assume the Office is capable of recognizing REASONABLE.

Look at the actions of their top brass (re Continuation Rules, Appeal Rules etc). Is your assumption validated?

[Babel Boy]

With regards to my doctrine of reverse inherency, which, at this point is not quite a brain-child, but at least a brain-fetus, "curious" pondered what cases I would argue in support.

I would argue any BPAI or CAFC case upholding the doctrine of inherency, which is good law and reasonable. And then I would argue that there cannot be two standards. If features may be inherent in prior art, then features may be inherent in claims. In fact, some features have to be inherent in claims. A claimed wheel inherently goes 'round. But, no, I have never seen the legal argument for reverse inherency raised. This tied to a machine Bilski stuff is fertile ground for it.

Moonbeam, quick on his feet as ever, but not too quick of wit, as usual, argued that the person who just sells software avoids infringement liability under reverse inherency. Moonbeam's point, which is inherent in his comment, is that if the hardware is inherent in the software step, then just selling the CD obviates culpability of the seller.

Moonbeam -- review induced infringement. You might start with ACCO v. ABA Locks and Belkin (Fed. Cir. 2007).

[breadcrumbs]

Babel Boy,

At best, don't you have split infringement with the problem of no direct infringer?

Sometime, "Moonbeam" shouldn't be dismissed out of hand (although he does make it very very tempting).