BPAI Applies Bilski to Deny Patentability of Machine Claim

Ex parte Cornea-Hasegan (BPAI 2009)(non-precedential)

I have been following the BPAI's response in the wake of the Federal Circuit's series of patentable subject matter cases that culminated with In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc). In Bilski, the full appellate court held that to be patentable, a process claim must either be "tied to a particular machine or apparatus" or transform "a particular article into a different state or thing." Bilski explicitly focuses only on process (or method) claim, and practitioners have been left to question its impact on other claim forms.

In Cornea-Hasegan, Intel is attempting to obtain a patent on a short-cut method of performing mathematical calculations when the outcome is likely "tiny." According to the claim, when the mathematical result is likely tiny, then software is used to calculate the result; otherwise, hardware is used to calculate the result. The application claims both "a method" and "a computer readable media including program instructions which when executed by a processor case the processor to perform" the method. The body of both claims are essentially identical, and neither discuss particular machinery beyond "a processor," "software," and "floating-point hardware."

Processor Insufficient: A claim will be considered to cover patentable subject matter if it is tied to a particular machine. Here, however, the BPAI found that requiring "a processor" is not a "particular" machine.

The recitation of a "processor" performing various functions fails to impose any meaningful limits on the claim's scope. The recitation of a "processor" performing various functions is nothing more than a general purpose computer that has been programmed in an unspecified manner to implement the functional steps recited in the claims. The recitation of a processor in combination with purely functional recitations of method steps, where the functions are implemented using an unspecified algorithm, is insufficient the recitation of a processor does not limit the process steps to any specific machine or apparatus.

Post-Solution Activity: Although the claimed "floating-point hardware" may be a particular machine, the BPAI disregarded that element as "insignificant extra-solution activity … 'that will not transform an unpatentable principle into a patentable process.'" (Quoting Bilski).

Transforming Data: A claim will be considered to cover patentable subject matter if it transforms a particular article into a different state or thing. However, the transformation of abstract data or abstract data structures will not be sufficient to render the claim patentable. Here, the only arguable transformation is of data that has no direct physical world corollary.

Non-Method Claims: Some of Intel's claims are directed to a "computer readable media" rather than a method or process. Intel argued that Bilski should not apply to those "manufacture claims" because Bilski's sole focus was method claims. Rejecting that argument, the BPAI panel determined that the Section 101 analysis is the same – regardless of whether the subject is a "manufacture" claim or a "process" claim. (Citing AT&T v. Excel (Fed. Cir. 1999)(abrogated by Bilski)). Remember here that the State Street case – which released the business method rush – determined the patentability of a "data processing system."

Applying Bilski to the "computer readable media" claim, the BPAI found that the claimed invention was unpatentable because it did not require transformation of any article nor was it tied to any particular machine. Although the claim recites a "computer readable media" and "hardware," those elements were seen as insignificant extra-solution activities.

Limiting the claim to computer readable media does not add any practical limitation to the scope of the claim. Such a field-of-use limitation is insufficient to render an otherwise ineligible claim patent eligible.

Quoting the Supreme Court in Diehr (1981), the BPAI noted that Section 101 eligibility "cannot be circumvented by attempting to limit the use of the formula to a particular technological environment."

Rejection of all claims under Section 101 affirmed.

Notes:

• In Ex parte Bo Li, the BPAI reversed the rejection of a claim written in similar Beauregard format. That case could be distinguished by additional links to a machine or apparatus found in Bo Li's claims. In particular, Bo Li's claim "presents a number of software components, such as the claimed logic processing module, configuration file processing module, data organization module, and data display organization module, that are embodied upon a computer readable medium." [Link]
• In Comiskey (Revised opinion 2009), the Federal Circuit issued a remand order to the BPAI to consider whether Comiskey's claims of a "system for mandatory arbitration" are directed to statutory subject matter under Section 101.
• The BPAI opinion here relies on the following statement from the original Comiskey opinion: "the mere use of the machine to collect data necessary for application of the mental process may not make the claim patentable subject matter." Comiskey (Fed. Cir. 2007). That statement was deleted from the revised Comiskey opinion.

Comments

[curious]

101 was met in my opinion and now the analysis should continue on to 102/103

[Noise above Law]

BPAI = strong arm of the Office.

This is retribution for the various Office illegal power grabs being shot down.

Someone will once again have to tell the BPAI the difference between a general purpose computer and a computer transformed to a particular machine with the loading of software.

The next time the CAFC decides to issue an opinion (Bilski) that is exceptionally weak on the merits of the Law and cowers in anticipation of a Supreme smackdown, maybe they will consider the law of unintended consequences and just who would be more than willing to step into the power vacuum they create.

[anon]

Here is the non-Beauregard claim:

1. A method, comprising:
normalizing by a processor operands a, b, and c for a floatingpoint operation;
predicting by the processor whether result d of said floatingpoint operation on said a, b, c might be tiny;
if so, then scaling by the processor said a, b, c to form a', b', c';
calculating by the processor result d' of said floating-point operation on said a', b', c';
determining by the processor whether said d is tiny based upon said result d';
if so, then calculating by the processor said d using software; and
if not, then calculating by the processor said d using floating point hardware.

I wonder if the BPAI would have found this claim to satisfy 101 if it was written in apparatus format (e.g., A system comprising: a processor ..... and floating point hardware ....)?

[6]

"tiny" relative term 112 kk thx bye.

"The recitation of a "processor" performing various functions fails to impose any meaningful limits on the claim's scope. The recitation of a "processor" performing various functions is nothing more than a general purpose computer that has been programmed in an unspecified manner to implement the functional steps recited in the claims. The recitation of a processor in combination with purely functional recitations of method steps, where the functions are implemented using an unspecified algorithm, is insufficient the recitation of a processor does not limit the process steps to any specific machine or apparatus."

OWNED!

"Rejecting that argument, the BPAI panel determined that the Section 101 analysis is the same – regardless of whether the subject is a "manufacture" claim or a "process" claim. (Citing AT&T v. Excel (Fed. Cir. 1999)(abrogated by Bilski))."

"Applying Bilski to the "computer readable media" claim, the BPAI found that the claimed invention was unpatentable because it did not require transformation of any article nor was it tied to any particular machine. Although the claim recites a "computer readable media" and "hardware," those elements were seen as insignificant extra-solution activities. "

R E A D EM N W E E P!

LOLOLOLOLOLLOLOLOLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLLL

Hahahahahahahahahahahahahahah

"insignificant" lolololol.

[curious]

"Someone will once again have to tell the BPAI the difference between a general purpose computer and a computer transformed to a particular machine with the loading of software."

Why don't one of you computer geeks write a good law review article (even for that IP Today magazine) which we can all refer to in our PTO papers?

[Malcolm Mooney]

"Why don't one of you computer geeks write a good law review article (even for that IP Today magazine) which we can all refer to in our PTO papers?"

Right, because that teckie weckie approach worked really well to in In Re Nutjen.

[Malcolm Mooney]

"1. A method, comprising:
normalizing by a processor operands a, b, and c for a floatingpoint operation;
predicting by the processor whether result d of said floatingpoint operation on said a, b, c might be tiny;
if so, then scaling by the processor said a, b, c to form a', b', c';
calculating by the processor result d' of said floating-point operation on said a', b', c';
determining by the processor whether said d is tiny based upon said result d';
if so, then calculating by the processor said d using software; and
if not, then calculating by the processor said d using floating point hardware."

Note also: all claims reciting "if" are invalid. They are not methods. They are algorithms. There might be valid claim in their, if you sort through all of the "ifs". But a list of optional steps is not a method. Engage in this algorithm writing nonsense at your peril.

[6]

"This is retribution for the various Office illegal power grabs being shot down."

I can only hope so.

"Someone will once again have to tell the BPAI the difference between a general purpose computer and a computer transformed to a particular machine with the loading of software."

We will see. That's old school man, this is the new school. Chief Judge M has got our back. He already told congress in no uncertain terms to gt fo his back and he'd work things out. He's a man of his word, and this is what we're seeing happen.

That said, I kind of hope you're right, I want Beauregards to fall on more basic principles instead of 101. And I'd like to be the one to lower the axe. I might get famouse!

[6]

I have a question though. Since Comiskey was En banced and changed, is the original opinion still citable? As it turns out I needed it just the other day.

[Malcolm Mooney]

The Board reached the correct decision here. The mere inclusion of the phrase "by a processor" can not rescue a claim from 101 failure. It's still nothing more than an algorithm for manipulating data.

Goodnight, Irene.

And yes you could see this coming years ago. Start paying attention.

[Malcolm Mooney]

"That said, I kind of hope you're right, I want Beauregards to fall on more basic principles instead of 101."

Better yet, let it fall on numerous principles, basic and otherwise. Then there will be far less chance of resurrection by a meddling Supreme Court.

[6]

"Better yet, let it fall on numerous principles, basic and otherwise. Then there will be far less chance of resurrection by a meddling Supreme Court."

I want to be in the wiki for Beauregards throughout history as the examiner who put the beat down.

[Malcolm Mooney]

"Limiting the claim to computer readable media does not add any practical limitation to the scope of the claim."

Sweet sweet music to my ears. Finally the PTO is telling the truth about "readable-media with instructions" claims. THANK YOU. It's particular true, of course, where the applicant fails to define what "computer readable media" is. All that money spent on this thing and they couldn't even bother to fix this up.

Another hilarious joke about these claims are the claims which depend from the Beauregard claims, e.g., "25. The computer readable media of claim 18, wherein said floating point operation on said operands a, b, c is a+b*c."

It's as stoopit as "25. The high-power binoculars of claim 5, wherein the lady in window is undressing."

[6]

I should add, I don't want it to be this other fella who did nothing more than a bilski inappropriately.

"inappropriately" based on the law before the BPAI got its hands on it lol :)

[Malcolm Mooney]

So will Intel bother to appeal this piece of crap to the CAFC? I mean, what would be the point since the claims are dead ten ways til Sunday?

Maybe there are worse claims to use as a test case for determining 101 case law. In fact, I'm sure there are. But I'm also sure that these claims suck.

[6]

"Note also: all claims reciting "if" are invalid. They are not methods. They are algorithms. There might be valid claim in their, if you sort through all of the "ifs". But a list of optional steps is not a method. Engage in this algorithm writing nonsense at your peril."

I ran into this issue just last Fri. He wrote the claim without "if", but he argued as if he had put in "if". So I rejected the claim as it stood, and suggested putting in the "if ..." limitation but I didn't know if the "if ..." limitation would cure the claim or not. I also suggested the "if" limitation would die from 102 in that app as well but that is besides the point.

[6's citing question]

6,

No, you have to cite to the revised opinion. That's the whole point of revising.

[Leopold Bloom]

"Note also: all claims reciting 'if' are invalid. They are not methods. They are algorithms."

That's an interesting assertion, Malcolm. Do you have support for this that you would care to share?

[Limiting Patentability = Shrinking Public Domain]

Please let's not derail on a discussion of whether "if" is useable claim language. It is.

Don't buy into Mooney's latest attempt to disrupt useful dialogue and suppress information.

[jim]

"I have a question though. Since Comiskey was En banced and changed, is the original opinion still citable? As it turns out I needed it just the other day."

The fact that you need to ask this question is but one of the MANY reasons why you should do your job by following the MPEP and Office instructions, rather than improvising. You're an examiner, not an attorney. This is not a put-down - these are different functions. Your job as examiner is already difficult enough, and our job as prosecutors is needlessly complicated when examiners decide to get creative.

[William Morriss]

So now articles of manufacture have to be tied to a specific machine or achieve a transformation of some other article? How about compositions of matter: do they have to pass the machine or tranformation test as well?

[Malcolm Mooney]

"Note also: all claims reciting 'if' are invalid. They are not methods. They are algorithms."

That's an interesting assertion, Malcolm. Do you have support for this that you would care to share?"

My support is that if the novelty of the claim resides in the "if" then the claim is unpatentable as an algorithm.

If the novelty resides elsewhere, then the claim is actually a claim to two independent methods and must be drafted as such (i.e., as two claims) to avoid indefiniteness, i.e., must the step after the "if" be practiced to infringe or anticipate the claim)?

Watch for it.

[Malcolm Mooney]

We can sum up much of the professed confusion in this area by simply recognizing a basic fact: computers are different.

For those who beg to differ, I urge you to recall the similar discussion we had here regarding "signals," where some commenters insisted (wrongly) that signals were just another composition of matter, like bicycles and typewriters, and no less an authority than Einstein said so.

There is going to come a day when human or pet-like robots are readily made and programmed and available for mass consumption. Absent changes to the patent system, folks are going to be filing applications left and right about "A robot, wherein said robot is programmed to do this, that and the other thing." And this, that and the other thing are simply going to be the sort of things that people have been doing forever, although robots may be able to some of those things faster (like thinking) or without tiring (like humping).

The important innovations are not going to be in THOSE stoopit patent applications, however, which are already obvious in view of computers and reams of science fiction books. It's going to be in the discovery and development of materials and systems that allow robots to look and feel real, and that allow robots to function endlessly without constant battery changes.

[Leopold Bloom]

So we're abolishing software-related patents because we're afraid of humping robots? Fascinating...

[question]

"a conveyor which directs containers in a first direction if the containers were determined to have a defect and in a second direction if the containers were determined to be free of the defect"

claim element uses IF -- must be an algorithm

[6]

"The fact that you need to ask this question is but one of the MANY reasons why you should do your job by following the MPEP and Office instructions, rather than improvising. You're an examiner, not an attorney. This is not a put-down - these are different functions. Your job as examiner is already difficult enough, and our job as prosecutors is needlessly complicated when examiners decide to get creative."

I kno, but they don't give me the necessary tools to handle the bs you attorneys routinely put in apps in the MPEP. I asked my boss what to do and he's wishy washy. They make me make decisions. And after I've already been exposed to the caselaw what else am I supposed to do? Issue a patent that does not appear on examination to be entitled to a patent? You want me to follow the law correct? I have to follow the issue law as well as the 101 etc laws.

Be fair to me man, I shouldn't have to deal with this mess. Drafters/prosecutors should CUT IT OUT TO BEGIN WITH. In most cases they're well aware of how to claim the method/device properly, but claiming it properly leads to a big fat 102/103, so then THEY try to improvise. And that is what lands me into having to improvise.

[Lionel Hutz]

This is a terrible decision. These claims should have survived 101.

[Lionel Hutz]

algorithms should be patentable.

[6]

"The fact that you need to ask this question is but one of the MANY reasons why you should do your job by following the MPEP and Office instructions, rather than improvising. "

I should add that I was pretty certain that I did have to cite the new opinion, but I needed the old one, and so far as anyone knows I've never read Comiskey 2.0.

Though, let's presume that they did know it, I would still argue the same logic as in Comiskey 1.0 and then let the BPAI/Appeal conference decide it.

[jim]

"You want me to follow the law correct? I have to follow the issue law as well as the 101 etc laws."

Actually, I think everyone would be happier if you would simply follow the MPEP, supplemented as necessary by other official PTO guidelines.

[Countmaster]

6: "I kno, but they don't give me the necessary tools to handle the bs you attorneys routinely put in apps in the MPEP. I asked my boss what to do and he's wishy washy. They make me make decisions. And after I've already been exposed to the caselaw what else am I supposed to do? Issue a patent that does not appear on examination to be entitled to a patent? You want me to follow the law correct? I have to follow the issue law as well as the 101 etc laws."

Just look at the file history of the application that led to the caselaw. Copy and paste from that Examiner's final rejection. If appealed, copy and paste from that Examiner's brief. Easy counts!

[anonymous_rakgcain]

BPAI today issued another decision - Ex Parte Srinivas Gutta - citing the Bilski decision.

http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd20083000-01-14-2009-1

[Actual Inventor]

Malcolm Mooney Wrote:

My support is that if the novelty of the claim resides in the "if" then the claim is unpatentable as an algorithm.

If the novelty resides elsewhere, then the claim is actually a claim to two independent methods and must be drafted as such (i.e., as two claims) to avoid indefiniteness, i.e., must the step after the "if" be practiced to infringe or anticipate the claim)?

Mr. Malcolm:

As an "Actual Inventor" I would like to inform you that you are not allowed to dissect claims into individual elements of Novelty for purposes of 101 eligibility. Novelty is a 102 issue. Furthermore you must take the claims as a whole when determining 101 eligibility. My recommendation to you is to read a case called Deihr and another the enbanc case called Bilski. I hope this was helpful and in clearing up your confusion.

[anonymous_rakgcain]

BPAI today issued another decision - Ex Parte Srinivas Gutta - citing the Bilski decision.

http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd20083000-01-14-2009-1

[birth, school, work, death]

Yes, cut and paste is the examiner's favoritest invention of all time. More better than anything!

[Actual Inventor]

Mr. Malcolm:

As an "Actual Inventor" I would like to inform you that you are not allowed to dissect claims into individual elements of Novelty for purposes of 101 eligibility. Novelty is a 102 issue. Furthermore you must take the claims as a whole when determining 101 eligibility. My recommendation to you is to read a case called Deihr and another the enbanc case called Bilski. I hope this was helpful and in clearing up your confusion.

[Malcolm Mooney]

Claim in Srinivas Gutta is a classic example of computer-implemented obvious doodoo:

1. A computerized method performed by a data processor for
recommending one or more available items to a target user,
comprising the steps of:
obtaining a history of selecting one or more available items by
at least one third party;
partitioning a third party selection history into a plurality of
clusters, wherein each cluster contains items that are closer to
the mean of the cluster than any other cluster from among the
plurality of clusters,
modifying a target user's history of selecting said one or more
available items with one or more third party clusters to produce
a modified target user's history;
processing the modified target user's history to generate a target
user profile, wherein the modified target user's history
characterizes preferences of the target user as modified to
reflect preferences of the third party;
generating a recommendation score for at least one of said
available items based on said target user's profile; and
displaying the recommendation score to the target user.

WOW!!!! You can recommend stuff to someone on the basis of what other people like. That's old. BUT THIS METHOD USES A POWERFUL COMPUTER BRAIN, MY FRIENDS!!!!!!

Here is one interesting part of the decision, however: "Regarding claim 1, the step of “displaying” need not be performed by
any particular structure. It may be accomplished simply by writing the
resulting score on a piece of paper. A conclusion that such post-solution
activity is sufficient to impart patentability to a claim involving the solving
of a mathematical algorithm would exalt form over substance."

I would argue here (if I was Gutta) that the claim does not merely recite "displaying" but rather "displaying ... to the target user." That communication step is a significant transformation.

Where I would take issue with this sort of garbage generally is that it is not a tangible, concrete result. It's mere data manipulation. The number is meaningless, or has no more meaning than any other number that might be generated. "Here's the score for items that you won't like. Here's the score for items of modest interest. Here's the score for items of less than modest interest. Here's an item that was a randomly picked." So what? Everybody knows that "scores" can be generated and ranked for any set of any thing in a million ways. They are all useful to somebody. The PTO needs to be examining this bullshxt?

Algorithms dressed up like machines. Tear the sheep's clothing off, burn it and put a bullet in the wolf's head.

[Malcolm Mooney]

"As an "Actual Inventor" I would like to inform you that you are not allowed to dissect claims into individual elements of Novelty for purposes of 101 eligibility."

Bets?

[Malcolm Mooney]

Powerful Computer Brain

http://reflectionsonfilmandtelevision.blogspot.com/2007/05/retro-toy-flashback-62-merlin.html

[curious]

Ex Parte Srinivas Gutta (mentioned in a comment above) -- the Board issued new rejections too -- it is a never ending process at the PTO

[An Examiner]

Between all the SPEs and QASs I've recently spoken to, all the unofficial and official memos I've gotten the past few weeks, the MPEP, and the BPAI's recent decisions, I can safely say that I have no clue when to apply a computer related method 101 rejection. I vote we start from scratch with the tests and criteria.

[Malcolm Mooney]

Examiner, here's my test:

Does the body of the claim, excluding the last step and the preamble, recite a bunch of steps without recitation of structure using words like "providing" "determining" "quantifying" "clustering" "processing" "characterizing" "partitioning" "ranking" "ordering" etc.?

If so, then kill it.

If not, then question two is: does the recitation of structure include only terms like "system" "processor" "computer" "calculator" or some fake terms like "ranking means" etc.?

If so, then kill it.

If not, does the preamble recite a "computer readable medium comprising instructions" or something to that effect?

If so, then kill it.

After that, it might still be killable, but it may require a bit more effort. Hope that helps.

[Yikes!]

MM wrote:

"Here is one interesting part of the decision, however: "Regarding claim 1, the step of “displaying” need not be performed by
any particular structure. It may be accomplished simply by writing the
resulting score on a piece of paper. A conclusion that such post-solution
activity is sufficient to impart patentability to a claim involving the solving
of a mathematical algorithm would exalt form over substance."

I would argue here (if I was Gutta) that the claim does not merely recite "displaying" but rather "displaying ... to the target user." That communication step is a significant transformation."

Sorry, no dice.
Displaying data (like gathering data) is insignificant extra-solution activity -- not patentable.
Machine prong: you didn't claim a particular display.
Transformation prong: doing anything to generic data is not patentable subject matter. Bilski citing Abele.

MM, the BPAI has shrunk the universe of statutory subject matter far further than you ever dreamed.

[Yikes!]

What if the claim read:

"printing out the (whatever) using a Hewlett Packard HP-4100 Laserjet printer."

Would that suddenly bring the claim within the realm of 101 subject matter?

This is ludicrous.

[Malcolm Mooney]

"Sorry, no dice.
Displaying data (like gathering data) is insignificant extra-solution activity -- not patentable."

Yikes, you need to read more carefully because I agree that displaying data, by itself, is insignificant unless the "displaying" is defined in the spec to REQUIRE the transfer of tangible information to another.

Here's another question that arises from these crappy claims: let's say that Gutta sees my computer screen with some merchandise and a "recommendation score" next to it. What's to prevent him from dragging me into court and forcing me to disclose what my computer is doing?

Because let's be clear: calculating a dumbxss number and displaying it is all this method achieves.

Nobody benefits from patents on this computer-implemented crapola except trolls and software patent attorneys. Hence the present efforts to crush them out of existence, anyhow, anyway.

If you think they aren't going to go extinct, think again. This is not the time to "reflect" or "take pause." It's time for radical reorganization and serious life planning.

[SF]

Displaying the result of an abstract calculation on a monitor doesn't make the overall invention meaningfully practical. (Remember Abele?) Putting the instructions to perform that abstract calculation in memory or a hard drive doesn't make the overall invention meaningfully practical, either.

Why not disclose and claim a practical use?

[An Examiner]

MM:

Here's what I generally do...

Regardless of the preamble or statutory category, is every limitation functional whargarbbl that lacks structural inter-relationships?

If not, no 101 issues.

If so, does the preamble recite structural interrelationships, more than a nominal "apparatus", "device", "system", etc.?

If so, no 101 issues.

Otherwise, it's a 101.

Now, under the second test I treat Beauregard claims as meeting the structural inter-relationships requirement if it recites something similar to "A computer readable storage medium having embodied thereon program/instructions, that when executed by a processor, cause the computer to perform the following steps:"

Are we saying the this "particular machine" requirement (which is slightly stricter) is replacing the "structural inter-relationships" requirement, and therefore recitation of computer readable storage medium + processor is not enough to pass my 2nd test?

[6]

"MM, the BPAI has shrunk the universe of statutory subject matter far further than you ever dreamed. "

I concur with this. The bilski I sent out was not for a computer implemented method and was a method that I would not have dreamed of 101ing before bilski.

Though, MM may have dreamt this already, his test is pretty straightforward in its implications.

On the subject of dreams, I dreamt last night that I was walking into my office and it was dark in my office then I turned around and someone I thought was my spe tazed me, my thought as I blacked out (and woke up) was "I'll not allow that application". Funny enough, I felt like I had just gotten electrocuted when I awoke it was the weirdest thing that's happened to me in quite awhile. Those of you who have touched a live wire before know the feeling, but I was nowhere near an outlet.

[Malcolm Mooney]

The problem with the magic words for getting out of 101 is that it creates a giganto loophole where you can just insert into the claim some baloney "particular machine" limitation ("wherein said process takes place in a structure, wherein said structure includes a furnace or air conditioner for modulating air temperature" -- look, the method is tied to a particular machine!!).

It's the same with the argument that ANY "transformation" occuring ANYWHERE in the cliam gets the claim out of 101. It just creates a loophole to argue that this, that or the other plainly non-inventive step ("wherein the user is breathing") is a "transformation".

This CAFC and the PTO aren't interested in playing "whack-a-mole". They are interested in full-scale mole-acide.

[fisherman]

" giganto loophole" can be closed with a 102/103 rejection

[Software patents are dead]

Software patents are dead, so let's fire all the software and business methods art examiners and let everyone know what the new rules are. The PTO backlog goes down, too. Great!

People with software inventions can now rely on trade secret protection, and those looking to learn about such technologies can rely on academic papers.

Probably not what Congress or the Federal Circuit intended with section 101 and Bilski. Mooney, 6 and PTO management can rejoice though.

[Lowly]

It is just baffling to me to see an agency (the USPTO) seek out its own destruction.

The USPTO's goal is apparently for people to stop filing patents. Once they finally achieve that goal ... then what? Bye bye USPTO.

I also love examiners like 6k effectively cheering for developments in law that may someday cost them their jobs. Lulz.

All that aside, it seems to me that IBM was trying to patent an algorithm by throwing in some magic language.

[Malcolm Mooney]

"The USPTO's goal is apparently for people to stop filing patents. Once they finally achieve that goal ... then what? Bye bye USPTO."

Yes, we all remember before State Street was decided there were a couple years without any patent applications filed at all.

Methinks some folks are a tad too invested in certain assumptions. Sort of like how there are still some folks out there who think that the best way to jump start the economy would be to start giving everybody huge lines of credit -- because it worked before!!!!!!!

[Malcolm Mooney]

"" giganto loophole" can be closed with a 102/103 rejection"

Maybe now it can, thanks to KSR.

See how it all fits together? A seamless web ...

http://www.youtube.com/watch?v=DqpLF-KS8BI

Btw, that's Judge Bryson with the rock.

[6]

"Once they finally achieve that goal ... then what? Bye bye USPTO."

We won't acheive it. :(

Today I got an AF. He amended substantially, so it won't be entered, but I always thought that this particular case should be an ez googler, but all previous googles failed due to certain terms mixing the results up with other irrelevant things. But I figured, meh, what's 10 seconds of my time? I'm happy to report yet another 10 second google's success.

I'm telling you, I'm getting better and better at searching.

Now, do I cite the reference NOW, or do I wait for the RCE? >:) Officially prosecution is closed...

Now taking votes!

[curious]

I would cite the reference now.

[AllSeeingEye]

" That communication step is a significant transformation."

Actually, I'm glad that Mooney posts his utter garbage here on a regular basis. Seasoned practitioners know better than to listen; while the uninformed, who may actually take his posts seriously, will flail and flounder and eventually need the services of a REAL patent attorney.

Thanks for confusing everyone with your garbage Mooney.

[Mooney posing as]

Actually, as many of you have already figured out, I am not a patent attorney at all, but just a sad software developer who decided to start posting a bunch of garbage because the idea of "software patents" scares me so much.

I don't really understand what software patents are, or whether there really is such a thing, but I've read a little about patent law, and have been following it for a while and so I can make some reasonably convincing posts here to try to annoy real patent attorneys.

[Lowly]

6, do the right thing and cite the reference now.

You know, it's amazing. I continually get actions with terrible art, yet you're able to consistently find dead on 102 art in 10 seconds with google. ;)

[Malcolm Mooney]

"Seasoned practitioners know better than to listen; while the uninformed, who may actually ..."

Translation: "Help me! Help me!"

[insert sound of rock hitting earth]

[6]

The voting stands at 4 examiners vs 2 presumed attorneys. Results in the morning, and to make it more fair for the attorneys (or others wanting the ref sent out) I'll stop asking examiners.

[curious]

why do the examiners say "no"?

[Huh?]

Wait, what does Bilski have to do with claims on manufactures or machines? The board is reaching on this one.

[Fur Sur]

One thing's for sure.

Nothing's for sure.

[patent.drafter]

"purely functional recitations of method steps, where the functions are implemented using an unspecified algorithm, "

bull5h17!

here's the pseudo code to show us why:

1. a method comprising

normalizing by a processor operands a, b, and c for a floatingpoint operation;

= "for each (a b c) let each / max (a b c)"

predicting by the processor whether result d of said floatingpoint operation on said a, b, c might be tiny;

= "if max (a b c) / min (a b c) < threshold "

if so, then scaling by the processor said a, b, c to form a', b', c';

= "then max (a b c) * scalar"

calculating by the processor result d' of said floating-point operation on said a', b', c';

= "let d' perform (a b c)"

determining by the processor whether said d is tiny based upon said result d';

= "if d' < otherthreshold"

if so, then calculating by the processor said d using software; and

= "then let max(a b c) / scalar"
"softdo (a b c)"

if not, then calculating by the processor said d using floating point hardware.

= "else perform (a b c)"

So I used a fake corrupt mashup of lisp and c. Whatever.

Point is, the claim language in itself specifies the algorithm. Details of implementation are within the ordinary skill of the art. The BPAI broad-brush obscures that essential point about software, which MM keeps trying to make in his distinctly ineloquent fashion.

[Actual Inventor]

"As an "Actual Inventor" I would like to inform you that you are not allowed to dissect claims into individual elements of Novelty for purposes of 101 eligibility."

Malcolm Mooney |wrote back:

Bets?

Mr. Malcolm.

As an "Actual Inventor" I must surely will take that bet. Now, please cite the statue or case allow that allows you to dissect claims into novel and non novel elements for 101 purposes.

[An Examiner]

I always get a kick out of people who refer to "software" patents. We don't issue software patents, last I check. What you meant to say was "functionally claimed" patents. I'm an advocate for defining inventions by their functionality. Long gone are the days when structure was the sole definer of the functionality.

[question]

An Examiner -- so if a large piece of machinery is claimed only using MPF elements, that would be a "functionally claimed" patent

[Malcolm Mooney]

"I'm an advocate for defining inventions by their functionality."

No offense, but that's deeply retarded.

[Malcolm Mooney]

"We don't issue software patents"

LOL.

[Malcolm Mooney]

All right then, I just filed my application on a system for shooting down seabirds that are in danger of flying into a passenger jet's engines. It's similar to shooting quail on your ranch except it uses GPS, a laser and A POWERFUL COMPUTER BRAIN to increase the accuracy.

I think there's a need for this. The key to patentability is the Meal Catcher (TM) which provides the unexpected result of lowering the expense of providing fresh, diced poultry to the jet's crew and passengers.

[food for thought]

unless you have filed already, you have probably jeopardized your foreign patent rights on your new invention, Mr. Mooney.

[AllSeeingEye]

For the experienced Patently-O reader, any Mooney post is the sad and desperate cry of a poseur seeking help and attention. Particularly when the post deals with "software patents."

But ladies and gentlemen (and you too Mooney) I have become more concerned recently. Just look at the recent proliferation of references to bullets and killing.

My recommendation - be afraid, be VERY afraid.

[BuffaloBill posing as Mooney]

It puts the lotion on its skin...

[Conservative in Exile]

Given the importance of computer technology to the US economy, it is simply outrageous that Congress continues to stand silent and allow the USPTO, BPAI, CAFC, and SCOTUS to effectively enact law relating to patents through these decisions. We are far beyond "interpreting" and "applying" law at this stage. These judges are effectively enacting substantive law. I suppose we should expect such passivity from the do-nothing Congress of Reid and Pelosi, but what about computer industry lobbyists and their trade associations? They appear utterly ineffective to turn back the tide, which ought to embarass these groups and their members. They are setting the stage for a collapse of the industry as there will be no legal tool to stave off foreign competition. If not Japan and Europe, then China will figure out that it can infringe here freely and use its far lower domestic labor rates to price US innovations out of existence. The USPTO through its executioner the BPAI is simply using 101 to avoid the hard, time-consuming work of searching for an applying art under 102 or 103.

[MaxDrei]

Well, Conservative, as far as I can see, from my location in mainland Europe, the USA dominates commerce, throughout the world, most strongly in those areas of human creativity where patent protection is NOT available (Bill Gates, Mr Starbuck(?),Ray Croc, Michael Jackson and friends, Hollywood, Coke and Pepsi, Marlboro). When it comes to building autos, drugs or computers, I don't see so much domination. So, thinking wealth-creation tomorrow, do you really want more patents? Be careful what you wish for.

[DavidE]

This discussion begs the question, so here it is. Why is software patenting an important thing? It seems that almost all the attorneys here assume a need for it, but I've noticed that no one has actually spelled out the need, so far as I can see. Convince us that patent protection is required to protect innovation in the software industry! I remember a time when software patenting did not exist meaningfully and yet the industry boomed.

In my view, there appear to be significant problems with software patenting as currently practiced.

I'll start with two points. First, there is a lack of disclosure. When the software is claimed in functional terms, the applicant is really only protecting the end result, not the specific method of implementation. Where's the quid pro quo? Second, aren't you concerned about cross-over protection between patent and copyright regimes?

I would be happy to read serious replies.

[Noise above Law]

"The USPTO through its executioner the BPAI is simply using 101 to avoid the hard, time-consuming work of searching for an applying art under 102 or 103."

As I posted earlier, "BPAI = strong arm of the Office" and "Someone will once again have to tell the BPAI the difference between a general purpose computer and a computer transformed to a particular machine with the loading of software."

The BPAI has taken dicta from In re Bilski and pushed where Bilski simply did not go. Since In re Bilski did NOT go to the place in question, prior existing Law still holds. We only need to reference In re Alappat, as the critical section is very much still Law. The BPAI is once again trying to enforce a view that has been repeatedly smacked down. The wielding of the sledge hammer of 101 rather than the careful analysis under 102/103 and I would add 112 will also be smacked down. The CAFC and the Supremes should note the repeated and wanton disregard the Office and BPAI displays as it continues to push its agenda.

"Alapat admits that claim 15 would read on a general purpose computer programmed to carry out the claimed invention, but argues that this alone also does not justify holding claim 15 unpatentable as directed to nonstatutory subject matter. We agree. WE HAVE HELD THAT SUCH PROGRAMMING CREATES A NEW MACHINE, because a general purpose computer ineffect becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software. In re Freeman, 573 F.2d 1237, 1247 n.11, 197 USPQ 464. 472 n.11 (CCPA 1978); In re Noll, 545 F.2d 141, 148, 191 USPQ 721, 726 (CCPA 1976); In re Prater, 415 F.2d at 1403 n.29, 162 USPQ at 549 n.29 [emphasis added]

[MaxDrei]

Patent and copyright aren't mutually exclusive. A new product comes loaded with IPR: patent, trademark, design, know-how, trade secrets, copyright. Europe recognises patentability when the inventor has solved an objective technical problem with a new and non-obvious combination of technical features and also enables the invention over the full scope of the claim. Occasionally it's inventive even to identify the problem, whereupon the means of solution are obvious but you can still get a patent. All of these A publications enrich humankind and (was it Rich J.) give the public something it didn't have before (rather than take away from it something it had already). Clients have been misled by some lawyers, into thinking one can circumvent these fundamentals.

[Noise above Law]

DavidE,

You raise valid points, but I believe you miss the gist of the argument here.

The uproar appears to be in the mis-use of the law. Using 101 as a wholesale bar to patentability is simply a mis-use of the law. The effects of such mis-use are well worth the commotion, as not only software and business method patents are affected. MM in particular may realize that the 101 sledgehammer will even affect his world view and post such ridiculous arguments that the extra solution activity of presenting results saves the patentability of those ideas in his domain (which will not survive the hammer blow of 101).

Also, the software boom really took off AFTER patenting was allowed. Such patenting allowed many players to be able to aquire financing and that business model is now in jeopardy. This, however, is a non sequitor to the real issue of the abbuse of law.

The significant problems you highlight may well be real. However, disclosure and quid pro quo SHOULD be handled under separate sections of the law - NOT 101. The Law HAS provisions for these problems in sections 102, 103 and 112. To wield the sledgehammer of 101 because the Office has failed in regards to sections 102, 103 and 112 will only compound the problem and make matters worse for ALL arts.

This just highlights the problem in that the Office is trying to make up Law to push its agenda, and that agenda is in opposition to the mandated cause that the Office should actually be following.

[MaxDrei]

Noise makes a good point, to my mind. A PC, programmed with a new program, is itself new and a "particular" machine. Isn't it?

Europe would surgically excise the claim using 103, with its delicate instrument called "technical". Even after KSR, US 103 lacks any such grim reaper, so the BPAI is obliged instead to resort to the crude and brutal 101 sledgehammer.

[Harm Fines]

In the BPAI opinions, why don't they list the Examiner's name? The BPAI decision is whether the examiner erred and listing the examiner's name would allow us to better respond to that same examiner when they make the same "mistake" in a future Office Action.

[Michael J. Feigin, Esq.]

The claims in this application are terrible. I wouldn't have expected it to be allowed even pre-Bilski.

[anonymous]

Max,

But if the claim was technical, novel, and nonobvious, then it would be allowed, correct?

Ok, so what is technical?

[re: harm]

Harm Fines:

Try using PAIR.

[Tyrone Slothrop]

"You really think that just because you have an idea, it belongs to you?"

Jeff Bridges as Obadiah Stane in “Iron Man”

Ideas aren't patentable. Useful applications of ideas are potentially patentable. If a "mental" process doesn't satisfy 101, why should a "mere" computer implementation of that process be patentable, either in terms of a computerised method, a programmed machine or a program encoded on a data carrier? Given 101-ineligibility in the absence of computerisation, does it really matter whether you strike down "mere" computer implementation on the basis of an extension of 101 or of 103 (taking it as a given that "mere" computer implementation of any mental process is inherently obvious)?

[Tyrone Slothrop]

Technical is as technical does. Stop me if I'm being too technical.

[anonymous]

Harm Fines writes:
----------
In the BPAI opinions, why don't they list the Examiner's name? The BPAI decision is whether the examiner erred and listing the examiner's name would allow us to better respond to that same examiner when they make the same "mistake" in a future Office Action.
---------

If you believe that an examiner has made a mistake and that there is a BPAI decision that supports your view and corrects a similar examiner mistake, then there isn't any barrier that I'm aware of to citing that BPAI decision to the examiner.

Adding the examiner's name would only make it easier for the examination process to become personal. Based on the comments on this site, I suspect that it would do more harm than good.

[EEJD]

" If a "mental" process doesn't satisfy 101, why should a "mere" computer implementation of that process be patentable, either in terms of a computerised method, a programmed machine or a program encoded on a data carrier? "

From a policy perspective, my opinion is that in a lot of cases if the claimed method were performed as a "mental process" it would take so long to perform that it would not be "useful." In those claims the claimed process is only useful when performed by a machine.

Unfortunately that begs the question: how long should a given process take before it is not useful? I would not want Examiners making that judgment.

[Babel Boy]

Non-precedential???? WTFk? You talk about whack-a-mole. Michel writes Bilski, turns the world upside down and turns the lights off at the same time by leaving for future cases to decipher essential terms like "particular". Now BPAI does that in an opinion that is NON-PRECEDENTIAL????

Also, is the quote cut/pasted incorrectly or has the PTO extended its requirement that English must be a second language from examiners to BPAI judges:

"The recitation of a processor in combination with purely functional recitations of method steps, where the functions are implemented using an unspecified algorithm, is insufficient the recitation of a processor does not limit the process steps to any specific machine or apparatus."

Huh?

[MaxDrei]

Anonymous, if something has "technical character" it can meet Euro 101. A PC has technical character, a method of doing business does not. Euro-103 is about "technical effect" and solutions to objective technical problems. GATT-TRIPS offers patents for inventions "in all fields of......technology". The problem of, say, deciding what DVD to buy, or what to cook for dinner, is not "technical". The EPO has no Binding Precedent. So, the concept of "technical" can evolve with the march of technology, and is doing. There is an ongoing consensus view, that emerges from more than a thousand unappealable EPO Appeal Board Decisions, per year.

[anonymous]

Thanks, Max.

So would a new general purpose algorithm that has wide application be patentable? I'm thinking of the building-block type stuff (improved/faster sorts, parsing, tricky ways of converting or calculating something) that would be useful to just about every computer application.

[DavidE]

Noise, I think you're probably right, but I'm still grappling with why 101 should be considered in a vacuum from the other sections. The "new and useful" language, to me, signifies that we need to know WHAT the applicant invents before we can evaluate it based upon 101 grounds. If we can't even determine what the applicant actually created, how can we say it is fine under 101?

That said, I think I'll be spending some significant time shortly going back over a lot of 101 case law; to me, either a lot of people have lost the forest for the trees or I haven't done enough research.

Regardless, the case here seems to be closing the beauregard loophole; could you give some examples of how this affects anything other than business methods/software?

[MaxDrei]

Anon: do you see your algorithm as such, as perhaps a "mathematical method"? That too is in the explicit bar list of Art 52(2) EPC so, sorry, no technical character, unless you can dress it up somehow. The Euro-specialist patent drafters are of course pushing the envelope, even as we correspond. Beauregards, signal claims, all that sort of stuff, it's meat and drink to the specialised Euro-drafter

[Tyrone Slothrop]

"So would a new general purpose algorithm that has wide application be patentable? I'm thinking of the building-block type stuff (improved/faster sorts, parsing, tricky ways of converting or calculating something) that would be useful to just about every computer application."

Excellent question, I'm glad you asked it.

As long as the generalised algorithms are concerned with information processing in the abstract - no, but I'd struggle to justify why that kind of stuff isn't considered "technical".

[MaxDrei]

In Euro-101, the word "technical" is a convenient portmanteau word to reference the longish list of statute-barred things in Art 52(2) EPC. European practitioners know that one has to put a contextual meaning on "technical". I think we all agree that, shorn of context, acontextually, a word means anything you want it to mean. And everybody's got an "agenda" here.

[Tyrone Slothrop]

In fact, this question ties in with one of the questions that the President of the EPO has referred to the Enlarged Board of Appeal:

"Q.4(A)Does the activity of programming a computer necessarily involve technical considerations"

[Malcolm Mooney]

"The claims in this application are terrible. I wouldn't have expected it to be allowed even pre-Bilski."

And they never will be allowed, no matter what, because they are terrible.

All this talk about 101 being abused blah blah blah ruin patents for everybody blah blah blah is just a Big Lie. As if nobody ever heard of distinguishing cases based on their facts. Getting rid of crap software patents and disgustingly broad "claim the universe" biotech diagnostic claims hardly means the end of patenting.

Rather, it's the BEGINNING of an era where the task of advising clients and preparing decent patent applications becomes a professional endeavor once again, and not a playground for hacks and wankers who would prefer that the PTO remain a cheap lottery with Big Prizes handed out randomly just to keep all the kiddies happy.

[Malcolm Mooney]

"The problem of, say, deciding what DVD to buy, or what to cook for dinner, is not "technical"."

But ... but ... my method used a POWERFUL COMPUTER BRAIN!

/desperate former inventor off

[Malcolm Mooney]

1. A method for dynamically generating a privacy summary comprising:generating a profile for a user;receiving one or more privacy setting selections from the user associated with the profile;updating the profile associated with the user to incorporate the one or more privacy setting selections; andgenerating a privacy summary for the profile based on the one or more privacy setting selections.

Yes, that claim was actually filed by Facebook. No misconduct there?