A Computer Encompassing a Human

By Dennis Crouch

Ex Parte Ciprian Agapi, 2013 WL 6039024 (PTAB 2013)

The PTAB continues to decide a large number of subject matter eligibility issues. In this case, IBM is attempting to patent a "computer implemented" method and system for producing, brokering, and distributing digital content. The examiner rejected the pending claims under 35 U.S.C. § 101 as encompassing (1) a human organism and (2) an abstract idea, either of which is sufficient to render the claims unpatentable. The method of claim 1 includes ten steps that basically follow the process shown in the flowchart below. Claims 22 and 23 offer the same substantive limitations in the form of a "machine-readable storage" and "computer-implemented system" respectively. The claims do provide for "computer implemented … distribution" and "digitally conveyable content" but do not otherwise claim any particular technological implementation.

In interpreting the claims, the PTAB basically found that the claim form was critical for its analysis. In particular, the Board found that the system claim (23) is unpatentable because it encompasses a human being or group of human beings.

[W]e agree with the Examiner that the claimed content systems encompass a human being or a group of human beings, when given the broadest reasonable meaning in light of the Specification. We see nothing in the meaning of system itself or the Specification that would preclude these systems from being reasonably construed as encompassing a human being or a group of human beings. Further, we note that the Specification describes embodiments where these systems include both humans and computers, as well as, embodiments where these systems are fully automated.

In considering the machine-readable medium claim (22) and the method claim (1), the Board found that neither "reasonably encompass" human beings. Rather, the one is directed to "an article … that causes a machine" to act and the other is directed to the "use [of] human interaction but [does] not encompass the humans themselves."

Regarding the abstract idea, the Board found that the method claim (1) failed the machine-or-transformation test since it neither required a "particular" machine and because the "mere manipulation or reorganization of data . . . does not satisfy the transformation prong." CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011).

[Update] According to the examiner, the only claims that passed subject-matter-eligibility muster were those written in Beauregard form and directed to software stored on a machine readable device. However, [as LB correctly points out in the comments], the Board found cause to reject those as well – holding the claims are unpatentable because they closely track the unpatentable method and system claims. In addition, the Board also found the claims unpatentable as ineligible signals since the storage media could be a transitory signal.

http://e-foia.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd2011010208-11-12-2013-1

50 thoughts on “A Computer Encompassing a Human

  1. 11

    “In addition, the Board also found the claims unpatentable as ineligible signals since the storage media could be a transitory signal.”Nuitjen needs to be overruled. These are signals that have been altered by the hands of man (they are clearly manufactures), and the ‘transitory’ argument is untenable to anyone who who can look up into the sky on a clear night.

  2. 10

    information protected under confidentiality agreement and/or privacy lawsThe fact that anyone would be compelled to include this as a “limitation” in a patent claim is a sure sign that our patent system is completely broken.

    1. 10.1

      Throwing the baby out with the bath water again? Don’t confuse substandard advocacy with a broken system. Then again, isn’t that your intent?

      1. 10.1.1

        Don’t confuse substandard advocacy with a broken systemDont confuse “ordinary advocacy” with “substandard advocacy.”There is nothing at all unusual about such limitations in contemporary patent claims in the so-called “computer-implemented arts.” Similar limitations are relied on regularly by applicants and appear in patents that are junked (like this one) just as often as they appear in patents that are asserted all the way up to the Federal Circuit.

  3. 9

    The claims do provide for “computer implemented … distribution” and “digitally conveyable content” but do not otherwise claim any particular technological implementation.It’s 2013. There is nothing “technological” about “digitally conveyable content.” All information is “digitally conveyable.”Likewise, the use of a computer to “distribute” information is no more “technological” than the use of a pencil and paper to distribute information.This has been true for a long time now. Can we please stop pretending otherwise?

    1. 9.1

      A machine processing information. Not abstract. Sitting there doing useful work. Processing information takes time, energy, and space. The claims convey to one skilled in the art a definite set of solutions. Each solution is a machine that perform useful work.The fact that a machine is known does not make it not a machine.

      1. 9.1.1

        The fact that a machine is known does not make it not a machine.Right. Of course, we’re talking about patent claims and what kinds of inventions can be protected with patent claims. “Copyrighted content” doesn’t become any less abstract for patenting purposes when it’s “distributed” by an old machine. It doesn’t matter if the old machine “uses energy”, nor does it matter if the old machine is sitting on a judge’s desk.

      2. 9.1.2

        Well for heaven’s sake NWPA, why didn’t you tell them all about it, there’s been a horrendous mix up!

    2. 9.2

      All information is “digitally conveyable.”Hey … even a blind squirrel can find a nut. This is one reason (of the many) why I didn’t like the claim language. Digitally conveyable <> digital content. They are not one in the same. Had the claims recited “digital content” then I have very good arguments that most of the systems are necessarily tied to machines.Likewise, the use of a computer to “distribute” information is no more “technological” than the use of a pencil and paper to distribute information.Unfortunately, blind squirrels tend to quickly lose the nuts they find. Distributing information with a computer is far, far, far, far different than distribution information with pencil and paper. It requires far more technology — unless, of course, you believe in magic.

      1. 9.2.1

        Distributing information with a computer is far, far, far, far different than distribution information with pencil and paper.Not for the purpose of patent law. Not in 2013. Nor in 1990 for that matter. They are both just old ways of distributing information.Of course you know this already. But go ahead and pretend that a computer is something sooper dooper special and way better than a pencil and paper. Because it costs more to make one! Or something.

        1. 9.2.1.1

          First you write “the use of a computer to ‘distribute’ information is no more ‘technological’ than the use of a pencil and paper to distribute information. Then you write “They are both just old ways of distributing information”Can we say GOALPOST MOVING? I thought so.But go ahead and pretend that a computer is something sooper dooper special and way better than a pencil and paperPretend? I can only wish you believed they were the same and conveyed your information solely with the use of a pencil and paper. Anyway, statements like this only show how out of touch with reality you are. You are way past the fringe.

          1. 9.2.1.1.1

            Can we say GOALPOST MOVING?Sure. You can even type it in “all caps”. The goalpost remains right where it was: in the context of patent law, there is no more “technology” in using a computer to distribute information than there is using a pencil and paper. Enjoy.you are way past the fringe.Unfortunately for you, that’s not the case at all.

      2. 9.2.2

        “They are not one in the same. Had the claims recited “digital content” then I have very good arguments that most of the systems are necessarily tied to machines.”I’m sure they’re wonderful “arguments” little Johnny!

  4. 8

    Claim 1 is as follows: 1. A computer-implemented method for distributing digitally conveyable content comprising the steps of: providing a computer-implemented content distribution chain for distributing digitally conveyable content, the content distribution chain including a content production system, a content brokerage system, at least one content distribution system, and at least one content consumer system; the content production system producing digitally conveyable content; the content brokerage system receiving the digitally conveyable content from the content production system; the content brokerage system conducting market research and determining a target audience utilizing marketing data obtained through the market research; the content brokerage system determining at least one content distribution system with access to the target audience; the content brokerage system negotiating deals with the at least one content distribution system; the content brokerage system adding value to the received digitally conveyable content; the content brokerage system providing the value-added content to the at least one content distribution system; the content distribution system determining at least one potential content customer system and presenting the at least one potential content customer system a content delivery opportunity; the content distribution system providing the content to the at least one content customer system upon the at least one potential content customer system accepting the content delivery opportunity; and the content distribution system reporting content usage information to the content brokerage system; wherein the content brokerage system established media distribution data and conveys the media distribution data to the content distribution system, said content distribution system using the media distribution data and distribution data included withincontent consumer profiles that are maintained by the content distribution system and the content brokerage system does not have access to when providing the content to the content customer system, wherein the content consumer profiles include information protected under confidentiality agreement and/or privacy laws, and wherein the content distribution system does not disclose the content consumer profiles to the content brokerage system; wherein a medium in which content is delivered is changeable from one system to the next in the content distribution chain; and wherein pricing of content is variable based upon discernible consumer-specific factors.***By my count, 348 words … or at least 250 words longer than any independent claim should be. This is what happens when an attorney adopts the throw-everything-in-the-claims-but-the-kitchen-sink approach … very ugly claims. IMHO … no invention is so complicated that it takes 348 words to describe it.The method claim is sloppy. Personally, I do not like method claims that recite: “providing machine A, wherein machine A comprises: X, Y, Z.” This is poorly written.As to the 101 issue, the PTAB wrote “We see nothing in the meaning of system itself or the Specification that would preclude these systems from being reasonably construed as encompassing a human being or a group of human beings.”This is a close call … much closer than needed. If you are going to have 348 words in your claim, you cannot add a couple more and limit your systems to machines?? While, after reviewing the specification, I would reasonably interpret some of the systems as necessarily being machines, I can see an interpretation (although not necessarily a reasonable interpretation) where the systems are not machines. Regardless, even back in 2010 (when the appeal was filed), there is no excuse for presenting claim language that doesn’t clearly tie the claims to a machine.

    1. 8.1

      “This is a close call … much closer than needed. If you are going to have 348 words in your claim, you cannot add a couple more and limit your systems to machines??”I’m pretty sure they meant to go ahead and claim the humans as a “component” of their “system”.

  5. 7

    “Thus, the only claim that passed muster here was the Beauregard claim directed to software stored on a hard disk.”Dennis, this isn’t quite right, thankfully. The Board reversed the examiner’s indefiniteness rejections for the Beauregard claims, but entered their own new rejections to those same claims with respect to 101. As they correctly pointed out, if the method is nothing more than an abstract idea, wrapping it in a Beauregard claim doesn’t help.

    1. 7.1

      As they correctly pointed out, if the method is nothing more than an abstract idea, wrapping it in a Beauregard claim doesn’t help.It is hardly an “abstract idea.” You have to love the PTAB’s abstract idea analysis. Machine or transformation test not met, therefore it is an abstract idea. Didn’t they read Bilski? MOT not the sole test. Also, they didn’t even identify the alleged abstract idea.The PTAB also relies upon a questionable statement from Accenture that interprets CLS Bank as saying that all method/system/Beauregard claims stand or fall together re 101. This interpretation ignores that claims must be evaluated as a whole with regard to 35 USC 101.For example, a method claim may not pass muster because it recites steps that all could be performed in the human mind. However, the device claim clearly recites that all of the functionality is performed by a computer. The computer claim should not fall with the method claim just because the method claim doesn’t recite a processor.Proceeding with this example, what happens if the method claim is amended to include a processor and now is deemed acceptable under 101? Does the computer claim now become statutory despite not being amended? Thus, you can have identical claim language alternatively being deemed statutory or nonstatutory depending upon the language in another claim. Does this make sense?

      1. 7.1.1

        I found this letter and thought I would pass it on…Dear Supreme Court,Please fix your mucking around with 101. The infection has spread beyond the CAFC and is obliterating reason at the PTAB.Yours truly,”Alice”

      2. 7.1.2

        “It is hardly an ‘abstract idea.'”You could be right – I didn’t study it closely enough to have an opinion either way. But since the PTAB held that it was, the Beauregard claim had to fall as well.”For example, a method claim may not pass muster because it recites steps that all could be performed in the human mind. … Proceeding with this example, what happens if the method claim is amended to include a processor and now is deemed acceptable under 101? Does the computer claim now become statutory despite not being amended?”If the method claim is legitimately shot down because it includes ONLY steps that can be performed in the human mind, amending it to simply say “doing it in a processor” won’t generally fix it. So I don’t think you arrive at this paradox.

        1. 7.1.2.1

          amending it to simply say “doing it in a processor” won’t generally fix itNo. It will always (always means 99.9+%) fix it. Do you practice before the USPTO?

          1. 7.1.2.1.1

            Do you practice before the USPTO?Oh boy, we got a “real” practitioner here, folks! Sit down, everyone, and listen to the “Patent Guru”. He’s going to tell us a story about how easy it is to get computer-implemented junk allowed at the USPTO. All you need to do is learn some “magic words”.

          2. 7.1.2.1.2

            amending [an ineligible method] to simply say “doing it in a processor” will always (always means 99.9+%) fix it.When will it not suffice to fix it? You forgot to tell us.

            1. 7.1.2.1.2.1

              When will it not suffice to fix it?When I prosecute that application, I’ll let you know. Don’t hold your breath.

          3. 7.1.2.1.3

            If by “fix it” you mean convince the examiner, whose 101 rejection was almost certainly wrong in the first place, then you’re right. As to whether you’re more generally right, I guess we’ll have to wait and see what the Supreme Court does with CLS Bank and Ultramercial. In the meantime, however, I seem to recall that 7 out of 10 judges in CLS Bank found the method claim to be unpatentable subject matter, even though it was stipulated that it was implemented “in a processor.” Those aren’t very good odds, if you’re hanging your hat on the processor limitation.

      3. 7.1.3

        It is hardly an “abstract idea.”It sure looks like abstract junk to me. Tossing in some old “eligible” subject matter is not necessarily sufficient to convert an otherwise ineligible claim into ineligible subject matter.Likewise, taking old unpatentable subject matter and adding a bunch of ineligible junk to the claim is a pretty sad excuse for “inventing.” Always was. Always will be.

        1. 7.1.3.1

          It sure looks like abstract junk to me.Color me unsurprised. I work under the assumption that any patent that doesn’t involve biotech is something that you consider to be junk (abstract or otherwise).Tossing in some old “eligible” subject matter is not necessarily sufficient to convert an otherwise ineligible claim into ineligible subject matterInvention must be considered as a whole.Always was. Always will be.Do you have something to add to the conversation? Or do you like repeating the same points thousands of times?

          1. 7.1.3.1.1

            Invention must be considered as a whole.Ah, yes. The Dierhbot zombies simply refuse to die. Nobody could have predicted that.

            1. 7.1.3.1.1.1

              I know right? Prom comes out and just demolishes their whole world-view, yet like the Jewish Christians just prior to the destruction of Jerusalem after christ died their faith will never be dimished!

          2. 7.1.3.1.2

            I work under the assumption that any patent that doesn’t involve biotech is something that you consider to be junkThat’s a terrible assumption. There’s plenty of biotech junk out there and there’s plenty of non-junk in the non-computershizzle art units. But there’s more junk in the computershizzle art units than anywhere else. That’s pretty much a given at this point.

      4. 7.1.4

        you can have identical claim language alternatively being deemed statutory or nonstatutory depending upon the language in another claim. Does this make sense?Sure. It’s called “claim construction.”

    2. 7.2

      I have yet to see a B claim that isn’t to a method that is nothing more than an abstract idea. I look forward to the day I see one, if such a monstrosity is feasible.

  6. 6

    The Westlaw cite’s not much help to those of us without Westlaw – can you indicate the patent application or publication number, or give a link to the opinion on a publicly available website?

  7. 5

    Since the rightness or wrongness of this decision hinges on the claim language, why not post the claim language?

      1. 5.1.1

        I think you probably misunderstood my comment. Whether or not one is a follower of Judge Lourie, its nice to read the claims before arguing about whether they are abstract or encompass humans. Anyway, a link I did not see before is now included in the post and I can find the claims in question.

  8. 3

    . But it won’t stay a secret, you had better throw that Red Hat in the closet buddy! You are a disgrace! How dare you JUDGE ME!

  9. 2

    Shouldn’t the title read “A System Encompassing a Human” rather than “A Computer Encompassing a Human?”Sure, it’s not as catchy as the 570 nm wavelength version, but it is a bit more accurate.

  10. 1

    “Thus, the only claim that passed muster here was the Beauregard claim directed to software stored on a hard disk.”Say what?

    1. 1.1

      PLEASE DON’T ERASE THIS. Calling and claiming you are in another country, and then asking me what it is I want to invent, is the same thing KIT did. I am sure extortion and conspiracy are also involved in this wire fraud phone call. You asked me to tell you something that you would benefit from, not to mention lied about who you were and where you were calling from. The USPTO is not London England! Was that you Ed or Jon?

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