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Bilski Full CAFC to Reexamine the Scope of Subject Matter

VIEWS: 13 PAGES: 50

									FEB 15, 2008

Bilski: Full CAFC to Reexamine the Scope of Subject Matter
Patentability
In re Bilski (Fed. Cir. 2008 - en Banc)

Taking sua sponte action, the Federal Circuit has ordered an en banc rehearing of the In
re Bilski case – asking the following five questions:

    1. Whether claim 1 of the 08/833,892 patent application claims patent-eligible
       subject matter under 35 U.S.C. § 101?
    2. What standard should govern in determining whether a process is patent-eligible
       subject matter under section 101?
    3. Whether the claimed subject matter is not patent-eligible because it constitutes
       an abstract idea or mental process; when does a claim that contains both mental
       and physical steps create patent-eligible subject matter?
    4. Whether a method or process must result in a physical transformation of an
       article or be tied to a machine to be patent-eligible subject matter under section
       101?
    5. Whether it is appropriate to reconsider State Street Bank & Trust Co. v.
       Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), and AT&T Corp.
       v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999), in this case and,
       if so, whether those cases should be overruled in any respect?

The Patent Application and Patent Applicants: Bilski involves claims to a method of
managing the risk of bad weather through commodities trading. The claims are not tied
to any particular form of technology — thus, they do not require a computer or particular
storage media. In some quarters, this process lacking a technological tie-in is termed a
“mental method.”

Bernie Bilski apparently was the CEO and owner of a small company called
WeatherWise. At least some WeatherWise patents were purchased in 2007 by the
“Pittsburgh Technology Licensing Corp” According to court documents, PTL is a wholly
owned subsidiary of WeatherWise holdings. (See WeatherWise v. WeatherBill).

Although we don’t have the text of the application yet, this case looks problematic
because of serious obviousness problems and lack of specificity in the claims. Thus, the
court will have no sympathy for Bilski — making this the perfect test case for someone
wanting to strink Section 101 coverage and eliminate business method patents.
Representative Claim 1 reads as follows:




                                                    1
From www.patentlyo.com/patent/2008/02/bilski-full-caf.html                    6 March 2008
        1. A method for managing the consumption risk costs of a
        commodity sold by a commodity provider at a fixed price
        comprising the steps of:
        (a) initiating a series of transactions between said commodity
        provider and consumers of said commodity wherein said consumers
        purchase said commodity at a fixed rate based upon historical
        averages, said fixed rate corresponding to a risk position of
        said consumer;
        (b) identifying market participants for said commodity having a
        counter-risk position to said consumers; and
        (c) initiating a series of transactions between said commodity
        provider and said market participants at a second fixed rate such
        that said series of market participant transactions balances the
        risk position of said series of consumer transactions.

Procedure: This cases arises out of a rejection from the Patent Board of Appeals
(BPAI). In its opinion, the Board asked for assistance from the CAFC in addressing
Subject Matter Patentability of non-technological method claims: “The Federal Circuit
cannot address rejections that it does not see. . . . It would be helpful if the Federal
Circuit would address this question directly.” BPAI Decision. Bilski then apealed directly
from the BPAI to the CAFC and oral arguments were held in October 2007. Rather than
issuing an opinion, the court convened and voted to rehear the case en banc.

Timing and Amicus: The parties (Bilski & PTO) have already fully briefed the case.
Thus, the CAFC is only allowing one supplimental brief each to be filed simultaneously
on March 6, 2008. Amicus briefs discussing the five questions are requested by the
court and may be filed without specific permission. Amicus briefs will be due 30 days
later and must otherwise comply with FRAP and FCR 29. (Thanks Joe: Amicus should
be due April 5th, but because that falls on a Saturday, they will be due April 7). The
hearing is scheduled for May 8 at 2:00 pm.

Notes and Documents:

    •   This en banc decision comes on the heels of the CAFC’s denial of an en banc
        rehearing in Nujten. Obviously, some horsetraiding occurred here. This method
        of preemptive en banc hearing is an interesting tactic because it avoids the
        problem of judges being locked-into their prior opinion on the case. Thus, this is
        likely the only way that an en banc request will be unanimously affirmed.
    •   The CAFC requested briefs “addressing, inter alia, the issues set forth above.” In
        my mind, this leaves the door open for briefs addressing related issues that are
        not strictly within the five questions. In particular, it would be useful for briefs to
        address related issues found in Comiskey, Ferguson, & Lundgren.
    •   Bilski BPAI Decision [Patently-O Commentary] [StepBack’s Discussion]
    •   Patently-O: Discussing the Section 101 Squad of Cases.
    •   Bilski was, of course, part of Hal Wegner’s Top Ten for 2008.
    •   Briefs:
             o AIPLA Amicus Brief in Original Filing (pre-en-banc). AIPLA suggests the
                 following points: (1) Section 101 should be broadly construed; (2) An
                 invention should be patentable if it offers a "practical application of a
                 process with a useful result;" (3) Although relevant, no physical
                 transformation is required to avoid being classified as an abstract idea;
                 (4) Here, Bilski's method is patentable subject matter because it allows

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From www.patentlyo.com/patent/2008/02/bilski-full-caf.html                         6 March 2008
                 "commodity suppliers and consumers to engage in commodities
                 transactions while minimizing the risks associated with fluctuations in
                 demand for such commodities and providing investment opportunities for
                 market participants" - an endeaver quite practical and useful.
             o   USPTO Position: In its opposition brief, the PTO argues that there are
                 several Section 101 reasons to eliminate the Bilski application. First,
                 according to the PTO, the claimed method does not qualify as a statutory
                 “process.” Rather, statutory processes have always been associated with
                 physical transformation or machine implementation — details missing
                 from Bilski’s claims. In addition, the PTO argues that Bilski’s claim is an
                 abstract idea because it is merely a “disembodied concept” that would
                 preempt an entire field of commodities trading. Regarding State Street,
                 the PTO would limit the the requirement of a “useful, concrete, and
                 tangible result” to computer implemented inventions that employ a
                 mathematical algorithm.
             o   Many of the briefs filed in the Supreme Court case of LabCorp
                 v. Metabolite will be applicable here.

Posted by Dennis Crouch |


Comments

Whereas the public thinks that "invention" connotes "technology", whereas Greg
Aharonian thinks that film scripts are patentable matter, whereas TRIPS contemplates
patents being available in all felds of "technology" whereas the wide-ranging UK Govt
study concluded that there was no evidence that patenting business methods promotes
the progress, whereas tax/banking/insurance patents cause so much distress that
special exemptions have to be slipped into the Bill to neutralise them, and whereas the
30 year exclusions of the European Patent Convention seem to be standing up to
criticism quite nicely - I await with more even than usual interest what the CAFC decides
on this one.

Posted by: MaxDrei | Feb 15, 2008 at 12:09 PM

I haven't looked closely at the details, but this case appears to present the kind of broad
look at Section 101 that several justices have desired for years. CAFC en banc review,
however it goes, makes a cert. grant all the more likely.

Posted by: Andrew Dhuey | Feb 15, 2008 at 12:11 PM

Dennis,
April 5 is a Saturday. I think that means, under Fed R App P 26(a)(3), that the amicus
filing deadline is actually Monday, April 7.
Best,
Joe

Posted by: Joe Miller | Feb 15, 2008 at 01:04 PM

Bye Bye Business methods...



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Posted by: ip-esq | Feb 15, 2008 at 01:15 PM

Yippee!!

Posted by: Alan McDonald | Feb 15, 2008 at 01:51 PM

"this case looks problematic because of serious obviousness problems and lack of
specificity in the claims. Thus, the court will have no sympathy for Bilski "

Frankly, I don't find the bogus business method claims in this case to differ substantially
in their "robustness" from the claims in most other business method applications.

If the CAFC pulls this off and writes a good decision, patent reform will be nearly
complete: no strict TSM (thank you Supremes!!!), no signal claims, and no business
method garbage. All that will remain to be chopped into itty bitty pieces is the software
garbage and the bubble of insanity can collapse back into reality once again.

But where will all the crappy software patent attorneys go?

Posted by: Malcolm Mooney | Feb 15, 2008 at 02:09 PM

Can anything be gleaned from the fact that the CAFC denied an en banc rehearing in
Nuijten, but agreed to take Bilski?

Posted by: metoo | Feb 15, 2008 at 02:11 PM

Perhaps part of the thinking was that the SCOTUS will likely take up any case,
particularly an en banc decision, addressing the scope of 101. Therefore, the CAFC
decided that Bilski was the better case for the SCOTUS with respect to 101.

Posted by: metoo | Feb 15, 2008 at 02:27 PM

This looks like a perfect case for the court to ramble on incessantly and say a bunch of
stuff that they really don't mean and that mucks up more than it fixes.

Posted by: Mark Pitchford | Feb 15, 2008 at 02:29 PM

And when the SCOTUS takes up the case, perhaps they can look to the EPO for a
"common sense" approach to determining subject matter eligibility.

Posted by: metoo | Feb 15, 2008 at 02:31 PM

Malcom,

All of us crappy software patent attorneys will go into litigation with you since there will
be 10's of 1000's of patents out there that need invalidating. Your desire to make
yourself obsolete may be coming true.

Posted by: Mark Pitchford | Feb 15, 2008 at 02:32 PM




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From www.patentlyo.com/patent/2008/02/bilski-full-caf.html                        6 March 2008
"But where will all the crappy software patent attorneys go?"

That's a sentence that's crying out for some hyphenation. Does "crappy" modify software
patents (crappy-software-patent attorneys) or attorneys (crappy software-patent-
attorneys)? Or both?

Do you write claims that are that ambiguous?

Posted by: Leopold Bloom | Feb 15, 2008 at 02:36 PM

"Do you write claims that are that ambiguous?"

Whatever the client wants, bro'.

Posted by: Malcolm Mooney | Feb 15, 2008 at 02:55 PM

Link to a WeatherWise technology page. It says patents have been filed:
http://weatherproofbill.com/productsandservices.htm

Another WeatherWise page here:
http://www.financewise.com/public/edit/energy/weather99/wthr99-consumer.htm

What's in your energy bill? (and is it mere abstract numbers?)

Posted by: stepback | Feb 15, 2008 at 02:59 PM

"Do you write claims that are that ambiguous?"

I doubt it, MM probably writes claims that are 3-4 pages long ... the problem that he has
after writing his biotech claims is that he keeps thinking it is obvious, and to compensate
for it, he keeps adding more and more limitations. However, by the time he's done, his
claims are so specific and narrow that nobody can infringe them. BTW, this is why he
keeps railing on broadly-written claims; he just doesn't like them.

As I noted awhile back, his hatred for software claims likely stems from being dinged by
a partner (or being passaged upon another associate for partnership) that was involved
in software. I forget what tipped me off, but he made a comment in one of his posts that
indicated, to me, that he definitely had a grudge.

My experience with biotech attorneys is that they really don't have a good grasp as to
how to handle technology outside their realm. One of the worse mechanical cases I ever
reviewed was from a very experienced biotech patent attorney (who was forced to write
the case because the practice was overwhelmed with work). Subsequent experiences
have led me to believe that biotech attorneys write patent applications very differently
than patent attorneys in other fields. I don't write biotech applications, so their technique
may be perfect for their field. However, the techniques I have seen, IMHO, do not
translate well into other arts.

MM's rather simplistic comments, particularly when it comes to software and patentable
subject matter, evidences his failure to grasp some of the underlying concepts and

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nuances associated with these issues. Regardless, I do enjoy when MM posts about 101
issues and other things in which he is apparently very poorly-versed. His recent posts as
to Nuitjen were particularly amusing. I was considering commenting on those posts, but I
have put a limit on myself as to how many times I can rattle his cage. Although it is quite
fun, I have better things to do with my time.

Posted by: pds | Feb 15, 2008 at 03:07 PM

"MM's rather simplistic comments"

****yawn*****

Keeping it simple is the key to success, pds. Attorneys who fail to recognize this concept
tend to suck. And/or write long comments on blogs that nobody reads.

Yes, that is a hint (enough nuance for you, pds?).

Posted by: Malcolm Mooney | Feb 15, 2008 at 03:16 PM

Let's break down claim 1:

A method for accomplishing a barely comprehensible but vaguely desirable goal,
comprising:

1) initiating something
2) identifying something else
3) initiating some other thing, such that said barely comprehensible goal is achieved.

Yes, I approve smacking this down so hard that the blood splatters on similarly crappy
business methods everywhere.

Posted by: Malcolm Mooney | Feb 15, 2008 at 03:20 PM

looks like claim 1, as broken down, should be smacked down under 103

Posted by: coast | Feb 15, 2008 at 03:43 PM

MM & Coast -- You are correct. This is another patent that CJ Roberts will laugh out of
court. That is why the PTO chose this as a test case...

Posted by: Dennis Crouch | Feb 15, 2008 at 04:11 PM

The more I think about this, the more I believe that the CAFC took this case en banc
(remember, it was sua sponte) simply because this is the Sec. 101 case they want the
SCOTUS to get its hands on. The writing has been on the wall for some time now - the
SCOTUS wants to take a look at the issue of patentable subject matter. Of course as we
have all seen recently, the SCOTUS is not exactly predictable when it comes to patent
cases. Many believe they have gone off the deep end at times - or at least made things
worse (i.e., more uncertainty) rather than better. The CAFC recognizes this, and, like it
or not, most of them think they are much better equipped to decide patent issues than

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the SCOTUS. It is also evident that the SCOTUS (or at least some of the justices) would
like to narrow the scope of patentable subject matter - but just how far as anybody's
guess.

Given all of that, I suspect that the CAFC is very concerned that the SCOTUS might go
too far in narrowing the scope of patentable subject matter. So what's the best way to
avoid something like that? Give the SCOTUS a case where the only claim at issue is at
the far extreme in terms of patentable subject matter - a "pure" business method claim,
as some have called it. That way, there's a much better chance that the SCOTUS only
wacks off a little bit of patentable subject matter.

Posted by: metoo | Feb 15, 2008 at 04:21 PM

sorry Dennis, I was busy writing my tome when you posted your similar comment.

Posted by: metoo | Feb 15, 2008 at 04:27 PM

"Can anything be gleaned from the fact that the CAFC denied an en banc rehearing in
Nuijten, but agreed to take Bilski?"

Metoo,

That's a very good and insightful question that dawned on me as well, and I, for one,
don't have an answer to it yet(may be one will hit me this weekend). The real "wild card"
in those questions is the last one, #5. All I can say now is what Ben Franklin said to John
Adams and Thomas Jefferson in the musical 1776 when Edward Rutledge raised his
hand to ask about the clause relating to slavery in the draft Declaration of Independence:
"look out."

Posted by: EG | Feb 15, 2008 at 04:44 PM

Ridicule me chaps, if you will, but if the judges have it in mind to adopt the EPO's
"technical" bright line, then signals are arguably patentable but business methods
indisputably not. So, take Bilski and not Nuitgen. Or?

Posted by: MaxDrei | Feb 15, 2008 at 05:28 PM

"this is the Sec. 101 case they want the SCOTUS to get its hands on."

More likely CAFC expects (intends?) to disallow the patents on grounds which eliminate
some of the worst excesses of business method patents. In which case, the PTO would
have no basis for an appeal and Bilski would probably not have sufficient hope of
success to bother appealing. In other words, CAFC does not expect an appeal to
SCOTUS. Net result: CAFC beats a tactical retreat (just like it did in Dystar) to a more
defensible position and reduces chances of a future humiliation at the hands of
SCOTUS.

Posted by: big hairy rat | Feb 15, 2008 at 07:59 PM




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From www.patentlyo.com/patent/2008/02/bilski-full-caf.html                      6 March 2008
I have to wonder why, after all the furor over matters such as business methods,
software, signals, etc. that have served as part of the rallying cry for "reform", Congress
has chosen not to make a single change to Section 101? It seems that such matter is
deemed important enough to declare the system is broken, but not important enough for
Congress to even attempt and fashion some sort of a splint.

Posted by: M. Slonecker | Feb 15, 2008 at 08:26 PM

Actually, the house version amends 101 to exclude tax patents. A similar bill has been
introduced in the Senate.

See http://en.wikipedia.org/wiki/Tax_patent

Posted by: Mark Nowotarski | Feb 15, 2008 at 09:03 PM

Mark,

Thank you. I had not looked at the HR version for quite some time. It is interesting that
the Senate version has no reference as to the scope of patentable subject matter, as
well as the comment by one member of the Senate committee who waxes poetic that
business method should not be patentable.

The views of many who post to this blog decrying the breadth of 101 nothwithstanding, it
appears as if both the House (other than patents on tax planning methods) and the
Senate at this stage seem to be in agreement that 101 is largely OK as is (and, quite
frankly, has generally been since the original Patent Act of 1790). Should the legislation
pass, it will be interesting to see what effect the record of proceedings before Congress
has on subsequent judicial interpretation of 101's scope. If anything, the record suggests
that 101 is intended to encompass a much broader scope than just classical definitions
of manufacture, method, etc.

Posted by: M. Slonecker | Feb 15, 2008 at 10:37 PM

I agree with Mr. Rat.
Mr. Bedlington Terrier

Posted by: Ron Paul Examiner | Feb 15, 2008 at 10:39 PM

I agree with Mr. Rat.
Mr. Bedlington Terrier

Posted by: Ron Paul Examiner | Feb 15, 2008 at 10:40 PM

Apparently, the PTO seems to want a bright-line test for patent-eligible business method
versus a patent-ineligible mental process.

The discussion at oral argument might shed some light as to the reason why the CAFC
voted sua sponte to take this matter en banc.




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From www.patentlyo.com/patent/2008/02/bilski-full-caf.html                      6 March 2008
The following dialogue occurs at 15:20 of the mp3 file obtainable at:
http://www.cafc.uscourts.gov/oralarguments/searchscript.asp (type Bilski for Caption)

Judge 1: The way in which the Board . . . presented Bilski to us was with this prayer for
guidance. . . . Our examiners need guidance, we need to know how to deal with this
situation . . . . Let me ask you this question, “Is the opinion in In Re Comiskey enough?
Can your examiners now move forward? Are you satisfied in dealing with business-
method patents?”

Solicitor: Not quite your honor. I say not quite because what I can foresee [are] future
disputes and also potentially years of litigation over trying to find the dividing line
between what would be a so-called patent-eligible business method versus a so-called
patent-ineligible mental process. It just is going to create litigation issue that we don’t
think needs to be there.

Judge 2: So to cut to the chase, how would you [the Office] have reformulated the test . .
. for purposes of explaining both Comiskey and then extrapolating to this case?”
Solicitor: I think what was just discussed here page 17 [of Comiskey slip opinion, see
http://www.cafc.uscourts.gov/opinions/06-1286.pdf ] is a very fair recitation of what the
law is where it says. . . . “the Supreme Court has held that a claim reciting an algorithm
or abstract idea can state statutory subject matter only if, as employed in the process, it
is embodied in, operates on, transforms, or otherwise involves another class of statutory
subject matter, i.e., a machine, manufacture, or composition of matter.”

Posted by: Jim H. | Feb 16, 2008 at 08:27 AM

Jim H.,

I was not aware that oral presentations before the CAFC were available for download.
Thank you for the information and link.

Merely FYI, oral arguments and transcripts of those arguments are available for matters
before the Supreme Court. They are easily located on the Supreme Court's website

Posted by: M. Slonecker | Feb 16, 2008 at 10:20 AM

“Senate at this stage seem to be in agreement that 101 is largely OK”

Mike,

I don’t quite agree. I think that the members of the Judiciary Committee have the firmly
held belief that 101 is too broad, but are expressing it differently. Consider the Senate’s
willingness to give the banks a free pass to infringe Claudio Ballard’s check imaging
patents. In the Committee report they stated:
http://www.patentlyo.com/patent/law/SenateReportonPatentReform.pdf

“In 1999 and 2000, several inventors sought a series of patents relating to a
system/process for imaging and storing documents, building their technology around
what the government was already doing. “


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and

“Because Congress has mandated implementation of the Check 21 Act, the Committee
accepted an amendment during the mark-up of the bill that declares practicing of the
Check 21 industry standard should not constitute patent infringement.”

Allowing someone to infringe a patent is the same thing as saying that the invention
should not be patentable (i.e. a 101 issue). The Senate Judiciary committee appears to
be very comfortable with the concept that financial service companies should not be
liable for patent infringement, particularly for inventions that enable them to comply with
the law.

Mark


Oh, and for the record, Claudio’s ‘988 patent was filed in August of 1997, not “1999 and
2000” as the judiciary committee implies. Nor was he motivated by any action by the
government, but by observing how wasteful it was for restaurants to keep shoe boxes
full of receipts. He thought that a secure method for check image storing would be a
great invention. He conceived of the invention in July of 1994, well before the American
National Standard for Financial Image Interchange issued its architecture in 1996.

This is all laid out in his declaration of conception and reduction to practice. A copy was
filed on 1/30/07 in his reexam SN 90/007,829 and is retrievable from the PAIR file
wrapper.

Posted by: Mark Nowotarski | Feb 16, 2008 at 10:25 AM

(1) There is not a distinction between software and hardware. The best way to think of
modern computer hardware is a way to permit a short-hand for specifying other
hardware. So, we can make hardware that will act the same way as any software. Not
with a ROM but buy repeatedly hard coding the sequence of instructions. The fetch
execute cycle is nothing more than a very clever way of providing a short-hand so that
we don't have to hard code the instructions. The first computers were a sequence of
steps that were hard coded. "Software" is a very clever way of avoiding having to hard
code all those transistors. (The Supreme Court cannot by proclomation turn software
into an abstraction, but they can cripple the progress of technology and science.)

(2) Computers are machines.

(3) The function of mechanical machines (e.g. Deener, the process of refining grain
reads on how a human being could refine grain) can read on our physical behavior.

(4) The function of information processores (e.g. software) can read on how we process
information in our heads.

(5) The distinctions people are trying to draw between mechanical machines and
information processing machines are artificial. Computers represent information and ---
yes--- transform the represented information. The represented information is


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represented physically and it takes power and time to transform the information. The
information is transformed under the same laws of physics as mechanical machines.

(6) If I can claim a function of a machine, then you cannot stop me from claiming a
computer that is hard coded that behaves just as a computer with a fetch-execute cycle
that has software loaded into it.

(7) The "how" a computer transforms the information matters--not just a little bit, but a
whole lot.
(a) Consider that the difference between a bubble sort, O(n*n), and quick sort, O(n*
logn) eclipes all the hardware advances in the last 20 years for large n. Plug in n = 6,
000, 000, 000 roughly the number of people on the planet. To sort the people on the
plant using bubble sort would require 36, 000,000,000,000,000,000 operations vs.
200,000,000,000 for quick sort. Each operation requires power and time. Each place to
hold a person's name requires space and power. Using bubble sort, there is no hope of
sotring the names. Using quick sort, a modern computer could sort the names in less
than a minute. Or to think of it another way, if one had to sort a given number of names
for an information processing task, then one would have to purchase a much, much,
much, more expensive computer that was wired to perform a bubble sort rather than a
quick sort.
(b) Consider the Internet. Is that an idea? No. It is a physical implementation of a
machine that enables information processing tasks.


(8) Business methods are information processing tasks with or without a machine. And
to my mind, the biggest problem with business methods is 112 not 101. Whether to allow
business methods is simply a matter of policy and is separate from but related to
computers only in that they both transform information.

(9) Business methods are not computer software. Consider if we decided to allow
physical movements of a human to be patentable. Such as kung fu movements. This
would be close to the relationship between patents for computers and patents for
information processing tasks. The patent for a back-hoe is a machine that performs a
physical task. The patent for a computer is a machine for performing information
processing task on REPRESENTED INFORMATION.

(10) Infomration tasks performed tend to be performed in different ways then a human
would process information. Think of chess. This is typical of the difference between a
computer and a human. How computer operate should be eligible for patentability.

(11) The big picture is that most of the patents people are complaining about are
claiming very broad functions, e.g. a computer that plays a game of chess, but it is the
how that is where we need the advances. It is as if someone is claiming only the early
stages of a car. Two axels and four wheels and an engine. These very broad patents
should have been knocked out with 103, but there wasn't prior art there.

Think about a physical machine. What is it? Often, a machine take physical matter and
does a sequence of operations on the physical matter to transform it. Heat, roll, press,
etc. The how it performs each step of the sequence of operations is significant, but also
the method or the sequence of operations is significant. (Have you ever thought that you

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could physically do what the machine does--the method claim. That you would be
infringing?)

If you think about it, you will realize that a computer represents informaion and
transforms it. The computer is doing what our brains do. The mechanical machines are
doing what our bodies could do. Sometimes we cannot exert say 10,000 pounds of
pressure and sometimes we cannot multiply 100 billion numbers. The how each step is
accomplished is done by physical machines in both cases and in both cases the laws of
physics govern.

I am out of time or I would develop this further.

Posted by: Patent Attorney | Feb 16, 2008 at 10:30 AM

Mark:

In your above response you make the point "Allowing someone to infringe a patent is the
same thing as saying that the invention should not be patentable (i.e. a 101 issue). The
Senate Judiciary committee appears to be very comfortable with the concept that
financial service companies should not be liable for patent infringement, particularly for
inventions that enable them to comply with the law."

The below summary by the Senate Committee is instructive on the interpretation you
posit:

"Because Congress has mandated implementation of the Check 21 Act, the Committee
accepted an amendment during the mark-up of the bill that declares practicing of the
Check 21 industry standard should not constitute patent infringement. Section 14 of the
Act amends section 287 of title 35 to limit the remedies available against a financial
institution with respect to a check imaging and archival method or system that is called
for under the Check 21 Act, but not for any other uses of those methods or systems.
This amendment shall apply to any civil action for patent infringement pending or filed on
or after the date of enactment of this Act."

Note that the summary is not declaring, or even implying for that matter, that the patents
are directed to subject matter outside the scope of 101. This much is clear from the
committee's statement that the patentees are not foreclosed from asserting their patents
"...for any other uses of those methods or systems." Clearly, the committee does not
consider the Check 21 limitation of remedies available to the patentees to implicate 101.

Of course, should this limitation be enacted into law it will most certainly open up the
proverbial Pandora's Box of a "taking". My experience suggests that the effect of the
limitation may very well be viewed as effectively throwing the issue, should the
patentees pursue their rights, into an action before the Court of Federal Claims under 28
USC 1498...but in a manner easily distinguished from Zoltek v. US. One possible
consequence that is not far fetched would be to require the CAFC and SCOTUS to
finally consider and expound upon whether or not a patent constitutes "property" within
the meaning of the Fifth Amendment.

Posted by: M. Slonecker | Feb 16, 2008 at 11:41 AM


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I haven't followed the check processing issue that closely. However, I would suggest that
as summarized by Mr. Slonecker, the amendment regarding the Check 21 industry
standard would appear to violate TRIPS (Article 28). If I understand TRIPS at all, this
might make this amendment invalid with respect to foreign nationals, but applicable to
U.S. persons. So, if I had a patent applicable to the Check 21 system, could I simply sell
it to a foreign national, and let him try to enforce it?

Any TRIPS experts out there?

Posted by: Leopold Bloom | Feb 16, 2008 at 12:27 PM

Patent Attorney - great synopsis ...

Mark - image/signal transform work and patents to preserve the integrity of the
paper/data between digital and analog transformation are actually a bit older -- there is a
paper from 1983 by costas -- "dirty paper" -- which is a good example of some of that
early work ... and security features that were later invented ...

a point of reference on check 21 about comments made by the committee -- though i
abhor industrial policy aimed at denying inventors their due and cannot comment on the
patents either way ...

in fact, the fdic itself, with a lot of help from booz allen, worried about the digital copy
problem vis-a-vis its "image logo" being used by unauthorized sites to confuse
consumers (early "phishing") ... the liability they estimated was the amount per bank
account up to the fdic limit --

joe consumer "well, it had an fdic logo, so i am insured for the loss of my 65K, right?" --
versus the cost savings of digital transformation ... (alas, they still take just as much time
to process/clear the checks!)

but related inventions were NOT the result of "government doing" ... just the opposite ...
limits on access to encryption software was a big thorn as was att's clipper chip -- and
*no such agency* only began active/public in the private sector activity in 1996-1997 at
the latest (they even had a booth at the rsa convention in 1997) ... precisely because of
the innovation/invention that was taking place in the private sector ...

Posted by: ironicslip | Feb 16, 2008 at 12:48 PM

Patent Attorney - great synopsis ...

Mark - image/signal transform work and patents to preserve the integrity of the
paper/data between digital and analog transformation are actually a bit older -- there is a
paper from 1983 by costas -- "dirty paper" -- which is a good example of some of that
early work ... and security features that were later invented ...

a point of reference on check 21 about comments made by the committee -- though i
abhor industrial policy aimed at denying inventors their due and cannot comment on the
patents either way ...


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From www.patentlyo.com/patent/2008/02/bilski-full-caf.html                          6 March 2008
in fact, the fdic itself, with a lot of help from booz allen, worried about the digital copy
problem vis-a-vis its "image logo" being used by unauthorized sites to confuse
consumers (early "phishing") ... the liability they estimated was the amount per bank
account up to the fdic limit --

joe consumer "well, it had an fdic logo, so i am insured for the loss of my 65K, right?" --
versus the cost savings of digital transformation ... (alas, they still take just as much time
to process/clear the checks!)

but related inventions were NOT the result of "government doing" ... just the opposite ...
limits on access to encryption software was a big thorn as was att's clipper chip -- and
*no such agency* only began active/public in the private sector activity in 1996-1997 at
the latest (they even had a booth at the rsa convention in 1997) ... precisely because of
the innovation/invention that was taking place in the private sector ...

Posted by: ironicslip | Feb 16, 2008 at 12:50 PM

"I have to wonder why, after all the furor over matters such as business methods,
software, signals, etc. that have served as part of the rallying cry for "reform", Congress
has chosen not to make a single change to Section 101? It seems that such matter is
deemed important enough to declare the system is broken, but not important enough for
Congress to even attempt and fashion some sort of a splint."

Could it be because:

1) Congress is as clueless about patent law as is SCOTUS?

2) Microsoft isn't complaining about 101, since they want to keep their own patents, but
deny them to everyone else?

My opinion has always been that 101 should be limited to exclude software and
business methods, effectuating exactly the type of "patent reform" everyone seems to
want, which is fewer patent applications pending before the office. My prediciton? Once
past the CAFC, the SCOTUS will screw up their opportunity in Bilski, just like they did
with getting rid of DOE in Warner Jenkinson. The CAFC gives SCOTUS a gift horse, and
the SCOTUS doesn't even recognize it.

Posted by: bierbelly | Feb 16, 2008 at 06:33 PM

Jim H., I'm pretty sure that "Judge 1" is Judge Clevenger, and "Judge 2" is Judge
Bryson.

Posted by: anonymous | Feb 16, 2008 at 11:07 PM

After listening to the oral argument mp3 file, the CAFC's decision to en banc this makes
a bit more sense.

* After listening to the Solicitor struggle to answer the hypothetical questions from the
panel, I get the impression that the CAFC would have liked more help from the PTO with
this case. The panel views this as an important case implicating the statutory and

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constitutional boundaries of patentable subject matter, and it doesn't sound like the
argument was terribly helpful. I haven't seen the briefs, though, and I'm not especially
familiar with Comiskey.

* At 37:05, Judge Moore asks whether the court needs to take the case en banc to give
the PTO the guidance it needs.

Posted by: anonymous | Feb 16, 2008 at 11:33 PM

Also, at about 43:40-45:00, Judge Clevenger raises the possibility of en banc review
again.

Posted by: anonymous | Feb 16, 2008 at 11:36 PM

One last comment on oral argument--by "struggle" I don't mean disparage Mr. Chen (the
PTO guy). As far as I can tell, he did an excellent job handling a ton of tough questions.
What I meant is that the questions seemed to show that the court considers this an
important case and an opportunity to answer some tough questions about the scope of
patentable subject matter. This is a big case, and the court would like some more help
(i.e. some more time to consider the issue, some additional briefing from the parties, 9
more judges looking at it, and whatever help amici might provide).

Posted by: anonymous | Feb 16, 2008 at 11:53 PM

Check out the bottom of page 35 of the Bilski decision:

http://www.uspto.gov/web/offices/dcom/bpai/its/fd022257.pdf

I didn't know anyone on the Board had a sense of humor!

Posted by: patent leather | Feb 17, 2008 at 01:50 AM

What exactly is a business method? Doesn't removing it from elligible subject matter just
give rise to that whole new argument?

Posted by: Computer-implemented investment scheme | Feb 17, 2008 at 11:15 AM

Well, either you draw no line in the sand at all, and simply allow "everything under the
sun made by man".....or you make a line. If you make a line, somebody's sure to pipe
up, that it's in the wrong place. But, then again, come to think of it, if you don't make a
line....a lot of people are against that too. Sigh.

Posted by: MaxDrei | Feb 17, 2008 at 01:47 PM

Patent attorney, on point 6. Yes we can stop you from patenting that, you know why?
Because the moment you start cleverly making a program that is not "hard coded" and
hence has a variable outcomes (one that changes based on the a determination that
changes depending on a given outcome of another piece of information) then you step
away from that which was made by man, and into the realm that was not per se made by
man, and that which was instead made only by the machine.


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In essence the man did not make the decision as to the variable information created
after that which he entered, he made a machine to make the decision for him and then
observed the results. Thus, what is patentable is the machine and also claims which
include tangible results having been created. I.e. only claims that say either "a machine
comprised of xyz" (not "a machine comprising software to do lmn calculation" unless
they add "and outputting the answer to the calculation made by the computer wherein
the calculation is abc" and not just putting "the calculation made by the computer is abc"
on the end). The tangible result is key, without it you have nothing but an abstract idea
that was made by a machine, not even a man (even though the means for obtaining the
abstract idea was programmed by a man).

I saw one of these the other day in a case I was restricting (I see them all the time), and
advised them their claim does not seem to fit in a statutory class, they responded by
electing and amending the preamble of the claims in question, gee, a lot of good that will
do them when it gets to where I transfer it, it'll still get dinged under 101.

Posted by: E#6k | Feb 17, 2008 at 04:52 PM

patent leather, Judge McConnell used that quote to good effect in his article about how
the federal courts dealt with the Sentencing Guidelines after the Supreme Court's
decision in Booker.

Posted by: anonymous | Feb 17, 2008 at 04:53 PM

INTERESTING FACT:

Judge Giles S. Rich of the Federal Circuit was 94 years old (!!) when he wrote the
opinion in State Street v. Signature Financial. He died less than one year later.

His last opinion prior to his passing was an Order on Petition for Rehearing in Scaltech
v. Retec/Tetra (June 4, 1999). The Order modified a the prior opinion in light of an
intervening Supreme Court decision. Judge Rich delivered the Opinion at age 95, 11
days before his death June 15, 1999).

Judge Rich lived and breathed patent law. He served as an appellate judge of patent
related cases for 45 years. (He never took senior status, by which most judges of
advanced age effectively retire.)

See also
http://en.wikipedia.org/wiki/Giles_Sutherland_Rich

Let us hope his legacy is not disturbed.

Posted by: curious | Feb 17, 2008 at 06:30 PM

6K: I find the USPTO's application of the "tangible result" language in the software arts, if
applied to other arts, would invalidate lots of claims. What's the tangible result of a fuel
filter without fuel flowing through it? Not much. Yet the USPTO doesn't require applicants
to recite the fuel flowing through it. Just about any claim to a subcomponent would fail
the *USPTO's* tangible result test without reciting something else.

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Posted by: SF | Feb 17, 2008 at 08:13 PM

"I am out of time or I would develop this further."

Are you out of time or are you out of straw?

Posted by: Malcolm Mooney | Feb 17, 2008 at 08:41 PM

Apparently few, if any, have perused the links provided by stepback in his above post
dated Feb 15, 2008 at 02:59 PM.

The link for the company's home page can be found at: http://www.weatherwiseusa.com/

Visit the site and take a look at what that company actually provides as services to its
targeted customers, utility companies and others operating in highly volatile commodity
markets. Also take the time to read just what the problem is faced by utility companies,
and how that problem is driven by the preference of some consumers in relation to the
payment of energy costs. Many of us pay our utility bills monthly, and those bills can
vary significantly from month to month (as I well know living in Florida where my energy
bills can vary dramatically, the worst case being 100%, from month to month). Others
pay fixed rates throughout the year, with a true up at the end of the year (this is offered
in Florida as well, but the annual true up can make auto "sticker shock" look mild in
comparison). Weatherwise asserts that it is possible to pay for utilities at a fixed rate
over the course of a year and without the need for an end of year true up. For business
and residential users alike who seek budget predictability, what Weatherwise asserts is
possible is indeed quite useful and helpful.

All this talk about "algorithms", "mental processes", "abstract ideas", "business
methods", "technological arts", etc. makes for wonderful linguistic gymnastics to those
who enjoy such activities, not to mention incredibly long and largely unintelligible judicial
decisions and academic papers that seem to bear a far greater relationship to
philosophical discourse than useful guidance. There are, however, some of us who
happen to subscribe to what is a fairly simple notion, i.e., has someone
created/discovered/invented a novel and non-obvious solution that is directed to a real
world problem?

Visit the site and then explain why it is that the subject matter of the Bilski application is
undeserving of patent protection that is routinely extended to subject matter oftentimes
of dubious value to the public at large. It seems to me that many people are so focused
on the "Big Four" contained in 35 USC 101 that the policies underlying why patent law
was implemented in the first place are relegated to a subordinate position. These "Big
Four" are words on paper that relate back in large measure to the original patent law
implemented by Congress, the Patent Act of 1790. If anything, I believe those hanging
on to the words of the "Big Four" have a quite short sighted view of what progress in the
useful arts really means.

Posted by: M. Slonecker | Feb 18, 2008 at 01:57 AM

"has someone created/discovered/invented a novel and non-obvious solution that is
directed to a real world problem?"


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Call options, put options and forward contracts are hardly new innovations.

Posted by: big_hairy_rat | Feb 18, 2008 at 02:14 AM

You fail to see the beauty of this way of seeing things SF.

In your example the tangible benefit is the fuel filter itself, a manufactured article
comprising foam (or whatever for a car one).

If however a claim recites: A computer readable medium with instructions thereon to
perform:
Retrieving x information.
Retrieving y information.
Comparing x information to y information.
(it fails to say on the end "outputting the comparison to a screen for a user to observe)

Then we see a clear distinction from the foam article manufactured that is capable of use
as a fuel filter (thus it's designation as a fuel filter). Essentially the only tangible article
they have created is a cd, etc. which has no function (recited) other than the storage and
relaying of specific directions to a computer. It's just like claiming "a page that is
readable by a computer with instructions on how to do a manufacturing process on it"
and we all know where those belong.

Do you guys also believe pages of instructions should be patentable as long as they can
be scanned in a computer and the computer derive instructions therefrom? Is there
something special about a cd or a hd compared to a piece of paper? IMO no, there's not,
the only thing special about them is the amount of information one article can hold in a
small amount of physical apace. Maybe microfilm should be patentable? The only things
patentable in that whole situation is the whole process performed by the machine, and
all processes I know of are required to have a tangible result in the actual claim. Also,
the courts are being generous in giving even that interpretation, so I wouldn't push the
matter if I were you guys, you might get smacked down.

Posted by: examiner#6k | Feb 18, 2008 at 02:43 AM

I guess all the "crappy" software patent attorneys (whatever that is) will line up behind
Mooney (who seems to be out of crack) to be the number one crappy patent blogger.

Posted by: CaveMan | Feb 18, 2008 at 02:54 AM

Slonecker,

Thanks for noting my short post.
What I'm really interested in is seeing a copy of the actual Bilski patent application which
to date I have not suceeded in finding.

What's shocking here on this supposedly professional patent blog is that everyone
seems to be able to construe Bilski's patent claims without ever having read the
application. Last I heard, claims are construed in light of the specification, of which the
claims are an intergral part.

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Posted by: step back | Feb 18, 2008 at 05:53 AM

E#6k wrote:

>Patent attorney, on point 6. Yes we can stop you from patenting that, you know why?
>Because the moment you start cleverly making a program that is not "hard coded" and
>hence has a variable outcomes (one that changes based on the a determination that
>changes depending on a given outcome of another piece of information) then you step
>away from that which was made by man, and into the realm that was not per se made
>by man, and that which was instead made only by the machine.

>In essence the man did not make the decision as to the variable information created
>after that which he entered, he made a machine to make the decision for him and

My point is that if you can claim the function of a machine--you should read the MPEP
section on this--and software is nothing more than shorthand for hardware--which it is--
then you cannot stop software claims without stopping all hardware claims or without
addressing the issue of whether the function of a machine can be claimed.

E#6K, computers are deterministic. That doesn't mean you know what they are going to
do, but they are deterministic--at least the ones we are using now. Computers represent
information and transform the represented information. Claims may read on human
behavior. A well-cited case for processing grain, Deener, reads on a physical process
that you E#6K could do in your backyard. Why does't that bother you? Why does it
bother you that a claim to a computer program may read on your mental process? But, it
doesn't bother you that claims to proceses of physical materials can read on your
physical behavior?

Near the end of the transcript you can hear Judge Moore say "disembodied idea." It is at
about 56 minutes. Her pretext of being fair falls apart as she tries to help the solicitor's
attorney. I am sure that Judge Moore doesn't understand computers. She is without a
doubt smart, but she is operating under the assumption that she is serving some greater
good by narrowing 101 and crippling the patent system. What a shame to see our great
system destroyed by a judge with so little integrity. I wish Judge Rich were alive to set
her straight.

The most disturbing aspect of this entire transcript is the tone. That the poor ole USPTO
needs help in examining the patent applications, so please cut back on what can be
patented so the poor little people that work for us can do their job. Please just get rid of
those business methods and computers things, they are just too hard for us to figure out.
Maybe, Mr. Solicitor, if you can't figure it out, you should be fired and someone who can
sort it out should be hired.

Posted by: Patent Attorney | Feb 18, 2008 at 08:47 AM

"Call options, put options and forward contracts are hardly new innovations."

True, and perhaps examination would show this to be the case with the Bilski
application. Our laws extend the courtesy of an examination to all manner of innovations,



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and I am one who happens to believe it should be extended to Messrs. Bilski and
Warsaw as well.

Posted by: M. Slonecker | Feb 18, 2008 at 11:01 AM

step back,

I searched as well for a copy, but only the BPAI decision turned up. It references 11
claims, but sets forth only the first.

Posted by: M. Slonecker | Feb 18, 2008 at 11:05 AM

"You fail to see the beauty of this way of seeing things SF."

Actually, I see it. I just disagree with it, that all. And to be clear, my issue is with the
USPTO's distortion of the "tangible result" language to prevent useful components from
being claimed because they have no function without other components. They want to
see some result articulated and *achieved* in the claim -- e.g., wanting the transmitter
actually transmitting or receiver actually receiving. The State-Street Bank case didn't
mandate that apparatus claims must have some sort of process-result being recited in
the claim as being acheived for the apparatus to be 101 subject matter. Yet I think that's
how the USPTO (at least some examiners I've seen) apply State Street. Again, that's
why the fuel filter question works. Examiners never require an additional element of the
fuel filter actually filtering.

Your paper/CD-ROM question goes to a 101-related, but different issue: to what extent
machine-readable mediums be patentable (e.g., should CD-ROMs, should paper, should
punch cards?). The fuel filter analogy isn't tailored to that issue, obviously.

Posted by: SF | Feb 18, 2008 at 12:30 PM

rat :: "Call options, put options and forward contracts are hardly new innovations."

perhaps but only in a very general sense, black-scholes is only 35 years old ...

new innovation did not stop in information theory or algorithmic theory or options theory
in particular >> LTCM, (one founder was scholes) in applying that foundational "options"
theory, exposed the *entire* financial system to serious risks in 1998-1999 ... and the
federal reserve had to intervene ... with real tangible funds ...

ignoring the inherent relationship between hardware and software is bizarre ...

>>estimating trajectories during WW2 had much to do with the development of the
theories that support the "equivalence" of hardware with software - a PC is a Turing
machine in a very tangible sense - the original "computers" were humans passing data
to be calculated from one person to the next to arrive at a "solution" or output<<

Posted by: ironicslip | Feb 18, 2008 at 12:40 PM

ironicslip

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There is so much to disagree with in your post, it is hard to know where to begin.

Black and Scholes did not invent options - they merely formulated one way to value
them.

The basic problem that LTCM ran into was that they applied a theory that assumed
liquidity / continuity to a market that was illiquid and not necessarily continuous.

The Federal Reserve intervention to save the reckless from their own folly may be one of
the biggest mistakes ever by a monetary authority. The moral hazard implications were
huge. Prudent investors were punished to save the reckless. The Fed's intervention in
LTCM set the stage for the dot com bubble and the current bond market / real estate
bubble.

Posted by: big hairy rat | Feb 18, 2008 at 01:46 PM

I agree with you SF except that a fuel filter is presumed to be necessarily used as a fuel
filter and achieve a tangible result. A program on the other hand could run forever and
ever without having a tangible result and thus needs to have its tangible effect specified.

And most especially - "USPTO's distortion of the "tangible result" language to prevent
useful components from being claimed because they have no function without other
components."

I'm pretty sure that if you claim just the component by itself you could get a patent. If you
claim an apparatus with that component then you're probably right, it should pass 101,
but it won't pass 112, best mode and also skipping the material step of adding the
second component which is required to achieve a function in the claim.

We don't want incomplete nonsense floating around, 112 is usually our tool to take care
of it, and would probably be used even if we took away the 101 rejections to software
with no tang. Be thankful we do it.

And you're right, it's the punchcard/scanned page question as to why comp readables
fail without a tangible benefit, and like I said, all methods I know of are req'd to have that.
I know all the ones I will be putting out will.

Posted by: examiner#6k | Feb 18, 2008 at 03:08 PM

"E#6K, computers are deterministic. That doesn't mean you know what they are going to
do, but they are deterministic--at least the ones we are using now. Computers represent
information and transform the represented information. Claims may read on human
behavior. A well-cited case for processing grain, Deener, reads on a physical process
that you E#6K could do in your backyard."

Problem is, they're not "deterministic" always on information provided by a human,
they're "deterministic" based on data gained by itself. I know of many many industrial
processes that are specifically designed to take measurements (temp, etc) put it in the
system and then make comparisons versus known limits and take an action (sound an
alarm if it's out of its range). No human even touches the system once it's in place.

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You further assert that you're trying to claim the function of a machine, why then are all
of your claims towards such written as "a computer readable medium" instead of "a
method of causing a machine to do x y z"? Because when it's written out like that you
fallacy becomes more apparent. All you did was cause the machine to do x y z and it
could sit there forever and never have an impact on anything either having done x y z
one time or having repeated it (your choice), until you either cause an alarm, or output
the information to a user you've not affected anything. There is no tangible benefit. So
you try to get around this by saying "oh well I'm claiming a computer readable medium,
which is tangible in itself", too bad, you can't claim a piece of paper or punchcard with
instructions just the same as you can't claim a hd or cd.

Good Game software only patents.

Posted by: examiner#6k | Feb 18, 2008 at 03:23 PM

"I agree with you SF except that a fuel filter is presumed to be necessarily used as a fuel
filter and achieve a tangible result. A program on the other hand could run forever and
ever without having a tangible result and thus needs to have its tangible effect specified."

I don't even have a problem with the tangible result being specified. I just have a
problem with the claim having to say the result is achieved.

If you can presume the fuel filter would be used for its intended purpose and its
configuration, I don't see why you can't presume the same for a computer-readable-
medium configured to perform a process.

And fuel filters, if never placed into a car, won't provide any tangible benefit. Just like
punch cards or CD-ROM sitting on a counter and not added to a computer have no
tangible benefit. But if adding the computer creates 112 issues, the same can be said for
the fuel filter. Would you invalidate a claim to a car comprising a fuel filter under 112
because nothing else was recited?

I think that software, perhaps for its potential for breadth of claims with minimum effort in
R&D, has been singled out. The problem is that, often, they use other attacks like 101
and 112 instead of just focusing on why the technology should or should not be
patentable as a policy matter.

Posted by: SF | Feb 18, 2008 at 03:56 PM

"And fuel filters, if never placed into a car, won't provide any tangible benefit."

Again, it is an article of manufacture that stands ready for its intended purpose and will
necessarily fulfill that intended purpose upon entry, it is "presumed" because it must
happen (based on physics, reality, etc). With the program, there is no such presumption
because it is not required (by some law of physics, reality, etc) to have a tangible effect if
it is run on a computer. It can just run and run and run and nothing ever happen as a
consequence.

"Just like punch cards or CD-ROM sitting on a counter and not added to a computer
have no tangible benefit."

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You continue to miss the point, it is not only that the punch card in and of itself sitting on
a counter lacks tangible benefit, it is that the actual instructions themselves cause no
tangible benefit. I starred it to draw your attention to the point.

Posted by: examiner#6k | Feb 18, 2008 at 04:34 PM

examiner#6k writes:
"Problem is, they're not 'deterministic' always on information provided by a human,
they're "deterministic" based on data gained by itself. I know of many many industrial
processes that are specifically designed to take measurements (temp, etc) put it in the
system and then make comparisons versus known limits and take an action (sound an
alarm if it's out of its range). No human even touches the system once it's in place."

I'm not entirely sure as to the point you are trying to make ... then again, putting together
clear sentences and coherant thoughts are not one of the well-known attributes of
examiners.

If you are trying to distinguish computer-implemented methods from other types of
methods, then you have failed miserably. There are many types of computer-
implemented methods that do not involve any human interaction whatsoever.

"it is an article of manufacture that stands ready for its intended purpose and will
necessarily fulfill that intended purpose upon entry."
So what is the difference between the fuel filter and a computer-program product (i.e., a
computer program stored on a CD, DVD, flash drive, hard drive etc.)? Once properly
installed within the computer, it "stands ready for its intended purpose and will
necessarily fulfill that intended purpose upon [installation]."

"You continue to miss the point, it is not only that the punch card in and of itself sitting on
a counter lacks tangible benefit, it is that the actual instructions themselves cause no
tangible benefit."
You seem to miss the point between the 1st and 2nd paragraphs of 35 USC 112.
Describing how to make and use the claimed invention is part of the 1st paragraph and
that can be done in the specification. The 2nd paragraph requires distinctiveness from
the claims (i.e., the ability to distinguish the claimed invention from the prior art). As
such, the claims do not need to enable the invention. For this reasons, there is no need
to explicitly recite hardware in computer-related claims.

"Because when it's written out like that you fallacy becomes more apparent. All you did
was cause the machine to do x y z and it could sit there forever and never have an
impact on anything either having done x y z one time or having repeated it (your choice),
until you either cause an alarm, or output the information to a user you've not affected
anything. There is no tangible benefit."
You seem to be confused as to what is required as to the "tangible benefit." There is no
requirement that the claims recite a tangible benefit ... if there is, I would like to see the
specific section of the code or a cite to case law that supports such a position. Again,
you need to refamiliarize yourself with the requirements of the 2nd paragraph of 35 USC
112.




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Instead, I see "tangible benefit" as just another way of describing "utility," which does not
need to be specifically claimed. As long as one can establish utility, then one can
establish a "tangible benefit."

Posted by: pds | Feb 18, 2008 at 06:08 PM

"Are you out of time or are you out of straw?"

Classic MM ... someone takes considerable time to write something thoughtful and
relevant and you respond with the above comment. I understand your need to mask your
inadequacies regarding topics you know nothing about (but pretend to), but is that the
best you can come up with?

Then again, you certainly proved me right when I wrote:

"MM's rather simplistic comments, particularly when it comes to software and patentable
subject matter, evidences his failure to grasp some of the underlying concepts and
nuances associated with these issues. Regardless, I do enjoy when MM posts about 101
issues and other things in which he is apparently very poorly-versed."

MM wrote:
"Keeping it simple is the key to success, pds. Attorneys who fail to recognize this
concept tend to suck. And/or write long comments on blogs that nobody reads."
I guess keeping it simple is a good tact when you are not particularly knowledgable
about a topic/issue/etc (keeping it simple allows you to sound knowledable when you are
not). Also, I imagine it would be good to mask laziness (i.e., one being too lazy to
properly "bone up" on the nuances of a particular issue). The problem about "keeping it
simple" however, is that over the long run, the person that has a better understanding of
the nuances and complexities will come out ahead more often than not.

If you wanted simple, you should have stuck to digging ditches as a profession.

As for writing "long comments on blogs that nobody reads," that is quite an indictment
about a blog (Patently-O) for which you are the #1 poster (probably for a couple of years
now) in terms of volume (both in discrete posts and useless comments).

Most of us who write long comments on this blog are engaging in what I think is one of
the more valuable purposes of the blog, which is to engage in thoughtful discussion with
similarly situated individuals on topics that are important to the community in which we
are a part. On the other hand, as I have noted before, you are a classic troll that adds
very little positive to the community.

The post to which you directed your "[a]re you out of time or are you out of straw?"
comment is a perfect example as to why I read Patently-O. Your comments to that very
post, however, are also a perfect example as to why I don't read Patently-O now as
much as I once did.

Posted by: pds | Feb 18, 2008 at 06:33 PM




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"True, and perhaps examination would show this to be the case with the Bilski
application. Our laws extend the courtesy of an examination to all manner of
innovations"

The claims were examined and they were found to be unpatentable subject matter by
the PTO.

The Metabolite Labs "question" (that we all know the answer to, in spite of the Supremes
ducking out) is very much an issue here. Look again at the claim. It comprises the steps
of (1) initiating a transaction, (2) identifying something and (3) initiating something,
wherein the "goal" is "achieved."

One bizarre aspect of this claim is that it is not at all clear who is performing the steps.
Who "initiates" the transactions"? The consumer? The commodity provider? Or the
manager of the commodity provider's risk? It hardly matters because "initiating" a
transaction is old in the art. In 2007 (or whatever the priority date for this piece of
garbage) there is plainly no invention in "initiating" a transaction between any two people
on planet earth.

The only step in this claim that can be considered "inventive" is therefore the step of
"identifying" the market participants who transacted with in step (3). And as put forward
here, the step of "identifying" the "market participants" consists merely of "identifying" the
"market participants" who can be sold to at a "second fixed rate". In other words, the
claim is infringed by ANY commodity provider who sells his/her commodity at a different
rate to a second set of consumers (aka "market participants") with the goal of balancing
the risk of selling to the first set of consumers.

Setting aside the obviousnes issues, the 101/Metabolite problem here is that the
application (allegedly) teaches an indisputable mathematical relationship between
market participants and then claims the universe of exploiting that relationship. Granted,
Bilkski's claim 1 goes one step further than the claim at issue in Metabolite (which
concluded with a mental step of "determining" the disease state as an outcome) but
Bilkski's final step (3) encompasses the universe of steps of credible utility. Thus, Bilkski
is impermissibly claiming the very *idea* of managing consumption risk costs by a
commodity provider, regardless of how those risks are managed (including the
managing of risks in the commodity provider's/risk manager's own head).

So called "business method" patents are particularly susceptible to this problem and its
one of the reasons that they should be tanked (the other being that patents exist to
promote the useful arts; capitalism, on the other hand, is all that is necessary to promote
"minimizing losses" or "making money"). Imagine a claim to a method of masturbating
using only ones hands and comprising an intermediate step of "identifying a fantasy
involving a broken satellite until it becomes sexually exciting". That is the more or less
what Bilkski's claiming here. It may not have been described before and the outcome
may be desirable but it ain't a patentable method.

Posted by: Malcolm Mooney | Feb 18, 2008 at 07:01 PM

"The specification shall conclude with one or more claims particularly pointing out and
distinctly claiming the subject matter which the applicant regards as his invention."


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Your claim says only the part about what runs on a machine is my invention. According
to 101, your invention must have a tangible benefit amirite (That is, it must produce a
“useful, concrete and tangible result.” State Street Bank & Trust Co. v. Signature
Financial Group Inc.)? Point out to me the tangible benefit of running a program per se.
What precisely was the benefit of transforming some electronic 0's into some 1's and 1's
into 0's? Do tell if you please.

"2nd paragraph requires distinctiveness from the claims (i.e., the ability to distinguish the
claimed invention from the prior art). As such, the claims do not need to enable the
invention."

You may find:

2172.01 [R-1] Unclaimed Essential Matter
A claim which omits matter disclosed to be essential to the invention as described in the
specification or in other statements of record may be rejected under 35 U.S.C. 112, first
paragraph, as not enabling. In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976).
See also MPEP § 2164.08(c). Such essential matter may include missing elements,
steps or necessary structural cooperative relationships of elements described by the
applicant(s) as necessary to practice the invention. In addition, a claim which fails to
interrelate essential elements of the invention as defined by applicant(s) in the
specification may be rejected under 35 U.S.C. 112, second paragraph, for failure to point
out and distinctly claim the invention. See In re Venezia, 530 F.2d 956, 189 USPQ 149
(CCPA 1976); In re Collier, 397 F.2d 1003, 158 USPQ 266 (CCPA 1968). But see Ex
parte Nolden, 149 USPQ 378, 380 (Bd. Pat. App. 1965) (“[I]t is not essential to a
patentable combination that there be interdependency between the elements of the
claimed device or that all the elements operate concurrently toward the desired result”);
Ex parte Huber, 148 USPQ 447, 448-49 (Bd. Pat. App. 1965) (A claim does not
necessarily fail to comply with 35 U.S.C. 112, second paragraph where the various
elements do not function simultaneously, are not directly functionally related, do not
directly intercooperate, and/or serve independent purposes.).

To be helpful. Oh, and thanks for the suggestion, but I brush up on my 112 just about
every week thanks to people like you. I'm intimitely acquainted at this point. According to
the above text, it looks like I could get you under the first, AND second paragraphs.
Good game pds. Play again.

Oh, and if you try to get around that by not stating output is essential in your desc or
claims, then it's not enabled AND I'll make the "essentialness" of record for you no
problem.

Smarter people than us have talked this over already and I have the full benefit of their
teachings, there's a reason they won back in the day, just give up. Also, it appears part
of my above post didn't get put up, I must have forgotten to put in the code to post at
home before I left for the office.

Posted by: examiner#6k | Feb 18, 2008 at 07:19 PM

MM I was going to post along the lines of what you said about initiating and identifying,
but it struck me (I'm unfamiliar with business methods) that a "sale" might be considered


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a man made thing (arguably) so I decided not to post it. I just don't know about that
angle.

Posted by: examiner#6k | Feb 18, 2008 at 07:24 PM

Mr. Mooney:

Below is an exchange of comments between me and BHR:

In pertinent part I stated "...has someone created/discovered/invented a novel and non-
obvious solution that is directed to a real world problem?"

BHR responded with "Call options, put options and forward contracts are hardly new
innovations."

My rejoinder to BHR was "True, and perhaps examination would show this to be the
case with the Bilski application. Our laws extend the courtesy of an examination to all
manner of innovations, and I am one who happens to believe it should be extended to
Messrs. Bilski and Warsaw as well."


To this exchange you advanced the following insight:

"The claims were examined and they were found to be unpatentable subject matter by
the PTO."

If I may, I would like to draw your attention to the fact the exchange of comments
pertained to the criteria of new, useful and non-obvious, and not to Section 101 in
isolation. Your quip that the claims in Bilski "were examined" is off the mark and without
merit given the then on-going discussion.

Above I also lamented what I believe is the almost slavish preoccupation by some with
the just the words of the "Big Four" in 101, and concluded with the statement:

"I believe those hanging on to the words of the "Big Four" have a quite short sighted
view of what progress in the useful arts really means."

I will leave it to your imagination whether or not you fall within the class I refer to as
"those".

In all fairness, I must give you credit for attempting to analyze claim scope. I chose not to
do so simply because the application is unpublished and I believe analysis is a futile
exercise in its absence.

Posted by: M. Slonecker | Feb 18, 2008 at 08:10 PM

The application is so old I don't even think it's in the system yet, the board decision is too
long for me to read the whole thing of, but I have to say that after reading part of it, it



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becomes clear why this is about to be smacked down. With that however I'm out of this
discussion for today I'm going to get something done.

Posted by: examiner#6k | Feb 18, 2008 at 08:38 PM

examiner6k writes:
"To be helpful. Oh, and thanks for the suggestion, but I brush up on my 112 just about
every week thanks to people like you. I'm intimitely acquainted at this point. According to
the above text, it looks like I could get you under the first, AND second paragraphs.
Good game pds. Play again."

I've squashed that "unclaimed essential matter" rejection every time it has come across
my desk (always traversed, always withdrawn). You are reading it far too broadly. For
example, a power supply is a necessary component to the operation of just about every
device in art units 2100, 2600, and 2800. However, I suspect very few of the claims to
those devices actually recite a power supply. Being "essential to the invention" and
component necessary to make the invention work is two different things. Similarly, in
most instances, a computer (in most instances) is not essential matter to a claim
directed to a computer-related method/system/product claim.

"Oh, and if you try to get around that by not stating output is essential in your desc or
claims, then it's not enabled AND I'll make the "essentialness" of record for you no
problem."
Returning to the oil filter example, what is the "tangible benefit" (i.e., analogous to your
"output") to the oil filter? Reduced engine wear, cleaner oil???? Does that need to be
recited in the claims in response to you "essentialness" argument??? .... I don't think so.

"Smarter people than us have talked this over already and I have the full benefit of their
teachings, there's a reason they won back in the day, just give up. Also, it appears part
of my above post didn't get put up, I must have forgotten to put in the code to post at
home before I left for the office."

hahahahahahahahahahahahahahaha

tell me another one ....

hahahahahahahahahahahahahahaha

I'm not sure who you are referring to and how, precisely, did you benefit from their
teachings, but I doubt that they were smarter than most people who post on this board
.... particularly if what you spout on this board, on a daily basis, reflects those teachings.

Nice try .... have anymore twisted caselaw you want shot down???

BTW: I've seen all the bad 101 rejections/arguments already. You are going to have to
work really hard to post something that I haven't seen before (and eviscerated).

Posted by: pds | Feb 18, 2008 at 08:52 PM




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6K wrote, "Again, it is an article of manufacture that stands ready for its intended
purpose and will necessarily fulfill that intended purpose upon entry, it is 'presumed'
because it must happen (based on physics, reality, etc). With the program, there is no
such presumption because it is not required (by some law of physics, reality, etc) to have
a tangible effect if it is run on a computer. It can just run and run and run and nothing
ever happen as a consequence."

And the CD-ROM stands ready to be combined with a computer and is without a doubt
an article of manufacture. And the software stands ready to perform once the requisite
events trigger it. The fuel filter stands ready to perform, but you have to put gas in the
tank, make sure the battery has juice, ensure the fuel pump is working, etc.

Why do we get to presume that the car must have a battery, gas, and a fuel pump if it's
not recited in the claims and yet we can't presume that the software configured to
perform a function won't be triggered to perform that function?

Posted by: SF | Feb 18, 2008 at 10:07 PM

I call pure unadulterated b$, I've used it around 5 times so far, nobody has successfully
traversed, and all have amended it in. Then again I didn't go around saying that they had
to claim a power supply, only things that were disclosed as being essential to the
practice of their invention. I know precisely how you're implying some examiners have
gone overboard with this, and this is not the case with me.

"a computer (in most instances) is not essential matter"

Of course not, because it's implicitly assumed to require a cpu to run. The monitor etc.
however is required, at least broadly in terms of "outputting". Every single time. Give me
one example where you or anyone else got around this and I'll show you a patent waiting
to be invalidated upon trial. Good job on sneaking it through the PTO, too bad it'll get
smacked around a court into re-exam.

It would be 112'd and no getting around it (even if you'd gotten past 101, which you
didn't). Be sure to get back to me with the weak 112's you got around by traversing. Your
point here is still owned in the face, you and VA must be good friends.

"Returning to the oil filter example, what is the "tangible benefit" (i.e., analogous to your
"output") to the oil filter? Reduced engine wear, cleaner oil???? Does that need to be
recited in the claims in response to you "essentialness" argument??? .... I don't think so."

Um, no, I never said it did, and you're right, I would have to work really hard to post
something you haven't seen before, because someone has probably already explained
this situation to you and you just straight up are incapable of understanding it. You didn't
eviscerate anything of substance I assure you, but more on that later. You do however
set up easily recognizable unrelated arguments to support your point. While you
conveniently sidestep the issue that inherent to "oil filter" is the presumption that it WILL,
NO MATTER WHAT, FILTER OIL (and make it cleaner, which is presumed by "filter")
when in a fitting known to one of ordinary skill to be required for it to operate as such (an
oil line perhaps?). And conveniently look over the fact that a program, without otherwise
being specified as being output, WILL DO NOTHING BUT EXECUTE ON THE IMPLIED

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HARDWARE NEEDED TO EXECUTE IT (the cpu, NOT including an output means of
any type), NOTHING, ZILCH. This is why it fails 101, but if your point is that the output
means are (or should be) presumed to be in place, then I say that you are wrong, and
are then hit under 112 even if that were the case (which it's not). Why? Because while
the outputting is not essential to the execution of your code, as an oil line is essential to
the functioning of an oil filter, the output means or outputting ARE essential when it
comes to producing a tangible benefit which is what your invention is producing (we're
presuming for the sake of arguing that you meet 101's tangible benefit req). Therefore,
they will be essential subject matter in such a case, and you likely even disclosed them
as being such, hoping beyond hope to have gotten around 101 (which in reality you
won't have). Further, this is not an "lol your computer needs a power supply, a wall
socket, power lines, a power plant, some coal, a shoveler, and a coal miner" 112
because that is all necessarily presumed to be there to even execute the code, just like a
cpu (but not a monitor) is.

As to how I benefitted from those smarter people than us? I can discuss the issue more
or less rationally and with much greater clarity than an attorney which I presume to be an
old hand, and when I'm an attorney I'll be able to avoid the bs you create for yourself all
the time with ease and save my clients $$$.

Oh, but really, give us even one single example of someone not putting in the output
means (and maybe litigating it?!?), and also one of you EVISCERATING an instance of
a 112 addressing essential matter instead of presumed periphery matter. Please, I'm
waiting with very baited breath. Hell, just recall it from memory if that's the best you can
do. Oh, what's that? You didn't do a darn thing, and are sitting down, shutting up and
trying with renewed vigor to understand those people that ARE smarter (or spent more
time/effort on the matter) than you? Good times, I did it and I've got more to go, you
really should try it sometime though it's helpful.

If you don't have anything of substance to address my actual points raised then I'm not
bothering to respond, this is taking too long for me to help you out even as fast as I type.

Posted by: examiner#6k | Feb 18, 2008 at 10:10 PM

"Why do we get to presume that the car must have a battery, gas, and a fuel pump if it's
not recited in the claims and yet we can't presume that the software configured to
perform a function won't be triggered to perform that function?"

Alright since you spotted the actual issue I'll respond in a more full manner. We presume
that because those are all absolutely essential to what is in the claim, a filter that has the
stated purpose of filtering oil. And in the words "a computer readable medium comprising
instructions to get x and y and compare them" we only need presume that there is a
means of reading the information on the readable medium into a cpu and that it is run on
a CPU, nothing further (no monitor, no internet, etc). And also you're not allowed to rely
on the periphery concerns (an oil line, the cd rom) to drop your claim into a statutory
catagory, because it's not the actual claim that's in the statutory category, it's the
periphery matters only that are in the category.

And we're certainly not going down the road of considering the computer readable
medium (cd etc.) to be an article of manufacture are we? Because they've been there


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and taught on that already as well, it's very closely analogous to a piece of paper. Other
than the first guy that made a cd I suppose, he could claim it, just like the first guy to
make a special paper can claim that special paper.

Posted by: examiner#6k | Feb 18, 2008 at 10:34 PM

This whole issue of the patentability of software hinges on the definition of 2 concepts:
What exactly is software? and What exactly is a machine in statute?

Either machine-code in software can implement a machine (Patent Attorney's view) or it
cannot (examiner#6k's view). For examiner#6k's sake, let's assume that imperative
machine-code that is sequentially executed in a processor cannot be a statutory
machine under U.S. law. But imperative machine-code is not the only form of
"executable software". Executable software also includes the netlist in field-
programmable gate arrays (FPGAs). The netlist in an FGPA is not a sequentially-
executed imperative language of instructions. The netlist is a software enumeration of
logic gates and the connectivity between them. Imperative machine-code is to a
processor as a netlist is to an FPGA. The FPGA executes the logic-gate definition that is
downloaded to it at runtime. The FGPA is to a digital schematic as an ASIC is to a digital
schematic, except that the FPGA must have its schematic downloaded at runtime (even
if the netlist is stored internally within the FPGA in flash RAM), whereas an ASIC has its
schematic lithographed onto a silicon die chemically. An FPGA is a kind of "processor"
whose "language" is a software file called a netlist. That language is not executed
sequentially, but rather is "executed" by electrons flowing along the conductor and
semiconductor nanodevices that the netlist software declared during download at
runtime.

IS FPGA NETLIST SOFTWARE PATENTABLE?
The netlist of an FPGA has all of the characteristics that examiner#6k ascribes to
imperative machine-code software. Thus, the netlist of an FPGA meets examiner#6k's
definition of software. Conversely, I don't see even examiner#6k claiming that the logic
schematic of an integrated circuit is not patentable in general. So applying
examiner#6k's line of reasoning that we have seen so far, the machine defined by a
schematic of an integrated circuit would be patentable if it has been implemented as a
lithograph onto a silicon die in an ASIC but that EXACT same VHDL or Verilog logic
schematic would not be patentable if implemented as a netlist in an FPGA because it is
software that does not have a physical representation other than the transient 0 versus 1
energy states in a semiconductor. If such an illogical view were codified into law or
precedent (such as by justices not understanding that executable software has 2
representations: imperative sequential instructions in machine-code versus a netlist in an
FPGA), then we would have the oddball case law where the ASIC is patentable because
it is a *PHOTOGRAPH* (a lithograph is merely a direct-contact photographic process
that governs a chemical etching) but the netlist's exact same logic gates in the FPGA
would not be patentable because it never when through the photographic process that
resulted in a change to matter.

EXAMINER#6K'S CRITICISM OF SOFTWARE AS A PATENTABLE MACHINE ALSO
APPLIES TO THE RUNTIME BEHAVIOR OF AN INTEGRATED CIRCUIT'S GATES
By the way, examiner#6k, the runtime behavior of an all-silicon integrated circuit (i.e.,
ASIC, not FPGA) can be just as deterministic or just as nondeterministic as sequentially-


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executed imperative machine-code software. Much of your argument against the
patentability of sequentially-executed imperative machine-code software also spills over
into being an argument aginst the patentability of all mechanisms within a digital
integrated circuit. The runtime behavior of an integrated circuit (ASIC or FPGA) is not
directly determined by the human being, but rather the integrated-circuit machine directly
controls through a cascading set of ramifications the eventual the output. The output is
just as indirect in an integrated circuit depending on accumulated prior state as you state
for sequentially-executed imperative machine-code. What is good for the goose is good
for the gander.

Posted by: optikos | Feb 18, 2008 at 10:34 PM

@Patent Attorney You are right on point 1, there is no difference between software and
hardware. However, your make an incorrect claim. All software has an equivalent ROM
based implementation. For instance, you can lookup multiplication results in a table
rather than do successive additions. For any set of inputs there's an answer. That
answer can be looked up given a sufficiently large data store. What this really means is
that there is no distinction between software and data. The formal statement of this is the
Church-Turing Thesis and is almost universally accepted. You are wrong on point 11.
The big picture is that the purpose of the patent system is not to give the government the
power to reward and enrich inventors but to prevent "hording" of useful information and
the resultant retardation in the progress of the useful arts. Note that the present state of
the software industry is such that such "hording" is neigh impossible. Almost as soon as
someone writes a program, someone else will be able to produce an equivalent program
based on nothing more than an accurate description of the original. Because patents are
not needed to prevent information hording in the software industry _any_ market
distortions introduced by the monopoly which patents convey to the inventor are not
justified; the huge distortions in the software market that occur under the current patent
regime have no countervailing social benefit. Those portions of the patent system which
harm rather than hurt society should be abolished. Software patents are in this category.

Posted by: Karl O. Pinc | Feb 18, 2008 at 10:55 PM

"I've used it around 5 times so far, nobody has successfully traversed, and all have
amended it in."
Then our paths have never crossed … unfortunately. Too bad, you look like the type I
would be putting on my appeal brief -> reopen prosecution -> appeal brief -> reopen
prosecution merry-go-round. This is where the examiner keeps coming up with new
art/new rejections but never gets a count because I put them right back into appeal.

"Of course not, because it's implicitly assumed to require a cpu to run. The monitor etc.
however is required, at least broadly in terms of "outputting". Every single time. Give me
one example where you or anyone else got around this and I'll show you a patent waiting
to be invalidated upon trial. Good job on sneaking it through the PTO, too bad it'll get
smacked around a court into re-exam."

Have you ever looked at the claims being issued by the USPTO in the software arts???
Apparently not. Moreover, do you know how many those patents do not involve
"outputting" something viewable by a user (whether claimed or not)? The answer is a
very large percentage of them do not. Much of what I see happens "behind closed


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doors" and totally out of the view of the user. Actually, some of what I see is to make
improvements on the prior art that are "transparent" to the user. BTW: if you are getting
hung up on "outputting," then it is perfecting *&%#ing clear to me that you haven't set
foot anywhere near that art unit.

"While you conveniently sidestep the issue that inherent to "oil filter" is the presumption
that it WILL, NO MATTER WHAT, FILTER OIL"
Really???? Without the oil? without the means to supply the oil? without the dirty oil
itself? (i.e., if the oil is perfectly clean, then the oil filter does nothing). Your example of
the oil filter PRESUMES the presence of both dirty oil and something to deliver the oil to
the filter … yet NONE of those things are required to be claimed. Oh, and I forgot even if
you have both of those, filtering dirty oil is not and end to itself, you need something that
will positively benefit from the dirty oil be cleaned … like then engine. Then again, an
engine by itself does nothing … it needs to be hooked up to something useful … well,
you get the point (or at least most everybody else here gets the point).

Regardless, your low-level arguments don't even touch upon some of the more
interesting arguments actually being (mis)used by the USPTO … such as the "broadest
reasonable construction" which I have seen by many examiners to actually produce a
narrow claim construction instead of a broad claim construction. Again, another example
as to how disconnected you are from this issue. While you are at it, you should look
pages 22 and 23 of the In Re Comiskey decision … some really nice language there …
makes it perfectly clear that one does not need to recite a computer in a claim.

"And we're certainly not going down the road of considering the computer readable
medium (cd etc.) to be an article of manufacture are we? Because they've been there
and taught on that already as well, it's very closely analogous to a piece of paper."
You better take another look at the MPEP. I'll give you another hint, look at 2106.01

BTW: I enjoy reading your self-delusions of grandeur. Although I have nothing but
contempt for MM, at least he has shown (on occasion) that he has the mental acuity of a
lawyer … which requires a precision in facts, critical analysis, and the law about which
you have long shown not to have the slightest clue.

Posted by: pds | Feb 18, 2008 at 11:38 PM

"Note that the present state of the software industry is such that such "hording" is neigh
impossible. Almost as soon as someone writes a program, someone else will be able to
produce an equivalent program based on nothing more than an accurate description of
the original."

It many seem like that to the lay person. However, dig into what really goes on behind
the scenes and you see that their may be hundreds/thousands of ways to do certain
things, but it "way" has its unintended/intended consequence/upside/downside. Simply
saying that program XYZ prevents a server from being subject to a denial of service
attack and actually coming up with a program that does exactly that are two things
entirely.

"Because patents are not needed to prevent information hording in the software industry
_any_ market distortions introduced by the monopoly which patents convey to the


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inventor are not justified; the huge distortions in the software market that occur under the
current patent regime have no countervailing social benefit."
They have no social benefit to the likes of Microsoft who would likely take every idea and
put it in their own software. In case you didn't realize this, but most software developers
earn a living because people pay for the software he/she writes. Without intellectual
property, who would invest in a startup company if the likes of Microsoft could copy that
company's ideas???

"Those portions of the patent system which harm rather than hurt society should be
abolished. Software patents are in this category."
Communism still lives ... it resides in the open source crowd.

Posted by: pds | Feb 18, 2008 at 11:50 PM

Karl O. Pinc,

"However, your make an incorrect claim. All software has an equivalent ROM based
implementation."

Limiting hardware implementation of an algorithm to ROM-based look-up tables are not
what Patent Attorney claimed in his point #1. You implicitly claim that all hardware
implementations of an algorithm must in the end come down to a ROM-based look-up
table. It is you who is incorrect; Patent Attorney is in fact correct in his point #1. Given
any implementation in sequentially-executed imperative machine-code, there is at least
one equivalent logic schematic implemented as a chemically-etched silicon die in an
ASIC or merchant silicon that produces the same outputs given the same inputs. No
ROM look-up tables needed at all anywhere on that silicon die. No sequentially-executed
imperative machine-code instructions either---neither code nor microcode. (And for the
record referring to my prior post, no software netlist downloaded at runtime to an FPGA.)
Just good ol' chemical-compound semiconducting gates and the conductors between
them is all that is needed to perform the computation of any algorithm in hardware---a
direct physical representation of the Boolean logic form of the algorithm. What is a loop
in an imperative instruction-based sequential execution becomes wrapping stable (i.e.,
not bistable) output conductors back into input conductors to execute in the next clock
cycle.

Posted by: optikos | Feb 18, 2008 at 11:56 PM

Software is simply not of qualities that support patent-ability, nor do business methods

http://abstractionphysics.net/pmwiki/index.php

Abstraction Physics No Kidding.

Posted by: Tim Rue | Feb 19, 2008 at 12:34 AM

"Bilkski is impermissibly claiming the very *idea* of managing consumption risk costs by
a commodity provider, regardless of how those risks are managed (including the
managing of risks in the commodity provider's/risk manager's own head). So called



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"business method" patents are particularly susceptible to this problem and its one of the
reasons that they should be tanked"

Aren't almost all preemption problems under 101 solvable by a rejection under 102/103?
If a claim really is so broad and intangible to read on abstract ideas, isn't a 102/103
rejection all that much easier? Why not simply rely on 102/103 for preemption issues
instead of trying to make a messy cut with 101? Are we worried that genuinely novel and
nonobvious ideas might get patented?

Posted by: Still advances the arts and sciences | Feb 19, 2008 at 01:31 AM

"Then our paths have never crossed … unfortunately. Too bad, you look like the type I
would be putting on my appeal brief -> reopen prosecution -> appeal brief -> reopen
prosecution merry-go-round. This is where the examiner keeps coming up with new
art/new rejections but never gets a count because I put them right back into appeal."

If you were to get past my 112, which you wouldn't, and I would not withdraw because it
was not used flippantly, you'd then be confronted with the art I applied to your overly
broad claim anyway and wouldn't have a leg to stand on to appeal anyway. But I guess
that's neither here nor there. I'm still waiting for all these great examples of attorney's
routinely getting around the "output" or otherwise specifying what tangible benefit is
accomplished. Let's be clear, it doesn't have to be a monitor. I just use monitor or output
as a common example of how many such claims acheive a purpose besides executing
code and I did that for purposes of discussion. Of course you could send your output
through a bus to be stored on a HD and then used to control an arm to build a car, or
send it over the internet or an intranet to be stored on a server out of the user's sight to
sound an alarm if a process was out of wack. I have no doubt attorney's are getting very
clever in their claims, and that systems are complicated out of sight, but I'm yet to see
the ones that are legitimately issued without any "means of acheiving tangible benefit"
parts in the claims, and more to the point, have yet to see one of these successfully
litigated (oh my, you slipped one by a junior, or a sick primary, who's ever heard of that
happening?) I guess I'm so disconnected from the subject that I don't have at least 4
cases involving such claims on my docket right now, and I'm so disconnected that I
didn't pay attention at all in 101 class, nor can read the decisions on it in the MPEP.

"In Re Comiskey decision … some really nice language there … makes it perfectly clear
that one does not need to recite a computer in a claim."

I already said that about the cpu ... lets discuss the monitor etc. now please.

" well, you get the point (or at least most everybody else here gets the point)."

Yeah I have the point of that paragraph, and I also have that it's incorrect/irrelevant,
because the only thing an oil filter needs is an oil line with oil in it and it's reasonable to
presume that is there because of the words "oil filter" (and that filtering oil IS a function in
and of itself, since it is desirable to create filtered oil, for sale if nothing else), just like
EVERYONE else here sees. Can we please discuss why it's reasonable to presume a
monitor or other "means of reaching a tangible benefit from this recitation of instructions
on a computer readable medium" from a claim to such a readable means? No, you don't
want to discuss that, because it's not reasonable to, it's only reasonable to presume that


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a cpu is present and can read the instructions and execute them, and thereby achieve
nothing, unless otherwise specified.

"Without intellectual property, who would invest in a startup company if the likes of
Microsoft could copy that company's ideas???"

People with confidence in that startup's ability to deliver a product of superior quality
than that which microsoft can/will bother to deliver, that's who. Or startups who'll market
it better, or etc. etc. That's what a free market is about, and lets also consider the flip
side, the startup can copy all of microsoft's advances. Programers are paid by what they
code, just like I'm paid by doing my search/finding/judgment. I'm afraid I don't see the
impact on the programmer in your little example other than they might be more highly
valued if you untie their hands from being restricted from copying other people's
functionalities, they'll be free to "show their stuff" as to coming up with great code to do
that function.

So far you've had your argument shot all to hell, you still don't quite get the crux of my
position, or at least you don't understand how it's anything more than a low level
consideration, and now you're just throwing more and more bs out here. When I do get a
case of yours you'll at least have to pay me to hear your bs, because after the appeal
comes back you'll be sending an RCE faster than I could have sent an advisory action.
For now I'll just see you next issue because explaining it to you more isn't worth it. One
more ignorant as heck attorney thinking he has some kind of special consideration as to
why software really is patentable even when the vast majority see why it's not and why
it's a good thing it's not, is nothing new. Just as a fresh off the boat examiner who
doesn't know hardly anything about the issue except why it's completely ridiculous and
how to handle it on his end telling the attorney to take his oh so wonderful and worthy of
consideration concerns to SCOTUS isn't anything new either.

The one thing that does bother me though is that you will probably generate many errors
for examiners screwing up your apps by allowing such mess, or sending out an improper
rejection because you've made the situation into such an incomprehensible mess. I hope
you don't, for their sakes.

Posted by: examiner#6k | Feb 19, 2008 at 02:24 AM

"isn't a 102/103 rejection all that much easier?"

Not always, but maybe occasionally. Just because it's an abstraction doesn't make it
necessarily hugely broad.

"Are we worried that genuinely novel and nonobvious ideas might get patented?"

We're worried a genuinely novel and non-obvious abstraction might get patented. I'm
guessing you're a newbie, figured I'd help you out.

Posted by: examiner#6k | Feb 19, 2008 at 02:36 AM

Haha, pds, straight from the site linked above



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"From Machine language to application interfaces that allow users to define some
sequence of action into a word or button press (ie. record and playback macro) so to
automate a task, we are working with abstractions that will ultimately access the
hardware transistor switches which in turn output to, or control some physical world
hardware."

Get owned much?

Posted by: examiner#6k | Feb 19, 2008 at 02:40 AM

"I guess I'm so disconnected from the subject that I don't have at least 4 cases involving
such claims on my docket right now, and I'm so disconnected that I didn't pay attention
at all in 101 class, nor can read the decisions on it in the MPEP."

4 whole cases??????? I'm working with about 200 cases in that art right now. Do you
know how many of those cases get initial 101 rejections? Probably over 75-85%.

Do you know how many of those 101-rejected claims I amend to overcome the 101
rejection? About 5%. The rest I don't amend, I simply traverse. Moreover, the ones I
amend are simply because the examiner calls me up with an offer of an allowance, and
instead of appealing the 101 rejection (which I would normally do), I usually have to add
a single word to a claim to overcome the (bogus) rejection.

"oh my, you slipped one by a junior, or a sick primary, who's ever heard of that
happening?)"
I've got pending, active applications in 45 different art units in 2100 … do they have a flu
bug at the USPTO that makes all these primaries and SPEs sick when they approve the
examiner's responses that drop all those previously-made 101 rejections for my
applications? Must be terrible place to work with all those sick people.

"I already said that about the cpu ... lets discuss the monitor etc. now please."
I'm repeating myself, but if you are getting hung up on a monitor or any other form of
outputting device to come up with your "tangible benefit," then you are pretty clueless
about what constitutes the bulk of the art.

"I have no doubt attorney's are getting very clever in their claims, and that systems are
complicated out of sight, but I'm yet to see the ones that are legitimately issued without
any "means of acheiving tangible benefit" parts in the claims"
Again, you evidence your failure to comprehend the difference between enabling an
invention and distinctly claiming the invention.

"Can we please discuss why it's reasonable to presume a monitor or other "means of
reaching a tangible benefit from this recitation of instructions on a computer readable
medium" from a claim to such a readable means?"
Although I asked you to look at MPEP 2106.01, you apparently did not (which honestly,
I'm not surprised at all, since most examiners are unfamiliar with the MPEP). Sometimes
I amazed I still get examiners who reject the computer-readable medium claims in my
applications. However, I just cite to MPEP 2106.01 and, particularly, the following
language:
"When functional descriptive material is recorded on some computer-readable medium,

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it becomes structurally and functionally interrelated to the medium and will be statutory in
most cases since use of technology permits the function of the descriptive material to be
realized."
Once the examiner reads that one, they drop the rejection VERY quickly.

"People with confidence in that startup's ability to deliver a product of superior quality
than that which microsoft can/will bother to deliver, that's who. Or startups who'll market
it better, or etc. etc."
Unfamiliar with business as well??? Marketing takes money … which Microsoft has lots,
a startup has little. In a world without patents, Microsoft has the engineers to quickly
implement many new ideas very quickly; the average startup does not.

"they'll be free to "show their stuff" as to coming up with great code to do that function"
Again, you evidence that you have no &^%$ing clue about the art. Code????? the code
is IRRELEVANT to most software patents. In fact, very few of the computer-related
applications/patents I see actually contain any code.

"Haha, pds, straight from the site linked above
'From Machine language to application interfaces that allow users to define some
sequence of action into a word or button press (ie. record and playback macro) so to
automate a task, we are working with abstractions that will ultimately access the
hardware transistor switches which in turn output to, or control some physical world
hardware.'
Get owned much?"
And the reason I care about this cited passage is????? Classic examiner-speak … give
me about 10% of their analysis and he/she expects that I figure out the other 90% of
what went through their head before they came up with some conclusion. The reason
why people don't get the crux of your position is that you do a terrible job explaining it.

Anyway, thanks for a lesson in examiner ignorance … although it just confirms what I
already knew. BTW: I love the false bravado … a classic sign of insecurity. Regardless,
like my past dealings with MM, although fun, it is a colossal waste of time.

Posted by: pds | Feb 19, 2008 at 08:52 AM

A more basic question....

Is Claim 1 novel? Hasn't this method of hedging been around for years? Isn't this the
way that traders have been hedging for years prior to the application?

Posted by: Jim H. | Feb 19, 2008 at 11:01 AM

H- When interpreted in light of the spec, maybe.

pds- you take the cake for starting and continuing an argument you base your position
on the premise that you're doing things wrong in the first place and that you demand that
you're right for doing so. Of course you can claim a function that interrelates the software
function with a hardware function, that's the same thing as just putting in the hardware in
terms of including essential matter in the claim and making a tangible benefit, if you do
claim it properly. I didn't have to brush up on that section to know that, but you're right, I

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don't check all your posted citations to the MPEP, there was no need to, all you had to
do was say "I took the bs way out of the requirement for a tangible benefit by implicitely
including it by way of functional language." and I would have completely understood
what you were saying. Instead you present me with "I just have a problem with the claim
having to say the result is achieved." as in you have a problem with being required to
say your functional language (at least I guess is what you're trying to say, though your
arguments towards this point are shot all to hell by now).

All of what I said about 101 and 112 still stands untouched though you've spouted off
quite enough for us to see that you likely practice:

A method of practiciing law comprising:
writing nebulous functional language to fulfill the tangible benefit requirement thus
assuring that 85%+ will be rejected under 101 just so the examiner will not be called out
by Quality and can get on with his evaluation of your functional language;
wherein such writing assures future work for the author; and
writing a response to the near required token 101 rejection such that the future work is
fulfilled and clients pay $.

That is, unless you're on a flat fee basis, in which case you're just making more work for
yourself. Oh, no please, tell me why I'm so wrong and there's 101 reasons for you to
prosecute this way, I'm sure there are, and you've convinced yourself many times over
that this is the best course of action, despite your abysmally low first action allowance
rate. Why not just save yourself the trouble of writing all those actions and send one
letter to the QAS's of each AU, tell them of your little plan, and request that they train all
the examiners to go ahead and stop 101ing all of your nebulous bs? Because even if
they wanted to do that, you know good and well that it's proper given the legal setting in
which we exist for the examiner to at least token 101 that kind of crp.

90% first action rejected on 101 and you're telling me that we're the ones doing
something wrong while you're the one relying on bs to make your claims patentable.
Ridiculous.

Oh, and FYI, your citing that portion of the MPEP doesn't bring it all of a sudden to those
examiners minds, they didn't have to "read that one" to "drop it very quickly". They're just
waited for you to put it on record that you consider that functional language interrelated
to the hardware so that you can't claim otherwise later. Thus, your token rejection,
reminiscent of a 103 with art that clearly will be 103c excluded under your assignee, or
any other number of token rejections, will be complete. Gee, that took a stroke of genius
to figure out why on earth you're getting a huge number of 101's and why you think you
actually "successfully" traversed anything, you just solidified your bs claim a bit. You did
exactly what the examiner wanted you to do. The 10% that don't get rejected are likely
your only clear functional interrelations that you write, and the precent you take to appeal
are the examiners who don't think your interrelation was sufficient or are the very new
examiners who didn't pay any attention in 101 class. Don't critisize the majority of
examiners making the rejections you're all but strong arm forcing them to make, and
certainly don't act like you had to teach them something from the MPEP to get your
rejection dropped.




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You'll excuse me while I go deal with some attorney's who prefer to at least try to draft
claims that are on their face patentable and reasonably convey to POSHITA what is
claimed without having to rely on everything implicitely from the spec. from bs functional
language. Keep doing what you're doing, no really, it seems to work out well for you and
your clients, never mind that you're probably overcharging them playing your
shenanigans, and a good portion of your functional language probably doesn't interrelate
your software to the hardware sufficiently to stand up in a litigation. Here I was thinking
you wanted to have a real conversation about the subject of why software per se isn't
patentable, but it turns out you just want to qq about your common method of bsing the
system not being easy.

Posted by: examiner#6k | Feb 19, 2008 at 01:33 PM

E6 writes: "assuring that 85%+ will be rejected under 101 just so the examiner will not be
called out by Quality" ... followed by "90% first action rejected on 101 and you're telling
me that we're the ones doing something wrong while you're the one relying on bs to
make your claims patentable."

Examiners make tenuous 101 rejections to cover their behinds with "Quality" or because
proper application of patent law demands the 101 rejection -- which is it?

"... despite your abysmally low first action allowance rate."
(Ignoring your previous comments about PTO management directing examiners to NOT
issue first action allowances ...) Have you read none of the innumerable posts explaining
why MOST patent attorneys have "abysmally low" first action allowance rates??

Posted by: Clive Fenster | Feb 20, 2008 at 12:03 AM

In my humble and cave-contemplated opinion, what would traditionally fall within the
scope of proper subject matter for patentability are technologies that require large
amounts of investment in fundamental research&development and/or NRE (non-
recurring engineering) costs, including tooling up costs to implement (in other words, the
"bricks and mortar" Leahy and many others have referred to).

The bubble era mentality is what gave us "software" and "business method" patents.
However, I would argue now more than ever, a return to a bricks and mortar mentality
(minus all the talk of sweeping "reform"). If it doesn't cost anything or much of anything
to gear up to produce, its a clue that it shouldn't be worthy of protection.

In the case of pure soft software development, e.g. application development, I would
argue that it does not really meet the test I just set forth. Application development is a
notoriously low overhead and low NRE proposition, thus not really within the scope of
true tradition subject matter according to my proposition.

Unfortunately, many of the patent attorneys running around today have no idea what it
means to actually manufacture something. They got any technical experience they may
have from the back of a cereal box, the instructions on their Nintendo Play Station or the
few lines of code they wrote in their undergrad classes. They have never seen a
manufacturing plant.



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And in many large metropolitan areas, such as Washington D.C. where many patent
attorneys are found, there is no real manufacturing going on, just a bunch of software
shops like Oracle or a bunch of B2B integrators with no real development going on.
Thus, when you have a bunch of soft software oriented patent attorneys the results are
predictable. To a B2B or a soft software oriented patent attorney, all patentable
technology looks like application software or a business method (to put it differently, to a
hammer every problem looks like a nail).

On the other hand, protracted software development for true technology that requires
large amounts of supporting gear (emulators, simulators, Verilog platforms, ...) and that
will be mass produced at great initial expense requiring gradual movement to silicon for
example falls more squarely within the boundaries of my test. Further, a large
deployment of specialized or partially specialized hardware, software, systems, people in
order to achieve a novel and advantageous business process could in some
circumstances meet my test.

Posted by: CaveMan | Feb 20, 2008 at 02:55 AM

Question: Software aside, is there any business where both patents and copyright are
applicable to the same invention / product? I have a hard time finding examples of other
inventions / products and if there aren't any, then maybe it's about time to enforce a
decision on the industry. I can't imagine it's desirable to have two areas of law governing
the same subject, each curtailing and handing out rights in a different manner...

Posted by: Jeetje | Feb 20, 2008 at 04:18 AM

Caveman and E#6k:

Do either of you really have the arrogance to believe that you know what should be
eligible for patentability or to decide what is obvious?

Have either of you ever read a history book?

Posted by: Patent Attorney | Feb 20, 2008 at 04:34 AM

"Software aside, is there any business where both patents and copyright are applicable
to the same invention / product?"

Virtually anything aesthetic product design could be the subject of both copyright (as a
sculptural work) and a design patent (as an ornamental design). Circuit board layouts,
semiconductor mask works, and boat hulls may also be subject to both types of
protection.

http://books.google.com/books?id=jVYmSduIoA8C&pg=PT37&lpg=PT37&dq=copyright+
patent+sculptural&source=web&ots=FzRq7JELy7&sig=CWsPGiYXj08QRVRWOzMna3
Ol3yg

It is also conceivable that for an ornamental product design (such as the shape of the
Fantastik spray bottle from the 1970s) all four major IP protection methods (utility patent,
design patent, trademark, copyright) are available and overlap. For example, a design

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patent can be initially used to gain market distinctiveness for a shape, which can lead to
a trademarking of that distinctive shape.

http://www.altlaw.org/v1/cases/412532

Posted by: real anonymous | Feb 20, 2008 at 07:11 AM

rat :: there you go again ... your assertion that something is hardly novel flies in the face
of the example ...

we cannot know what the results of transformation[s] in options pricing any more than
we {{{you}}} can predict the pricing of any unrecognitizable good or service -- no pricing
market just co-variance with other "similar markets -- and options are the right to buy or
sell NOT the actually buy or sell !

patentably claiming the subject matter that enables better measurements based on
better transformations for the right but NOT obligation to purchase or sell something
(even something you don;t really own, only someone is holding it is ":street name") ...
including options and futures and all manner of vaulation models ... [[ that scholes failed
proves being smart and rich have nothing to do with "knowing the future"]] ...

again you orthogonalize the point ... instead of a bunch of folks passing computations of
little pieces of the algorithm someone has to design the right "salable" manufacture ...
else, who cares if it is patentable or not ... no one buys trading systems that don't
perform (there would be no market value to such a system)

Posted by: ironicslip | Feb 20, 2008 at 10:14 AM

Tim Rue :: physics wiki is the source of your argument? physics as it relates to
establishing "natural/physical" boundaries for manufacture?

how does physics measure "qualities" (forget the patentable subject matter part) and
how did the link between software and business methods get linked? okay, one
response would be to check out wolfram's work, a fine physicist and and generally
intelligent person who is also the creator of mathematica a programming language
known to many (not sure who edited the wiki entry) --

http://en.wikipedia.org/wiki/A_New_Kind_of_Science

Jeetje :: try to look at copyright protection as a general class ... a simple search ...
software protecting software ... an intersection between copyrights and patents ... all of
which can be represented as software in a myriad of business models ...

for instance, itunes? is that a business model? and as real anonymous contributed ... a
trademark (an agreement over the use of "Apple Records" with The Beatles estate was
involved) // even design/utility patents for the system/satellite "iPods" ... they attribute
several patents to others in the SLA ... even better check out the SLA's for an iPhone to
see all matter of property being asserted and provided as notice ...




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the coke bottle is another example trademark/patent combination with trade secret for
the syrup ... econ question/business method question :: what would you do with the
knowledge of the trade secret without the equity Coke has built into the brand and
designs it has protected over the years? ... an aside, over time there have been many
changes to their business model (one iteration -- selling syrup to licensed bottlers) to
boost margins ... why make something that has less margin when you can make the
stuff with higher margins and lower cost (especially in light of strong ip protections)?

Posted by: ironicslip | Feb 20, 2008 at 11:24 AM

Excuse me Patent Attorney, with all due respect, I don't believe my missive came from a
place of arrogance, after all, as I clearly stated, I'm just a caveman. But I do know one
thing. I was attempting to offer some perspective on the kinds of things that probably are
more traditionally associated with patent protection, e.g. technology destined in some
way for mass production. Do you dispute that? And what is this "history book" of which
you speak. Is it carved in stone? I may have wrote it...

Posted by: CaveMan | Feb 20, 2008 at 07:18 PM

By the way Patent Attorney,

1) I never commented regarding obviousness; and
2) Examiner #6K's JOB is determining what's obvious.

I'm afraid those history books don't seem to be doing much for your powers of
observation and reason. With all due respect and humility.

Posted by: CaveMan | Feb 20, 2008 at 07:25 PM

Caveman,

6k's job is not determining what is obvious. 6k's job is applying the obviousness standard
to a set of claims; he doesn't get to determine the standard. although, of course, there
really is no definitive standard right now thanks to KSR.

Posted by: Lowly | Feb 21, 2008 at 12:03 PM

I'll repeat it for you then:

2) Examiner #6K's JOB is determining what's obvious.

And in re: "Do either of you really have the arrogance to believe that you know what
should be eligible for patentability or to decide what is obvious? Have either of you ever
read a history book?"

Yes, and yes. What I see before me is a crowd of people who refuse to believe that
obviousness REQUIRES judgment on a case by case basis. It doesn't only have want of
it, it REQUIRES it. I've read a few history books, and I've even read a few of the cases
pertaining to obviousness decided way back when. What do I see? A lot of intellegent
people trying their best to boil down something that requires judgment to a "standard"

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that can be generically applied across the board. Hogwash. Even if they were doing the
right thing in attempting to do that, it is a thing that cannot be, will never be, and if it ever
is, will be false.

Oh, and:
2) Examiner #6K's JOB REQUIRES HIM to decide what's obvious. In fact, he's about to
do it right now.

Posted by: examiner#6k | Feb 21, 2008 at 02:10 PM

Congress already approved business method patents under section 101 sub silento by
providing a prior user defense to infringement of said business method patent by
enactment of section 273. I agree with the comments above about pto doing its job.
CAFC should not create the - I don't have to examine it- standard because i can assign a
name. He paid his fee, examine his claims.

35 USCS § 273 (2001)

Defense to infringement based on earlier inventor

(a) Definitions. For purposes of this section-- (1) the terms "commercially used" and
"commercial use" mean use of a method in the United States, so long as such use is in
connection with an internal commercial use or an actual arm's-length sale or other
arm"s-length commercial transfer of a useful end result, whether or not the subject
matter at issue is accessible to or otherwise known to the public, except that the subject
matter for which commercial marketing or use is subject to a premarketing regulatory
review period during which the safety or efficacy of the subject matter is established,
including any period specified in section 156(g), shall be deemed "commercially used"
and in "commercial use" during such regulatory review period; (2) in the case of activities
performed by a nonprofit research laboratory, or nonprofit entity such as a university,
research center, or hospital, a use for which the public is the intended beneficiary shall
be considered to be a use described in paragraph (1), except that the use-- (A) may be
asserted as a defense under this section only for continued use by and in the laboratory
or nonprofit entity; and (B) may not be asserted as a defense with respect to any
subsequent commercialization or use outside such laboratory or nonprofit entity; (3) the
term "method" means a method of doing or conducting business; and (4) the "effective
filing date" of a patent is the earlier of the actual filing date of the application for the
patent or the filing date of any earlier United States, foreign, or international application
to which the subject matter at issue is entitled under section 119, 120, or 365 of this title.

(b) Defense to infringement. (1) In general. It shall be a defense to an action for
infringement under section 271 of this title with respect to any subject matter that would
otherwise infringe one or more claims for a method in the patent being asserted against
a person, if such person had, acting in good faith, actually reduced the subject matter to
practice at least 1 year before the effective filing date of such patent, and commercially
used the subject matter before the effective filing date of such patent. (2) Exhaustion of
right. The sale or other disposition of a useful end product produced by a patented
method, by a person entitled to assert a defense under this section with respect to that
useful end result shall exhaust the patent owner's rights under the patent to the extent
such rights would have been exhausted had such sale or other disposition been made


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by the patent owner. (3) Limitations and qualifications of defense. The defense to
infringement under this section is subject to the following: (A) Patent. A person may not
assert the defense under this section unless the invention for which the defense is
asserted is for a method. (B) Derivation. A person may not assert the defense under this
section if the subject matter on which the defense is based was derived from the
patentee or persons in privity with the patentee. (C) Not a general license. The defense
asserted by a person under this section is not a general license under all claims of the
patent at issue, but extends only to the specific subject matter claimed in the patent with
respect to which the person can assert a defense under this chapter, except that the
defense shall also extend to variations in the quantity or volume of use of the claimed
subject matter, and to improvements in the claimed subject matter that do not infringe
additional specifically claimed subject matter of the patent. (4) Burden of proof. A person
asserting the defense under this section shall have the burden of establishing the
defense by clear and convincing evidence. (5) Abandonment of use. A person who has
abandoned commercial use of subject matter may not rely on activities performed before
the date of such abandonment in establishing a defense under this section with respect
to actions taken after the date of such abandonment. (6) Personal defense. The defense
under this section may be asserted only by the person who performed the acts
necessary to establish the defense and, except for any transfer to the patent owner, the
right to assert the defense shall not be licensed or assigned or transferred to another
person except as an ancillary and subordinate part of a good faith assignment or transfer
for other reasons of the entire enterprise or line of business to which the defense relates.
(7) Limitation on sites. A defense under this section, when acquired as part of a good
faith assignment or transfer of an entire enterprise or line of business to which the
defense relates, may only be asserted for uses at sites where the subject matter that
would otherwise infringe one or more of the claims is in use before the later of the
effective filing date of the patent or the date of the assignment or transfer of such
enterprise or line of business. (8) Unsuccessful assertion of defense. If the defense
under this section is pleaded by a person who is found to infringe the patent and who
subsequently fails to demonstrate a reasonable basis for asserting the defense, the
court shall find the case exceptional for the purpose of awarding attorney fees under
section 285 of this title. (9) Invalidity. A patent shall not be deemed to be invalid under
section 102 or 103 of this title solely because a defense is raised or established under
this section.

Posted by: iwasthere | Feb 21, 2008 at 03:21 PM

"What do I see? A lot of intellegent [sic] people trying their best to boil down something
that requires judgment to a 'standard' that can be generically applied across the board.
Hogwash."

Uh-oh. He's cracked the code.

Posted by: BigGuy | Feb 21, 2008 at 03:54 PM

6k - As you said, none of your cases have made it to BPAI let alone Fed. Cir. So, far
from "owning" anyone, you are really just talking through your hat on all this stuff. Once
you have a few of your brilliant rejections sustained by the real decision makers, then
please do come back and give us some more lectures. Until then, why not pipe down
and try to learn something.


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Posted by: Publius | Feb 21, 2008 at 05:47 PM

"none of your cases have made it to BPAI let alone Fed. Cir."

Just out of curiosity -- when is the last time the CAFC reversed a finding of obviousness
by the BPAI thus resulting in a valid patent with the CAFC's imprimatur?

Posted by: Malcolm Mooney | Feb 21, 2008 at 07:14 PM

http://www.cafc.uscourts.gov/opinions/06-1507.pdf

BTW, the CAFC does not play a role in prosecution where it declares the claims in an
application valid. It merely addresses whether or not the PTO has sustained its burden
based upon the references and other relevant information of record. Where the PTO
fails, the matter is, of course, remanded for further action.

Admittedly, the decision in the above case is far from the norm. "Per Curiam - Affirmed"
is usually the most the court says on appeals from the BPAI re 103 issues.

I ommitted a link to a 102 reversal (in which Judge Newman dissented) because it did
not deal with obviousness.

Posted by: M. Slonecker | Feb 21, 2008 at 07:52 PM

Thanks Michael -- that's pretty close. I was going to guess that it had to be a biotech
case. I assume the patent hasn't issued yet.

It seems in the post KSR world it would be possible for the CAFC to simply take a
position opposite the BPAI purely on the basis of a different view of "common sense."
What I was wondering if anything like that had happened before, e.g., where the BPAI
said it was obvious to combine two refs and the CAFC said "no it's not, you lose."

Posted by: Malcolm Mooney | Feb 21, 2008 at 08:45 PM

publuis- The only thing I owned was pds's sorry a argument. My rejections are typically
more like show and tell in kindergarten, then having to evoke the underlying physics of
the universe of which I have total control and omniscent knowledge of. Sadly, that's the
true story about where thousands, millions, even billions of dollars go every year for this
system. For all you inventors out there, watch out for what your attorney is trying to pass
off to you as an "ind".

Though, you sure can bet I'm here to learn a thing or two. Hey, maybe you can tell me
about how the requirement for reciting a result being acheived in a software patent is a
bad thing? Pds seems to have failed horribly and trailed off into inane sniveling about
how biased the system is against the horse manure he throws at it everyday.

Oh, and fyi, my cases being so clear that they DON'T go to the BPAI IS OWNING YOU
(them).




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Oh, and hey Fen-
"Examiners make tenuous 101 rejections to cover their behinds with "Quality" or
because proper application of patent law demands the 101 rejection -- which is it?
(Ignoring your previous comments about PTO management directing examiners to NOT
issue first action allowances ...) Have you read none of the innumerable posts explaining
why MOST patent attorneys have "abysmally low" first action allowance rates??"

Examiners make the rejections we're instructed by the QASes to make, they tell us
what's a proper type of rejection and what's not according to the legal setting in which
we're opperating. We make token rejections to make the attorney clarify his position on
the matter for the record so it's "set in stone". The legal system encourages us to do this,
because the app is officially rejected until he comes back and clarifies his position, just
like in the 103c exclusion situation. Same thing with a 102e that you have foreign priority
to perfect in order to predate. Until you perfect it, you're officially rejected. Until you
clarify what your nebulous claims are referring to, for the record, or at least that you're
specifically using functional language to identify your parts then you're officially rejected,
because it would be reasonable to assume in many cases you might not be.

Yeah, I've read a lot of those posts about low allowance rates. The best excuse I've
seen to date is that you're ignorant sons of guns. But hey, that's by you guy's own
admission, far be it from me to call you that.

Oh, and why do you think we're directed to not make first action allowances? You think
the SPE's haven't been around long enough to know almost all of you are overclaiming
on purpose? Is that what you're trying to tell me? I've only been here almost 2 years and
I already know that, and that's by your own admission.

You'll excuse me again I have a turtle to compare to another turtle for someone right
fast, and hey, they're paying.

Posted by: examiner#6k | Feb 21, 2008 at 08:55 PM

"We make token rejections to make the attorney clarify his position on the matter for the
record so it's "set in stone". The legal system encourages us to do this, because the app
is officially rejected until he comes back and clarifies his position, just like in the 103c
exclusion situation."

I'm sure you see by now, ex#6k, that your arguments are as persuasive to a certain
crowd as the arguments of scientists are to creationists. Some applicants have simply
got dat ole time religion when it comes to patents. They believe that once THEY are
convinced they've invented something it's the examiner's duty to stamp the papers,
collect the fees, and grant the claims. Interference with the grant is the legal equivalent
of hanging a man for saluting the American flag without a trial.

You can explain yourself up down and sideways to some of these folks but they'll never
get it because, guldarnit, they KNOW they deserve a patent "by rights" ("it's in the
Constitution!!!!"). All your statements to the contrary will therefore be dismissed, ignored,
or twisted in an attempt to make you seem silly or malevolent or both.

That said: I don't want discourage you from attempting to keep it real, as it were.

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Posted by: Malcolm Mooney | Feb 21, 2008 at 09:10 PM

Malcolm,

“Interference with the grant is the legal equivalent of hanging a man for saluting the
American flag without a trial.”

Huh?, wondering what the "guldarnit" [great word] does that eman?, if anything at all.

Posted by: Just an ordinary inventor(TM) | Feb 21, 2008 at 09:50 PM

Observing, from outside USA, the intense, hot, little world of prosecution at the USPTO,
and following threads like the one about the J-hook gap patent, it is a comfort to read
contributions from those who retain a cool wider view of real world issues. Prominent
amongst this group is one Malcolm Mooney (whoever he is). Long may he continue to
post and, incidentally, keep us all mightily amused.

Posted by: MaxDrei | Feb 22, 2008 at 02:28 AM


Do I infringe the disputed claim of the patent if I

(1) initiate the stated series of transactions face-to-face, or over the telephone or the
web,

(2) identify market participants by looking in a reference book, on the web, or asking a
friend, and

(3) initiate the stated series of transactions face-to-face, or over the telephone or the
web WITHOUT MORE?

If I personally follow these steps of manual labor, can I be sued for infringement if Bilski
finds out? It appears I can be because of the breadth of the claim is not limited.

How is this activity "marked" to put me on notice that my manual labor is infringing an
"invention"?

Posted by: Jim H. | Feb 22, 2008 at 10:14 AM

In my previous post, please limit my question to using the telephone for each step. That
is, I initiate the transactions of the first element by placing a phone call to one of my
brokers, I identify the participants by placing a second phone call to another broker, and
I initiate the transactions of the third element by placing a phone call to a third broker.

I have infringed the claim of the "invention," correct

Posted by: Jim H. | Feb 22, 2008 at 10:25 AM

Jim H.,




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It is not possible to answer your question in that the application and its associated file
wrapper are not available for review.

Moreover, there is nothing in the BPAI opinion that even hints as to what the above
items contain. Other that replicating the applicants' claim 1, the opinion makes no further
reference to their application.

Posted by: M. Slonecker | Feb 22, 2008 at 02:00 PM

M. Slonecker,

Thank you for your reasoned response. But to take it a bit further...

Isn't the vagueness of the Claim 1 (i.e., can infringe the same steps by making phone
calls) the reason for the 101 rejection?

I submit that had Bilski narrowed or limited the claim by adding terms such as
"automatically" to "initiating" and "database" from which the "identifying" is accomplished
(or some other examples of narrowing or limiting terms to the claims which I assume are
disclosed) that it would pass 101 muster as patentable subject matter.

Assuming the application disclosed an automated initialization and database for the
identification elements, would you agree that added limitations would make the claim
pass 101 muster?

Posted by: Jim H. | Feb 22, 2008 at 02:24 PM

"Assuming the application disclosed an automated initialization and database for the
identification elements, would you agree that added limitations would make the claim
pass 101 muster?"

Only if all of the details (i.e., the software code) of the initialization and database were
recited in the claim and were found non-obvious.

But lo and behold, if that were to happen this remarkable "invention" would suddenly be
deemed worthless. Go figure.

Posted by: Malcolm Mooney | Feb 22, 2008 at 02:30 PM

Malcolm Mooney,

I agree with you about the worth of the invention, and I would suspect some serious 102
and 103 concerns are present, but at least it would pass 101 as patentable (albiet,
worthless) subject matter, agree?

Posted by: Jim H. | Feb 22, 2008 at 02:36 PM

Jim H,



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If the issue of what falls within and without 101 was an easy matter I rather doubt the
BPAI would have taken the time to craft a 71 page opinion. In fact, its opinion makes it
only too clear its wishes that 101 was not even a part of what the USPTO must do
regarding the processing of applications.

Bilski is a rambling, and oftentimes inconsistent, explication of what the BPAI thinks 101
covers. As it states, however, it cannot be sure with any degree of certainty. Hence, in
my opinion Bilski is being presented to the CAFC as a strawman to try and get some sort
of meaningful guidance. Whether such guidance is forthcoming is a matter of conjecture,
but if history teaches us anything the likelihood that meaningful guidance will result is
almost certainly remote.

BTW, Bilski does push the envelope in that the claims apparently are in no way tied to
any specific apparatus. It can be done over the telephone, via a computer connection,
smoke signals, Navy signal flags, exchange of paper, etc. Hence it does provide a
vehicle to explore just what the heck is meant by the term "process" under 101.

I encourage you to read the BPAI decision, and do note some of the examples used by
the BPAI describing "processes" that just might now be pending before the USPTO. I
smile to think someone might actually be trying to secure a patent on a way to make
someone fumble a football.

Let me tell you what I do hope. I do not believe our economic system is well served by
viewing 101 as an exclusionary law. I honestly do believe it should be inclusionary since
we can hardly forsee at this point in time just what lies around the corner as real world
problems waiting for real world solutions. I much prefer to err on the side of opening the
101 portal even as to questionable matters, and to then utilize 102, 103 and 112
appropriately.

Posted by: M. Slonecker | Feb 22, 2008 at 03:39 PM

"at least it would pass 101 as patentable (albiet, worthless) subject matter, agree?"

Yes, in the situation as I described it, I believe it would (and that's assuming the law
regarding the patentability of software does not change).

Posted by: Malcolm Mooney | Feb 22, 2008 at 04:07 PM




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