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Sanity From the 1st Post-Bilski Decision from BPAI: In Re Proudler
Tuesday, July 13 2010 @ 05:30 PM EDT

Look at this, will you? The first decision from the Board of Patents Appeals and Interferences post-Bilski to reference that US Supreme Court decision, in In Re Proudler [PDF], a ruling rejecting HP's application for a software patent, setting forth a rule stating, as I read it, as saying software is not patentable because it's an abstraction:
Laws of nature, abstract ideas, and natural phenomena are excluded from patent protection. Diamond v. Diehr, 450 U.S. at 185. A claim that recites no more than software, logic or a data structure (i.e., an abstraction) does not fall within any statutory category. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). Significantly, "Abstract software code is an idea without physical embodiment." Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007). The unpatentability of abstract ideas was confirmed by the U.S. Supreme Court in Bilski v. Kappos, No. 08-964, 2010 WL 2555192 (June 28, 2010).
This is not the last word, I'm sure, as HP can certainly try to reword. But don't you find this encouraging? I do. And that's why I wanted it in our permanent record of the Bilski case and its aftermath.

I told you I didn't think Bilski was *that* bad, that I saw hope in the abstraction argument. Some are already trying to figure out how applicants can get around this, of course, and I read this analysis as coming from a basic confusion as to what software is:
My two cents: I have two comments about Proudler. First, the BPAI did not use the Machine-or Transformation test in it's § 101 analysis, and instead used "abstract ideas." Yet the Board's stated reason for finding that the computer apparatus claim was directed to an abstract idea was "no true hardware structure was required." How is this any different than applying the Machine-or-Transformation test? Is "abstract idea" just another way of stating "not tied to a particular machine"?

My second comment about Proudler: this case shows the danger of being vague about what you mean by "software." Examiners, the BPAI, and the courts seem to think that the term "software" implies "not tied to hardware." If your claim sounds like "software" – even if the claim doesn't contain that term – the BPAI will redesignate them as "software per se." By which they seem to mean "software in the abstract," or as I call it, "software floating in the ether."

Speaking as a former POSITA, that's not what the term "software" means to me. I say "software" means "instructions executing on a processor." That is, software is tied to hardware, and as such, is not "abstract."

I suppose you can try making this argument in an expert declaration. But I think a better approach to avoid/overcome a § 101 rejection for "software per se" is a specification that explains what is meant by the terms "software" and "hardware," and explains the relationship between the two.

My two cents: software is abstract. It can't be anything but that. So while a process might be patented, one which uses software in the process, the software part of the process can not be patented any more than you can patent 1+1=2 even if you do that math as part of your method or process. It wouldn't matter if your hardware made the calculation. That wouldn't make 1+1=2 patentable. We'll be watching this one. Like I say, there's a need for educating lawyers on the tech. Software is math. Algorithms. That's it. Here is an article Groklaw published that we hope will help lawyers to understand what software is and why it should not be patentable, An Explanation of Computation Theory for Lawyers. I hope you enjoy it, and if you have questions, please post them and we'll try to answer any questions or objections you may wish to express.

Here's the entire ruling:

**********************

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES

____________

Ex parte GRAEME JOHN PROUDLER

____________

Appeal 2009-006599

Application 10/643,306

Technology Center 2400

____________

Before JAMES D. THOMAS, THU A. DANG, and CAROLYN D. THOMAS, Administrative Patent Judges.

J. THOMAS, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1-43, and 50. We have jurisdiction under 35 U.S.C. § 6(b). We vacate the rejection before us under 35 U.S.C. § 103 and institute a new ground of rejection within the provisions of 37 C.F.R. § 41.50(b).

Invention

A method of controlling the processing of data is provided comprising defining security controls for a plurality of data items, and applying individualised security rules to each of the data items based on a measurement of integrity of a computing entity to which the data items are to be made available.
(Abstract, Fig. 3).

Representative Claim

33. A method of controlling processing of data, wherein the data comprises a plurality of rules associated with a plurality of data items comprising a set of logically related data items, each data item in the set having a rule associated therewith, said rules acting to individually define usage and/or security to be observed when processing each of the data items in the set of data items, and in which forwarding of the set of data items is performed in accordance with mask means provided in association with the rules.

2

Prior Art and the Examiner’s Rejections

The Examiner relies on the following references as evidence of unpatentability:
Ishizaki - US 2002/0019934 A1 - Feb. 14, 2002
Raley - US 2003/0196119 A1 - Oct. 16, 2003
(effective filing date of Jan. 16, 2002)
Claims 1-43, and 50 stand rejected under 35 U.S.C. § 103. As evidence of obviousness, the Examiner relies upon Raley in view of Ishizaki.

ANALYSIS

We vacate the prior art rejection encompassing all claims on appeal because we conclude that all claims on appeal, claims 1-43, and 50, are “barred at the threshold by § 101.” In re Comiskey, 554 F.3d 967, 973 (Fed. Cir. 2009) (citing Diamond v. Diehr, 450 U.S. 175, 188 (1981)). Therefore, the following new ground of rejection is set forth in this Opinion within the provisions of 37 C.F.R. § 41.50(b).

NEW REJECTION UNDER 35 U.S.C. § 101
PRINCIPLES OF LAW

Statutory Subject Matter

The subject matter of claims permitted within 35 U.S.C. § 101 must be a machine, a manufacture, a process, or a composition of matter. Moreover, our reviewing court has stated that “[t]he four categories [of § 101] together describe the exclusive reach of patentable subject matter. If

3

the claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007); accord In re Ferguson, 558 F.3d 1359 (Fed. Cir. 2009). This latter case held that claims directed to a “paradigm” are nonstatutory under 35 U.S.C. § 101 as representing an abstract idea. Thus, a “signal” cannot be patentable subject matter because it is not within any of the four categories. In re Nuijten, 500 F.3d at 1357. Laws of nature, abstract ideas, and natural phenomena are excluded from patent protection. Diamond v. Diehr, 450 U.S. at 185. A claim that recites no more than software, logic or a data structure (i.e., an abstraction) does not fall within any statutory category. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). Significantly, "Abstract software code is an idea without physical embodiment." Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007). The unpatentability of abstract ideas was confirmed by the U.S. Supreme Court inBilski v. Kappos, No. 08-964, 2010 WL 2555192 (June 28, 2010).

With this background in mind, all claims on appeal, claims 1-43, and 50, are rejected under 35 U.S.C. § 101 as being directed to nonstatutory subject matter. Consistent with our earlier noted invention statement from Appellants’ disclosed abstract, the disclosed and claimed invention is directed to software per se, abstract ideas, abstract concepts, and the like, including data per se, data items, data structures, usage rules, and the abstract intellectual processes associating them within the claims on appeal.

4

This brief analysis is clearly seen from representative independent claim 33 on appeal. The manner in which the so-called “computer apparatus” of the preamble of independent claim 50 is recited in the body of this claim is characterized as directly reciting in its two clauses “programming for” achieving a certain abstract functionality. Thus, no true hardware structure is recited. The Specification at page 4, lines 19 and 20, also indicates that a “computing entity, either hardware or software, is often called a ‘node’ and this term will appear here and after.” In view of this assessment, the broadly recited “computer apparatus” in independent claim 50 is additionally recited in independent claim 1 on appeal and must be construed in like manner. Corresponding abstract functionalities are recited in all of these independent claims.

In like manner, independent claim 43 recites in its preamble a direct recitation to a computer program that is said to be stored on a computer readable “media”. Besides falling within our earlier analysis, the manner in which this claim is recited in its preamble encompasses signals per se based upon the correlation of this claim to the signals associated with the Internet at page 4 of the “Summary of the Invention” in the principal Brief on appeal as well as its reference to the teachings of the signaling embodiment associated with networks, including the Internet, at Specification page 11 beginning at line 19. Thus, this claim is directed to include communications media. As such, this claim is inclusive of transitory signaling embodiments, which are proscribed by the early-noted case law. The media of this claim include transitory embodiments, such as to comprise signals per se. Note

5

also the analysis provided by Subject Matter Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).

CONCLUSION AND DECISION

We have pro forma reversed the outstanding rejection over applied prior art of all claims on appeal, claims 1-43, and 50. We have instituted a new ground of rejection within 37 C.F.R. § 41.50(b). This new rejection of all claims on appeal is based upon 35 U.S.C. § 101 since these claims are directed to non-statutory subject matter.

A new ground of rejection is pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.”

37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected claims:

(1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner ....

(2) Request rehearing. Request that the proceeding be reheard under 37 C.F.R. § 41.52 by the Board upon the same record ....

6

No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

VACATED
37 C.F.R. § 41.50(b)

7

__________________
1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision.

  


Sanity From the 1st Post-Bilski Decision from BPAI: In Re Proudler | 501 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Corrections thread
Authored by: Aladdin Sane on Tuesday, July 13 2010 @ 05:41 PM EDT
Note corrections here.

---
There is nothing unknowable—only that which is yet to be known. —The Fourth Doctor (Tom Baker)

[ Reply to This | # ]

[NP] News Picks
Authored by: Aladdin Sane on Tuesday, July 13 2010 @ 05:42 PM EDT
Comment on News Picks here.

---
There is nothing unknowable—only that which is yet to be known. —The Fourth Doctor (Tom Baker)

[ Reply to This | # ]

[OT] Off Topic
Authored by: Aladdin Sane on Tuesday, July 13 2010 @ 05:43 PM EDT
Please confine Off Topic comments to this thread.

---
There is nothing unknowable—only that which is yet to be known. —The Fourth Doctor (Tom Baker)

[ Reply to This | # ]

COMES docs
Authored by: Aladdin Sane on Tuesday, July 13 2010 @ 05:44 PM EDT
can be posted here.

---
There is nothing unknowable—only that which is yet to be known. —The Fourth Doctor (Tom Baker)

[ Reply to This | # ]

Sanity From the 1st Post-Bilski Decision from BPAI: In Re Proudler
Authored by: jjock on Tuesday, July 13 2010 @ 05:46 PM EDT
What a refreshing decision! Even if HP does appeal, at least the
decision making process has shifted in our favour.
Bob

[ Reply to This | # ]

Sanity From the 1st Post-Bilski Decision from BPAI: In Re Proudler
Authored by: maroberts on Tuesday, July 13 2010 @ 06:03 PM EDT
So on that basis, does that mean that if you can show your idea has been
entirely implemented in software, then you are protected from any patent
claims???

[ Reply to This | # ]

The patent application in question - not all claims rejected
Authored by: yscydion on Tuesday, July 13 2010 @ 06:46 PM EDT

The patent application in question can be seen at the USPTO; document number 2008 0276086 (the link is a search so may not work, if not look up the number with the application number search).

It must have been modified since that version since there is no claim 50 - I suspect the claim 49 in the version I linked to is the rejected claim 50 and some other claim has been added in the 44-48 range.

A question for those who understand the legal processes. Was it within the power of this court to do anything about the claims (presumably 44-49 and maybe others beyond 50) that had not been finally rejected by the examiner? It was an appeal against the rejection so I suspect that the court could only consider those claims specified in the appeal. Some of the rest look to me as if they would not stand up too well under the reasoning used by the court.

[ Reply to This | # ]

A Hope!
Authored by: Anonymous on Tuesday, July 13 2010 @ 06:49 PM EDT

I'm hoping this helps alter how the Patent Examiners decide which patents are entitled to a stamp of approval.

RAS

[ Reply to This | # ]

Turing machine
Authored by: Anonymous on Tuesday, July 13 2010 @ 08:18 PM EDT
What is software and why is it abstract ?

It is possible to invent a single machine which can be used to compute any computable sequence.

That is the simple statement of Turing. To say software is bound to a particular machine is to ignore the ability to translate that software to any other machine and have it perform exactly the same.

This finding is now taken for granted, but at the time (1936) it was considered astonishing. The model of computation that Turing called his "universal machine"—"U" for short—is considered by some (cf Davis (2000)) to have been the fundamental theoretical breakthrough that led to the notion of the stored program computer. (wikipedia)
I really would like to see any expert witness attempt to argue software out of the Turing machine concept. Any algorithm can be executed by a universal Turing machine.

[ Reply to This | # ]

Sanity From the 1st Post-Bilski Decision from BPAI: In Re Proudler
Authored by: wvhillbilly on Tuesday, July 13 2010 @ 08:27 PM EDT
I seem to get the impression this guy is trying to patent software itself, that
is software in general rather than any specific piece of software.

Or am I missing something?

---
"It is written." always trumps, "Um, ah, well, I thought..."

[ Reply to This | # ]

Section 101 is a "red herring"
Authored by: julianne on Tuesday, July 13 2010 @ 08:42 PM EDT
In the post http://erikjheels.com/?p=2222, the author makes the claim that
section 101 of the patent act is a "red herring." The indication is
that most of what is rejected under 101 survives using sections 102 (novelty)
ash 112 (utility). He seems to say (along with most other patent lawyers that
have made comments about the BAPI and Bilski) that software and business patents
should proceed just because they want them to. I agree with PJ and others who
have attempted to debunk the software patents on the basis of being abstract
ideas. Does the patent act require that any material covered NOT be abstract?
The approach of the patent lawyers seems to be "create enough fog that the
examiners can't wade through to make a good decision."

[ Reply to This | # ]

Lawyers are hilarious
Authored by: Anonymous on Tuesday, July 13 2010 @ 08:48 PM EDT
From the blog post you quoted:

"software" means "instructions executing on a processor."

This kind of comment by author of the blog just shows how lawyers start with
what they want to prove and then just make up something that sounds plausible to
justify it. If you accept his argument, then "software" ceases to be
software as soon as the processor stops executing it.

Think for a minute ... that means that I can copy the code for windows ...
decompile it ... and post it to the internet --- all without violating the
software license because none of these steps execute the code, so it's not
software and therefore is not covered by the "software"
license!!!!!!!

[ Reply to This | # ]

POSITA?
Authored by: Anonymous on Tuesday, July 13 2010 @ 08:54 PM EDT
The person PJ quotes says she "speaks as a former POSITA". POSITA is an acronym for "person of u>ordinary u>skill u>in u>the u>art". So, I think she is saying that she has done some software development or something like that.

[ Reply to This | # ]

  • POSITA? - Authored by: Anonymous on Wednesday, July 14 2010 @ 08:20 AM EDT
    • POSITA? - Authored by: Vic on Wednesday, July 14 2010 @ 08:39 AM EDT
    • POSITA? - Authored by: Anonymous on Wednesday, July 14 2010 @ 12:12 PM EDT
I love IT!
Authored by: Anonymous on Tuesday, July 13 2010 @ 09:06 PM EDT

It's almost like they've been listening to the expression of some Patent Lawyers who keep insisting "everything under the sun is patentable" and decided to put that to rest:

The subject matter of claims permitted within 35 U.S.C. § 101 must be a machine, a manufacture, a process, or a composition of matter. Moreover, our reviewing court has stated that “[t]he four categories [of § 101] together describe the exclusive reach of patentable subject matter. If the claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of § 101 even if the subject matter is otherwise new and useful.”
And...
Thus, a “signal” cannot be patentable subject matter because it is not within any of the four categories.
In the terms of a certain hero:
Grooveeyy
I guess if Mr. Quinn wishes to keep insisting that everything is patentable, he can argue that with the Board Of Patent Appeals And Interferences.

RAS

[ Reply to This | # ]

Sanity From the 1st Post-Bilski Decision from BPAI: In Re Proudler
Authored by: jvillain on Tuesday, July 13 2010 @ 09:38 PM EDT
Should we assume that the patent examiner is reading off of a new hymn sheet or
just had a momentary laps of reason on their own?

Should we expect appeals to have patents over turned before this or some thing
similar winds it's way though the courts? If so then I would guess that the
patent office is about to get flooded.

[ Reply to This | # ]

My issue with current software patents...
Authored by: Anonymous on Tuesday, July 13 2010 @ 11:02 PM EDT
There are multiple ways of getting someone on to the roof of a building: Ladder,
Rope, Staircase, Lift, ...

Each method can be patented because each one does the same process in a
different manor. Thus the requirement that each method must be both described
(in claims) and documented with drawings (blue-print).

In software, there are many ways of doing the same thing. Thus, I believe that
the method you are patenting must be described in the claims and also be
included with a drawing showing exactly how you are doing it (I would prefer
that a copy of the source code be included in the patent).

If a person of reasonable knowledge in he art must be able to exactly reproduce
a physical patent, then a person of reasonable knowledge must be able to
generate a program structured almost exactly the same as the patented software.

If you can't reproduce the program from the patent documentation, then the
process can't be considered as being placed into the public domain when the
patent expires. Also, if the documentation isn't detailed enough to mandate a
single solution, then the patent is over broad and shouldn't be issued.

Software could be considered as tied to a machine once it's compiled; however,
most programmers work in a high level language which can be compiled down to
machine code for different processors (this is a how Linux works, the main code
is written in C and then compiled to run on x386, PPC, ARM, 68xxx, etc...).

Software is generic unless it's designed to work on a dedicated piece of
hardware that's controlling a machine that is being patented (lift control
systems, aviation controllers, engine control systems, ...). I can't see what
could be placed into a Spread Sheet Program that would make it patentable.

[ Reply to This | # ]

Software is math. Algorithms. That's it.
Authored by: Anonymous on Tuesday, July 13 2010 @ 11:54 PM EDT
One of the problems with software (and other process) patents is that while
technically, a computer program is just an algorithm, software also includes
interactions with the surrounding world. In most cases, it would seem to me,
people are actually trying to protect with a patent the way in which software
functions when combined with outside interactions, like users, mechanical
processes, other computers on a network, etc. However, it is often hard to
describe those interactions in a quantitative or even qualitative way.

As an example, in a reductionist sense, just like software is just math and
algorithms, a human being is just a collection of hydrogen, oxygen, carbon,
calcium and a several other trace elements. That's it, just atoms. Yet, we talk
about human character, soul, etc., which cannot be described easily in terms of
the elemental composition of a human body.

A similar problem exists in other walks of life as well, software is just one of
them. In trying to define complexity, or interactions of a system, a better
language is needed so that what can be protected by a patent would be the way
the software interacts or what it achieves, rather than the program itself,
which is indeed abstract math and thus should not be patentable.

So a question. What would be a suitable way of describing in a patentable
language the functioning, performance, use or interactions of software without
resorting to describing (just) the algorithms?

[ Reply to This | # ]

patents on software vs algorithms
Authored by: LouS on Wednesday, July 14 2010 @ 12:18 AM EDT
Of course the "software" in a "software patent" is abstract - it isn't any specific software that is being protected by the patent, it is an abstract algorithm that is being protected by a patent. If I could patent "binary search" I certainly would claim infringement if you created any code that embodied the idea of binary search. That is the whole advantage of a patent over copyright (to the owner, disadvantage to the rest of the world). But the underlying structure of a software method like "binary search" is an abstract idea, akin to mathematical ideas like "use a taylor series to approximate a function". So the whole reason why anyone would want to patent software as opposed to copyrighting it is to protect an abstract idea, which is therefore (or should be, anyway) inherently unpatentable.

[ Reply to This | # ]

Software doesn't have to be executed on a processor.
Authored by: Anonymous on Wednesday, July 14 2010 @ 12:54 AM EDT
Quote:
Speaking as a former POSITA, that's not what the term "software" means to me. I say "software" means "instructions executing on a processor." That is, software is tied to hardware, and as such, is not "abstract."
If software is written in a high level language like Python, it can be executed with pen and paper. It is completely abstracted away from any particular processor.

As I have pointed out to my students countless times: The program that uses a room full of human computers in 1899 to apply a filter to a geophysical data set is exactly the same as that which processes a video signal in real time on a DSP in 2010.

The author of the quote, Karen G. Hazzah, is simply wrong.

[ Reply to This | # ]

The average lawyer ...
Authored by: Anonymous on Wednesday, July 14 2010 @ 01:46 AM EDT
... at least where I learned in school was terrible at math and couldn't barely
calculate anything correctly -- her/his income including. Thus, it is only
consequent that lawyers understand that software is math at an instant. *sigh*

[ Reply to This | # ]

Totally Hypothetical and Unlikely Question
Authored by: sproggit on Wednesday, July 14 2010 @ 02:44 AM EDT
Let's suppose, just for a moment, that the concept of software patents unravels
a bit like "The Emperor's New Clothes" and the USPTO no longer accepts
new patent applications for software-only inventions.

It costs money to file a patent claim. What happens to all those millions (or
billions) of dollars that have lined the coffers of the Federal Government via
the US Patent and Trademark Office? Can those individuals and companies who
effectively just have their patents voided claim any refund?

After all, it's no good if the USPTO simply states, "No more new software
patents" because obviously patent applications are not "point in
time" activities because of the requirements to cite and acknowledge prior
art.

More than that: what about individuals or companies that have been accused of
(software) patent infringement [ wasn't that in one of Darl McBride's early
accusations against IBM?] Would compensation be in order? Could they have the
earlier judgments overturned on appeal? If so, how could a Court calculate
damages?

How many small software companies have been wiped out when some large
multinational has alleged patent infringement?


I ask these questions not to start a controversial debate, but because my
thoughts are skipping ahead to a possible future in which software patents start
to get overturned as a result of these rulings.

This is exactly what PJ (and other FOSS luminaries) have been warning the
law-makers and others about for years now. The acceptance of software patent
applications by the US PTO has caused a mess of nightmare proportions.

And that gives me cause for concern. Politicians and law-makers hate to be
handed a mess to clear up: they know that some of the dirt is going to stick on
them, no matter how careful they are. Very often we see them duck their
responsibilities. So now I wonder how the government will handle this as and
when they finally come to realise just what a huge mistake it was to accept
software patents in the first place...

How is this going to play out?

[ Reply to This | # ]

Software is not Math
Authored by: Anonymous on Wednesday, July 14 2010 @ 03:42 AM EDT
I really, really think you're on the wrong path when you think "software is
math". A lot of software has much more to do with engineering, making
systems fit. Some software is really involved in terms of Math, but a lot of
what is patented as software is trivial, mathematically speaking.

For example, a "Buy Now" button is simply not Math. It is really much
closer to Usability => human factors.

There is talk about programs being numbers, through the analysis of Alan Turing,
and programs being related to mathematical theorems and proofs through Kurt
Goedel's work. But that is really not the point, because particular
implementations (which might be represented as numbers) are not patented, but
the designs/ideas/solutions are.

There is also Donald Knuth protesting against software patents on the basis that
algorithms should not be patentable. I think there are lots of software patents
which you wouldn't even call algorithms, since in those terms they are so
trivial (see Buy-Now button example).

So I think if you make the argument of Software-is-Math against software patents
it will not be enough in the long run. I suggest that the problem is a bit
different.

[ Reply to This | # ]

Software that never sees a processor...
Authored by: Anonymous on Wednesday, July 14 2010 @ 04:00 AM EDT
I've written some of that myself. Hah!

[ Reply to This | # ]

Exactl;y
Authored by: Differance on Wednesday, July 14 2010 @ 04:35 AM EDT
PJ says:

"My two cents: software is abstract. It can't be anything but that. So
while a process might be patented, one which uses software in the process, the
software part of the process can not be patented any more than you can patent
1+1=2 even if you do that math as part of your method or process. It wouldn't
matter if your hardware made the calculation. That wouldn't make 1+1=2
patentable."

Bravo. Exactly. You just need to stress that even if the device is patentable,
software is inherently pure because it's instructions for a pure logic
processor. After this understanding is set, software's relationship to
patentability will never be a point of confusion, and we can sort everything
else out with that premise set.

And this is exactly what I said would happen post-Bilski. People are looking
more closely at the abstraction exclusion -- and you've picked up the key point,
which is definitive: software is *pure* abstraction, as all math and logic are
independent of empirical particulars. No need to get messy with the machine or
transformation test, which tries to draw lines in terms of empirical
abstraction. Software is independent of that continuum entirely. All the other
issues are on that continuum, but we can set software aside cleanly because it
is pure.

[ Reply to This | # ]

  • Exactl;y - Authored by: DL on Friday, July 16 2010 @ 01:40 AM EDT
    • Exactl;y - Authored by: Vic on Friday, July 16 2010 @ 07:28 AM EDT
      • Exactl;y - Authored by: jonathon on Friday, July 16 2010 @ 11:54 AM EDT
        • Exactl;y - Authored by: Vic on Tuesday, July 20 2010 @ 12:52 PM EDT
Bilski says software and business methods are not patentable
Authored by: Paul Johnson on Wednesday, July 14 2010 @ 05:56 AM EDT
This is probably a good time to mention my recent blog post showing that Bilski logically prohibits all software and business method patents, despite its attempts to allow room for them to exist.

---
These ideas and others like them can be had for $0.02 each from your friendly local idealist.

[ Reply to This | # ]

Sanity From the 1st Post-Bilski Decision from BPAI: In Re Proudler
Authored by: Steve Martin on Wednesday, July 14 2010 @ 06:42 AM EDT

(PJ:) My two cents: software is abstract.
In fact, software as written in any language (including assembler) which is higher-level than pure machine language is by definition "abstract". The very purpose of developing programming languages (from FORTRAN to more modern languages such as Python and Ruby) was to abstract the machine to the developer.

A programmer writing (for example) in C would not write a series of 32-bit binary words that cause specific hardware registers to access values from specific locations in memory, add the contents of one register to the contents of the other (storing the result in one of those registers), then store that stored value back into some other location in memory; he might rather simply write the instruction

C = A + B ;
This abstraction insulates the programmer from having to know the hardware-level details of the target machine.

Now, given this, one might argue that embedded pure binary code as stored in a PROM or NVRAM does not so abstract the machine, but I would submit that such code is then part of the physical machine, and is of no value (does not perform a useful function) when separated from the machine and so does not pass the "useful" requirement of being patented.

I am cautiously encouraged by this glimmer of intelligence from the patent office. Keep it up, guys.

---
"When I say something, I put my name next to it." -- Isaac Jaffe, "Sports Night"

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Sanity From the 1st Post-Bilski Decision from BPAI: In Re Proudler
Authored by: Anonymous on Wednesday, July 14 2010 @ 09:30 AM EDT
What I have not seen yet is the argument comparing instruction manuals to
software. Instruction manuals can not be patented so why is software? Software
is nothing more that an instruction manual for computers.

[ Reply to This | # ]

"Tied to a particular machine"
Authored by: Eeyore on Wednesday, July 14 2010 @ 10:35 AM EDT
Could it be that "tied to a particular machine" was really intended to
be more restrictive than patent lawyers are interpreting it (yeah I know, duh)?


Application software (ie, Excel) is NOT tied to a "PARTICULAR
MACHINE", it's tied to a CLASS of machines (machines that run a particular
operating systems - Microsoft Windows) regardless of the manufacturer (HP, Dell,
etc.).

Wouldn't a piece of software that is actually "tied to a particular
machine" need to be distributed embedded in the HARDWARE of the machine?
For instance, the microcode to the Intel Pentium processor is "tied to a
particular machine".

IMHO, "embedded" software would seem to be more patentable than
"stand alone" software, but then that's just me.

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Machine-or-Transformation test
Authored by: SLi on Wednesday, July 14 2010 @ 11:04 AM EDT

I think the quoted blogger has a point that should not be dismissed without consideration in asking if this is not exactly the Machine-or-Transformation test, which I believe the Supreme Court explicitly rejected.

It's too hot here to think right now so I won't elaborate further, but it seems to me that it would create problems too if the test the PTO employs is exactly the same as the previously rejected test. Of course one problem here is that the rejection of a single patent application does not necessarily expose the entire test used.

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Sanity From the 1st Post-Bilski Decision from BPAI: In Re Proudler
Authored by: TemporalBeing on Wednesday, July 14 2010 @ 01:29 PM EDT
Laws of nature, abstract ideas, and natural phenomena are excluded from patent protection. Diamond v. Diehr, 450 U.S. at 185. A claim that recites no more than software, logic or a data structure (i.e., an abstraction) does not fall within any statutory category. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). Significantly, "Abstract software code is an idea without physical embodiment." Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007). The unpatentability of abstract ideas was confirmed by the U.S. Supreme Court in Bilski v. Kappos, No. 08-964, 2010 WL 2555192 (June 28, 2010).
Having read the entire decision in Bilsk v. Kappos, the above is exactly what SCOTUS suggested - that Business Processes (especially), software, etc. could all be disqualified alone by applying the Abstract issue, and the heavy use of the terms "Abstract" and "Abstract Idea" (roughly 50 times throughout the entire set of opinions) is a very good indicator of where things ought to be going.

If given another case like it, they'll likely say more along the same lines - emphasizing "Abstract" and what it means. Steven's return to the historical and laying out the history (emphasizing the same from the lower court) is also a strong indicator in this (though sadly it wasn't the majority).

Needless to say, I think we'll see a lot more rejects based on "Abstract".

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Choice of Analogies
Authored by: WhiteFang on Wednesday, July 14 2010 @ 01:33 PM EDT
I've been reading a number of the threads and comments and have a few of my own
to throw out.

Many of the analogies are misleading and/or obtuse or subject to being construed
in ways not intended by the person putting forth the analogy. Also, there is a
lot of conflating of issues/concepts.

I'm going to toss my personal analogy on the heap. Feel free to present a
deconstruction. Warning: any typos or grammatical errors I make are my own and
unintentional. Any argument that I'm wrong because of nitpicking on grammatical
grounds is an automatic fail on your part (should you choose to take such a
position).

An argument which respects my intended definitions will receive more respect
from me than an argument which conflates multiple definitions. It should be
obvious from my writing what my definitions are. If it is not clear what
definitions I'm using, ask. English is a multi-dimensional living language
containing many words and phrases with multiple meanings and nuances of
meanings. If you want to take issue with anything I write, make the effort to
understand what my actual conceptual intentions are.

Failure on your part to make that effort does not mean you're right.

Re: Bilski - Analogy

Bilski is an attempt to patent the idea of using special peanut butter to bait a
mouse trap. Now, how does the deconstruction work?

The mousetrap is a 'computer'. Any mousetrap will do just as any computer will
do.

The peanut butter is the program.

The 'special' is the recipe for making peanut butter from organically grown
peanuts utilizing stainless steel pots and pans instead of aluminum.

Let's break this down further.

There are many different and varied mousetraps. They all do the same job. They
catch mice.

There are many different and varied computers. They all do the same job. They
run programs. Nothing patentable here.

There are many different and varied ways to bait and types of bait for
mousetraps. Peanut butter is just one type of bait. There is also crackers, bits
of lard, butter and whatever else has calories.

There are many different and varied ways to program a computer. There are many
different programming languages to build any kind of program one wants all
achieving the same goal. Nothing special here. Nothing patentable here.

However, the recipe for the 'special' peanut butter is subject to copyright.

The recipe is a method for organizing ingredients to make something special. The
only thing the recipe does is claim to make a more enticing bait. The mouse trap
and regular peanut butter still function as expected.

Bilski's algorithm is a method for organizing human activity. The activity in
question is guidance on hedge fund activity. The fact that this guidance can be
computerized doesn't not a patentable idea make.

In point of fact, the reality that this organization of human activity can be
programmed actually makes it clear it is not patentable. By definition, anything
that runs on a general purpose computer has to be manually defined before it can
be programmed. If it can be defined with pencil and paper then it is not unique.
It doesn't require the computer to produce results.

It doesn't matter how complicated the implementation is, by simple definition,
anything which can be computerized can be manually defined with pencil and paper
and therefore falls under the 'organization of human behavior' prohibition.

The program is an expression of an idea which is exactly what copyright is for.
Computerizing the expression of that idea obfuscates the fact that Bilksi is
nothing more than organizing human behavior. As a matter of law, organizing
human behavior is prohibited from being patentable.

Most funds treat their hedging strategies as trade secrets. All hedging
strategies are organizations of human behavior and can be performed using pencil
and paper.

In Bilski, the "inventors" attempted to protect their hedging strategy
with a patent rather than as a trade secret combined with an unpublished
copyright on the programs that implement it.

While not relevant from a legal standpoint, consider the following: There are
many hedge funds dealing in the same environment described in Bilski. They all
have hedging strategies. If these hedge funds keep their hedging strategies
secret, then Bilski has no assurance that the strategy Bilski is attempting to
patent is actually unique. I suspect strongly that, in fact, it's not nearly as
unique as Bilski et al would like to believe.

Bilski et al chose the wrong Intellectual Property vehicle for protecting their
work.

It has been standard practice in the field to protect all computerization of
business practices with a combination of unpublished copyrights on programs
combined with keeping all formulas/business methods/collection of business
information as trade secrets under nondisclosure.

Bilski represents nothing more than an attempt to expand 'rights' where none had
existed before. While this may make a lucrative business model for extorting
money, it doesn't follow the rule of law.

On a tangent regarding the computerization inherent in special hardware. If you
take my Mousetrap with Special Peanut Butter analogy, this is one way it could
look:

Mousetrap has a built in hovering facility with mouse proximity detection. The
sensors and hovering are computer driven to actively search for and scoop up
mice.

In this case, the 'invention' is the hovering, mouse detecting, actively
searching and trapping of mice device.

The device as a whole is patentable. The computer programs to drive the device
can be copyrighted as unpublished works. However, the algorithms to drive the
device and make it perform are not patentable.

Moreover, in order to get the patent on the hovering, seeking and scooping
mousetrap, you must describe the algorithms used so that others can replicate
your invention. Which means everyone is free to use these algorithms for any
other application (whether you like it or not). That is part of the societal
contract patent receivers make when being granted a time limited monopoly.

This is very different than what's up with Bilski where there is nothing
patentable.

Those people who essentially take the position opposing the concept that no
programs should be patentable because anything computerized becomes
un-patentable have made the exact same mistake as they make in their claims that
all ideas expressed in programs should be patentable.

The question is:

"What is a patentable idea?"

Claiming all ideas are patentable is ludicrous. Established patent law and the
historical issuing and usage of patents to protect ideas make that very, very
clear.

Attempts to extend the definition of 'patentable idea' are attempts to redefine
the rule of law without going through Congress.

The second analogy above makes it very clear as to what is a patentable idea,
what is a copyrightable expression and what is not patentable.

The second question is one which is ethical in nature. Consider the above
invention of the active mousetrap. You're getting an official, but time limited
monopoly grant on computer driven flying mousetraps with concurrent copyright
protection on the programs you used to make the mousetrap perform. Is it ethical
to appropriate the mathematical algorithms used in the programs too?

Yes, the algorithms are ideas. But patent law specifically disallows mental
exercises from being patentable. That's what algorithms are. So ... again, how
ethical is it to twist the original intent and meaning of established patent law
to now include business methods/algorithms etc?

---
"The so-called protection offered by DRM operates only at the
distribution end of the chain. It doesn't help artists eat better." Anonymous

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The circular logic of patent lawyers
Authored by: Anonymous on Wednesday, July 14 2010 @ 03:02 PM EDT
If you head over to Quinn's site where he argues that
software must be patentable, you won't find any valid
mathematical refutation of the "all software is math"
argument, which pretty much all CS and math experts consider
about as settled as the question of whether the earth is
round or flat.

Instead, his argument is that software patents are "needed":
1. Software ("intellectual property") is more valuable to a
company if potential competitors are prevented from
imitating it.
2. Copyright law does not prevent others from independently
implementing equivalent software.
3. Patents prohibit equivalent competing products, even
those created without knowledge of the patented product.
4. Therefore, software patents are needed to provide
adequate protection to "innovators".

The logical fallacy ought to be obvious - instead of showing
that software patents are reasonable, he shows that only
software patents are able to prohibit the independent
creation of works that are in no way based on the patented
material. If you ask me, this constitutes a compelling
reason for why software patents ought to be categorically
prohibited.

It seems to me that software patent advocates must have the
ability to keep contradictory ideas in their mind at the
same time, claiming that:

1. The concepts covered by software patents are highly
novel, innovative, and non-obvious.

but yet:

2. Unknowing infringement (or "copying without knowing" -
think about that concept for a moment!) is no defense.

So, if software patents cover highly innovative, non-
obvious, protectable concepts, how is it that it is
perfectly possible that an ordinary programmer writing
typical code will infringe patents without realizing it?
Quinn says it is irresponsible for programmers to not search
for relevant patents before writing a program. I think that
means that software patents really do cover obvious ideas in
most cases.

DSB

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The lawyer's job is to convince, not to determin truth
Authored by: Anonymous on Wednesday, July 14 2010 @ 04:08 PM EDT
As I see it, the job of a lawyer is to take a predetermined position and to
produce some combination of evidence and argument that will convince a judge or
a jury that the position is true. Law is debate, not science. Plaintiff's
lawyers have to make the case, defendant's have to refute it. The people who
decide the case are not allowed to base their decision on anything other than
what the lawyers present in court. Absolute truth is irrelevant (though
sometimes helpful) in making a argument.

So, it's not a question of whether such-and-such is true so much as whether a
convincing argument as to its truth can be made in a court of law. The job of
the patent lawyer is to present a putative invention is a manner that persuades,
first the PTO, then any reviewing court, that it fits within the legal
definition of a patentable entity. They know that pure abstractions are not
patentable, so they have to dress software up in concrete clothes such as
"instructions executing on a processor" in order to make them pass
muster.

Personally, I'd love to see someone start filing for patents on methods of legal
argument or--most fitting--on procedures for preparing patent applications.

-Russ

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Not necessarily corrupt, but certainly a contrasting point of view
Authored by: Anonymous on Wednesday, July 14 2010 @ 06:46 PM EDT
Well,the SCO epic certainly does play to my cynical side, already honed to a
razor's edge during my years of Federal service in D.C. (I now work as a
software developer.) However, in my post, I was trying to get at the different
viewpoints of the analysts here at Groklaw and, for example, the attorneys at
Patently-O.

Perhaps an anecdote would be useful. My one time on a jury was in Federal
District Court, a criminal charge of a felon in possession of a firearm. An
analyst by nature as well as by trade, my approach to any problem is to gather
relevant information and to work it over until I am satisfied that I have
understanding sufficient to make a decision. What I experienced in the courtroom
seemed almost the exact opposite: fragments of facts presented in no logical
order or context and often contradictory, with frequent debate over what we, the
jury, would be allowed to know about the case. By the time we headed for the
jury room, I felt as though I was being required to write a thesis on a novel
that I had been seen only as an incomplete jumble of pages, and without the
opportunity ask even a single question. It was a deeply dissatisfying
experience.

That happened nineteen years ago, and I have since given much thought (analysis,
of course) to why it bothered me so. My conclusion revolves around the
dissonance between the adversarial approach that underlies the legal system and
the analytical approach that underlies my life. It was rather too much akin to
the time when, as a university undergraduate, I transferred from engineering
school where data was king, to lit school where rhetoric ruled and it often
seemed that the title to Truth went to those who simply argued the loudest and
longest.

So yes, I understand and respect the fact that the overall goal of the legal
system is to seek the truth, and that lawyers, as officers of the court are
duty-bound to hew to it. And I know that bad seeds often are weeded out (one of
my uncles among them). But are not attorneys also bound to represent, and to
advocate for, the interests of their clients as fully as possible? It's that
advocacy, I think, that defines the difference between us analysts and the
patent attorneys.

As an aside, I often wonder whether the legal system as currently constituted is
adequate to keep up with the pressures of contemporary society. While the courts
operate in the same fashion and at same the speed as they did in the early days
of the Republic, life--in the technology sector, at least--moves immeasurably
faster. I also wonder whether judges can be reasonably expected to understand,
based solely on information presented by the parties in a case, the incredibly
abstruse and complex technological questions that are placed before them with
sufficient clarity to pass fully-informed judgment.

-Russ

[ Reply to This | # ]

I wish I could be optimistic, but
Authored by: keds on Thursday, July 15 2010 @ 12:30 AM EDT
Let's face it: Big corporations want software patents, so big corporations are
going to get them at some point. Until they do, they're going to whine and
bitch about "stifling innovation" and "loss of competitive
edge."

Somebody please tell me where I'm wrong?

[ Reply to This | # ]

Comment on "An Explanation of Computation Theory for Lawyers"
Authored by: Anonymous on Thursday, July 15 2010 @ 10:25 AM EDT

After reading the essay by PoIR, I feel there are a few points that should be brought out. First, I think he did a nice job of introducing some important historical background about computational theory in an understandable manner. However, the essay was not particularly effective at convincing me about several of its key points regarding what software is and why it is not patentable.

In the section titled "The Nature of Software", the author makes four key assertions. The first is that software is data. He bases this on the characteristics of a typical computer with a von Neumann architecture. But computers do not always have to be constructed using a von Neumann architecture. The "program" can be hardwired into the machine, perhaps as sequences of specialized microcode or bits configuring a custom FPGA device.

In addition, the "software" that the author talks about as being data is not the same thing as the "software" that is being considered for patent protection. A patent application is not made for the form of expression taken by a program, whether as a binary executable file or as text in source code files. The patent application covers claims for what the software effectively does. Software from that conceptual view is not simply data.

The second key assertion is that software is abstract. This assertion is actually hard to reconcile with the first, unless you assume that the software he is talking about in the two statements is not the same thing. If software is data it is concrete, and not abstract.

When talking about software patents, it is correct to think in abstract terms. The problem with the author's assertion is that it mistakes the idea that two things may be conceptually equivalent on some level with the idea that those two things are thus identical and can be simply substituted for one another. While it may be possible to take a given computer program written in a modern declarative language and create a functionally equivalent Turing machine representation, it is not generally possible to go the other way. It is generally not decidable for any sequence of symbols representing an arbitrary Turing machine to make predictions of even basic functionality, such as whether the execution will ever terminate. So while the Turing machine simulation of a software program may be highly abstract, the program itself is less so and is not the same thing as its TM emulation. The real-world program is closely tied into the constraints that went into it's creation, including the interactions it is designed to have with surrounding events and conditions. Those constraints are often discernible upon inspection of the program's implementation.

The third assertion made by the author is that software is mathematics. The problem with this assertion is that it is not adequately backed up by the reasoning he gives. He says:

This is because all the instructions the CPU is able to execute are mathematical operations. Physical computers are implementations of universal Turing machines. Universal Turing machines are part of mathematics. Therefore, whatever they do is mathematics. Another way to look at it is software is the description of some abstract Turing machine. Since all Turing machines are part of mathematics software is mathematics

The problem is that "whatever they do is mathematics" does not follow from "Universal Turing machines are part of mathematics." UTMs are models of general purpose computers, and TMs are models of computation. The models are mathematical in nature, but it does not follow that either the computer or computation are themselves only mathematical. There are also practical limitations in attempting to equate TMs with real computing. Some expressed in the wikipedia article on Turing machines include:

One way in which Turing machines are a poor model for programs is that many real programs, such as operating systems and word processors, are written to receive unbounded input over time, and therefore do not halt. Turing machines do not model such ongoing computation well (but can still model portions of it, such as individual procedures).
A limitation of Turing Machines is that they do not model the strengths of a particular arrangement well. For instance, modern stored-program computers are actually instances of a more specific form of abstract machine known as the random access stored program machine or RASP machine model.
Another limitation of Turing machines is that they do not model concurrency well. For example, there is a bound on the size of integer that can be computed by an always-halting nondeterministic Turing Machine starting on a blank tape.

The TM is as powerful as any other model, in that it can model any computation, but within the assumptions of having unlimited storage and unlimited time to do so that are not characteristic of real-world computations. It is a valuable mathematical tool, but just because something can be modeled by mathematics does not make that something itself only mathematics. It is still just a model.

The forth assertion made by the author is that software is discovered as opposed to invented. This is only justified by accepting the earlier assertions that software is abstract and software is mathematics as true, which as shown above is a questionable assumption. The only thing we can say with certainty is that a software model may be abstract and a software model is mathematical. But the model and the reality are not the same thing. The author appears to follow a belief that all software already exists as sequences of symbols to a UTM, we just have to discover the useful ones out of the infinite number of possibilities. This is an interesting philosophical observation, but has little practical application. The reality is that useful computing on real machines is created, not merely discovered.

The author makes a good point that lawyers should learn about computation theory. Unfortunately, the article strays from being an educational tutorial into being an advocacy piece for views that are not always strongly supported by the evidence presented. There are many good reasons why software patents should be sharply limited, if not altogether eliminated, but the argument presented that software is only abstract mathematics is not one of them.

--bystander1313

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Sanity From the 1st Post-Bilski Decision from BPAI: In Re Proudler
Authored by: iraskygazer on Monday, July 19 2010 @ 06:35 AM EDT
PJ,

Thanks for noticing this aftereffect. This article has helped relieve some of
the pressure I've felt while developing applications for my workplace. I don't
have to look over my shoulder for concern that someone will claim that I'm
infringing on one of their corporate patents. But I still can't let my guard
down when dealing with IP. There is so much remaining to be done about
eliminating the concept of IP from the legal realm. Fear of IP rights is the
last esoteric piece to box in and confine in the global software market.

[ Reply to This | # ]

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