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USPTO Asks for Comments on New Interim Guidance on Bilski
Thursday, July 29 2010 @ 03:33 PM EDT

The PTO has just issued new guidance for their examiners on Bilski, Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos [PDF] -- on how to follow what they think Bilski held as to what is and isn't patentable subject matter under 35 U.S.C. § 101.

"A claim to an abstract idea is not a patent-eligible process," Bilski holds, they point out, but exactly where is the line? How do you know an abstract idea when you see it? So the USPTO is asking for public comment on what they came up with for their understanding. They want to hear from the public by September 27, and they provide some specific questions and a list of factors examiners are to consider when evaluating an application.

You know pro-patent companies' lawyers in droves will be telling them that their clients should be able to patent God's method and process for creating the heavens and the earth, so you may wish to comment yourself and let them know politely where you think the line should be drawn on the abstract idea exception to subject matter eligibility as set forth in Bilski, if this is a topic you care about. Otherwise, I can see it now, their report: We got 3,201 comments saying X and only 3 saying Y, so X carries the day.

The truth is, I don't think anybody knows specifically what Bilski means, including the US Supreme Court. They couldn't draw a straight line, because they couldn't agree on enough, so they just didn't. So what is the USPTO supposed to do with it in the real world? They give it their best shot.

They know algorithms are not patent eligible, because they list that, but you and I would want to ask: what do they think software is if not algorithms? No one yet has been able to answer my challenge to show me something in software that *isn't* an algorithm. Please feel free to try.

And while abstract ideas are not patentable, usually, there is this "but" that the USPTO recites:

Bilski reaffirmed Diehr’s holding that "while an abstract idea, law of nature, or mathematical formula could not be patented, 'an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.'"
So all the patent applications will read, "A method or process for creating the heavens and the earth, on a particular machine" and it will stress it is an *application* of the laws of physics, not patenting the actual laws themselves per se.

The USPTO gets it that abstract ideas are not patentable, but then lists this as one factor:

A. If the method involves or is executed on a particular machine, it is more likely patent eligible.
*More* likely? Uh oh. I don't think they realize general computers aren't transformed by software, unless one redefines the word "transform" to mean "not transformative". That's why you can run more than one program at once. But it's heartening they see that a particular machine is better than just any old laptop. I find these factors that they list, for example, very encouraging:
Factors To Be Considered in an Abstract Idea Determination of a Method Claim

A. Whether the method involves or is executed by a particular machine or apparatus. If so, the claims are less likely to be drawn to an abstract idea; if not, they are more likely to be so drawn.

Where a machine or apparatus is recited or inherent in a patent claim, the following factors are relevant:

(1) The particularity or generality of the elements of the machine or apparatus; i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines). Incorporation of a particular machine or apparatus into the claimed method steps weighs toward eligibility.

(2) Whether the machine or apparatus implements the steps of the method. Integral use of a machine or apparatus to achieve performance of the method weighs toward eligibility, as compared to where the machine or apparatus is merely an object on which the method operates, which weighs against eligibility.

(3) Whether its involvement is extrasolution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the execution of the claimed method steps. Use of a machine or apparatus that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would weigh against eligibility.

Think about software. If the system can't make it all the way to banning software patents as a category, I think you can see how much better life would become for programmers if patents had to at least be tied to a particular computer or machine. Anything that narrows the damage is to the good.

They are asking for comments from the public, preferably by email:

Any member of the public may submit written comments on the Interim Bilski Guidance. The Office is especially interested in receiving comments regarding the scope and extent of the holding in Bilski.
It's easier for you and me to know what is abstract, but it's a lot harder for patent lawyers and administrators, because they got used to patenting almost everything under the sun, particularly if it added "with a computer", so their brains all tilt in the direction of patentability. They say in the document they've always rejected abstract ideas, even before Bilski, but that tells me they may need to think a bit deeper about software. They did reject Bilski's application, though, and the Supreme Court upheld that decision, so they have been trying to get it right. But they need help connecting *all* the dots, in my view.

From Inventive Step, a summary of what is new:

Specifically, the PTO requests comments on these questions:
1. What are examples of claims that do not meet the machine-or-transformation test but nevertheless remain patent-eligible because they do not recite an abstract idea?

2. What are examples of claims that meet the machine-or-transformation test but nevertheless are not patent-eligible because they recite an abstract idea?

3. The decision in Bilski suggested that it might be possible to "defin[e] a narrower category or class of patent applications that claim to instruct how business should be conducted," such that the category itself would be unpatentable as "an attempt to patent abstract ideas." Bilski slip op. at 12. Do any such "categories" exist? If so, how does the category itself represent an "attempt to patent abstract ideas?"

The Guidance still relies heavily on the Federal Circuit’s machine-or-transformation test and seems to be skeptical that there are methods that would be patent eligible that do not meet the test.
To date, no court, presented with a subject matter eligibility issue, has ever ruled that a method claim that lacked a machine or a transformation was patent-eligible.
The Guidance suggests that claims must be considered as a whole and that patent eligibility under § 101 is only a threshold test. Patent claims must still be examined for compliance with §§ 102, 103, and 112. Examiners are admonished to state all non-cumulative reasons and bases for rejecting the claims in the first office action and should not treat an application solely on the basis of § 101 except in the most extreme cases.
They are asking if there are any categories of business methods that ought to be unpatentable as abstract ideas. I imagine you can come up with some. I'm not positive it will do any good, but education is never a waste. If you have a lawyer handy, ask for help, if you can. And ideas can be gleaned from the amicus briefs filed by the good guys that you'll find here on Groklaw. The Software Freedom Law Center's brief particularly addressed the issue of what software is:
The holding of Benson is properly applicable to all software, because a computer program, no matter what its function, is neither more nor less than the representation of one or more algorithms. Further, just as claiming fifty — or even a thousand — laws of nature is no more patentable than claiming a single law of nature, no form of software, regardless of how many algorithms or formulas it comprises, is patentable: It will always be merely and solely made up of algorithms for computers to execute, written down in a form comprehensible to human beings for them to study and expand upon....

In its unprocessed source code form, software is merely the expression of abstract ideas in human language — a description of a sequence of steps that will produce a particular result (i.e. an “algorithm”). The source code of a program which performs the steps described in a software patent is distinguishable from the literal patent only in that it expresses the same steps in a different language. Therefore, since anyone may copy or publish the actual patent without infringing, it must also be permissible to communicate its claims in source code form.

The new guidance goes into effect immediately, but presumably there could be another one, after they read the comments:

The Interim Bilski Guidance is effective July 27, 2010. This guidance applies to all applications filed before, on or after the effective date of July 27, 2010.
And here's who you write to:
ADDRESSES: Comments concerning this Interim Bilski Guidance should be sent by electronic mail message over the Internet addressed to Bilski_Guidance@uspto.gov or facsimile transmitted to (571) 273–0125. Comments may also be submitted by mail addressed to: Mail Stop Comments—Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450. Although comments may be submitted by facsimile or mail, the Office prefers to receive comments via the Internet.

The comments will be available for public inspection at the Office of the Commissioner for Patents, located in Madison East, Tenth Floor, 600 Dulany Street, Alexandria, Virginia, and will be available via the USPTO Internet Web site, (address: http://www.uspto.gov). Because comments will be available for public inspection, information that is not desired to be made public, such as an address or phone number, should not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Caroline D. Dennison, Legal Advisor, Office of Patent Legal Administration, Office of the Associate Commissioner for Patent Examination Policy, by telephone at (571) 272–7729, or by mail addressed to: Mail Stop Comments— Patents, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313–1450, marked to the attention of Caroline D. Dennison.

What The USPTO Thinks Bilski Means:

Here's what the USPTO is telling their examiners Bilski means:

II. Summary: The Bilski Court underscored that the text of § 101 is expansive, specifying four independent categories of inventions eligible for protection, including processes, machines, manufactures, and compositions of matter. See slip op. at 4 ("In choosing such expansive terms * * * modified by the comprehensive 'any', Congress plainly contemplated that the patent laws would be given wide scope.") (quoting Diamond v. Chakrabarty, 447 U.S. 303, 308 (1980)). The Court also made clear that business methods are not "categorically outside of § 101’s scope," stating that "a business method is simply one kind of 'method' that is, at least in some circumstances, eligible for patenting under § 101." Id. at 10–11. Examiners are reminded that § 101 is not the sole tool for determining patentability; where a claim encompasses an abstract idea, sections 102, 103, and 112 will provide additional tools for ensuring that the claim meets the conditions for patentability. As the Court made clear in Bilski:
The § 101 patent-eligibility inquiry is only a threshold test. Even if an invention qualifies as a process, machine, manufacture, or composition of matter, in order to receive the Patent Act’s protection the claimed invention must also satisfy "the conditions and requirements of this title." § 101. Those requirements include that the invention be novel, see § 102, nonobvious, see § 103, and fully and particularly described, see § 112.
Id. at 5.

Therefore, examiners should avoid focusing on issues of patent-eligibility under § 101 to the detriment of considering an application for compliance with the requirements of §§ 102, 103, and 112, and should avoid treating an application solely on the basis of patent-eligibility under § 101 except in the most extreme cases.

III. The Abstract Idea Exception to Subject Matter Eligibility: There are limits on the scope of patent-eligibility. In particular, the Supreme Court has identified three specific exceptions to § 101’s broad patent-eligibility principles: Laws of nature, physical phenomena, and abstract ideas. See id.

The Office has been using the so-called "machine-or-transformation" test used by the Federal Circuit to evaluate whether a method claim qualifies as a statutory patent-eligible process. See Interim Examination Instructions For Evaluating Subject Matter Eligibility Under 35 U.S.C. 101 dated August 24, 2009 ("2009 Interim Instructions"). The Supreme Court stated in Bilski that the machine-or-transformation test is a "useful and important clue" and "investigative tool" for determining whether some claimed methods are statutory processes, but it "is not the sole test for deciding whether an invention is a patent-eligible ‘process.'" Slip op. at 8. Its primary objection was to the elevation of the machine-or-transformation test — which it considered to be "atextual" — as the "sole test" for patent-eligibility. Slip op. at 6–8, 16. To date, no court, presented with a subject matter eligibility issue, has ever ruled that a method claim that lacked a machine or a transformation was patent-eligible. However, Bilski held open the possibility that some claims that do not meet the machine-or-transformation test might nevertheless be patent-eligible.

Prior to adoption of the machine-or-transformation test, the Office had used the "abstract idea" exception in cases where a claimed "method" did not sufficiently recite a physical instantiation. See, e.g., Ex parte Bilski, No. 2002–2257, slip op. at 46–49 (B.P.A.I. Sept. 26, 2006) (informative), http://www.uspto.gov/ip/boards/bpai/ decisions/inform/fd022257.pdf. Following Bilski, such an approach remains proper. A claim that attempts to patent an abstract idea is ineligible subject matter under 35 U.S.C. 101. See slip op. at 13 ("[A]ll members of the Court agree that the patent application at issue here falls outside of § 101 because it claims an abstract idea."). The abstract idea exception has deep roots in the Supreme Court’s jurisprudence. See id. at 5 (citing Le Roy v. Tatham, 55 U.S. (14 How.) 156, 174–175 (1853)).

Bilski reaffirmed Diehr’s holding that "while an abstract idea, law of nature, or mathematical formula could not be patented, 'an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.'" Id. at 14 (quoting Diamond v. Diehr, 450 U.S. 175, 187 (1981)) (emphasis in original). The recitation of some structure, such as a machine, or the recitation of some transformative component will in most cases limit the claim to such an application. However, not all such recitations necessarily save the claim: "Flook established that limiting an abstract idea to one field of use or adding token postsolution components did not make the concept patentable." Id. at 15. Moreover, the fact that the steps of a claim might occur in the "real world" does not necessarily save it from a section 101 rejection. Thus, the Bilski claims were said to be drawn to an "abstract idea" despite the fact that they included steps drawn to initiating transactions. The "abstractness" is in the sense that there are no limitations as to the mechanism for entering into the transactions.

Consistent with the foregoing, Bilski holds that the following claim is abstract:

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.

Specifically, the Court explains:

The concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea, just like the algorithms at issue in Benson and Flook. Allowing petitioners to patent risk hedging would preempt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea.
Slip op. at 15.

Bilski also held that the additional, narrowing, limitations in the dependent claims were mere field of use limitations or insignificant postsolution components, and that adding these limitations did not make the claims patent-eligible. See id. Claims 1–9 in Bilski are attached as examples of claims that run afoul of the abstract idea exception.

The day after deciding Bilski, the Supreme Court denied certiorari in Ferguson v. Kappos, U.S. Supreme Court No. 09–1501, while granting, vacating, and remanding two other Federal Circuit section 101 cases. The denial of certiorari left intact the rejection of all of Ferguson’s claims. Although the Federal Circuit had applied the machine-or-transformation test to reject Ferguson’s process claims, the Supreme Court’s disposition of Ferguson makes it likely that the Ferguson claims also run afoul of the abstract idea exception.

A representative Ferguson claim is:

1. A method of marketing a product, comprising:

Developing a shared marketing force, said shared marketing force including at least marketing channels, which enable marketing a number of related products;

Using said shared marketing force to market a plurality of different products that are made by a plurality of different autonomous producing company [sic], so that different autonomous companies, having different ownerships, respectively produce said related products;

Obtaining a share of total profits from each of said plurality of different autonomous producing companies in return for said using; and

Obtaining an exclusive right to market each of said plurality of products in return for said using.

The following guidance presents factors that are to be considered when evaluating patent-eligibility of method claims. The factors include inquiries from the machine-or-transformation test, which remains a useful investigative tool, and inquiries gleaned from Supreme Court precedent. While the Supreme Court in Bilski did not set forth detailed guidance, there are many factors to be considered when determining whether there is sufficient evidence to support a determination that a method claim is directed to an abstract idea. The following factors are intended to be useful examples and are not intended to be exclusive or limiting. It is recognized that new factors may be developed, particularly for emerging technologies. It is anticipated that the factors will be modified and changed to take into account developments in precedential case law and to accommodate prosecution issues that may arise in implementing this new practice.

Additional guidance in the form of expanded explanation and specific examples will follow in due course.

IV. Evaluating Method Claims for Eligibility: Where the claim is written in the form of a method and is potentially a patentable process, as defined in 35 U.S.C. 100(b), the claim is patent-eligible so long as it is not disqualified as one of the exceptions to § 101’s broad patent-eligibility principles; i.e., laws of nature, physical phenomena, and abstract ideas.

Taking into account the following factors, the examiner should determine whether the claimed invention, viewed as a whole, is disqualified as being a claim to an abstract idea. Relevant factors—both those in favor of patent- eligibility and those against such a finding—should be weighed in making the determination. Factors that weigh in favor of patent-eligibility satisfy the criteria of the machine-or-transformation test or provide evidence that the abstract idea has been practically applied. Factors that weigh against patent-eligibility neither satisfy the criteria of the machine-or-transformation test nor provide evidence that the abstract idea has been practically applied. Each case will present different factors, and it is likely that only some of the factors will be present in each application. It would be improper to make a conclusion based on one factor while ignoring other factors.

This additional guidance, which builds upon the 2009 Interim Instructions, is a factor-based inquiry. Although the following approach is a change, it is anticipated that subject matter eligibility determinations will not increase in complexity, particularly for examiners who do not routinely encounter claims that implicate the abstract idea exception. Examiners will recognize that the machine-or-transformation test set forth in Section II(B) of the 2009 Interim Instructions, although not the sole test for evaluating the subject matter eligibility of a method claim, is still pertinent in making determinations pursuant to the factors listed below. Examiners are referred to the summary sheet of factors provided at the end of this Interim Bilski Guidance which may be useful in determining subject matter eligibility of a method claim.

Factors To Be Considered in an Abstract Idea Determination of a Method Claim

A. Whether the method involves or is executed by a particular machine or apparatus. If so, the claims are less likely to be drawn to an abstract idea; if not, they are more likely to be so drawn. Where a machine or apparatus is recited or inherent in a patent claim, the following factors are relevant:

(1) The particularity or generality of the elements of the machine or apparatus; i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines). Incorporation of a particular machine or apparatus into the claimed method steps weighs toward eligibility.

(2) Whether the machine or apparatus implements the steps of the method. Integral use of a machine or apparatus to achieve performance of the method weighs toward eligibility, as compared to where the machine or apparatus is merely an object on which the method operates, which weighs against eligibility.

(3) Whether its involvement is extrasolution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the execution of the claimed method steps. Use of a machine or apparatus that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of- use limitation) would weigh against eligibility.

B. Whether performance of the claimed method results in or otherwise involves a transformation of a particular article. If such a transformation exists, the claims are less likely to be drawn to an abstract idea; if not, they are more likely to be so drawn. Where a transformation occurs, the following factors are relevant:

(1) The particularity or generality of the transformation. A more particular transformation would weigh in favor of eligibility.

(2) The degree to which the recited article is particular; i.e., can be specifically identified (not any and all articles). A transformation applied to a generically recited article would weigh against eligibility.

(3) The nature of the transformation in terms of the type or extent of change in state or thing, for instance by having a different function or use, which would weigh toward eligibility, compared to merely having a different location, which would weigh against eligibility.

(4) The nature of the article transformed, i.e., whether it is an object or substance, weighing toward eligibility, compared to a concept such as a contractual obligation or mental judgment, which would weigh against eligibility.

(5) Whether its involvement is extrasolution activity or a field-of-use, i.e., the extent to which (or how) the transformation imposes meaningful limits on the execution of the claimed method steps. A transformation that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would weigh against eligibility.

C. Whether performance of the claimed method involves an application of a law of nature, even in the absence of a particular machine, apparatus, or transformation. If such an application exists, the claims are less likely to be drawn to an abstract idea; if not, they are more likely to be so drawn. Where such an application is present, the following factors are relevant:
(1) The particularity or generality of the application. Application of a law of nature having broad applicability across many fields of endeavor weighs against eligibility, such as where the claim generically recites an effect of the law of nature or claims every mode of accomplishing that effect, such that the claim would monopolize a natural force or patent a scientific fact. (As an example, claiming "the use of electromagnetism for transmitting signals at a distance.")

(2) Whether the claimed method recites an application of a law of nature solely involving subjective determinations; e.g., ways to think about the law of nature. Application of a law of nature to a particular way of thinking about, or reacting to, a law of nature would weigh against eligibility.

(3) Whether its involvement is extrasolution activity or a field-of-use, i.e., the extent to which (or how) the application imposes meaningful limits on the execution of the claimed method steps. An application of the law of nature that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would weigh against eligibility.

D. Whether a general concept (which could also be recognized in such terms as a principle, theory, plan or scheme) is involved in executing the steps of the method. The presence of such a general concept can be a clue that the claim is drawn to an abstract idea. Where a general concept is present, the following factors are relevant:
(1) The extent to which use of the concept, as expressed in the method, would preempt its use in other fields; i.e., that the claim would effectively grant a monopoly over the concept.

(2) The extent to which the claim is so abstract and sweeping as to cover both known and unknown uses of the concept, and be performed through any existing or future-devised machinery, or even without any apparatus.

(3) The extent to which the claim would effectively cover all possible solutions to a particular problem; i.e., that the claim is a statement of the problem versus a description of a particular solution to the problem.

(4) Whether the concept is disembodied or whether it is instantiated; i.e., implemented, in some tangible way. Note, however, that limiting an abstract idea to one field of use or adding token postsolution components does not make the concept patentable. A concept that is well-instantiated weighs in favor of eligibility.

(5) The mechanism(s) by which the steps are implemented; e.g., whether the performance of the process is observable and verifiable rather than subjective or imperceptible. Steps that are observable and verifiable weigh in favor of eligibility.

(6) Examples of general concepts include, but are not limited to:

  • Basic economic practices or theories (e.g., hedging, insurance, financial transactions, marketing);
  • Basic legal theories (e.g., contracts, dispute resolution, rules of law);
  • Mathematical concepts (e.g., algorithms, spatial relationships, geometry);
  • Mental activity (e.g., forming a judgment, observation, evaluation, or opinion);
  • Interpersonal interactions or relationships (e.g., conversing, dating);
  • Teaching concepts (e.g., memorization, repetition);
  • Human behavior (e.g., exercising, wearing clothing, following rules or instructions);
  • Instructing "how business should be conducted," Bilski, slip op. at 12.
V. Making the Determination of Eligibility: Each of the factors relevant to the particular patent application should be weighed to determine whether the method is claiming an abstract idea by covering a general concept, or combination of concepts, or whether the method is limited to a particular practical application of the concept. The presence or absence of a single factor will not be determinative as the relevant factors need to be considered and weighed to make a proper determination as to whether the claim as a whole is drawn to an abstract idea such that the claim would effectively grant a monopoly over an abstract idea and be ineligible for patent protection.

If the factors indicate that the method claim is not merely covering an abstract idea, the claim is eligible for patent protection under § 101 and must be further evaluated for patentability under all of the statutory requirements, including utility and double patenting (§ 101); novelty (§ 102); non-obviousness (§ 103); and definiteness and adequate description, enablement, and best mode (§ 112). Section 101 is merely a coarse filter and thus a determination of eligibility under § 101 is only a threshold question for patentability. Sections 102, 103, and 112 are typically the primary tools for evaluating patentability unless the claim is truly abstract, see, e.g., Bilski, slip op. at 12 (‘‘[S]ome business method patents raise special problems in terms of vagueness and suspect validity.’’). If the factors indicate that the method claim is attempting to cover an abstract idea, the examiner will reject the claim under § 101, providing clear rationale supporting the determination that an abstract idea has been claimed, such that the examiner establishes a prima facie case of patent-ineligibility. The conclusion made by the examiner must be based on the evidence as a whole. In making a rejection or if presenting reasons for allowance when appropriate, the examiner should specifically point out the factors that are relied upon in making the determination. If a claim is rejected under § 101 on the basis that it is drawn to an abstract idea, the applicant then has the opportunity to explain why the claimed method is not drawn to an abstract idea. Specifically identifying the factors used in the analysis will allow the applicant to make specific arguments in response to the rejection if the applicant believes that the conclusion that the claim is directed to an abstract idea is in error.

The Interim Bilski Guidance is for examination guidance in light of the recent decision in Bilski. This guidance does not constitute substantive rule making and hence does not have the force and effect of law. Rejections will continue to be based upon the substantive law, and it is these rejections that are appealable. Consequently, any perceived failure by Office personnel to follow this guidance is neither appealable nor petitionable.

The Interim Bilski Guidance merely updates USPTO examination practice for consistency with the USPTO’s current understanding of the case law regarding patent subject matter eligibility under 35 U.S.C. 101 in light of Bilski. Therefore, the Interim Bilski Guidance relates only to interpretative rules, general statements of policy, or rules of agency organization, procedure, or practice. The USPTO is providing this opportunity for public comment because the USPTO desires the benefit of public comment on the Interim Bilski Guidance; however, notice and an opportunity for public comment are not required under 5 U.S.C. 553(b) or any other law. See Cooper Techs. Co. v. Dudas, 536 F.3d 1330, 1336–37, 87 U.S.P.Q.2d 1705, 1710 (Fed. Cir. 2008) (stating that 5 U.S.C. 553, and thus 35 U.S.C. 2(b)(2)(B), does not require notice and comment rule making for "'interpretative rules, general statements of policy, or rules of agency organization, procedure, or practice.'" (quoting 5 U.S.C. 553(b)(A))). Persons submitting written comments should note that the USPTO may not provide a "comment and response" analysis of such comments as notice and an opportunity for public comment are not required under 5 U.S.C. 553(b) or any other law.

Dated: July 4, 2010.

David J. Kappos,
Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office.


  


USPTO Asks for Comments on New Interim Guidance on Bilski | 447 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Corrections here
Authored by: Minsk on Thursday, July 29 2010 @ 03:44 PM EDT
Unless you want to correct the USPTO. In that case, you want another thread :)

[ Reply to This | # ]

News Picks discussion Thread
Authored by: complex_number on Thursday, July 29 2010 @ 03:46 PM EDT
Remember to quote the article in question

---
Ubuntu & 'apt-get' are not the answer to Life, The Universe & Everything which
is of course, "42" or is it 1.618?

[ Reply to This | # ]

USPTO Asks for Comments on New Interim Guidance on Bilski
Authored by: Anonymous on Thursday, July 29 2010 @ 03:51 PM EDT
Well, if you can describe the machine to create the heavens and the earth, in
enough detail that one "ordinarily skilled in the art" can implement
it, then, yes, that probably is worthy of a patent...

MSS2

[ Reply to This | # ]

Off Topic threads
Authored by: bugstomper on Thursday, July 29 2010 @ 03:51 PM EDT
Please stay off topic here. Use Html formatted Post Mode to make your clickies
more convenient and your formatting prettier.

[ Reply to This | # ]

Comes transcripts anyone?
Authored by: bugstomper on Thursday, July 29 2010 @ 03:53 PM EDT
COMES transcripts here, posted with HTML markup in Plain Old Text mode so PJ can
easily copy and paste them.

[ Reply to This | # ]

USPTO Asks for Comments on New Interim Guidance on Bilski
Authored by: cmcnabb on Thursday, July 29 2010 @ 04:04 PM EDT
It seems to me that the only time "software" should be remotely
patentable is if
it implements a novel and non-obvious electronic circuit or machine that
*could* also be implemented without the use of software. For example, a
software-defined radio is an implementation of a real device on a computer. The

real device can exist entirely on it's own in a physical form.

---
"When governments fear the people, there is liberty. When the people fear the
government, there is tyranny." - Thomas Jefferson

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USPTO Asks for Comments on New Interim Guidance on Bilski
Authored by: Anonymous on Thursday, July 29 2010 @ 04:12 PM EDT
It really should be simple.

If you can perform the "invention" without a machine, e.g. a pencil
and paper, then it is abstract and not patentable, even if the pencil and paper
version takes longer than on a computer.

Another example: If an invention can be performed on a Turing machine, then it
is abstract.

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Can we send them "An Explanation of Computation Theory for Lawyers"
Authored by: Anonymous on Thursday, July 29 2010 @ 04:18 PM EDT
Can we send this to them?
Note the whole article is under PJ's Creative Commons License.
An Explanation of Computation Theory for Lawyers
Wednesday, November 11 2009 @ 07:48 PM EST
http://www.groklaw.net/article.php?story=20091111151305785

As didn't Novell tell the Supreme Court to read this, so then maybe the USPTO should read it too?
Linked from :
Novell tells Supremes to read Groklaw in Certiorari petition Authored by: PJ on Thursday, March 04 2010 @ 08:50 PM EST

I hope they read Computational Theory for Lawyers, if they do come here. Our entire Bilski coverage, in a perfect world.

Afterall, software is what it is. And even the 5th Justice, didn't agree that software is patentable on it's face. Re: Bilski, they only all agreed that this BM patent as not patentable, and a majority actually didn't say that software is patentable. So - the USPTO should side with NO SOFTWARE PATENT angle on the Bilski ruling, and let the court then clear up any questions from there, meaning that the USPTO does not do damage by approving software patents, and if a case comes up that the plaintiff challenges the USPTO then let the court decide that too.

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Patents jumped the shark when
Authored by: maroberts on Thursday, July 29 2010 @ 05:20 PM EDT
...you no longer had to produce a working model/prototype of your invention.

Admittedly in some areas (e.g. drugs), this may be a little difficult, but its a
sound idea which would solve a lotta problems.

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Updating patent law for the Information Age
Authored by: Gringo on Thursday, July 29 2010 @ 05:25 PM EDT

I have seen patent lawyers seduced by the notion that UPSTO and the Courts have a duty and a responsibility to redefine patent law for the Information Age. This is often a preamble to a justification for patenting software and genes, etc.

This is false reasoning, because it presumes what Congress would do. There is no reason whatsoever to assume that patent law would be broadened to include software and genes by Congress, should they decide to revisit patent law, and no one has the right to make such an assumption. For all we know, and enlightened Congress might specifically exclude such items.

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Algorithms are a subset of software
Authored by: Tolerance on Thursday, July 29 2010 @ 05:58 PM EDT
Oh dear. PJ, a few days ago I spent altogether too much time commenting that
algorithms weren't all of software and complaining that failing to preserve the
distinction would bite eventually. Now it has.

Briefly, until recently the word algorithm in computer science referred to code
which was finite (if arbitrarily large) and eventually returned a definite
result. That's because Turing machines operate on algorithms, so defined.

All is not lost. Even if we consider algorithms to have the broader sense in
casual use, it's still true that any item of software has a perfect map to some
abstract structure in mathematics. So at the very least, tying it to a specific
machine would seem essential to avoid patenting an abstract idea.

---
Grumpy old man

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The Conundrum
Authored by: Anonymous on Thursday, July 29 2010 @ 06:17 PM EDT
How do you compensate someone who works for an extended period developing a
novel technique for solving an engineering problem?

Such things can't be marketed without explaining it in so much detail that
others can force the original creator out of the market.

An electronic circuit can be described mathematically. This is what circuit
simulators like Spice do. So why is an analog implementation of the mathematics
patentable, but a software version not?

rhb

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USPTO Asks for Comments on New Interim Guidance on Bilski
Authored by: Anonymous on Thursday, July 29 2010 @ 07:19 PM EDT
I was nervous about the USPTO's possible response, but it seems that there will
be real gains from Bilski.

****** Quote ******
Factors To Be Considered in an Abstract Idea Determination of a Method Claim

A. Whether the method involves or is executed by a particular machine or
apparatus. If so, the claims are less likely to be drawn to an abstract idea; if
not, they are more likely to be so drawn. Where a machine or apparatus is
recited or inherent in a patent claim, the following factors are relevant:

(1) The particularity or generality of the elements of the machine or apparatus;
i.e., the degree to which the machine in the claim can be specifically
identified (not any and all machines). Incorporation of a particular machine or
apparatus into the claimed method steps weighs toward eligibility.

(2) Whether the machine or apparatus implements the steps of the method.
Integral use of a machine or apparatus to achieve performance of the method
weighs toward eligibility, as compared to where the machine or apparatus is
merely an object on which the method operates, which weighs against
eligibility.
****** EndQuote ******

It looks like software on general purpose machines are (hopefully much) more
likely to be rejected. This is definitely a fair victory.

****** Quote ******
(2) The extent to which the claim is so abstract and sweeping as to cover both
known and unknown uses of the concept, and be performed through any existing or
future-devised machinery, or even without any apparatus.

(3) The extent to which the claim would effectively cover all possible solutions
to a particular problem; i.e., that the claim is a statement of the problem
versus a description of a particular solution to the problem.
****** EndQuote ******

This is an important rule (assuming it is new or newly focused), and, if taken
seriously, would possibly lead to the rejection of perhaps all of the
notoriously broad and "duh" patents we have seen over the years (were
the rules to be applied to those patents today).

In an effort to narrow down the meaning of "abstract" as per Bilski,
the patent office appears to be moving to requiring much more specificity in the
patent claims. This would certainly put patents closer to copyrights in terms of
narrowing their scope. A narrowed scope means it is easier to actually find
reasonable ways to invent around a patent. Also, the patent author will likely
have to take more time to write up the patent (and understand the invention),
opening the door to more prior art coming about. Independent invention getting
hit by the patent system will be less of an issue. In general, fewer patents
will be worth writing, and fewer open source developers and users will have
reasons to worry nearly as they may have in the past.

I would say that practical patent supporters in high positions at the USPTO, in
adhering to Bilski, want to take the opportunity to try and remove the black eye
patenting has gotten and not handcuff those that produce algorithms (eg, in
software) and require freedom, while still enabling the taxing of the superior
product implementations among those involved in the manufacturing industry where
patent costs as a business line item are tolerable.

PJ, it's not just you that believes Bilski has come with a "silver
lining" as goes open source.

:-)

--Jose_X

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Commets from the lay public?
Authored by: Khym Chanur on Thursday, July 29 2010 @ 08:28 PM EDT

Will the patent office really listen to comments from the lay public?

---
Give a man a match, and he'll be warm for a minute, but set him on fire, and he'll be warm for the rest of his life. (Paraphrased from Terry Pratchett)

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USPTO Asks for Comments on New Interim Guidance on Bilski
Authored by: Anonymous on Thursday, July 29 2010 @ 09:03 PM EDT
From the UTPTO Website:
http://www.uspto.gov/news/pr/2010/10_35.jsp

"Comments should be sent to Bilski_Guidance@uspto.gov and must be received
by September 27, 2010."

Delivery to the following recipient failed permanently:

Bilski_Guidance@uspto.gov

Technical details of permanent failure:
Google tried to deliver your message, but it was rejected by the recipient
domain. We recommend contacting the other email provider for further information
about the cause of this error. The error that the other server returned was: 550
550 5.1.1 <Bilski_Guidance@uspto.gov>: Recipient address rejected: User
unknown in relay recipient table (state 14).

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Transformation is the other path to Software Patentability
Authored by: dio gratia on Thursday, July 29 2010 @ 11:01 PM EDT

i4i recently announced the USPTO upheld their 5,787,449 patent. There are three independent claims, Claim 1, Claim 14 and Claim 20. Claim 1 was not in play for the reexamination (going to the Official Gazette for Patents following the link to week 30 (July 27, 2010) and select Browse Granted Patents and entering "5787449" in the search box we can find that the recent reexamination was confined to claims 14-20). We are primarily concerned with independent claims and don't look at 15 - 19. The validity of claims 14-20 were upheld by the reexamination.

14. A method for producing a first map of metacodes and their addresses of use in association with mapped content and stored in distinct map storage means, the method comprising:

providing the mapped content to mapped content storage means;

providing a menu of metacodes; and

compiling a map of the metacodes in the distinct storage means, by locating, detecting and addressing the metacodes; and

providing the document as the content of the document and the metacode map of the document.

20. A method for producing from a document made up of metacodes and content, a map of metacodes and their addresses of use in association with mapped content of the document and stored in distinct map storage means, the method comprising:

(a) reading the content of the document until a metacode is found;

(b) copying the content and storing the copied content in a mapped content storage;

(c) noting in the map the found metacode and its position in the content;

(d) repeating the processing of (a)-(c) until the entire document has been processed; and then

(e) providing the document as the content of the document separately from the metacode map of the document.

From the Detailed Description of the Invention we see that it provides the ability to store metacode attributes in a table instead of inline allowing the faster traversal of a mark up language, presumably for faster display. The table provides pointers into the raw markup language data, a means of faster access.

Setting aside the notion of indexes and tables of contents that happen to include pointers such as page numbers and by association section and subsection numbers demonstrating the lack of novelty other than cart before the horse questions, lets address how this is tested under the Machine-or-Transformation test. We could also note that there is an issue differentiating a document from an abstract representation of a document and that by an large we equate semantically the data and the visual representation of the document that it represents. In other words, we are dealing with abstractions of documents which fully convey the ideas presenting by displaying the document visually, either on a computer screen or in printed form. However Webster's dictionary provides a definition of document compatible with our usage (See 3.).

First of all does "A computer system for the manipulation of the architecture and content of a document having... " address a particular machine (Claim 1.)? "A computer system" appears to lack particularity. We know that the offending Microsoft Office™ software runs on general purpose computers. We know from the Federal Register publication of the proposed rules 101 Method Eligibility Quick Reference Sheet (available as 101 Method Eligibility Quick Reference Sheet, PDF, 49 KB), that the ..."Machine is merely an object on which the method operates" under "Factors Weighing Against Eligibility". Contrary to the views of some of the more vocal patent practitioner's blogs simple recitation of the equivalent of "on a computer" may not be enough, that it may not be a particular machine. We find in the Notes "(2) For a detailed explanation of the terms machine, transformation, article, particular, extrasolution activity, and field-of-use, please refer to the Interim Patent Subject Matter Eligibility Examination Instructions of August 24, 2009" which introduces the Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101 (PDF File 389 KB) and provides guidelines for the Machine-or-Transformation test. The August 24, 2009 letter is the first page of the document. As background (Page 6, document page 5) tells us:

In accordance with the M-or-T test, the claimed process must:

(1) be tied to a particular machine or apparatus (machine implemented); or

(2) particularly transform a particular article to a different state or thing.

A method claim that does not require machine implementation or does not cause a transformation will fail the test and should be rejected under § 101.

However, the mere presence of a machine tie or transformation is not sufficient to pass the test. When a machine tie or transformation has been identified, it must be further determined that the tie is to a particular machine or the particular transformation is of a particular article.

Under II. Particular Practical Application, B. Processes (Methods) (Page 5, Page 4 of the document) we find the referenced definitions, and on Page 7, Page 6 of the document) specifically:

A “particular” machine or apparatus or transformation of a “particular” article means that the method involves a specific machine or article, not any and all machines or articles. This ensures that the machine or transformation imposes real world limits on the claimed method by limiting the claim scope to a particular practical application.

For computer implemented processes, the “machine” is often disclosed as a general purpose computer. In these cases, the general purpose computer may be sufficiently “particular” when programmed to perform the process steps. Such programming creates a new machine because a general purpose computer, in effect, becomes a special purpose computer once it is programmed to perform particular functions pursuant to instructions from program software. To qualify as a particular machine under the test, the claim must clearly convey that the computer is programmed to perform the steps of the method because such programming, in effect, creates a special purpose computer limited to the use of the particularly claimed combination of elements (i.e., the programmed instructions) performing the particularly claimed combination of functions. If the claim is so abstract and sweeping that performing the process as claimed would cover substantially all practical applications of a judicial exception, such as a mathematical algorithm, the claim would not satisfy the test as the machine would not be sufficiently particular.

The impact of this is that we have conflicting guidelines apparently both in effect which if resolved in the applicant's favor grants patent eligibility. It accepts that a general purpose machine can be particular, but that if the method wholly operates on the machine "weighs against eligibility". Another factor that comes into play is whether or not the entirety of the claim is expressed as a mathematical algorithm enclosing all practical applications, addressing a judicial exception. For purposes of looking further lets assume the Machine leg of the Machine-or-Transformation test failed.

We could note that Claim 1. was not part of the reexamination, presumably from having been found invalid or inapplicable during the course of the trial. From the court record O: Cases - CIVIL OPENi4i v Microsoft 607cv113 patent607cv113 LED ... (PDF, 291 KB) we find that Claims 1 - 13 were held invalid by Microsoft's Motion for Partial Summary Judgment of Invalidity of Claims 1–13 of the ‘449 Patent for Indefiniteness Under 35 U.S.C. § 112 2 (Docket. No. 83). Indefiniteness is a fancy term meaning that a Person Having Ordinary Skill in the Art would be unable to implement the invention from the description. Claim 1 implementation was found to be indefinite, in all likelihood because the equivalent of "on a computer" did not provide sufficient elaboration for implementation on a computer.

Claims 14. and 20. are Method claims and bring up the question of transformation. From II. B. above (the preceding Page):

An “article” includes a physical object or substance. The physical article or substance must be particular, meaning it can be specifically identified. An article can also be electronic data that represents a physical object or substance. For the test, the data should be more than an abstract value. Data can be specifically identified by indicating what the data represents, the particular type or nature of the data, and/or how or from where the data was obtained.

“Transformation” of an article means that the “article” has changed to a different state or thing. Changing to a different state or thing usually means more than simply using an article or changing the location of an article. A new or different function or use can be evidence that an article has been transformed. Manufactures and compositions of matter are the result of transforming raw materials into something new with a different function or use. Purely mental processes in which thoughts or human based actions are “changed” are not considered an eligible transformation. For data, mathematical manipulation per se has not been deemed a transformation; but, transformation of electronic data has been found when the nature of the data has been changed such that it has a different function or is suitable for a different use (the efficient operation of a word processor for example).

The first hurdle we see is whether or not the document data is abstract. We could note that the actual text conveyed to a visual or printed representation might not be considered sufficiently abstract (See 3a), simply enumerated while the metacode might be - it provides pointers to places in the document data, in abstract.

Setting aside simple prejudice we examine transformation. We see that the document would be transformed as in the claims by the inclusion of the abstract data, in that it does provide suitability for a different use.

As noted first the use of metacode to implement the equivalent of indexes and a table of contents speaks to novelty "on a computer" or as a method. One could ask if such manual uses were available more than a year before the filing date of the patent (June 2, 1994) and they were. Think HTML, 1991, Mozilla, URLs and other references - printed documents not withstanding. The patent appears to be a field-of-use limitation on prior art to efficient computer use of the document data. Prior art notwithstanding this purely software patent appears to have been upheld based on the transformation of the document by inclusion of abstract data to suitability for a different use - faster access or "efficiency of operation" (from the patent).

We can conclude that in all likelihood the transformation leg of the Machine-or-Transformation test is currently being used to support the validity of purely software patents. Claims 14 through 20 do not involve a particular machine. (Note that the actual reexamination was completed in May 2010, and the certificate of reexamination noticed in the Patent Gazette 27 July 2010).

The only hope from this particular patent infringement case would be that Microsoft's Supreme Court appeal were successful based on a finding that data is not a particular article.

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broken record: algorithms are abstract, software is implementation
Authored by: reiisi on Friday, July 30 2010 @ 01:02 AM EDT
I feel like a broken record, because I keep saying this. (And I keep getting
ignored.)

Algorithms are abstract. Software that runs, to the extent it is free of
programming errors, is an implementation of an algorithm. (Usually of multiple
combined algorithms, but an algorithm combined with an algorithm is still an
algorithm.)

(Repeating myself a bit from a post above:)

That's the way the math department described it when I was in college 20 or 25
years ago.

It was also the way the CS department described it.

Patenting implementations of algorithms, whether in hardware or software, should
be no problem, with a small, but significant caveat. I'm pretty sure that the
original intent of the people who wrote the law agreed on that.

(Someone in this article is busy pointing out that patents went south from the
point a working model was no longer required.)

The verbal descriptions in most of the patents I've read are verbal descriptions
of algorithms. Not the algorithms themselves, but verbal descriptions thereof
(and generally not very accurate, which is something else that needs
consideration).

Algorithms can be described mathematically, too. Sometimes we say that the
source code is a mathematical description of the algorithm, but this is not
accurate. Source code is a (partial) mathematical description of an
implementation of the algorithm.

One problem is that we keep arguing that source code is equivalent to a
mathematical description of the algorithm.

It is not. It is a mathematical description of an implementation of the
algorithm.

Other parts of the description of the implementation include the context of
implementation. When you make that concrete, you specify the run-time, the
libraries used, the requirements of machines the software runs on.

Either way, the patents seem to be conflating descriptions of algorithms with
descriptions of implementations. Almost every software patent I've seen
describes an algorithm, not an implementation.

Without the source code, you really can't recreate any sort of a functioning
machine, algebraic or otherwise, from any software patent I've ever read.

I think that's the line that should be seen. (Doesn't need to be drawn, it's
already there, if we are willing to see it.)

Implementations are necessarily concrete. They require source code and other
specifications.

Algorithms are necessarily abstract.

That should be the line.

If you want to patent software, you should be required to patent your source
code. That means you must file it, make it visible. Perhaps not the entire
source code, but the source code that implements the claims.

And, yeah, that would mean that source code could be written to avoid the patent
claims. Of course it means that. Regular hardware patents have the same problem,
usually.

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USPTO Asks for Comments on New Interim Guidance on Bilski
Authored by: Ian Al on Friday, July 30 2010 @ 05:34 AM EDT
(1) The particularity or generality of the elements of the machine or apparatus; i.e., the degree to which the machine in the claim can be specifically identified (not any and all machines). Incorporation of a particular machine or apparatus into the claimed method steps weighs toward eligibility.

(2) Whether the machine or apparatus implements the steps of the method. Integral use of a machine or apparatus to achieve performance of the method weighs toward eligibility, as compared to where the machine or apparatus is merely an object on which the method operates, which weighs against eligibility.

(3) Whether its involvement is extrasolution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the execution of the claimed method steps. Use of a machine or apparatus that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would weigh against eligibility.
I expect that each submitted software patent will claim to be on a particular machine. I see considerable hurdles for the proposer to overcome. Take the 'one-click' type of proposal. The machine is not the browser client machine because it plays no active part in the process. The machine is up in the interweb. So, which particular machine is it? The process could be implemented on any interweb machine in the world. All the interweb machines and the interweb website software they run can all be made to implement the 'one-click' proposals. In other words the interweb machines 'contribute only nominally or insignificantly to the execution of the claimed method' and they are 'merely objects on which the method operates'. That is demonstrated by the fact that it is irrelevant which machine is used because they can have different processors, different operating systems, different programming languages, different interweb software and it makes no difference: they can all act as objects that have been chosen to implement the process for reasons not related in any way to their ability to implement the process.

How about a file system on a memory device? It is not a process. It is not a machine for doing something. It is a data structure which the USPTO has already ruled as ineligible. Don't tell me that the data structure is especially clever because it overcomes a limitation of another data structure. Phooey!

Lets have a look at a feature in a personal computer program. What is it about the feature that makes it essential to use a particular PC to implement it? Could you use any PC you liked? Yes you could. Running on a particular processor, operating system and as part of a program that you wrote is a choice that you made that is not crucial in any way to the implementation of the process. That goes for writing it in a particular language or implementing it as a web page on a local web-server. They are all 'merely objects on which the method operates'.

Let's suppose that we intend to patent a wonderful new algorithm to reduce the size of video files stored on computers. Of course, we don't propose to patent the algorithm: that would be completely ineligible! No, ours is a complete process for the transformation of the data from one form to another and back, using an algorithm. Of course, it must be admissible because it is a process and it is a machine. Now, the machine is, unfortunately, 'a machine or apparatus that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) which would weigh against eligibility'. So, we apply as a process patent.

Diamond v. Diehr:
Instead, they seek to patent protection for a process of curing synthetic rubber. Their process admittedly employs a well-known mathematical equation, but they do not seek to preempt the use of that equation. Rather, they seek only to foreclose from others the use of that equation in conjunction with all of the other steps in their claimed process.
The maths in Diamond v. Diehr was 'a well-known mathematical equation' aka 'mathematical prior art'. The Supremes said 'I want to let this guy patent the use of this mathematical prior art for the purpose of vulcanising rubber'. So, the Supremes don't reject patenting mathematical/software prior art in a patentable invention containing no inventive components. Its the invention that has to be inventive, not the components. Note that one of the protect-able components in this case is a well known mathematical algorithm which was considered prior art. Maths, of itself, is not patentable subject matter, but the Supremes accepted it as a protect-able part of an invention.

So how does our algorithmic patent hold up in the light of Diehr? Unfortunately, you cannot transform rubber, or any other material, using our patented method. It is a transformation of data. Let's see if it improves our chances if we claim that the process is the end to end process of capturing the video with a camera, saving it to a file with our algorithmic machine and then displaying the result on a video screen. Now, the 'material' we are transforming is the light forming the video event. However, anything less than a perfect reproduction of the original video event is not a useful transformation in itself. So, the only difference between our transformative machine and the immediate display of camera images on a screen is the transformation of the digital data representing the video and the essential reversal of the transformation for it to be useful. So, any transformation of material that takes place has to be reversed as much as possible for the process machine to be useful. The invention does not transform material to another useful form. The output of the machine is the same material that went in. Either that, or the invention is just a machine to transform data and that is an abstract process.

Patent denied.

---
Regards
Ian Al
SCOG, what ever happened to them? Whatever, it was less than they deserve.

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An analogy
Authored by: ais523 on Friday, July 30 2010 @ 08:29 AM EDT
(Note: the remainder of this post is an implausible hypothesis, mostly not actual fact. Hopefully, it'll help show patent lawyers what life as a programmer when software patents are allowed can be like. The analogy is not quite perfect, but is more or less the right level of ludicrous to describe the current situation.)

When preparing their cases, lawyers often want to cite precedents and similar cases, in order to demonstrate that similar cases have had similar results to their desired result in the past. Due to the number of court cases that have taken place over the years, searching for citations can be a difficult job, requiring both skill and a lot of time.

Originally, citations were unprotected; if a lawyer cited a case, then anyone could just observe the fact of the citation, and use the citation themselves; after all, court records are public (and for good reason). Thus, it rather annoyed lawyers and paralegals who had spent hours trawling through obscure cases looking for citations, to see all their hard work simply copied the next time a similar case came up; there were even widespread fears that some of the larger law firms had found devastatingly useful citations and yet were keeping them hidden, forgoing their use in less important cases to be able to use them as a surprise should they ever reach the Supreme Court, although nobody actually had any evidence of this happening. The situation was said to cause a worrying lack of citation research, leading to a hypothetical future in which there was nothing but a few low-quality citations that anyone dared use.

Thus, after much lobbying, a new law came in; henceforth, citations could be patented: upon finding a useful citation for the first time, the law firm in question became the only firm who could use that citation in their own cases for 25 years (the idea being, that that compensated them for the effort of finding the citation in the first place, and after that, the citation would be free for all to use, thus benefiting the law community at large who would have a new useful citation to use in their own cases).

There were several safeguards in the new system; "obvious" citations like recently decided cases in the appeals courts were deemed too easy to find and not worthy of patent protection, and citations could only be patented by the first law firm to find them. However, it quickly lead to all sorts of problems. One issue was that, upon finding a citation, you had no easy way to tell whether someone else had already patented it or not. In theory you could trawl through the lists of published citation patents, but not only was this just as difficult as finding the citations in the first place, but the citations in the patents were deliberately written in an obscure and difficult style, that was just about enough to check whether a particular citation violated them, but not to reproduce it, thus subverting the whole purpose of the patents in the first place. (Random commenters at Groklaw observed that it would make a lot more sense if the actual text of the citation itself had to be included in the patent, not just a convoluted description of it.) As it was hard to put together a convincing case without the use of citations, it became commonplace for lawyers to simply ignore the patents of other law firms; it was virtually impossible not to. Because all the major firms were doing it, none of them could hope to sue another for patent infringement without risking a huge countersuit, thus leaving the situation amongst major law firms much the same as it was pre-patent. As a bonus, it made it almost impossible for new competitors, not to mention pro se litigants, to enter the market, as they didn't have a huge library of citation patents to defend themselves with.

Another issue is that adding to the huge lists of citation patents that you had to trawl through to stay within the bounds of the law, there were thousands of other patents being filed all the time, often of dubious quality; some law firms would file patents on every minor trial court judgement in a particular geographic area, just in case it ended up being an important citation some day. Even obviously citeable cases were being patented, on the basis that smaller law firms wouldn't be able to afford the lawsuits needed to overturn the resulting patents. With more or less every court case ever patented, generally with vague descriptions that didn't even make it clear what the citation in question would be useful for, the catalog of patented citations was completely useless, even for people willing to wait 25 years for the citations to end patent coverage. (Not to mention, that the law changes quickly, and after 25 years most of the decisions were completely irrelevant due to changes to the law in the intervening time.)

So what's the situation now? An oligopoly of a few big law firms, a large pool of citation trolls (who own a lot of citation patents, often bought from actual law firms, and who don't bring cases themselves and so who can't be countersued over citation patent violation), and a few smaller firms who have to first write their cases, then look for some really obscure and less relevant citations to substitute in for the ones they want to use. Nobody else has much of a chance at legally practicing law at all.

Outside the major law firms, pretty much everyone hates the way citation patents turned out; useless as protection against big firms, a threat hanging over everyone else, and not even giving useful information to the public. There's a growing movement to repeal them at the moment, and even a Supreme Court case which casts doubt on whether citation patents are even legal in the first place (although it's unfortunately unclear and ambiguous). Hopefully, we can get them repealed, with enough lobbying and explanations of the situation.

[ Reply to This | # ]

Source Code in Patents
Authored by: Ian Al on Friday, July 30 2010 @ 08:33 AM EDT
Over the years that we have talked about software patents, comments about
including software source code in software patents have stuck in my mind. They
all revolve around folk saying that they include source code in their own
patents or that the design of the software invention can only be explicitly
given by using the source code.

Every time, my little internal Mr. Irascible runs around ringing alarm bells and
shouting 'preposterous', but I have not been able to elucidate what's... what's
upsetting the little fellow.

I can withstand the stress no longer. I must have a go at rationalising this. If
you are not convinced, then take it up with Mr. Irascible.

The source code is intended as the explicit blueprint of the software invention
such that someone skilled in the art can make one just like it. Now, when I am
walking up and down the very middle of the high street shouting obscenities
about software patents it is because I believe that they do not give the
explicit blueprint for the software invention, but manage to define just the
functionality. This means that no one will ever be able to invent another
invention that avoids the patent because anything that recreates the
functionality is considered violating by the courts.

So, surely the source code is the perfect blueprint. Anyone skilled in the art
can make a device just like the one defined by the software source code. Mr.
Irascible is ringing the bells again so this is where I need to start
cogitating. What would it take to do what the invention does using the same
design, but coming up with a completely different blueprint? Let's start with
another processor, operating system and programming language. Immediately, the
courts and the USPTO would see an entirely different blueprint even if the
original source code invention was exactly copied. You programmers know what I
am getting at. The source code is explicit, but it is not capable of protecting
the construction of the invention even though the invention can be built exactly
using the source code in the patent.

Let's be more particular about the particular machine since that is on-topic.
Let's use the original machine, operating system and programming language. We
can protect the source code blueprint of the software invention with copyright,
but supposing someone finds a cunning way around that? For instance, let's use
the SCO Obfuscation and Ladderage Process (Patent Spending) and obfuscate 'til
the pips squeak. The courts and the USPTO will find it impossible to see the
original invention in the obfuscated code blueprint. The original inventor
might, but what is it that he can see in the other code that he can use,
alternatively, as a patent blueprint in such a way that he protects the
invention from the 'another machine' and 'Obfuscation Process' side-stepping of
the original patent, but still permits another inventor to come up with a new
invention that does the same thing?

I might have said this, before (OK, I've said it again and again 'till I'm blue
in the face), but I don't think there is a way. You might suggest that it can be
achieved in some way with pseudo-code. I think pseudo-code suffers from exactly
the same problems as source code.

If you start from the bottom up, you start with op codes that cannot be
patented. Then you get to individual lines of programming language source code
that cannot be patented. For software blueprints to be possible, it must be
possible as you go up the conceptual layers of the software to get to a level of
abstraction that is the invention and not just an inconsequential collection of
lower level components.

If you start from the top down, you begin with a general description of what the
program, as a complete entity, does. This is a functional description and is not
patentable. As you work down the layers of abstraction, you go past the
functional descriptions of program modules. Functionality must not be
patentable, as explained above.

It is my belief that the bottom up and top down analysis never gets to a layer
where it is possible to produce a blueprint for a software invention.
Functionality disaggregates directly to blocks of unpatentable code.

So, once again I throw down the challenge. If you believe you have a software
invention that can be protected by patent, show me the blueprint for your
invention such that someone else's invention is not foreclosed by your blueprint
and your own invention is protected no matter what the building materials used
by someone else may be.

We will never get beyond the 'software is patentable, no it's not, yes it is'
position with the lawyers. I believe that the 'show us the blueprint' is too
high a hurdle to surmount and that prior art discussions need never take place.
Whilst discussing prior art, let me pose this question. When you come up with
software prior art, is it always to do with software that had the same
functionality as the software patent in question? Why do you think functionality
should be patentable without revealing the invention blueprint? Just because I
can see the functionality at work on my Amiga, what makes you think that the
same invention does the same thing in a Windows PC.

Listen. No bells. I must be right!

---
Regards
Ian Al
SCOG, what ever happened to them? Whatever, it was less than they deserve.

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Can someone draft a letter for the USPTO, one that limits software patents?
Authored by: dwheeler on Friday, July 30 2010 @ 09:55 AM EDT

Could some people draft and post possible responses to the USPTO? I'd be happy to write them a letter, but it's easier to write a more complete response once I see what others are saying. Any such response must be consistent with Bilski, since the USPTO must obey the Supreme Court's decision in Bilski. But since Bilski left many issues open, there's a lot of room for interpretation; I'd prefer that the USPTO interpretation caused less harm.

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USPTO Asks for Comments on New Interim Guidance on Bilski
Authored by: Anonymous on Friday, July 30 2010 @ 10:53 AM EDT
I think that an idea is abstract if it can be separated from the rest of the
invention or done on different hardware. I also think that this is a
sufficient, but not necessary condition (e.g. there may be other ways to
determine that an idea is abstract).

In that respect, I like the "particular machine" fork of the test.
The real problem was always the "transformation" fork, wherein people
could invent all sorts of irrelevant "transformations" like those
involved when a bit is written to the hard drive.

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USPTO Asks for Comments on New Interim Guidance on Bilski
Authored by: Anonymous on Friday, July 30 2010 @ 11:05 AM EDT
The bottom line: Patent law needs to be revised to be crystal clear as to what
is and is not patentable. My suggestion: Only physical, created objects or
compounds for which there is a working prototype or, in the case of compounds, a
novel, provable usage, and where there is no "prior art". "Prior
Art" for which there is no patent places the object or compound in the
public domain. No software, no processes, no methods, no biology.

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Strange / Dysfunctional
Authored by: Anonymous on Friday, July 30 2010 @ 06:04 PM EDT
I find it strange to have a Supreme Court decision on some question, and then
the organization (here PTO) goes and asks for public input. That is going from
one extreme to the other. Why would public input have any impact on what courts
decide?

I think that is called dysfunctional.

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Lets revamp A2
Authored by: Wol on Friday, July 30 2010 @ 07:57 PM EDT
(2) Whether the machine or apparatus implements the steps of the method. Integral use of a machine or apparatus to achieve performance of the method weighs toward eligibility, as compared to where the machine or apparatus is merely an object on which the method operates, which weighs against eligibility.

This should read something along the lines of "the likelihood of eligibility is directly related to the degree to which the machine is dedicated to the method. A machine totally dedicated to the method is highly likely to be eligible, a machine which can easily be used for other purposes than the method is unlikely to be eligible.

That takes the general purpose computer out of play rather nicely :-)

Cheers,
Wol

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What are the usual suspects doing?
Authored by: leopardi on Friday, July 30 2010 @ 09:50 PM EDT

I suppose that IEEE-USA and Dr. Lee Hollaar are cooking up some advice for USPTO. I wonder what it will say. Will it be as rabidly pro-software-patent as their amicus brief?

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H264 Video codec patents
Authored by: paulkappler on Saturday, July 31 2010 @ 10:48 AM EDT
I think there could be some interesting discussions around a specific cases.

To me the most important patents that has the chance of being invalidated in
light of Bilski are the patents around H.264.

For example, if you look at the a Patent like Apple's US 7292636.
"computing a particular value that is based on (i) a first order difference
value between an order value for the third video picture and an order value for
the first video picture...." This is the first patent in the list of H.264
patents.

They are clearing just patenting an aspect of an equation using words. The
words are so obfuscated that it's nearly impossible to determine what exactly
the equations are without going back to the standard. Still....this just an
equation.

If you think about what a video encoders and decoders do they are simply a
mathematical transformation of a compressed video to uncompressed video.

From my of point of view these are clearly an abstract mathmatical ideas that
could be done by anything that can compute and is not tied to a particular
machine.

If I am correct there has just been an untold revolution. This could blow open
video on the internet. We should be able to integrate H264 video into Firefox
and Opera and end the video standards war. I wish there was a lawyer was
willing to help fight that battle.

Would innovation in video compression stop if you couldn't patent the results?
Absolutely not.....There is plenty of money to be made selling Hardware capable
of better video compression. Innovation can enable smaller lighter video
players. The demand for such video players and the profit that can be made from
them to fund such research will not go away.

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Particular requires not general...?
Authored by: BitOBear on Monday, August 02 2010 @ 04:38 PM EDT
I clear reading of the word "particular" leads away from uncertainty.
In particular (pun intended) the definition of particular most applicable here
is "surpassing what is common or usual or expected".

By such readings and definition, if you _can_ execute the resultant code on a
"general purpose computer" consisting of parts available from usual
and expected sources (e.g. all the parts came from Dell, Fry's etc.) then the
machine is not "surpassing what is common or usual or expected".

The fact that you _may_ execute the "invention" on a particular
machine is not sufficient, as I can custom-build a machine to any task.

It must be that the "invention" _can_ _not_ execute on a general
purpose computer to meet the "particular machine" test.

To that end, it should thus be codified. Further, any case of execution on a
general purpose computer should be held as a priori, not infringing regardless
of any patent.

This is a simple enough line to draw actually. Absent the electro-mechanical
doo-dad that makes the machine "particular", it aint'
"particular" and so is not subject to any teaching of the patent.

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Challenge: Something in software (patents) that isn't just an algorithm
Authored by: Anonymous on Monday, August 02 2010 @ 11:39 PM EDT

In answer to PJ's challenge, one example might be a patent that was already mentioned in a previous comment. Apple's U.S. patent #7292636, one of the patents in the H.264 portfolio, describes in part a method for encoding and decoding video information with variable accuracy timing specifications.

The previous poster claimed this patent could be invalidated post-Bilski because it was just mathematical equations. This is not quite true, because the patent also describes the use of mathematical operations on particular data structures in order to implement working video encoders and decoders. The patentability of the subject matter is dependent not just on the choice of mathematical algorithms, but on the choice of data structures, and the ordering of their application, to form efficient video compressors/decompressors. This is an example of a software patent that does not simply cover abstract algorithms.

Support for this can be found in related Supreme Court rulings. The latest Bilski decision references the Diamond v. Diehr ruling in 1981, which said in part:

Our earlier opinions lend support to our present conclusion that a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula, computer program, or digital computer. In Gottschalk v. Benson, we noted: "It is said that the decision precludes a patent for any program servicing a computer. We do not so hold." 409 U.S. at 409 U. S. 71. Similarly, in Parker v. Flook, we stated that "a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm." 437 U.S. at 437 U. S. 590. It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection. See, e.g., 333 U. S. Seed Co. v. Kalo Inoculant Co., 333 U. S. 127 (1948); Ebel Process Co. v. Minnesota & Ontario Paper Co., 261 U. S. 45 (1923); Cochrane v. Deener, 94 U. S. 780 (1877) O'Reilly v. Morse, 15 How. 62 (1854); and Le Roy v. Tatham, 14 How. 156 (1853). As Justice Stone explained four decades ago:

"While a scientific truth, or the mathematical expression of it, is not a patentable invention, a novel and useful structure created with the aid of knowledge of scientific truth may be."

Mackay Radio & Telegraph Co. v. Radio Corp. of America, 306 U. S. 86, 306 U. S. 94 (1939).11

The Apple patent describes how a particular data structure, sets of macrocells representing frames of a video, can be manipulated to produce other data structures containing sufficient information to represent intervening frames. The patent does not cover the mathematical functions by themselves, but the combination of functions and particular data structures that form part of the H.264 standard.

In Bilski v. Kappos, the Supreme Court seems to reaffirm the ruling of Diehr.

Finally, in Diehr, the Court established a limitation on the principles articulated in Benson and Flook. The application in Diehr claimed a previously unknown method for "molding raw, uncured synthetic rubber into cured precision products," using a mathematical formula to complete some of its several steps by way of a computer. 450 U. S., at 177. Diehr explained that while an abstract idea, law of nature, or mathematical formula could not be patented, "an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection." Id., at 187. Diehr emphasized the need to consider the invention as a whole, rather than "dissect[ing] the claims into old and new elements and then . . . ignor[ing] the presence of the old elements in the analysis." Id., at 188.

It might actually be worthwhile to go over Apple's patent using the suggested USPTO guidance for factors to be considered in an abstract idea determination.

A. Whether the method involves or is executed by a particular machine or apparatus. If so, the claims are less likely to be drawn to an abstract idea; if not, they are more likely to be so drawn.

The Apple patent does not appear to need the involvement of or be executed by a particular machine. So this factor favors the claims being more likely drawn to an abstract idea.

B. Whether performance of the claimed method results in or otherwise involves a transformation of a particular article. If such a transformation exists, the claims are less likely to be drawn to an abstract idea; if not, they are more likely to be so drawn. Where a transformation occurs, the following factors are relevant:

(1) The particularity or generality of the transformation. A more particular transformation would weigh in favor of eligibility.

This factor seems to favor a finding of less abstract, since the article being transformed is video information existing in a particular form.

(2) The degree to which the recited article is particular; i.e., can be specifically identified (not any and all articles). A transformation applied to a generically recited article would weigh against eligibility.

Similarly, this factor also favors a finding of less abstract since the patent operates on particular representations of video information.

(3) The nature of the transformation in terms of the type or extent of change in state or thing, for instance by having a different function or use, which would weigh toward eligibility, compared to merely having a different location, which would weigh against eligibility.

This factor may also favor a finding of less abstract, since the particular functions selected can have a significant impact on the resulting extent of change in the outputs.

(4) The nature of the article transformed, i.e., whether it is an object or substance, weighing toward eligibility, compared to a concept such as a contractual obligation or mental judgment, which would weigh against eligibility.

This factor may also favor a finding of less abstract because the specified process works on instantiations of particular data structures.

(5) Whether its involvement is extrasolution activity or a field-of-use, i.e., the extent to which (or how) the transformation imposes meaningful limits on the execution of the claimed method steps. A transformation that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would weigh against eligibility.

This factor also seems to favor a finding of less abstract because there is a particular field of use for the claims, video compression.

C. Whether performance of the claimed method involves an application of a law of nature, even in the absence of a particular machine, apparatus, or transformation. If such an application exists, the claims are less likely to be drawn to an abstract idea; if not, they are more likely to be so drawn.

The patent does not seem to be an application of a law of nature, so these factors are not relevant.

D. Whether a general concept (which could also be recognized in such terms as a principle, theory, plan or scheme) is involved in executing the steps of the method. The presence of such a general concept can be a clue that the claim is drawn to an abstract idea. Where a general concept is present, the following factors are relevant:
(1) The extent to which use of the concept, as expressed in the method, would preempt its use in other fields; i.e., that the claim would effectively grant a monopoly over the concept.

The patent does not appear to preempt the use of concepts in other fields. Mathematical operations employed in the patent are not claimed in a way which would stop them from being used elsewhere.

(2) The extent to which the claim is so abstract and sweeping as to cover both known and unknown uses of the concept, and be performed through any existing or future- devised machinery, or even without any apparatus.

Again, the claims appear to be particular to the field of video compression/decompression, and are not so abstract or sweeping to preclude other uses of the concepts.

(3) The extent to which the claim would effectively cover all possible solutions to a particular problem; i.e., that the claim is a statement of the problem versus a description of a particular solution to the problem.

This is easy. There are many possible approaches to the problem of video compression/decompression, and the claims of the patent only cover one of those approaches.

(4) Whether the concept is disembodied or whether it is instantiated; i.e., implemented, in some tangible way. Note, however, that limiting an abstract idea to one field of use or adding token postsolution components does not make the concept patentable. A concept that is well-instantiated weighs in favor of eligibility.

The concepts of the patent are demonstrably instantiated in different hardware and software-based implementations.

(5) The mechanism(s) by which the steps are implemented; e.g., whether the performance of the process is observable and verifiable rather than subjective or imperceptible. Steps that are observable and verifiable weigh in favor of eligibility.

The claims of the patent produce results that are easily observable and verifiable. The success of video compression/decompression can be readily measure by a number of metrics including speed of execution, quality of resulting outputs, degree of compression for various video sources, etc.

Under the USPTO guidelines, it seems that examination of the patent as a whole could readily meet sufficient factors for a finding of not being too abstract to be valid.

In one way, patents in this area could be seen as an example where at least some of the goals of the patent system are being met. Video compression is one area where there is no one best way or correct approach to solving the problem. Advancements in the field are continually being made. The presence of heavily patented approaches has in part motivated the development of alternative approaches for people where patents are a serious concern, while also allowing development of widely accepted commercial standards for people who value interoperability and consistency more.

The patent system does not serve people well when too many minor, incremental patents are issued that create roadblocks to further advancements. This seems to be more a problem with the low thresholds that have been placed in terms of inventions being novel and non-obvious, rather than on the interpretation of whether claims are for abstract ideas.

--bystander1313

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USPTO Asks for Comments on New Interim Guidance on Bilski
Authored by: Anonymous on Wednesday, August 04 2010 @ 04:44 PM EDT

You like to make a lot of assertions, and then claim you have proved your point. Unless your assertions are themselves proved, that form of argumentation is weak.

[[-- You cede that the data structures are not patentable.]]

No, I pointed out that the USPTO says in its guidelines that descriptive material may be statutory if it is both functional and fixed in a computer readable format. Data structures by themselves are not patentable, but when expressed as part of a functional specification which considers all parts as a whole, they can form part of a patentable invention. If you don't understand what is being said, you shouldn't make up stuff to fill in the gaps.

[[-- You have yet to demonstrate that anything in the patent other than the data structures is anything other than math.]]

And once again, your attempt to look at a patent application piecemeal goes against what the Supreme Court has explicitly said is the correct way to analyze patents. They said everything must be considered as a whole. The Apple patent clearly contains claims related to more than just pure math. The structure of the data is an integral part of how the invention works. This is what separates it from being a claim for a generic math operation, and provides a specificity which limits the claims to a particular implementation of video compression/decompression and not an overbroad claim over all video compression/decompression solutions.

[[-- Math is functional, so being functional is not sufficient to liberate the codec from its mathematical basis.]]

It makes just as much sense to say that just because the patent contains mathematics, that is not sufficient to liberate it from being eligible for patent protection. At least that interpretation has direct support from established law.

[[-- If the patent doesn't describe the data structure of the codec itself, then why did you lean so heavily on the structure in your opening position? (answer: because using "structure" is the linch-pin in your argument to allow for it to slip under the Bilski bar, without witch you have no starting frame to make your argument.)]]

Maybe because the title of my post starting this thread was "Challenge: Something in software (patents) that isn't just an algorithm". The Apple patent references existing video codec standards, which each have their defined data structures. It demonstrates a technique for enabling variable timing with inter-frame construction/reconstruction in the context of those data structures. The invention relies on the combination of selected mathematical operations and the known structures to introduce an effective process that produces the invention's results. That's closer to the real answer to your question, rather than the bogus one you made up.

[[I freely admit that I went into generic discussions of data structures [and I used C and C++ as the most accessible examples in the other branch] as the _only_ point I was making (implicit in the title of the post) is that data structures have no relationships to the real word, non- computer usage of the word structure. ]]

And my point is that this is simply your opinion, which finds no support in either common engineering practice or in the law. Without any substantiation, and with considerable evidence weighing against this view, I find your point very unpersuasive. I think the courts would too.

[[I would like to see you globally replace the word structure with the word collection in your argument and see if it still makes sense.]]

It would be dishonest for me to do so. Data structures in computer science are much more than simply collections. If it were that simple, why do you think universities would offer multiple levels of courses on data structures such as this one on Advanced Data Structures?

Data structures play a central role in modern computer science. You interact with data structures much more often than with algorithms (think of Google, your mail server, and even your network routers). In addition, data structures are essential building blocks in obtaining efficient algorithms. This course will cover major results and current directions of research in data structures

This seems to be further support for the idea that concepts in computer science are not all about algorithms. When designing software, thinking about appropriate data structures to use is often more important than thinking about what algorithms to use. The choices in data structures often drive the choices in algorithms.

[[You made assertions about the various MPEG frame types, which are indeed of known format, but you have yet to rebut the my assertion (e.g. the fact) that the layout of data is computationally immaterial. Data just has to be reachable.]]

You equating your own assertions with facts is one of your biggest problems. Your alleged fact is simply untrue. For one thing, data structures are concerned with more than just layout. The Apple patent, for instance, addresses the situation where video frames may be sent out of order. It is absolutely untrue that data just has to be reachable in order to meet the requirements of a particular application. Efficiency and performance are vital concerns to real applications, as opposed to abstract models of computation such as Turing Machines.

[[I may be being over particular about my interpretations.

You are being insufficiently particular about yours.]]

Isn't it ironic that you make a claim that I am insufficiently particular in a statement that is itself wholly without substance? What particular examples of such lack of particularity can you cite? Could you get any more vague?

[[So a data structure is already not patentable, and mathematics are not patentable, but you are using the word "structure" as a base argument for a patent on a faster/better approach to _mathematically_ rearranging a collection of data into another collection of data which can largely reproduce the original collection of data by exchanging math for memory.]]

The Supreme Court has explicitly said that non-patentable material can be part of a process that is patentable. It makes just as much sense to argue that a gear is not patentable, a spring is not patentable, a lever is not patentable, but we are using structure as a base argument for a patent on a better/faster approach to mechanically move energy from one position to another while exchanging momentum for potential energy. You're arguing in circles. The courts have not said that pure mathematics by itself is patentable, nor that pure data structures by themselves are patentable. They have said that a process which uses mathematics and data structures may be patentable when looked at as a whole and while giving due consideration to all other requirements for patentable material.

[[Mincing data is not, or at least in a rational world should not, be patentable no matter how many words are minced on top of it as garnish. So addressing the "merits" of the Apple patent isn't useful since it requires a misapprehension of the word "Structure" and a willing disbelief in the principles of computer science to make the patent work as a legal entity.]]

But your whole argument relies on mincing words. You rely on a tortured distinction between "structure" and "data structure", even though there is no support for this distinction in common practice or the law. You rely on a particular rigid interpretation of computer science principles, also without any outside substantiation, that only serves to advance your own arguments.

[[As a professional in the field of computer science and the related arts, I stand wholly unconvinced that the _language_ of the Apple patent has any bearing on the mathematical and computational _facts_ or the myriad computer program(s) it utterly fails to disclose but which it could be used to block or tax.]]

That is your opinion, which you have every right to express. Don't make the mistake of assuming that your opinions speak for the views of other computer science professionals, which they don't.

--bystander1313

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