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Authored by: Ian Al on Monday, October 15 2012 @ 11:30 AM EDT |
The issue of novelty does not prevent a patent necessarily from
being granted.
The USPTO are bound by U.S.C. 35 ยง 101 which
says:Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.
So, by law, if the invention does not
comprise a new machine (or any of the other things) then it fails to qualify for
a patent.
Here's how the Supreme Court put it in Parker v.
Flook:Second, respondent assumes that the fatal objection to his
application is the fact that one of its components - the mathematical formula -
consists of unpatentable subject matter. In countering this supposed objection,
respondent relies on opinions by the Court of Customs and Patent Appeals which
reject the notion "that a claim may be dissected, the claim components searched
in the prior art, and, if the only component found novel is outside the
statutory classes of invention, the claim may be rejected under 35 U.S.C.
101."(Chatfield).
Our approach to respondent's application is,
however, not at all inconsistent with the view that a patent claim must be
considered as a whole. Respondent's process is unpatentable under 101, not
because it contains a mathematical algorithm as one component, but because once
that algorithm is assumed to be within the prior art, the application,
considered as a whole, contains no patentable invention.
Even though a
phenomenon of nature or mathematical formula may be well known, an inventive
application of the principle may be patented. Conversely, the discovery of such
a phenomenon cannot support a patent unless there is some other inventive
concept in its application.
Here it is absolutely clear that
respondent's application contains no claim of patentable invention. The chemical
processes involved in catalytic conversion of hydrocarbons are well known, as
are the practice of monitoring the chemical process variables, the use of alarm
limits to trigger alarms, the notion that alarm limit values must be recomputed
and readjusted, and the use of computers for "automatic monitoring-alarming."
Respondent's application simply provides a new and presumably better
method for calculating alarm limit values. If we assume that that method was
also known, as we must under the reasoning in Morse, then respondent's claim is,
in effect, comparable to a claim that the formula 2(pi)r can be usefully applied
in determining the circumference of a wheel.
As the Court of Customs
and Patent Appeals has explained, "if a claim is directed essentially to a
method of calculating, using a mathematical formula, even if the solution is for
a specific purpose, the
claimed method is nonstatutory."
(Richman)
The Supreme Court is very clear. If your robot is a new
machine or a new and useful improvement to an old robot, the USPTO can award you
a patent. If your invention contains no more inventive concept than applying an
existing pi-making robot to your grandmother's pie recipe then it is not a
patentable new robot invention. As with Flook, baking pies to a recipe is prior
art. Even if the robot changes the baking temperature limits, ingredients and
cooking process to meet your grandma's recipe, that is not an inventive
concept.
--- Regards
Ian Al
Software Patents: It's the disclosed functions in the patent, stupid! [ Reply to This | Parent | # ]
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- No - Authored by: Anonymous on Monday, October 15 2012 @ 02:43 PM EDT
- No - Authored by: Ian Al on Tuesday, October 16 2012 @ 05:28 AM EDT
- FINALLY! EUREKA! - Authored by: Anonymous on Tuesday, October 16 2012 @ 04:34 PM EDT
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