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| Authored by: Ian Al on Sunday, March 31 2013 @ 05:42 AM EDT |
Federal courts have held that §101 does have certain
limits. First,
the phrase "anything under the sun that is made
by man" is limited by the text
of §101, meaning that one may
only patent something that is a machine,
manufacture, composition of matter or a process. Second, § 101 requires that the
subject matter sought to be patented be a "useful"
invention.
Accordingly, a complete definition of the scope of
§101,
reflecting Congressional intent, is that any new and useful
process,
machine, manufacture or composition of matter under the
sun that is made by man
is the proper subject matter of a patent.
Subject matter not within one
of the four statutory invention
categories or which is not "useful" in a patent
sense is,
accordingly, not eligible to be patented.
The subject matter
courts have found to be outside the
four statutory categories of invention is
limited to abstract
ideas, laws of nature and natural phenomena. While this
is
easily stated, determining whether an applicant is seeking to
patent an
abstract idea, a law of nature or a natural phenomenon
has proven to be
challenging. These three exclusions recognize
that subject matter that is not a
practical application or use of an idea, a law of nature or a natural phenomenon
is not patentable. Courts have expressed a concern over "preemption" of ideas,
laws of nature or natural phenomena.
The concern over preemption serves to
bolster and justify the prohibition against the patenting of such subject
matter. In fact, such concerns are only relevant to claiming a scientific truth
or principle. Thus, a claim to an "abstract idea" is non-statutory because it
does not represent a practical application of the idea, not because it would
preempt the idea.
B. Classify the Claimed Invention as to Its Proper
Statutory
Category
To properly determine whether a claimed invention
complies
with the statutory invention requirements of § 101, Office
personnel
should classify each claim into
one or more statutory
or non-statutory
categories. If the claim falls into a non-
statutory category, that should not
preclude complete examination of the application for satisfaction of all other
conditions of
patentability. This classification is only an initial finding
at
this point in the examination process that will be again assessed after the
examination for compliance with §§ 102, 103 and 112 is completed and before
issuance of any Office action on the merits.
If the invention as set
forth in the written description
is statutory, but the claims define subject
matter that is not,
the deficiency can be corrected by an appropriate amendment
of
the claims. In such a case, Office personnel should reject the
claims drawn
to non-statutory subject matter under § 101, but
identify the features of the
invention that would render the
claimed subject matter statutory if recited in
the claim.
1. Non-Statutory Subject Matter
Claims to
computer-related inventions that are clearly
non-statutory fall into the same
general categories as non-
statutory claims in other arts, namely natural
phenomena such as
magnetism, and abstract ideas or laws of nature which
constitute
"descriptive material." Descriptive material can be
characterized as
either "functional descriptive material" or
"non-functional descriptive
material." In this context, "functional descriptive material" consists of data
structures
and computer programs which impart functionality when encoded on
a
computer-readable medium. "Non-functional descriptive
material" includes but is
not limited to music, literary works
and a compilation or mere arrangement of
data.
Both types of "descriptive material" are non-statutory
when
claimed as descriptive material per se. When functional
descriptive material is
recorded on some computer-readable medium it becomes structurally and
functionally interrelated to the medium and will be statutory in most
cases.
When non-functional descriptive material is recorded on some
computer-readable medium, it is not structurally and functionally interrelated
to the medium but is merely carried by the medium.
Merely claiming
non-functional descriptive material stored in a
computer-readable medium does
not make it statutory. Such a
29result would exalt form over substance. Thus,
non-statutory
music does not become statutory by merely recording it on
a
compact disk. Protection for this type of work is provided under
the copyright
law.
Claims to processes that do nothing more than solve mathematical
problems or manipulate abstract ideas or concepts
are more complex to analyze
and are addressed below. See
sections IV.B.2(d) and IV.B.2(e).
In
the context of the discussion, the guide points out that transformation of
numbers is not one of the four statutory catagories. Only transformation of
matter qualifies.
Material saved anywhere in a computer is
non-statutory if it is non-functional. That means that the material can only be
considered statutory if it can be executed by the computer. (This is not based
on facts about computers, but is included in current guidelines. I won't bore
you with links to the relevant PolR essays.)
The references in the last
sentence just confirm the position on non-functional descriptive material
on-a-computer. Numbers are not a material and manipulation of numbers is firmly
non-statutory, even if the manipulation is done by a
computer.
---
Regards
Ian Al
Software Patents: It's the disclosed functions in the patent, stupid! [ Reply to This | Parent | # ]
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- USPTO Guidelines - Authored by: Anonymous on Sunday, March 31 2013 @ 06:40 AM EDT
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