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| Authored by: macliam on Monday, April 01 2013 @ 12:32 PM EDT |
Responding piecemeal:
The USPTO do not invent guidelines out of thin
air. They take note of court cases, almost all Federal Circuit cases, but also
Supreme Court cases, which are very infrequent, to determine what is currently
the ruling precedent, and adapt guidelines accordingly. The business of the
USPTO is to assess applications in conformity with the currently controlling
case law. Now consider the last of the examples you
cite:
(c) Non-Statutory Process
Claims
When the Federal Circuit decided in In Re
Bilski, adopting the Machine or Transformation Test, a guideline was
issued in the USPTO to inform examiners of the implications and to direct
examiners to apply the Machine or Transformation Test. Then the Supreme Court,
in Bilski v. Kappos came along and said that the Machine or
Transformation Test was an “important clue” and “investigative
tool”. So then the guidelines were amended to instruct examiners to first
apply the Machine or Transformation Test (i.e., the investigative tool or
important clue), and then determine whether the process claim was drawn merely
to an abstract idea (or law of nature). Thus the paragraph you cited is the
vehicle by which the USPTO's legal department communicates to examiners what
they must do in examining computer-implemented process claims to meet the
requirements of Bilski as they are understood.
One can monitor
what goes on at the USPTO by reviewing the results of appeals at the PTAB.
Examiners have been regularly rejecting claims on the basis of claiming
non-statutory subject-matter under 101, using the guidelines you cite as the
basis. Sometimes the examiner's rejections are affirmed by the appeal board of
administrative patent judges. Sometimes the examiner's rejections are reversed
and remanded for further prosecution. And sometimes, when the examiner hasn't
considered Bilski issues, but has rejected claims on other grounds, the
rulings of the PTAB may come with a footnote drawing the attention of the
examiner to Bilski and suggesting that, in the event of further
prosecution, the claims be looked at to determine whether or not they claim
non-statutory subject matter.
A point you may be missing, is that a
process claim may comprise (i.e., involve) use of a computer or
microprocessor for some data processing. This does not mean that the claim
only involves data processing. There may well be additional elements or
steps in the claim (e.g., curing rubber), and the claim needs to be assessed as
a whole. The instruction is directing examiners to determine whether, in the
case of a claim to a computer-implemented process, the claim is not a statutory
process but is drawn to an abstract idea (in the sense of Bilski) or a
law of nature.
Also, in the context of “a claim reciting a
mathematical algorithm’, I would presume that ‘recite’ is a
term of art. I think it means that a mathematical algorithm is included in the
claim, though the claim may well include other non-mathematical
elements.
Usual disclaimers: IANAL etc. [ Reply to This | Parent | # ]
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| Authored by: macliam on Monday, April 01 2013 @ 01:12 PM EDT |
I believe that governing precedent with respect to X-ray tomography (on which
the USPTO Guideline is based as the following Federal Circuit case:
In Re Abele,
684 F.2d 902.
The
Federal Circuit has not over-ruled this precedent. Indeed, in re Bilski, they
formulated their Machine or Transformation Test so as to be compatible
with the precedent. The precedent is not affected by the “narrow”
holding of the Supreme Court in Bilski v. Kappos that hedging financial
transactions, both as an abstract idea, and as the mathematical expression of
this idea, is not patentable. Nor is it affected by the Mayo decision of
diagnostic tests. Therefore it is currently Federal law that Abele's process,
and similar processes, are patentable, and this will continue to be the Federal
law under which the USPTO has to operate unless and until either the Supreme
Court or the Federal Circuit (the latter only through an en banc
decision) puts in place a different regime.
Considerations of semiotics
cannot over-rule Federal case law. In this instance, I would claim that there
is a physical relationship between the patient's body and the image that appears
on the CAT scan display, or image, that do not depend on ‘meanings’
being assigned at various stages. There is a physical relationship between the
physical attenuation of the X-rays passing through the patent's body and the
electrical signals in the processing unit of the CAT scanner right through to
the physical appearance of the video display that is determined, without the
need to import any extra-physical ‘meanings’ (such as “dollar
amounts” anywhere along the way. This position of mine may or may not be
compatible with PoIR's semiotic analysis. But, given that the Federal Circuit
made special mention of In Re Abele in its Bilski considerations, this
might be a good case to test out the semiotic ideas to see if the decision would
have come out the other way under a ‘referent’ test.
And
improvements in CAT scan technology surely represent the kind of innovation
“which the patent laws were designed to protect” (citation
omitted)
Usual disclaimer: IANAL. [ Reply to This | Parent | # ]
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| Authored by: macliam on Monday, April 01 2013 @ 02:28 PM EDT |
Two Court of Customs and Patent Appeals (CCPA) cases on point here. The
first,
Application of Johnson,
589, F.2d 1070
(1978) (presumably also known as In Re Johnson) is clearly the case that
the example concerning seismic exploration that the USPTO Guideline is based on.
(The CCPA was the predecessor court to the Federal Circuit, for appeals from
the USPTO.)
In Re Johnson should be compared with
Application of Walter,
618 F.2d 758,
(also
known as In Re Walter)
where the CCPA affirmed the CCPA, thus killing the
patent application. In this case the ineligible claim is drawn to a method
where seismic source waves are transmitted downwards, reflected by the geology
below, and then the reflected signals undergo Fourier analysis, using discrete
Fourier Transforms. Judge Rich delived the opinion of the court.
[ Reply to This | Parent | # ]
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