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"Making useful" vs. "using" | 381 comments | Create New Account
Comments belong to whoever posts them. Please notify us of inappropriate comments.
Warning The post above INCLUDES CLAIM LANGUAGE
Authored by: Anonymous on Wednesday, May 29 2013 @ 09:24 AM EDT
Also, apparently if you select HTML in an effort to use bolding, you lose all
carriage returns...sorry about that too.

[ Reply to This | Parent | # ]

"Making useful" vs. "using"
Authored by: Ian Al on Wednesday, May 29 2013 @ 12:52 PM EDT
First, a quick tip; use all the available tags when employing html including <br> and <p> for new paragraphs.

You replied:
It is the exercise of the method to obtain significant post process activity (See, Diehr) that is protected by the patent. Other uses of the known machine (See, §100) are not covered by the patent and neither is the machine, itself.
We agree on this point. I'm not sure why you made this comment.
The reason why I made this point is that you conflate the method with the machine used by the method. We both agree that using a computer does not infringe on the Diehr patent. It is the method that is protected. Where we diverge is that running software on a computer is not a method. Neither is it a machine. Fonar explains where this confusion comes from.
As a general rule, where software constitutes part of a best mode of carrying out an invention, description of such a best mode is satisfied by a disclosure of the functions of the software. This is because, normally, writing code for such software is within the skill of the art, not requiring undue experimentation, once its functions have been disclosed.

It is well established that what is within the skill of the art need not be disclosed to satisfy the best mode requirement as long as that mode is described. Stating the functions of the best mode software satisfies that description test. We have so held previously and we so hold today.
Fonar says that, where writing the software is easy, just recite the functions in the invention and leave the implementation of the process by writing software and running it on a computer to the software draughtsman.

You replied:
However, the process that is implemented by the software is a process and is therefore well within one of the four patent-eligible categories of §101.
The patents that say implement these invented functions by means of software on a computer do not give the specificity of implementation for the reasons outlined in Fonar: the writing of the software is just the draftsmans art. Since the writing of the software and running it on a computer are not detailed, they are not the invented method. What is left must pass the test of §101.

You might say that relying on the draughtsmans' art should ring warning bells! From Flook:
The Court then asked whether, to confer patent eligibility, the claim contained sufficient substance beyond the abstract mathematical formula itself—that is, “some other inventive concept in its application.” (“A competent draftsman could attach some form of post-solution activity to almost any mathematical formula . . . .”).

Concluding that the field-of-use, monitoring, adjusting, and computer limitations were trivial or “well known” under such an analysis, the Court held that the claims were not patent eligible: “[I]f 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.”.
You will notice that the patent extracts you gave are an ideal case in point. The patents all recite applying a math algorithm like Fast Fourier Transforms to a set of data saved in a computer file. Any computation is, by definition, mathematics especially when it is the conversion of a set of data from one math format to another. Mathematics are one of the judicial exclusions. The patents say nothing about how the draftsman-software writer makes the computer do the method. The software on a computer is the known machine with which the functional method is carried out.

35 USC § 100 - Definitions
(b) The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
The patent applications are inventions about applying math algorithms to data tables. The inventors make it clear that the software and the computer is not what they have invented. They are just the means that one skilled in the art of writing software would use to make a computer do the math. From Mayo:
Thus, in Diehr the Court pointed out that “ ‘a process is not unpatentable simply because it contains a law of nature or a mathematical algorithm.’ (quoting Parker v. Flook). It added that “an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent pro tection.” (Diehr). And it emphasized Justice Stone’s similar observation in Mackay Radio & Telegraph Co. v. Radio Corp.: “ ‘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.’.

See also Funk Brothers, (“If there is to be invention from [a discovery of a law of nature], it must come from the application of the law of nature to a new and useful end”). Still, as the Court has also made clear, to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words “apply it.”
To repeat Flook:“[I]f 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.” That is what your quoted patents are; claims directed essentially to a method of calculating using a mathematical algorithm even though the solution is for a specific purpose. When the invented process is complete, all you have left is the same mathematical content expressed in a different form. That is an abstract concept. They have not included the software that executes the math as their inventive concepts. As is also explained by Flook, they also fail to provide significant post process activity and are invalid for that reason, as well. The inventions do not use the transformed data for post solution activity.

The point we have made on Groklaw over the past few years is that lots of these ineligible inventions have been awarded patents by the USPTO. The problem has got to such a pitch that the USPTO has requested proposals to overcome the damage that such functional patents are doing.

blockquote

---
Regards
Ian Al
Software Patents: It's the disclosed functions in the patent, stupid!

[ Reply to This | Parent | # ]

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