For a move even Stephen Colbert would admire for its ballsiness, we extend kudos to Hewlett-Packard, who argued the following in its appeal brief of App. No. 09/976,630:
No mention of In re Nuijten, which was decided several months earlier. Or maybe HP thinks that it is unconstitutional to apply KSR, too, since there are oodles of obvious claims out there in issued patents...
Today, the Board of Patent Appeals and Interferences responded appropriately in its Ex Parte Haines decision:
Section 101 rejection of claims 21-27
Appellant alleges that the USPTO has issued patents to others that contain “propagated signal claims.” Appellant contends that the § 101 rejection of the instant claims is a violation of Appellant’s rights under the equal protection clause of the Fourteenth Amendment to the U.S. Constitution. App. Br. 14.
However, Appellant has not cited any authority in support of the novel legal argument. The U.S. Patent and Trademark Office is not part of a state (or local) government, but an agency of the U.S. Department of Commerce. Cf. U.S. Const. amend. XIV, § 1 (“No State shall . . . deny to any person within its jurisdiction the equal protection of the laws.”). We are not persuaded that the USPTO has violated Appellant’s rights to equal protection of the laws under the Constitution.[FN1]
[FN1]: Absent showing that the agency acted pursuant to some impermissible or arbitrary standard, an argument based on the equal protection component of the Due Process Clause of the Fifth Amendment would also fail. See In re Boulevard Entertainment, Inc., 334 F.3d 1336, 1343 (Fed. Cir. 2003) (TTAB decision that affirmed the refusal to register marks containing the term “jack-off” did not violate equal protection principles, even though the USPTO had previously registered similar marks for other applicants).
Though the USPTO is closed for Snowmageddon and no new BPAI decisions are being posted today, apparently the website controllers were able to flip the switch recently to announce the First Annual Board Conference. The conference has been billed as "A comprehensive conference, providing insight and analysis, from filing an appeal brief, through the U.S. Court of Appeals for the Federal Circuit’s view on the role of the Board in the development and advancement of the patent system."
In addition to various sessions with judges of the Board, the conference will feature a panel discussion with Chief Judge Michel and Judge Rader of the Federal Circuit, and a luncheon speech from Director Kappos.
Providing yet another data point for Bilski evaluations, the BPAI today decided Ex Parte Moyer, finding the following claim a) to be tied to a machine; and b) that the machine was "particular."
1. In a data processing system, a method of forming an immediate value comprising:
receiving a data processing instruction at an input of a processor;
the processor using a first field of the same data processing instruction as a portion of the immediate value;
the processor using a second field of the same data processing instruction to determine a positional location of the portion of the immediate value within the immediate value; and
the processor using a bit value in a third field of the same data processing instruction to determine a remainder of the immediate value.
We find that claim 1 recites a processor in each of the steps of the claimed process which imposed a meaningful limitation to the scope of claim 1 to process the received data processing instruction. Thus, we conclude that claim 1 is “tied to” a machine, i.e., a processor. We next decide whether the processor processes the data processing instruction claimed in claim 1 is a “particular machine” within the meaning of the M/T test.
Our reviewing court provided guidelines that can be appropriately applied to this case that “[w]e have held that 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.” In re Alappat, 33 F.3d 1526, 1549 (Fed. Cir. 1994) (citation omitted), abrogated by Bilski, 545 F.3d 943 (regarding the “useful, concrete, and tangible result” test originally set forth in Alappat at 1544).
Here, the processor recited in claim 1 is programmed to process data processing instructions in a particular way, i.e., forming an immediate value/operand of 32 bits with only one instruction (FF 1). Therefore, we conclude that the processor claimed in claim 1 is a “particular machine” within the meaning of the M/T test. Accordingly, we conclude that claim 1 satisfies the machine prong of the M/T test.
...
In contrast to Benson, the present claimed process of the instant
invention for processing a data processing instruction by a processor is not
an abstract idea because the claimed process has real world use (to form a 32
bit immediate value/operand with only one instruction) and is practical in the
computer field. In addition, the claimed process is neither a mathematical
formula nor a mathematical algorithm. The claimed process, if allowed,
would not patent an abstract idea or pre-empt any other uses of the
mathematical formula, but rather give a limited monopoly of the claimed
process to the Appellant. Indeed, claim 1 as written is not “so abstract and
sweeping” that it would “wholly pre-empt” the use of any apparatus
employing the claimed process recited therein.
The Board also reversed the claim's obviousness rejection.
In Ex Parte Morrison the Board of Patent Appeals and Inteferences reversed the 101 rejection of the following claim today, citing the newly precedential Ex Parte Gutta case:
1. A system that facilitates managing product life cycle, comprising:
a data-receiving component that receives data on availability of components to a product and suitable substitution components and determines relevance of the components to the product;
an analyzing component that evaluates the received data, and determines, infers or predicts obsolescence and/or risk to end-of-life (EOL) of a subset of the components to a product by scoring each component on a numerical EOL scale; and
a notification component that provides notification to at least one of individuals, computers and systems regarding obsolescence and/or risk to end-of-life of the subset of the components to a product, and provides recommendations in accordance therewith.
Appellants argue that the claim necessarily requires computer implementation, because without the computer the functions recited in the claims, most notably notification to individuals, computers and systems cannot be performed.
...
As the Examiner contends, it is the policy of this Office to not reject under statutory grounds novel and unobvious computer based algorithms when claimed as residing on a computer readable medium. Ex Parte Li, Appeal No. 2008-001213, (BPAI Nov. 6, 2008). The claims in the instant appeal, however, are composed of modules reciting functional algorithms or steps that are disclosed as embodied as software, but omitting the computer readable medium. (Spec. ¶ [0061]).
The recent CAFC decision In re Bilski, discussed above, addressed the statutory limitations of method claims. While method steps are incorporated in the appealed claims, for which neither a particular machine nor a transformation of an article is present, the claims are at least nominally styled as system claims.
For guidance on system claims, we look instead to the precedential Ex Parte Gutta, 2009 WL 2563524 (BPAI 2009). For a machine or manufacture that embodies an algorithm expressed as a series of steps, we are guided, based on Flook, Benson and Diehr, to see if the claim 1) recites a mathematical algorithm applied to a tangible practical application that resulted in a real-world use, and 2) did not encompass substantially all practical applications of the mathematical algorithm. (Ex Parte Gutta 2009 WL 2563524, at *7).
We look to representative claim 1 and notice, as the Appellants point out, that one of the components will notify an individual, computer or other system regarding the obsolescence or risk to EOL of the components of a product. (App. Br. 5-6). We find this notification of the end of life risks of the product to be a real-world use of the system, including the algorithm as claimed. While we do not necessarily endorse the useful, concrete and tangible tests, as addressed by the Appellants, we do find sufficient support for satisfaction of the Ex Parte Gutta test. We thus agree that the Appellants have demonstrated error in the Examiner’s rejection under 35 U.S.C. § 101. (emphasis added)
The Board affirmed the rejection of the claim under 102, however.
Although I try to keep this blog focused mostly on issued patents, today's BPAI decision in Ex Parte Hughes is worth sharing. In light of last week's precedential Ex Parte Gutta decision, do you think the Board erred when it reversed the examiner's 101 rejection of this claim?
1. An apparatus executing computer instructions for chronicling a portion of an electronic market comprises:
a computer system including
a processor;
a main memory coupled to the processor; and
persistent storage, associated with the computer system, the computer system executing:
instructions for recording a first activity relating to a security interest in an order book in the main memory of the computer system; and
instructions for recording the first activity in the persistent store.
Gutta says that its two-part test applies "if an applicant chooses to claim the manufacture in terms of applying a mathematical algorithm." This claim, when compared to the one held unpatentable in Gutta, may illustrate more precisely what the Board had in mind. Here, the panel found the claim sufficiently tied to a particular machine:
However, each of the independent claims on appeal recites devices, e.g., a computer system, a processor, a main memory coupled to the processor, and a persistent storage, which tie the claims to a particular machine or apparatus, and thus qualify the claims as patent eligible subject matter
Why the different treatment? Perhaps it is merely that Hughes's claim 1 can be seen as (albeit minimally) "tying these steps to...concrete parts, devices, or combinations of devices" since its method actually makes use of those parts (i.e., recording "in the main memory" and "in the persistent store"). In contrast, in Gutta's claim 14, the memory and processor are tossed in simply to encase the method within a "system", and are not at all "tied" to the steps of the method. Also, in Gutta the Board noted particularly that the method is described in the Specification "as a mathematical formula."
One takeaway is that Gutta's holding may not be as broad as originally thought, and that there may be some easy ways to circumvent it (at least until the forthcoming Bilski decision). Of course, with these claims, there's not much "there" there -- the 103 rejections were affirmed, rendering the 101 reversal as little more than dicta. But useful, still.
Query: Has anyone else had difficulty searching the BPAI decision database? For the last week or two, it seems the text searching capability has been ineffective.
As I've noted many times over the last year, there has been a severe lack of uniformity coming from the Board of Patent Appeals & Interferences with respect to the application of the machine-or-transformation test. Sometimes, there were sua sponte rejections. Sometimes not. Sometimes a minimal addition of computer sufficed. Sometimes an apparatus claim directed to the machine itself was rejected. You get the idea.
Thus, it is noteworthy that the Board recently designated August's Ex Parte Gutta case--where the BPAI panel issued new 101 rejections on system and Beauregard claims, in addition to method claims--as precedential.
This is the first post-Bilski precedential decision squarely addressing 101 (and I believe the first one since Lundgren on patentable subject matter).
System and method for utilizing redemption information
Inventors: Jay S. Walker, et al.
Issued: December 1, 2009
1. A method comprising:
arranging for a customer to redeem a product from a third party;
receiving, via an electronic communication network, information relating to a redemption, of the product and by the customer, that has occurred; and
determining to accept an offer based on the received information.
Commentary: When the claim was originally considered in 2003 -- without the "communication network" -- it was rejected under 101. But the examiner used the "technological arts" test, rather than the "useful/concrete/tangible result" test of State Street. Walker rightly pounced on that in a response. The Examiner came back with a final rejection, citing a nonprecedential BPAI case (Ex parte Bowman) as support that "the claimed invention must utilize technology in a non-trivial manner." So Walker threw in "via a communication network" as some 101 candy in a 2004 RCE.
But the examiner wasn't biting. He reiterated the rejection under the technological arts test in April 2005, which led Walker to add "electronic" to the communication network. Walker also added this puzzling statement:
"We respectfully note that contrary to the Examiner's novel requirement, we have not included the word 'computer' in Claim 1. We respectfully submit that some types of electronic communication networks, as that term would be properly construed, may not necessarily involve a 'computer.'"
[Walker's listed networks from the specification: IP, satellite, cellular, RF, telephone, and cable TV. The network is represented in the patent as the six lines running between the "devices" and the "controller" in the figure at right.]
The examiner was not moved, and came back with another final rejection in September 2005, still holding fast to the "technological arts" test:
"Mere intended or nominal use of a component, albeit within the technological arts, does not confer statutory subject matter to an otherwise abstract idea if the component does not apply, involve, use, or advance the underlying process. In the present case, it is not clear what feature uses the technology in a non-trivial manner."
So Walker appealed. And with impeccable timing, too, as the BPAI had just issued its precedential Ex parte Lundgren decision, which formally killed the "technological arts" test. Throwing this cite into the appeal brief, Walker finally persuaded the examiner to back down from his 101 rejections. But the appeal still pressed on regarding obviousness.
In May 2009 -- six months after Bilski -- the BPAI quickly reversed the 103 rejections, which had been based on the premise that real estate would be considered a "product" to be redeemed. There was no sua sponte 101 rejection, as there had been in Ex parte Halligan and several other appeals with claims that were probably more tied to "particular machines." Just an incredibly short (under five pages) reversal, leading to the patent's issuance on Tuesday.
Several months ago I noted that Walker had benefited from a BPAI smack-down of a smarty pants examiner to obtain a Bilski-ish patent. This week, it appears history may have repeated itself, and then some.
When I was in high school, I often pondered some of life's bigger mysteries and conundrums, typically of the "unstoppable object vs. immovable post" or "why does 7-11 need locks on the doors?" variety. Steven Wright and Emo Phillips were big influences in those formative years. Yeah, I was a hit at parties.
One of those questions that stuck, however, was what would happen if the audio and video of the TV somehow got mixed up... so that you would "see" the sound and "hear" the images. What would a rainbow "sound" like? How would a Beethoven symphony "look"? I later discovered that there are actually people who are kind of wired this way. It's a neurological condition, probably described in an Oliver Sacks book I haven't yet read, called synesthesia, where experiences in one sense (e.g., sound) lead automatically to experiences in a second sense (e.g., sight). As you might imagine, many famous artists (Hockney, Kandinsky), composers (Ellington, Liszt) and performers (John Mayer) are so gifted. And if you're a fan of the a cappella group, The Bobs, you may know this song about the condition.
One synesthete is Eric Haeker, a Philadelphia musician/composer and founder of the non-profit Pieris Music. As part of his educational mission, Eric wanted to share his visualizations of music with the rest of the world, and developed a system to do so. It goes way beyond the typical oscilloscope manipulations you see on iTunes or WMP, instead having a distinct graphical object for, e.g., each instrument of a musical score. That's perfect for Bach, as seen in the mesmerising application of Haeker's creation below. A hi-res version, with explanation, is found at the former Pieris website. Another visualization, of a Chopin-like piece, can be found here.
In September, Eric was granted a patent for his work.
Method and apparatus for generating visual images based on musical compositions
Inventor: Eric P. Haeker (Philadelphia, PA)
Issued: September 15, 2009
1. A method of producing a graphical representation of a musical work comprising a plurality of individual musical lines comprising notes, said method comprising the steps of:
(1) obtaining an electronic version of said musical work;
(2) translating using a processor said notes of each individual musical line of said electronic version into a separate x, y graph in which a y value of said notes is representative of a pitch of said note and an x value is representative of a relative time of said note in said musical work and a duration of said note;
(3) importing using said processor each said graph into three-dimensional animation software;
(4) generating using said processor a visual object corresponding to each individual musical line of said musical work; and
(5) applying using said processor at least one three-dimensional animation technique to each said object, said animation technique being a function of said corresponding graph.
Commentary: There are at least three interesting things about this patent that factored into my decision to feature it here. The first two are discussed above: a) it's for a non-profit arts group -- not your typical patentee; and b) it's damn cool to watch.
The third thing, of course, is the Bilski angle. After initially being given a patenability pass, this claim was rejected under 101 in a second office action that came just two weeks after the Federal Circuit's Bilski decision. Strangely, the examiner cited not to Bilski, but instead to the Love Memorandum of May 2008, which enunciated the same machine-or-transformation test the CAFC later adopted. After amending to include the "using a processsor" language, the claim was allowed.
Whether the simple inclusion of a generic "processor" suffices to pass the machine prong of Bilski is at best debatable -- and it's been debated on this very blog in the past. But a more intriguing question is whether this claim passes the transformation prong. As noted previously at 12:01, the Bilski opinion on this point invokes In re Abele in a way that leaves many unanswered questions. The BPAI has addressed some of those questions in Ex parte Hardwick (rejecting claim that did not specify input's origins, or that they were transformed into something not "cognizable by a human operator"), Ex parte Gardiner (rejecting claim when input did not represent a physical item), and most recently in Ex parte Aoyama (claims failing "because the data does not represent physical and tangible objects," and not reaching a more general question about "mere calculation of a number based on inputs of other numbers"). Whether the transformed article must be physical or tangible is also a subject of debate on this blog, with some commenters taking some extreme positions. But that question is relevant to the Haeker patent.
Are Haeker's claims fundamentally different from the ones in the BPAI cases? It is clear that the claimed invention indeed "transforms" a musical work into a graphical representation. And the transformation is certainly cognizable to a human operator. But should music be considered a "physical item" or a "tangible object?" That's less clear. And it may depend on how the input music is represented.
Looking at dependent claims and reading the specification, it seems the inputted "electronic version" of the music could be generated on-the-fly from a live performance (claim 8), or as a MIDI-file (claim 6) (a MIDI-file is kind of an electronic version of a player-piano roll, describing how music is to be played). It may be that the Abele distinction differentiates these two types of input. That is, perhaps the transformation of a musical performance (i.e., the actual sounds heard) is a patentable transformation, while the transformation of a written score or MIDI-file (i.e., a description of music to be used in a performance) is not. Just a theory.
Or it could be that there is just no way that "sound" is considered physical or tangible, and these claims cannot meet the transformation prong of Bilski (assuming the BPAI's more recent interpretations are correct). That doesn't seem quite right, but it may be the inevitable result of this trend. Consider the discussion open.
In the meantime, I've contacted Mr. Haeker, who has agreed to share some more samples of his work in the next few weeks. I'll post links here when they arrive.
NTP patents to come out of reexam? No need to refresh you on holding company NTP, Inc., who nearly shut down the federal government with an injunction on the use of BlackBerry devices. When that case settled, NTP subsequently sued Palm, Verizon, Sprint and AT&T. Those cases were all stayed pending the outcome of USPTO reexamination of the patents in suit.
On Tuesday, the Board of Patent Appeals and Interferences issued monster opinions (read: over 200 pages each) on four of those reexaminations. While two of the decisions affirmed the rejections, two others gave partial reversals -- i.e., some claims survived. That could possibly lead to the lifting of those stays, and conceivably another round of threatened shutdowns for mobile email users.
If you're looking to do your own analysis, however, you'll have to jump through some hoops. That's because those decisions are no longer available on the BPAI site. Tuesday night: there, Thursday night: no trace. Very odd... (Please -- no comparisons to other blog-chilling altered docket scandals or banana republics.) The decisions are available on PAIR, however, but they are large image-based PDFs. Serial numbers are: 90/006,533 and 90/006,677 (affirmed-in-part); and 90/006,493 and 90/006,495 (affirmed). Here's a teaser first page.
Two more for Target. I've written before about Target, perhaps the most active retailer in the patent prosecution world. As yet another testament to the breadth of its R&D, Target received two patents this week. One is a method for activating stored value cards, typical of what you might see coming out of the credit card issuers. The other is for a cosmetic compact. "Avon calling..."
More DOA patents. The last blog post about the U.S. Army's patents that issued "pre-expired" drew more hits than any of my posts in several months. Not surprisingly, a significant number of those hits came from *.mil addresses. We'll see if anything comes of that...
But some searching has found a few additional culprits, including none other than Ole Nilssen. Yes, this is the same Mr. Nilssen who had his patents held unenforceable for various deceptions on the PTO, and was subsequently sanctioned with attorneys fees -- both decisions being upheld by the CAFC. Turns out Nilssen had four patents that were DOA: 6,211,625; 6,211,619; 6,198,228 and 6,144,445. And he paid at least the first maintenance fee on all of them...making sure to do so as a Large Entity, of course.
Twenty years ago tomorrow, U.S. Patent No. 4,864,492 issued to IBM for
a “System and method for network configuration.” On its face, nothing
appears out of the ordinary with this patent. However, lurking within
its claims is this:
10. A computer program product having a computer readable medium having
computer program logic recorded thereon for establishing a network
configuration in accordance with a plurality of protocols of a network
architecture, said computer program product comprising:
means for incorporating the protocols of the network architecture into a table of rules;
means for determining the validity of user input data with said table of rules; and
means for feeding back to the user at least one of said rules in said
table of rules if said user input is determined to be in valid.
And thus, the era of the “computer readable medium” claim was born (albeit with 112/6 "means for" language seldom seen in today's CRM claims).
For those unfamiliar with the “software arts,” here’s the nutshell on CRM claims: rather than simply claiming the method (i.e., the steps performed by a computer program) or a computer system (e.g., the hardware configuration that can be used for performing a computer program), the CRM claim essentially tries to protect the floppy disk (remember those?) or CD, DVD, flash drive, etc. on which the program is stored. For practical purposes, these claims allow software companies, for example, to go after manufacturers of competing programs on theories of direct infringement—they made and sold infringing disks. When software claims are limited to systems and methods performed via the end user’s computer, often only indirect infringement theories are available. More importantly, it may be easier to demonstrate infringement by showing a sale of a disk than by finding an actual instance where method steps were performed. And of course, that sale would still infringe the CRM claim even if the disk were taken to Mexico and the encoded method was actually performed there -- not so with a straight method claim.
The attorney who prosecuted the ’492 patent, the former Marilyn Smith (now Dawkins), also prosecuted a more famous patent for IBM, U.S. Patent No. 5,710,578 to Beauregard et al. This patent’s prosecution, of course, went up to the CAFC on the question of the patentability of such CRM claims under Section 101. In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995). As a result, CRM claims are often referred to as “Beauregard claims”. (Note, however, that that the Beauregard case was vacated, and its merits were thus never ruled upon by the CAFC.) Interestingly, Dawkins apparently left IBM and now works for (John) Deere & Co. in Moline, Illinois. But she co-authored a 1995 IDEA journal article on CRM claims that is loaded with examples and explanations. Dawkins notes that there was an earlier patent, 4,853,962, that claimed the CRM as a multiple-dependent claim of a method:
10. An information storage device tangibly embodying a program comprising
instructions adaptable for execution on a programmed machine,
wherein the method of any one of claims 1-9 is performable through the execution of said instructions by the machine.
CRM claims are commonplace today. How common, you ask? Consider the following charts showing the history of CRM claim issuances, in absolute numbers as and as a percentage of total patents issued:
The upturn of the hockey stick in the later half of the 90's corresponds directly to the Beauregard case working its way up through the courts, casting more light on the claim format. But it is almost certain that these charts undercount the actual number: there are many variants of language used in drafting CRM claims, e.g., “machine readable medium”, “computer readable storage medium”, etc. And now, in light of In re Nuijten, you are seeing more tweaks to the standard language to make clear that the medium is limited to a physical storage device. It is impossible to capture all these permutations with reasonable effort (using the public PTO database, anyway).
Growing even faster is the rate at which CRM claims are being filed, (note the gap in data sources beginning in 2001, when the PTO started publishing pending applications)::
The last data point shows that 5.5% of all applications filed in 2007 (that subsequently published) contained CRM claims. That's a hefty percentage, but still far short of what we saw for Jepson claims in the early 1980's.
We can only guess how CRM claims will fare after the Supreme Court’s forthcoming decision on Bilski. Already we have seen inconsistent results from the BPAI. In Ex Parte Li, for example, the Board gave tremendous weight to Beauregard claims and found that they were outside Bilski’s purview. Other panels, however, such as in Ex Parte Cornea-Hasegan, have found that CRM claims may just be exaltations of form over substance, and thus are subject to the Machine or Transformation test.
But until things are sorted out, a CRM claim will likely remain as standard ammunition in the software practitioner’s arsenal.
Recent Comments