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.
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