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 The Examiner came back with a final rejection, citing a nonprecedential BPAI case (Ex parte Bowman) as support that "the claimed invention must utilize technology in a non-trivial manner."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.
Jason Bier and Josh Gutstein are Chicago lawyers. They are also entrepreneurs. Several years ago, when stayed collar dress shirts were once again gaining popularity in the men's fashion world, Bier and Gutstein found themselves facing a persistent problem: like socks, their stays (either one at a time or by pairs) would eventually disappear, usually due to inadvertently forgetting to remove them before laundry or dry cleaning.
So the two formed a new partnership in addition to their law firm, and invented the Stayclip, a keychain-like device which, when coupled with specially designed collar stays, keeps those stays organized and easily accessible. (And it works, too: I have purchased one for myself and given several as gifts -- though I'm not quite sure who the target market is for the $7,800 set of platinum stays, or the $595 designer shirts that expose the diamond studs and/or monograms.) Bier and Gutstein also sought patent protection on several aspects of their creation, both for design and utility.
One of those patents finally issued today as U.S. Patent No. 7,578,034 after a long battle in the PTO. The case is unremarkable but for an Examiner who insisted that this:
was an anticipatory reference for this:
1. A device for storing at least one perforated collar stay comprising:
first and second arcuate members releasably engageable to form a closed loop, at least one arcuate member being pivotable; and
a collar stay having a perforation, and an arcuate member extending through the perforation.
It was, strangely, a 102 rejection--not 103 for obviousness. So how did the Examiner say that the keyholder met the claimed limitation of "a collar stay having a perforation"? Because "a key is capable of functioning as a collar stay. For example, a long key having a small head portion such as taught by [other prior art] can be used as a collar stay."
This led to what may be the greatest piece of evidence ever submitted to the PTO: a Rule 132 declaration by Bier with this exhibit as support that "A key is not a collar stay," and that using a key as such would damage a shirt's collar.
The BPAI agreed last November:
We acknowledge the Examiner’s argument that a key 9 is considered a collar stay, since a key is capable of functioning as a collar stay. The first part of the Examiner’s statement is simply erroneous. A key is not a collar stay. And the Examiner is in error for “considering” it so. The second premise is that a key is capable of functioning as a collar stay. This statement is amenable to proof, but the Examiner, who bears the burden of establishing anticipation by a preponderance of the evidence, has offered no proof for this assertion. Inasmuch as this assertion has been challenged on the record by the Appellants, it is incumbent on the part of the Examiner to offer more than a bare assertion that this is so. Since the Examiner has merely repeated his argument in more detail at page 11, we must conclude that this finding is based on speculation.
For their troubles, the patentees were awarded over 1,100 days of patent term extension due to to PTO delays. Congratulations, Josh & Jason.
Yes, you read that headline correctly. Today, one panel of the Board reversed an Examiner's 101 rejection of the following claim. Here's the rationale in its entirety:
“We find that claims 23, 29, and 30
recite a computerized method which includes a step of outputting information
from a computer (FF 7 and 9-10) and therefore, are tied to a particular machine
or apparatus.”
So much for that "insignificant post-solution activity" requirement. And there's no antecedent basis for that "computer system", either.
Case is Ex Parte Dickerson. Care to guess who the assignee is? Think Blue.
23. A computerized
method for identifying a solution to address exposed performance gaps of a
company in a specific industry, comprising:
first identifying a plurality of
operational metrics for the specific industry, wherein the operational metrics
includes a factor used to measure health or viability of a generic company in
the specific industry, wherein the specific industry is a grocery store
industry, wherein the operational metrics include at least one of a rate of
inventory turnover and a number of customers per day;
assembling a set of solutions for
application by the specific industry, wherein the set includes one of a
decision, an action, a product, and a service;
assessing impacts of application of the
set of solutions on the operational metrics for the specific industry, wherein
the assessing includes determining which of the set of solutions has a negative
impact on an operational metric and determining which of the set of solutions
has a positive impact on the operational metric;
after identifying, assembling, and
assessing, then comparing a current operational performance of the company to an operational
performance of another company within the specific industry to obtain at least one performance gap,
wherein the operational performance includes a performance of a company based
upon the operational metric for the specific industry;
identifying a solution based upon the
impacts to address the exposed performance gaps, wherein the solution is at
least one of a decision, an action, a product, and a service that impacts a
problem in a positive manner; and
In one of the more confusing sections of the CAFC's In re Bilski opinion, the court gives two examples from a prior case, In re Abele, in attempting to explain what claims should pass the transformation test, and what claims should not, with respect to "electronic signals and electronically-manipulated data." The Bilski court implied that when a claim included data that "clearly represented physical and tangible objects", then "the transformation of that raw data into a particular visual depiction of a physical object on a display" sufficed to make the claim patent eligible.
On the other hand, the Bilski court noted that Abele found unpatentable a claim that "did not specify any particular type or nature of data" and did not "specify how or from where the data was obtained or what the data represented."
Unfortunately, the CAFC did not give any further examples that would provide guidance between these two extremes. For instance, it would be nice to have more data points so we might know with more certainty what is necessary versus what is sufficient to render a transformation patentable (or unpatentable). This has been the subject of some discussion in comments on this blog, with various positions being taken.
Today, the Board of Patent Appeals and Interferences decided Ex Parte Hardwick, and in doing so, provided at least some further discussion of the Abele examples raised by the Bilski court. At issue were claims related to speech processing, rather than image processing. (The assignee is Westford, Mass.-based Digital Voice Systems, Inc.) After disposing of the Appellant's "machine" prong argument (note how the Board distinguishes computing a "digital filter" from just computing the "coefficients" of a digital filter), the BPAI turned to transformation:
Bilski held that there is no danger of pre-emption of fundamental
principles “[s]o long as the claimed process is limited to a practical
application of a fundamental principle to transform specific data, and
the claim is limited to a visual depiction that represents physical
objects or substances.” Bilski, 545 F.3d at 963.
Applying this
“exception” to the rule requiring transformation of an article to
Appellant’s claim 1, we find that claim 1 does specify synthesizing
digital speech samples from speech model parameters. Claim 1 does not,
however, specify how those parameters were obtained, nor recite
transformation of raw data into a visual depiction, or any other
analogous depiction (e.g., audio output) that would be cognizable by a
human operator. Therefore, the weight of the evidence indicates that
Appellant’s claim 1 is substantially more similar to the nonstatutory
independent claim in Abele than to the statutory dependent claim.
We
therefore conclude that the invention of claim 1 is not tied to a
particular machine, nor does it transform an article. As a result, we
conclude that claim 1 is directed to nonstatutory subject matter.
The BPAI once again expanded the application of Bilski beyond method claims this morning, with an affirmation of an examiner's rejection of a "Text to XML transformer." It's worth the read, and seems to fall in line with the Ex Parte Miyazaki holding about functional claiming (i.e., you better have some real structure there). There it was about 112/6. Here, for 101, the Board said, "At most, we find nominal recitations of structure in the claims."
The case is Ex Parte Snyder, for an application assigned to XAware, Inc. I'll leave the commenting to others while I work on today's patent issuances. But I will give one practice tip we can learn here: When fighting a 101 rejection, don't include the following argument in your appeal brief:
"The Patent Office has failed to grasp the simple fact that a computer program run by a general purpose computer could just as easily be a hardwired circuit. There is no question that a hardwired circuit is patentable. Clearly the Patent Office is still wasting everyone’s time and money by not acknowledging that computer implemented Products are clearly statutory. A computer running a program that does not function to provide just “printed matter[,]” is clearly a Machine as defined by the statute 35 USC 101."
5/13/2009 UPDATE - Compare this decision, striking an apparatus under 101, with the newly precedential Ex Parte Catlin, which struck down a method claim under 112, following WMS Gaming/Aristocrat logic about means-plus-function claims lacking sufficient algorithmic structure. In particular, see Footnote 2:
If the first step of these method claims were found not to invoke 35 U.S.C. 112, sixth paragraph, then the step simply recites purely functional language and would impermissibly cover every conceivable act for achieving the claimed result, and the scope of the claimed step would not be enabled under 35 U.S.C. 112, first paragraph.
Does this imply that Snyder's rejection really should have been under 112 for enablement, rather than 101?
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