USPTO 101 guidelines

http://www.uspto.gov/web/offices/pac/dapp/opla/preognotice/section_101_05_15_2008.pdf

Office claims only "functional descriptive material."

Non-final office action, received post-Bilski, directed to claims with the preamble: "A computer-implemented method comprising:", followed by steps of computer file selection, storage, and network transfer/copy. Examiner rejection as follows:

The claims lack the necessary physical articles or objects to constitute a machine or a manufacture within the meaning of 35 USC 101.They are clearly not a series of steps or acts to be a process nor are they a combination of chemical compounds to be a composition of matter. As such, they fail to fall within a statutory category. They are, at best, functional descriptive material per se.

Possible reply 1:I would then change preamble to recite A method carried out by a digital computer and comprising: selecting ..., storing, transmitting ...

I would then point out that Benson recognized a "digital" computer as being a particular machine distinct from an analog computer and that this claim does not preempt the public from wholly practicing a fundamental principle with machines other than digital or from practicing manually. I would ask the examiner to particularly point out that which he regards as the fundamental principle and explain why this is so.



Possible reply 2:Each rejected claim comprises a traditional series of process steps. Rejection that said claims "are clearly not a series of steps or acts to be a process" is hence respectfully traversed.

The "physical article or object" to which each claim is directed comprises a set of files stored on electromagnetic or optical medium. Each file itself constitutes a physical article. Electromagnetic and optical storage is well known to those of ordinary skill in the art of computerized digital storage. Such storage is inherent within any claim of a "file" as an article.

Claimed files may comprise, for example, music or video files. Each commercial music CD or movie DVD sold in the United States carries a warning from the FBI, promising "severe civil and criminal penalties for the unauthorized reproduction, distribution and digital transmission of copyrighted recordings." Even the FBI, not known to be skilled in any art, recognize electromagnetic and optical file storage as comprising a crime-worthy article. As abstract thought is not yet a crime in the United States, the FBI warning must be referring to statutory articles stored on computer media.

Each possible claimed file corresponds to a representation of a physical article, an object which may at the least be visually depicted, either on-screen or in printed form. The Court of Appeals, Federal Circuit, recently affirmed the patentability of such claimed subject matter.

We further note for clarity that the electronic transformation of the data itself into a visual depiction in Abele was sufficient; the claim was not required to involve any transformation of the underlying physical object that the data represented. We believe this is faithful to the concern the Supreme Court articulated as the basis for the machine-or-transformation test, namely the prevention of pre-emption of fundamental principles. So 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 specific physical objects or substances, there is no danger that the scope of the claim would wholly pre-empt all uses of the principle. See In re Bilski __F.3d__ (CAFC 2008-1130) (en banc) at 26, referring to Abele, 684 F.2d at 908-09.

As the claims are directed to a practical application, comprising electronic transformation of data renderable as a visual depiction, they are statutory under 35 USC §101. Rejection respectfully traversed.

from patenthawk

Bilski Examples -- USPTO Rules

In the patent claims consider using the phrase “one or more computer processors.”

In the first patent claim consider also using the phrase “transforming data X into data Y.”

Limitations Summary
• If It Can Be Tied To A Machine, Use A
Component Of The Machine In Each Step
• If It Represents A Physical Object, Display It
• If It Cannot Be Tied To A Machine And Does
Not Represent A Physical Object, Use Software
Modules From here. Look at this.

Preambles:

(not allowed) Gutta - A computerized method performed by a data processor for recommending one or more available items to a target user, comprising the steps of:

(ALLOWED) Bo Li - A computer program product, comprising a computer usable medium having a computer readable program code embodied therein, said computer readable program code adapted to be executed to implement a method for generating a report, said method comprising

(not allowed) Cornea-Hasegan - A computer readable media including program instructions which when executed by a processor cause the processor to perform the following:

Suggested examples:
Barnes Claim 1 Tied To A Machine
• Claim 1. A fault identification method that
comprises:
• obtaining seismic data using a seismic detector;
• recording the seismic data on a record medium;reading the seismic data from the record medium
using a computer; and
• for each of multiple positions of an analysis
window in the seismic data, determining a
planarity value for discontinuities in the analysis
window using the computer.

Barnes Claim 32 (In Indep. Form)
Representing A Physical Object
• Claim 32. A fault identification method that
comprises:
• determining discontinuity values from seismic
data;
• applying principal component analysis to the
discontinuity values to identify faults that
represent rock layer features associated with
hydrocarbons; and
• displaying the identified faults in a vertical slice
view to allow a user to specify subregions of the
seismic data for examination.

Comiskey Claim 17 As A Method Claim
• A method for mandatory arbitration resolution regarding one
or more unilateral documents comprising:
• providing a system, wherein the system comprises distinct
software modules embodied on a computer‐readable
medium, , wherein the distinct software modules comprise a
registration module, an arbitration module, an arbitration
resolution module, and an arbitrator database access module;
• enrolling a person who is executing and one or more
unilateral documents associated with the person in a
mandatory arbitration system at a time prior to or as of the
time of creation of or execution of the one or more unilateral
documents using the registration module; …

• A computer program product, comprising a computer usable
medium having a computer readable program code embodied
therein, said computer readable program code adapted to be
executed to implement a method for mandatory arbitration
resolution regarding one or more unilateral documents comprising:
• providing a system, wherein the system comprises distinct
software modules embodied on a computer‐readable medium, ,
wherein the distinct software modules comprise a registration
module, an arbitration module, an arbitration resolution module,
and an arbitrator database access module;
• enrolling a person who is executing and one or more unilateral
documents associated with the person in a mandatory arbitration
system at a time prior to or as of the time of creation of or
execution of the one or more unilateral documents using the
registration module; …

Suggestion--tie each step into the computer.

From in re Gutta, commentary

"Here is one interesting part of the decision, however: "Regarding claim 1, the step of “displaying” need not be performed by
any particular structure. It may be accomplished simply by writing the
resulting score on a piece of paper. A conclusion that such post-solution
activity is sufficient to impart patentability to a claim involving the solving
of a mathematical algorithm would exalt form over substance."

("wherein said process takes place in a structure, wherein said structure includes a furnace or air conditioner for modulating air temperature" -- look, the method is tied to a particular machine!!). Suggestion

Rejected in re Gutta claim

1. A computerized method performed by a data processor for
recommending one or more available items to a target user,
comprising the steps of:
obtaining a history of selecting one or more available items by
at least one third party;
partitioning a third party selection history into a plurality of
clusters, wherein each cluster contains items that are closer to
the mean of the cluster than any other cluster from among the
plurality of clusters,
modifying a target user's history of selecting said one or more
available items with one or more third party clusters to produce
a modified target user's history;
processing the modified target user's history to generate a target
user profile, wherein the modified target user's history
characterizes preferences of the target user as modified to
reflect preferences of the third party;
generating a recommendation score for at least one of said
available items based on said target user's profile; and
displaying the recommendation score to the target user.

The BPAI said that the displaying step could be performed by a human writing down the answer on a piece of paper, so tie the dispaying directly into the processor, or something.





http://www.uspto.gov/web/offices/pac/dapp/opla/documents/bilski_guidance_memo.pdf
Bilski USPTO rules link

From the Rules:

There are two corollaries to the machine-or-transformation test. First, a mere field-of-use limitation is generally insufficient to render an otherwise ineligible method claim patent- eligible. This means the machine or transformation must impose meaningful limits on the method claim's scope to pass the test. Second, insignificant extra-solution activity will not transform an unpatentable principle into a patentable process. This means reciting a specific machine or a particular transformation of a specific article in an insignificant step, such a data gathering or outputting, is not sufficient to pass the test.

The machine-or-transformation test is a two-branched inquiry; an applicant may show that a process claim satisfies § 101 either by showing that his claim is tied to a particular machine, or by showing that his claim transforms an article. See Benson, 409 U.S. at 70. Certain considerations are applicable to analysis under either branch. First, as illustrated by Benson . . . the use of a specific machine or transformation of an article must impose meaningful limits on the claim’s scope to impart patent-eligibility. See Benson, 409 U.S. at 71-72. Second, the involvement of the machine or transformation in the claimed process must not merely be insignificant extra-solution activity. See Flook, 437 U.S. at 590.

In re Bilski, 545 F.3d 943, 961-62 (Fed. Cir. 2008).



Rule???? Under Bilski, the patentability test has a very context-sensitive angle in order to conclude whether a step is integral to the invention or if it is extra-solution.

Suggested by a commentor at Patent Hawk:

Claims, below, invalid under 101 re Bilski.
1. A method for optimizing a query in a relational database management system, the method comprising:
evaluating the query to determine whether a sub-expression of the query is being joined to itself and whether a predicate of the query comprises an equality test between a same column of the sub-expression;
determining whether a first row set producible from a first set of references of the query to the sub-expression is subsumed by a second row set producible from a second set of references of the query to the subexpression; and
reforming the query to eliminate the joining of the sub-expression to itself based on evaluation of the query and determination of whether the first row set is subsumed by the second row set.


Suggestion 1: add "said method being implemented by a digital machine and comprising:" the reasoning being that a "digital machine" is a "particular machine."


Suggestion is to reformulate as follows:

1. A method for optimizing a query for a relational database management system, the method comprising:
receiving the query in a computer system implementing an optimization algorithm, the optimization algorithm:
evaluating the query to determine: whether a sub-expression of the query is being joined to itself and whether a predicate of the query comprises an equality test between a same column of the sub-expression;
determining whether a first row set producible from a first set of references of the query to the sub-expression is subsumed by a second row set producible from a second set of references of the query to the subexpression; and
reforming the query to eliminate the joining of the sub-expression to itself based on: (i) evaluation of the query, and (ii) determination of whether the first row set is subsumed by the second row set.

Fed. Circuit case law that may come in hand

There is one further rationale used by both the board and the examiner, namely, that the provision of new signals to be stored by the computer does not make it a new machine, i.e. it is structurally the same, no matter how new, useful and unobvious the result. . . . To this question we say that if a machine is programmed in a certain new and unobvious way, it is physically different from the machine without that program; its memory elements are differently arranged. The fact that these physical changes are invisible to the eye should not tempt us to conclude that the machine has not been changed. Bernhart, 417 F.2d at 1400.

(1) For a machine implementation, that issue was not decided by the CAFC; and

(2) For a transformation, it must be central to the purpose of the claimed process and the electronic transformation of the data itself into a visual depiction was sufficient in Abele.

Fundamentally, one can maybe look to the EP's handling of software claims related to "technical effect" that goes beyond the normal physical interactions between the program and the computer, as a guide. See, http://www.epo.org/patents/law/legal-texts/html/guiex/e/c_iv_2_3_6.htm

Maybe?

(from patentlyo comments - Jim)

Claim 1 recited


(GL- not 101 patentable subject matter) 1. A computerized method comprising:
inputting multiple extensible Markup Language (XML) documents;
creating a data representation of said multiple XML documents; and
reducing redundancy across said multiple XML documents via a fixed set of tables.
According to the BPAI,


[T]he recited method, while being computerized, is not tied to a particular machine for executing the claimed steps. We find that the computerized recitation purports to a general purpose processor (Fig. 2.), as opposed to a particular computer specifically programmed for executing the steps of the claimed method [271 Note: what's the difference?]. Next, while it can be argued that the creating step transforms the input XML documents into represented data (i.e. a different state), we find that the documents are not an article (i.e. physical entities). Rather, they are mere data that represent such entities. Similarly, while it can be argued that the redundancy reducing step transforms the XML documents into a smaller set of the documents, they are not an article being transformed.
However, a related apparatus claim recited


(gl-patentable subject matter) 25. An apparatus comprising:
means for creating a graph based data structure representing multiple standard XML tree structures;
means for transforming said graph based data structure to a fixed set of tables; and
means for using said fixed set of tables.
Here, the BPAI found the language rendered statutory subject matter into the claim:


Appellants argue that the recited apparatus refers to the general purpose computer depicted in Figure 2. (App. Br. 33.) Further, Appellants submit that the different means recited in the claim correspond to the different modules in the computer for performing the recited functions. (Id. at 12.) We find that since the claim recites a physical apparatus with physical modules for transforming a data structure into a fixed set of tables, it is not a directed to an abstract idea. Therefore, Appellants have shown that the Examiner erred in finding that claim 25 is directed to an abstract idea. Thus, we will not sustain this rejection.
Apparently, the Board did not see fit to explain why a "computerized method" to a "general purpose computer" is nonstatutory, while an "apparatus" directed to the same general purpose computer is. The implication here is that, if the method claim recited the computer, the claims would be statutory. However, other BPAI precedent (Ex parte Gutta) states that this would not be enough.

From BPAI opinion here. Application here.

Teaching Away--case law

"'A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.'" Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (quoting In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)); see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (refusing to conclude that prior art disclosure taught away from the claimed invention where the disclosure did not "criticize, discredit, or otherwise discourage the solution claimed").

Rule 105 requests -- IDS more information

1)Rule 105 request may be made for "Factual" information. Asking for any type of judgement on patentability is NOT allowed - an Examiner may ask for factual informtion concerning accuracy of the Examiner's interpretations or may ask stipulations as to facts with which the applicant MAY agree or disagree. Asking for the applicant to make interpretations is not appropriate.

2)Appropriate (and complete) responses to a Rule 105 request include "The information required to be submitted is unknown" as well as "The information required to be submitted is not readily available."

Rule 105 requests--requests for more information.

from http://www.patentlyo.com/patent/2008/11/responding-to-e.html#comments

Teaching away.

A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).

Analysis: The key is whether it would lead away because it wouldn't functionally work

Title Objections

Objection to Title
The Examiner has asked that the title of the invention contain the word “Testing.” Applicant respectively disagrees with this objection. Applicant respectively disagrees with this objection. Nonetheless, Applicant has amended the title in an effort to expedite prosecution. Specifically, the title has now been amended to read “A B C” Applicant notes that the title in no way limits the scope of any given claim. Rather, the language of each of the respective claims speaks for itself. Applicant respectfully requests withdrawal of the objection to the title.

Remarks Block

Reconsideration of the application is respectfully requested in view of the foregoing amendments and following remarks. Claims 1, 3, 4, 6-10, 12-13, 15-17, and 20-25 are pending in the application. No claims have been allowed. Claims 1, 15, and 20 are independent. Claims 2, 5, 11, 14, 18, and 19 have been canceled without disclaimer and without prejudice to pursuing in a continuing application.