Illustrate a hardware device in the first drawing.
Describe the hardware device in the abstract.
Draft the first patent claim so that it is directed to the hardware device.
If possible, make your first patent claim narrow and easy to understand.
Many Examiners do not read the patent application in detail. Instead, the Examiners tend to focus on the first patent claim.
Draft a first claim that is narrow and is in plain English.
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.”
Ex Parte Dickerson: (BPAI Opinion)
In re Bilski, 545 F.3d 943, 951 (Fed. Cir. 2008) (en banc).
Claims 23, 29, and 30 are drawn to processes (FF 1-10) which are
statutory if they meet the machine-or-transformation test. “A claimed
process is surely patent-eligible under § 101 if: (1) it is tied to a particular
machine or apparatus, or (2) it transforms a particular article into a different
state or thing.” Id. at 954, citation omitted. 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.
6. Claim 23 recites:
assessing impacts of applications 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.
7. Claim 23 recites “outputting the solution from the computer
8. Claim 29 recites a method including “first identifying a plurality of
operational metrics for the specific industry, wherein the
operational metrics include 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.”
9. Claim 29 also recites “outputting the value proposition from the
10. Claim 30 recites a method including the same two steps recited in
claim 29 above.
Claim 23 in its entirety:
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
outputting the solution from the computer system.
(found in Patently Defined)
Joe Sixpack says these forms worked:
1) This language overcame a Bilski rejection at the appeals board.
A computer-readable medium having stored thereon instructions that, when executed, direct a printer to…
2) This language was offered by an examiner in 11/423,538:
Suggested change: “A computer readable storage medium storing instructions which, when executed on a programmed processor…”
In practice I think you’re really limited by the type of specification you’ve inherited or created. I’ve seen a few Bilski rejections in software applications I’ve inherited. I’ve been able to overcome them using language similar to that found above. These rejections, however, were first office actions, not appeals. Bottom line is that you need some support in the specification to overcome these rejections. I’m giving myself more support now that Bilski was grated certiorari.
From commenter Dr. Sinai Yarus
A method to satisfy the Bilski machine or transformation test, the method comprising:
A) Receiving a data input at a data reception module;
B) Transferring the data to a processing module;
C) Processing the data to produce transformed data.
Each of the three steps is linked to the machine.
C explicitly states there is a transformation.
Most Examiners are looking at 101 as an “easy way out”. Writing a good 101 rejection for a claim in this style is generally too much work and they don’t bother.
From commenter Aristo:
Returning to the wild variability in applications of Bilski by staff at the USPTO, and the uncertainty as to how a general purpose computer may be treated by the Federal Circuit, a stronger strategy than arguing a tie to a particular machine alone may be to argue both prongs of the Bilski test, including an argument with respect to a transformation. In the case of software, memory (registers, cache, RAM, etc.) must naturally undergo physical transformations when a processor runs since the physical semiconductor material changes state. While the Federal Circuit discussed transformations of data in Bilski, the physical transformations to matter that occur when running software on a machine were not specifically addressed. Accordingly, bolstering 101 arguments with such language may be beneficial and in my practice has worked in a handful of cases on its own when clients would not agree to amend method claims to include structure.
All comments above found on string Here.
"An electronic device comprising:
a display carried by said housing; and
a processor carried by said housing and cooperating with said display, said processor configured to:
perform software step a,
perform software step b, and
perform software step c."