Software per se--arguing against 101

http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd20082854-02-27-2009-1

Above is aBPAI decision stating that "a component executing on a computer" in the body of the claim means that the claim is not software per se.

"Regarding the non-statutory test, while the storage of information in independent claim 1 could arguably be done as a mental process, the recitation of a structured relationship between multiple stores that requires 'path information' inherently implies that this information must be stored on a computer or database. This 'particular' computer or database is sufficient structure to meet the machine prong of the machine-or-transformation test of In re Bilski."

http://des.uspto.gov/Foia/ReterivePdf?system=BPAI&flNm=fd20083475-03-28-2009-1
Ex parte Borenstein.

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

101 case law for OA

Claim found to be not patent eligible (Ex parte Halligan (BPAI 2008) (recitation of a programmed computer is insufficient to tie process claim to a specific machine).

Opinion is here

8. Use Abele: Per Bilski approval of result in In re Abele, 684 F.2d 902 (CCPA 1982), require that transformed data represent physical, tangible objects and require visual display of that transformed data.
9. Use Lowry: In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994) (allowing “a memory for storing data for access by an application program being executed on a data processing system, comprising: a data structure stored in said memory, ….”).
10. Use Alappat: In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994) (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.”)
11. Use WMS Gaming: WMS Gaming, Inc. v. International Game Technology, 184 F.3d 1339 (Fed. Cir. 1999) (in a means-plus-function claim “in which the disclosed structure is a computer, or microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.”)
12. Maybe Even Comiskey: In re Comiskey, 499 F.3d 1365 (Fed. Cir. 2007) (dependent claims survived Sec. 101 scrutiny by reciting “wherein access to the mandatory arbitration is established through the Internet, intranet, World Wide Web, software applications, telephone, television, cable, video [or radio], magnetic, electronic communications, or other communication means.”)
13. Target Most Particular Points of Infringing Technology’s Life Cycle: Consider how infringing technology will move from conception to stored information to physical testing to commercial processing to products of that processing, etc., and target the most “particular” domestic points along the path. E.g., consider these types of claims—and add supporting disclosure to the specification:
a. Computer-Readable Media Storing Instructions for Performing Particular, Limiting Hardware/Transformative Process: If process could not be performed in one’s head (hence “hardware/transformative process”) and requires particular and limiting hardware or transformation, it may survive § 101 scrutiny.
b. Processing Device/System in State of Execution: Claim a processor, computer, or combination of multiple processors or computers in state of execution of recited information. Even if counterpart method-of-execution claim could be rejected as mental process, Lowry + Alappat + WMS Gaming may protect this claim from being sacked by Bilski, at least.
c. Thread or Process of Execution: Claim to thread of execution including a data structure in memory or other processing device/system state of execution with currently useful dynamic information.
d. “Product” by Process: Similarly, claim the processor, computer, or combination of multiple processors or computers (or perhaps, memory or other media) in state created by executing recited information. But do not draft IPXL-invalid hybrid machine-method claim.
e. Signals in a Particular Physical Medium or Form: Claim signals having specified physical form or medium. (Signal claims in In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007) did not do this.)

Computer Readable Medium Claims

From Kyle, 6-4-08

67. (Currently Amended) A computer–readable medium having stored thereon computer program instructions for creating an X , the X comprising:
...; and
the computer-readable medium further having stored thereon computer program instructions comprising:
instructions for a;
instructions for b, and
instructions for c.