Any extra word in a claim "can and will be used against you in a court of law." Thus on the one hand, recitations in a detailed preamble may unduly limit the claim in unintended ways. By contrast, a generic preamble can never get you in trouble in that regard.
On the other hand, detailed-preamble claims can serve any number of useful purposes. The trick is to draft detailed preambles with our eyes open.
The pivotal issue is not the length of the preamble, per se, but coming to grips with what legitimate function (if any!!) is served by any particular preamble detail—be it a single word, a phrase or a whole paragraph.
It is important to note that a claim's preamble limitation can be deemed limiting when one goes to enforce the claim, even though the preamble limitation was given no patentable weight during prosecution, and thus did not help to secure the claim's allowance. Such a preamble limitation will have given up claim breadth without having received anything of benefit in return.
Consider the following claim to an automobile floor mat.
An automobile floor mat comprising
a semi-rigid monolayer having a gradually sloping edge portion extending outward from a central section, said edge portion terminating in a lip disposed at an elevation above the central portion, the lip having a plurality of indentations disposed a regular intervals around its periphery.
There is nothing in the body of this claim that requires the claimed structure to be an automobile floor mat. Thus an examiner may well regard "automobile" as being a mere statement of intended use and may reject the claim based on prior art disclosing the claimed "semi-rigid monolayer" whether or not the prior art structure was designed for use in an automobile. Or intended to be placed on a floor. Or perhaps even whether it was intended to be used as a mat.
Suppose, on the other hand, that there is no such prior art, so that the claim is allowable as presented above. Although the descriptive label "automobile" was of no help in securing allowance of this claim, it may come back to bite the patent owner when asserting the claim against suppliers of locomotive cab mats that cannot be used in automobiles (because, for example, they are too big). The patent owner will argue that the term "automobile" should be given no limiting effect because it is not necessary to give "life, meaning, and vitality" to the claim. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165-66 (Fed. Cir. 1999). That argument may or may not carry the day, depending on how the Markman judge understands what the gives-life-meaning-and-vitality test actually means and how that test applies to the invention at hand.
In any event, the Opposing Team will have a field day with this claim, hammering on the notice function that a patent's claims are supposed to serve and arguing that "if the applicant didn't intend to be limited to automobile floor mats, why did he put it in the claim?" The prosecuting attorney makes the job of the licensing/litigating attorney all the more difficult by opening the door for such an argument to even be raised.
Drafting this claim with a generic preamble, viz.,
A manufactured article comprising,
a semi-rigid monolayer…
may thus save everyone a lot of grief. Indeed, it may save the day.
Descriptive labels and modifiers, such as "automobile" and "floor" in the above example, should always be suspected as creating an infringement loophole without providing any countervailing patentability benefit. Other "usual suspects" are advantages and/or intended uses of the invention. Indeed, the reader should have little trouble in conjuring up reasonable technological embodiments in which claims having the italicized preamble language could be argued to be non-infringing even if the limitations of the body of the claim are met:
An optical system in which at least two out of phase light beams of different frequencies are combined with improved output efficiency, the system comprising…
An on-chip debug system for a programmable VLSI [very-large-scale-integration] processor, the debug system comprising…
A high speed rotor of a type applicable for use with a flywheel, the rotor comprising [no flywheel mentioned in the rest of the claim]
This is not to say that a detailed preamble is necessarily a bad thing. For example, certain intended-to-be-limiting recitations sometimes fit better in the preamble than in the body. In that situation, recitations that call out to be placed in the preamble during the course of the drafting the overall claim invariably tie into other limitations in the claim body and/or replicate them explicitly. Such preamble recitations will thus certainly give life, meaning and vitality to a claim and thus can be effectively relied upon in arguing the claim’s patentability.
Below is a claim that uses Dennis’s exemplary detailed preamble. Note how every limitation in the preamble ties into the body of the claim.
A method for content selection of digital media stored in a memory…, the method comprising,
assigning an individual portion of the digital media to a particular portion of the memory based on whether or not the content of that portion includes video data,
selecting one of the individual portions by …..
It is helpful to start out with a generic limitation, and not packing a limitation into the preamble until the structure of the evolving claim makes it clear that it is needed there. This helps protect the preamble from details that can only hurt and not help.
Copied from http://www.patentlyo.com/patent/2009/11/patent-prosecution-tips-drafting-preambles.html#more
Showing posts with label claim drafting. Show all posts
Showing posts with label claim drafting. Show all posts
Monday, November 16, 2009
Tuesday, August 11, 2009
Process defines product by process claims
Abbott Labs v. Sandoz, 566 F.3d 1282 (Fed. Cir. 2009),
In Abbott Labs, the Federal Circuit resolved this long-standing inconsistency and upheld the view expressed in Atlantic Thermoplastics that “process terms in product-by-process claims serve as limitations in determining infringement.” 566 F.3d at 1293 (citing Atlantic Thermoplastics, 970 F.2d at 846-847). The Court expressly overruled Scripps to the extent that it conflicted with this ruling. Id. The Court determined that this view comported with the Supreme Court’s opinion in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), in which the high court stated that “(e)ach element contained in a patent claim is deemed material to defining the scope of the patented invention.” 520 U.S. at 19.
The Court acknowledged the validity of product-by-process claims, though it made clear that the process terms are limiting in terms of enforcement. The court based its holding on the public notice function of patent claims, holding that where a patent holder claims a new product solely in terms of a particular process, infringement must be determined by “comparison of the claimed and accused infringing processes.” 566 F.3d at 1294.
Three judges led by Judge Newman filed a long dissent, arguing that the majority opinion overturned a century of precedent that allowed patent applicants to protect a new product whose structure is not fully known or readily described by merely including sufficient reference to the process required to create it. 566 F.3d at 1299-1300. The dissent calls for a “rule of necessity” for difficult-to-define inventions. Id. at 1300.
Copied from this web post.
In Abbott Labs, the Federal Circuit resolved this long-standing inconsistency and upheld the view expressed in Atlantic Thermoplastics that “process terms in product-by-process claims serve as limitations in determining infringement.” 566 F.3d at 1293 (citing Atlantic Thermoplastics, 970 F.2d at 846-847). The Court expressly overruled Scripps to the extent that it conflicted with this ruling. Id. The Court determined that this view comported with the Supreme Court’s opinion in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), in which the high court stated that “(e)ach element contained in a patent claim is deemed material to defining the scope of the patented invention.” 520 U.S. at 19.
The Court acknowledged the validity of product-by-process claims, though it made clear that the process terms are limiting in terms of enforcement. The court based its holding on the public notice function of patent claims, holding that where a patent holder claims a new product solely in terms of a particular process, infringement must be determined by “comparison of the claimed and accused infringing processes.” 566 F.3d at 1294.
Three judges led by Judge Newman filed a long dissent, arguing that the majority opinion overturned a century of precedent that allowed patent applicants to protect a new product whose structure is not fully known or readily described by merely including sufficient reference to the process required to create it. 566 F.3d at 1299-1300. The dissent calls for a “rule of necessity” for difficult-to-define inventions. Id. at 1300.
Copied from this web post.
Friday, July 31, 2009
No software means plus function claims anymore
http://www.patentlyo.com/08-1368.pdf
Blackboard's patent covers an internet-based educational support system and method. (U.S. Pat. No. 6,988,138). On summary judgment, the district court (Judge Clark, E.D. Tex.) found claims 1-35 invalid as indefinite, but a jury found found that Desire2Learn liable for infringement of claims 36-38. On appeal, the Federal Circuit agreed that Claims 1-35 are indefinite, and – after altering the claim construction – held that the remaining claims were also invalid as anticipated.
Means-Plus-Function: Blackboard's seemingly broadest claim (claim 1) includes several means-plus-function clauses, including a "means for assigning a level of access and control." The specification briefly discusses an "access control manager" (ACM) with an "access control list." On appeal, however, the court found that brief description to be an insufficient "disclosure of the structure that corresponds to the claimed function" and consequently indefinite under 35 U.S.C. §112 ¶2. See In re Donaldson, 16 F.3d 1189 (Fed. Cir. 1994)(en banc).
"[W]hat the patent calls the 'access control manager' is simply an abstraction that describes the function of controlling access to course materials, which is performed by some undefined component of the system. The ACM is essentially a black box that performs a recited function. But how it does so is left undisclosed."
Important for patent drafter, means-plus-function claims require disclosure in the specification even if the means are already well known in the art.
The fact that an ordinarily skilled artisan might be able to design a program to create an access control list based on the system users' predetermined roles goes to enablement. The question before us is whether the specification contains a sufficiently precise description of the "corresponding structure" to satisfy section 112, paragraph 6, not whether a person of skill in the art could devise some means to carry out the recited function.
Because claims 2-35 all depend upon claim 1, they are all invalid as indefinite
Claim construction: At the trial, Blackboard's expert could only identify one difference between claims 36-38 and the prior art. Namely, that the Blackboard patent identified a "single login" feature that allowed one user to have various roles within the system. "For example, Blackboard asserted that its claimed method would allow a graduate student who was a student in one course and a teacher in another to use a single login to obtain access to both courses and to obtain access to the materials for each course according to the graduate student’s role in each." However, on appeal, the Federal Circuit determined that the claims do not actually require that feature -- leading them to hold the claims invalid based primarily on the admissions of Blackboard's own expert.
[O]nce the claims are properly construed, the conclusion of anticipation is dictated by the testimony of Blackboard’s own witnesses and the documentary evidence that was presented to the jury. Based on that evidence, and in the absence of a “single login” requirement in claims 36-38, it is clear that the prior art contains every limitation of those claims.Defendant Desire2Learn wins a complete victory (after a few million in attorney fees).
Blackboard's patent covers an internet-based educational support system and method. (U.S. Pat. No. 6,988,138). On summary judgment, the district court (Judge Clark, E.D. Tex.) found claims 1-35 invalid as indefinite, but a jury found found that Desire2Learn liable for infringement of claims 36-38. On appeal, the Federal Circuit agreed that Claims 1-35 are indefinite, and – after altering the claim construction – held that the remaining claims were also invalid as anticipated.
Means-Plus-Function: Blackboard's seemingly broadest claim (claim 1) includes several means-plus-function clauses, including a "means for assigning a level of access and control." The specification briefly discusses an "access control manager" (ACM) with an "access control list." On appeal, however, the court found that brief description to be an insufficient "disclosure of the structure that corresponds to the claimed function" and consequently indefinite under 35 U.S.C. §112 ¶2. See In re Donaldson, 16 F.3d 1189 (Fed. Cir. 1994)(en banc).
"[W]hat the patent calls the 'access control manager' is simply an abstraction that describes the function of controlling access to course materials, which is performed by some undefined component of the system. The ACM is essentially a black box that performs a recited function. But how it does so is left undisclosed."
Important for patent drafter, means-plus-function claims require disclosure in the specification even if the means are already well known in the art.
The fact that an ordinarily skilled artisan might be able to design a program to create an access control list based on the system users' predetermined roles goes to enablement. The question before us is whether the specification contains a sufficiently precise description of the "corresponding structure" to satisfy section 112, paragraph 6, not whether a person of skill in the art could devise some means to carry out the recited function.
Because claims 2-35 all depend upon claim 1, they are all invalid as indefinite
Claim construction: At the trial, Blackboard's expert could only identify one difference between claims 36-38 and the prior art. Namely, that the Blackboard patent identified a "single login" feature that allowed one user to have various roles within the system. "For example, Blackboard asserted that its claimed method would allow a graduate student who was a student in one course and a teacher in another to use a single login to obtain access to both courses and to obtain access to the materials for each course according to the graduate student’s role in each." However, on appeal, the Federal Circuit determined that the claims do not actually require that feature -- leading them to hold the claims invalid based primarily on the admissions of Blackboard's own expert.
[O]nce the claims are properly construed, the conclusion of anticipation is dictated by the testimony of Blackboard’s own witnesses and the documentary evidence that was presented to the jury. Based on that evidence, and in the absence of a “single login” requirement in claims 36-38, it is clear that the prior art contains every limitation of those claims.Defendant Desire2Learn wins a complete victory (after a few million in attorney fees).
Wednesday, April 29, 2009
"operable to" pitfalls
Prouse's appeal focused on overcoming a 102(b) rejection of certain pending claims. Claim 1 recited:
1. A system in an electronic device for emitting light from a light-emitting diode (LED) at a variable brightness, comprising:
a waveform generator for generating an LED signal waveform comprised of a plurality of LED signal values; and
a processing unit operable to determine a scaling value for one or more LED signal values in the plurality of LED signal values, wherein the scaling value scales the one or more LED signal values based upon a percentage of a particular LED brightness.
The BPAI stated that "speculation and conjecture must be utilized by us and by the artisan inasmuch as independent claim 1 on appeal does not adequately reflect what the disclosed invention is." In analyzing the claims, the Board compared the "processing unit operable to determine" against the method claim that positively recited determining the scaling values. They stated:
In direct contrast to the positive statement of determining in independent claim 9, a processing unit is merely recited in independent claim 1 to be “operable to determine a scaling value.” Thus, it is merely capable of performing the recited or desired function of determining a scaling value. In other words, there is no present tense, positively recited determination of a scaling value in claim 1. Thus, since the scaling values are not actually determined, they cannot be used to scale the LED values as recited in the claim. This situation clearly renders the entire subject matter of independent claim 1 and its respective dependent claims 5-8 indefinite within the second paragraph of 35 U.S.C. § 112.
In view of the above, the Board reversed the Examiner's anticipation rejection of claims 1 and 9 and those claims depending from the independent claims. However, the Board issued a new ground of rejection with respect to claim 1 under the second paragraph of 35 U.S.C. § 112.
I don't think the use of "operable to" was the problem here. Rather, it was "operable to" in combination with the clause "wherein the scaling value scales the one or more LED signal values based upon a percentage of a particular LED brightness."
The question is, how can the scaling value do any scaling when its existence isn't certain?
I would try to fix this by saying something like "wherein the processor is further operable to scale the one or more LED signal values based upon a percentage of a particular LED brightness using a determined scaling value."
From http://bpaiwatchdog.blogspot.com/2009/04/processor-operable-to-peform-function.html#comments
1. A system in an electronic device for emitting light from a light-emitting diode (LED) at a variable brightness, comprising:
a waveform generator for generating an LED signal waveform comprised of a plurality of LED signal values; and
a processing unit operable to determine a scaling value for one or more LED signal values in the plurality of LED signal values, wherein the scaling value scales the one or more LED signal values based upon a percentage of a particular LED brightness.
The BPAI stated that "speculation and conjecture must be utilized by us and by the artisan inasmuch as independent claim 1 on appeal does not adequately reflect what the disclosed invention is." In analyzing the claims, the Board compared the "processing unit operable to determine" against the method claim that positively recited determining the scaling values. They stated:
In direct contrast to the positive statement of determining in independent claim 9, a processing unit is merely recited in independent claim 1 to be “operable to determine a scaling value.” Thus, it is merely capable of performing the recited or desired function of determining a scaling value. In other words, there is no present tense, positively recited determination of a scaling value in claim 1. Thus, since the scaling values are not actually determined, they cannot be used to scale the LED values as recited in the claim. This situation clearly renders the entire subject matter of independent claim 1 and its respective dependent claims 5-8 indefinite within the second paragraph of 35 U.S.C. § 112.
In view of the above, the Board reversed the Examiner's anticipation rejection of claims 1 and 9 and those claims depending from the independent claims. However, the Board issued a new ground of rejection with respect to claim 1 under the second paragraph of 35 U.S.C. § 112.
I don't think the use of "operable to" was the problem here. Rather, it was "operable to" in combination with the clause "wherein the scaling value scales the one or more LED signal values based upon a percentage of a particular LED brightness."
The question is, how can the scaling value do any scaling when its existence isn't certain?
I would try to fix this by saying something like "wherein the processor is further operable to scale the one or more LED signal values based upon a percentage of a particular LED brightness using a determined scaling value."
From http://bpaiwatchdog.blogspot.com/2009/04/processor-operable-to-peform-function.html#comments
Thursday, April 9, 2009
Bilski examples -- Claim Drafting
Include unique hardware to enhance the likelihood of being assigned to a different patent group.
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)
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.
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.
Appeal 2009-1485
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
generic Example:
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 housing;
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."
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
system.”
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
computer system.”
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.
Appeal 2009-1485
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
generic Example:
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 housing;
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."
Tuesday, December 30, 2008
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
("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
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:
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
(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.
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.
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